Ex Parte Ferreiro

Board of Patent Appeals and Interferences

Mar 30, 2004

09175080 (B.P.A.I. Mar. 30, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 15

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCIS A. FERREIRO
__________

Appeal No. 2002-2034
Application No. 09/175,080
___________

ON BRIEF
___________

Before SCHAFER, LEE, and MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-2, 4-9, 11-16, and 18-25. Claims 3, 10, and
17 are said to be allowable if rewritten in independent form.1
Thus, only claims 1-2, 4-9, 11-16, and 18-25 are before us on this
appeal.
REPRESENTATIVE CLAIM
The appellant has indicated (Brief, page 4) that, for the
purposes of this appeal, claims 1-7 will stand or fall together,

1 Although a rejection appears to be repeated and applied to these claims, the
examiner has stated them to be allowable (Examiner’s Answer, page 2). We shall
therefore direct no analysis towards these claims other than to observe that the
rejection should have been updated to reflect the allowable claims.
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claims 8-14 will stand or fall together, and claims 15-25 will
stand or fall together. Consistent with this indication, the
appellant has made no separate arguments with respect to the
remaining claims.
Accordingly, the dependent claims will stand or fall together
with their independent claims, and we will select claims 1, 8, and
15, the independent claims as representative of all of the claims
on appeal. See 37 CFR 1.192(c)(7). Note also In re Dance, 160
F.3d 1339, 1340 n.2, 48 USPQ2d 1635, 1636 n.2 (Fed. Cir. 1998); In
re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Claim 1, 8, and 15 read as follows:
1. An image information transmitting method in a facsimile
machine, comprising the steps of:
pre-programming a dialing group of predetermined destinations
in said facsimile machine;
storing said pre-programmed dialing group of predetermined
destinations in said facsimile machine;
detecting the presence of a document in said facsimile
machine;
automatically selecting switches for accessing said pre-
programmed dialing group of predetermined destinations;
automatically selecting a switch for manually entering an
additional destination desired by said user;
automatically releasing said switches for accessing said pre-
programmed dialing group of predetermined destinations;
entering said additional destination desired by said user;
following said step of entering said additional destination,
automatically transmitting image information from said document to
each of said predetermined destinations of said pre-programmed
dialing group; and
transmitting said image information from said document to
said additional destination desired by said user.
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8. A system for transmitting image information, comprising:
a user interface for manually entering a dialing group of
predetermined destinations in said facsimile machine;
a memory operable to store said dialing group of
predetermined destinations;
a circuit operable to detect said document, automatically
select switches to access said pre-programmed dialing group of
predetermined destinations, and automatically select a switch that
allows a user to manually enter an additional destination;
a user interface to manually enter said additional
destination desired by said user; and
a transmitting device for automatically transmitting said
image information to each said predetermined destination in said
pre-programmed dialing group; said transmitting device also used
to transmit said image information to the manually entered
destination desired by said user whereby the transmitting device
transmits said image information to each predetermined destination
in said pre-programmed dialing group and to the manually entered
destination in a single operation.

15. A dialing group selection circuit operable to detect a
document placed in a facsimile machine, automatically start a pre-
programmed dialing group of predetermined destinations, and
automatically select a switch that allows a user to manually enter
an additional destination comprising:
a detecting circuit operable to detect a document placed in a
receiving aperture of said facsimile machine;
a sequential switching circuit operable to receive an
electrical reset signal from said detecting circuit, said
sequential switching circuit further operable to automatically
activate a single-button dialer associated with a pre-programmed
dialing group of predetermined destinations; and
an oscillator circuit operable to receive a reset signal from
said detecting circuit causing the timer2 to begin running, said
oscillator circuit further operable to electrically drive said
sequential switching circuit;
whereby, after said single-button dialer is activated, a user
is prompted to manually enter an additional desired destination,
and the transmitting device transmits said image information to
each predetermined destination in said pre-programmed dialing
group and to the manually entered destination in a single

2 This term appears to lack antecedent basis. In the event of further
prosecution on the merits, the examiner and the appellant should address this
issue.
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operation.
The Reference

In rejecting the claims under 35 U.S.C. § 102(e), the
examiner relies upon the following reference:
Fukushima 5,543,938 Aug. 06, 1996
The Rejection
Claims 1, 2, 4-9, 11-16, and 18-25 stand rejected under 35
U.S.C. § 102(e) as being unpatentable over Fukushima.
The Invention
The invention relates to an image transmitting apparatus
which may automatically start a dialing group and transmit image
information to a plurality of predetermined destinations.
(Specification, page 1, lines 4-8).
The Rejection of Claims 1, 2, 4-9, 11-16, and 18-25
Under 35 U.S.C. § 103 (a)
The examiner has found, for claim 1, that Fukushima describes
an image formation transmitting method in a facsimile machine
including preprogramming a dialing group of destinations, storing
the predetermined dialing group, detecting the presence of a
document, automatically selecting switches for accessing the
preprogrammed dialing group, automatically selecting a switch for
manually entering an additional destination desired, automatically
releasing the switches for accessing the preprogrammed dialing
group, entering an additional destination and following the step
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of entering the additional destination, automatically transmitting
image information from the document to each of the preprogrammed
destinations, and transmitting the image information from the
document to the additional destination. (Examiner’s Answer, page
3, line 14, page 4, line 11)(citations omitted).
The examiner has additionally found that, for claim 8,
Fukushima describes a system for transmitting image information
including a user interface for manually entering a dialing group
of predetermined destinations, a memory operable to store the
dialing group, a circuit operable to detect a document and to
automatically select switches to access the preprogrammed dialing
group of predetermined destinations and a switch that allows a
user to manually enter an additional destination, whereby the
image information is transmitted in a single operation.
(Examiner’s Answer, page 6, lines 1-17)(citations omitted).
Finally, for claim 15, the examiner has found that Fukushima
describes a dialing group selection circuit operable to detect a
document placed in a facsimile machine, start a pre-programmed
group of predetermined destinations, and automatically select a
switch that allows a user to manually enter an additional
destination. Fukushima is further said to describe a detecting
circuit to detect a document, a switching circuit to receive a
reset signal and automatically activate a single button dialer
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associated with a group of destinations, and an oscillator circuit
operable to receive a reset signal from the detecting circuit to
cause a timer to begin running. The oscillator circuit drives the
sequential switching circuit whereby after the single button group
dialer is activated a user is prompted to manually enter an
additional desired destination and the facsimile machine transmits
the image in a single operation. (Examiner’s Answer, page 8, line
5 - page 9, line 3)(citations omitted).
The appellant does not directly challenge these factual
findings of the examiner. Rather, the appellant asserts that the
rejection is defective in that the claimed invention requires all
of the destinations (including automatic dialing groups and
additional destinations) are entered before any of the facsimile
messages are sent. (Appeal Brief, page 4, last 3 lines for claim
1; page 5, lines 1-7 for claim 8; page 5, lines 8-11 for claim
15)(emphasis added).
Fukushima, it is argued, discloses a different order of
steps, wherein the fax machine sends the fax to the predetermined
dialing group, then the user enters additional destinations, and
the machine then sends the fax to the additional destinations.
(Id., page 6, line 5 - page 7, line 3). Consequently, it is
urged, Fukushima cannot anticipate the instant claims.

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The examiner, in reply, states that by pressing the interrupt
key 43, a user may enter additional destinations and then send the
facsimile to the preprogrammed destinations as well as any
additional destinations in a single operation (Examiner’s Answer,
page 11, line 3 - page 12, line 11).
In the counter position, the appellant notes that it is not
pertinent as to whether the facsimile messages are all sent at the
same time, but whether the recited sequence of entering addresses
and sending the messages is taught by Fukushima (Appeal Brief,
page 8, lines 5-9).
It is by now well-understood that it is applicants' claims
which define the subject matter for which they seek protection.
United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 55
USPQ 381, 383-384 (1942) (citing General Electric Co. v. Wabash
Appliance Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-469 (1938);
In re Zletz, 893 F.2d 319, 321, 322, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989); SRI Int'l. v. Matsushita Elec. Corp., 775 F.2d 1107,
1121, 227 USPQ 577, 586 (Fed. Cir. 1985). Thus, we begin our
review by determining what is the scope and content of appellant’s
claims here on appeal.
The appellant argues that the claims recite a particular
order of steps. We note that this is only true when such order is
expressly recited or required, for example by the use of the word
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“following” or where the context of the claim makes it a
necessity.
For claim 1, it is required that “image information” be
“automatically transmitted” to “each of said predetermined
destinations” and “said additional destination” “following said
step of entering said additional destination.” We therefore agree
with the appellant that the image information transfer must occur
to all of the destinations “each” after the entry of the pre-
programmed dialing group and an additional destination, at least
for claim 1.
The question raised for review, presented squarely, is
whether the following passage (column 3, line 65 - column 4, line
10) anticipates the transmission order parameters of the claim:
FIG. 2 is a plan view of the operation panel 35 in FIG. 1.
In the diagram, the operation panel comprises a ten-key
group 40 for entering [the] telephone number or the like of a
destination, a display portion 41 for displaying instructions
of operation procedure, destination telephone number or the
like, a transmission key 42 for giving an instruction of
transmission start after an original is set or destinations
are specified, an interruption key 43 for giving an
instruction of additional destinations for the broadcast
transmission, a broadcast transmission key 44 for effecting a
broadcast transmission, and a non-transmission key 45 for
giving an instruction not to transmit image data of a
predetermined area.

While the Fukushima reference clearly teaches all of the
pertinent steps of the claimed invention, and we agree with the
examiner that the “prescribed sequence of actions in Fukushima is
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fundamentally the same and consistent with the [claimed]
invention” (Examiner’s Answer, page 12, lines 12-13), we disagree
with the examiner’s conclusion of anticipation by the above quoted
passage.
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43
USPQ2d 1030, 1032 (Fed. Cir. 1997), “[u]nder 35 U.S.C. § 102,
every limitation of a claim must identically appear in a single
prior art reference for it to anticipate the claim.” “Every
element of the claimed invention must be literally present,
arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd.,
868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
Although Fukushima describes an interrupt key 43 to enter
additional destinations and a user may then send out the
transmission to the recipients, this description does not clearly
describe the claimed sequence of steps. Depending on when the
interrupt button is pushed, and whether transmission has
commenced, one may or may not end up with the invention of claim
1. We therefore conclude that this disclosure is insufficient to
anticipate the claimed invention. Consequently, we are
constrained to reverse this rejection.
However, we remand this application to the jurisdiction of
the examiner to consider whether an additional rejection founded
on 35 U.S.C. § 103 should be applied to claim 1 and the claims
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which depend therefrom. We decline to exercise our authority
under 37 CFR § 1.196(b) as, on this record. The issue of whether
this disclosure may render the claimed invention, as interpreted
above, obvious within the meaning of 35 U.S.C. § 103 has not been
fully developed and would benefit from further prosecution on the
merits.
Turning now to claim 8, we note that the term “following” is
absent from the claim. Rather, the claim requires that the send
operation be completed as a “single operation.” The appellant
interprets this as requiring that all of the destinations are
entered before any of the facsimile messages are sent. We
disagree with the appellant’s narrow interpretation of claim 8. In
examining a patent claim, the PTO must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Yamamoto, 740
F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984).
Here, unlike claim 1, there is no requirement that all the
transmissions to each individual destination occur after the entry
of the additional destinations. Thus, we agree with the examiner
that the provision of the interrupt button by Fukushima
anticipates the subject matter of claim 8 and we shall affirm this
portion of the rejection.
Claim 15 is similar to claim 8, in that the transmission
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operation and additional destination entry must occur after the
single button dialer is activated, but as between the two, no
particular order is specified. Consequently, the operation of the
interrupt button 43 in Fukushima, regardless of when it is pushed
during the transmission operation, acts to anticipate claim 15.
Accordingly, we shall affirm this portion of the rejection.
Summary of Decision
The rejection of claims 1-6 under 35 U.S.C. § 102(e) over
Fukushima is reversed.
The rejection of claims 8-9, 11-16, and 18-25 under 35 U.S.C.
§ 102(e) over Fukushima is sustained.
APPROPRIATE ACTION
Accordingly, the subject application is being returned to the
jurisdiction of the examiner, via the office of a Director of the
Technology Center involved, for consideration of whether claims 1-
6 (and any additional claims) are rendered obvious within the
meaning of 35 U.S.C. § 103 by the disclosure of Fukushima.
This application, by virtue of its “special” status, requires
an immediate action. Manual of Patent Examining Procedure § 708.01
(7th ed., rev. 1, February 2000). It is important that the Board
be informed promptly of any action affecting the appeal in this
case.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART
REMANDED

JAMESON LEE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
SALLY G. LANE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. MOORE )
Administrative Patent Judge )

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