Ex Parte Hall

Patent Trial and Appeal Board

Jun 16, 2016

11669116 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/669,116 01/30/2007
22879 7590 06/20/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jeffrey D. Hall
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82223702 4950
EXAMINER
CHACKO, SUNIL
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
06/20/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY D. HALL
Appeal2014-006518 1
Application 11/669,116
Technology Center 2600
Before KRISTEN L. DROESCH, KAMRAN JIV ANI, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 7-9, 11, 14, 16-25 and 27. 2 We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
1 Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP. App. Br. 1.
2 Claims 6, 10, 12, 13, 15 and 26 were objected to, but indicated to be
allowable if rewritten in independent form. Advisory Act. 2.
Appeal2014-006518
Application 11/669, 116
STATEMENT OF THE CASE
Claim 1, reproduced below with emphasis added to key disputed
limitations, is illustrative of the claimed subject matter:
1. An apparatus comprising:
a command interface configured to receive externally
originating instructions including a selected scaling value;
a controller configured to determine a scan area for a
document to be scanned based upon the selected scaling value,
wherein the scan area is different than an actual area of the
document; and
a transparent platen;
a scan area indicator providing a visible indication of the
scan area;
a carriage movable across the platen, wherein movement
of the carriage repositions the visible indication, wherein the scan
area indicator and the carriage are stationary when providing the
visible indication of the scan area and wherein the scan area
indicated by the scan area indicator is less than a total area of the
platen.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Watanabe
Sesek
Lee
Michiie
us 4,666,288
US 2003/0038227 Al
US 2006/0103877 Al
us 7,715,066
REJECTIONS
May 19, 1987
Feb.27,2003
May 18, 2006
May 11, 2010
Claims 1-5, 7, 8, 14, 16-25, and 27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lee and Sesek.
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Application 11/669, 116
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Sesek, and Watanabe.
Claims 11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Sesek, and Michiie. 3
ANALYSIS
Independent claims 1 and 20
With regard to the disputed limitations, the Examiner finds Lee
teaches the claimed "controller configured to determine a scan area for a
document to be scanned based upon the selected scaling value" and Sesek
teaches the claimed "scan area indicator." Final Act. 6-7; Ans. 2-3.
Appellant contends neither "selecting a portion of a document" as
described in Lee nor "a portion of a window to be scanned" as described in
Sesek involves scaling because "[ n Jo magnification to enlarge or decrease
the current size is taking place." App. Br. 9; see also id. at 7-9; see also
Reply Br. 4--7. Appellant further contends "[ o ]ne skilled in the art
understands the difference between a cropping of a document versus a
scaling of a document and would not consider the two to be equivalent."
App. Br. 9.
The cited portion of Lee at paragraph 47 describes:
The scan control section 164 generates the scan control
command. The scan control command may be based on one or
more inputs or key operations received through the input section
110 of the terminal device 100. The one or more key operations
may be input to the input section 110 by the user. That is, the
3 The rejection of claim 13 was withdrawn in the Advisory Action and claim
13 was indicated to be allowable if rewritten in independent form. Advisory
Act. 2.
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Application 11/669, 116
scan control section 164 generates scan control commands to set
a size of a document in which the images appear, an image scan
area, etc., and provides the scan control commands to the image
input device 200.
Lee i-f 4 7 (emphasis added). Lee further describes, as examples of the "one
or more inputs or key operations received through the input section," "an
image scaling option to scale the scanned images by a predetermined
number of times." Id. Thus, Lee at least suggests a scan control command
that sets an image scan area based on a scaling option. Accordingly, we are
not persuaded by Appellant's argument.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Lee and Sesek teaches or suggests the disputed
limitations as recited in claims 1 and 20 and the limitations recited in claims
2, 3, 5, 7, 14, 16, 19, 22-24, and 27, which are not separately argued.
Therefore, we sustain the rejection of claims 1-3, 5, 7, 14, 20, 22-24, and 27
under 35 U.S.C. § 103(a).
Claims 9 and 11 stand rejected over various combinations of Lee,
Sesek, Watanabe, and Michiie. We reach the same conclusion with respect
to claims 9 and 11 as we reach with respect to claim 1, from which they
depend, for substantially similar reasons. Therefore, we also sustain the
rejections of claims 9 and 11 under 35 U.S.C. § 103(a).
Independent claim 16
Claim 16 recites, inter alia, "moving a scanner carriage to a position
to indicate at least one dimension of the determined scan area prior to receipt
of a scan command initiating scanning." First, Appellant argues Sesek's
movable scanning light assembly 220 "is not used to indicate the scan area,
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Application 11/669, 116
but at most, is merely used to carry a light that backlights a document by
distributing light across the ENTIRE platen." App. Br. 11; see also Reply
Br. 7-9.
The Examiner finds Sesek teaches the disputed "moving" limitation:
In the scanning device 200 of FIG. 7 the scanning light assembly
can act as the scan window illumination device. That is, the light
source used to scan an object on the platen can also be used to
illuminate the selected scan window prior to performing the
scanning operation . . . . Alternately, by using position
information from the position detector 214, 216 the scanning
light assembly 220 can be caused to move to a position beneath
the selected scan window on the platen 11 . ... In this way the
perimeter of the scan window can be identified by the focused
beams of light projected into the platen (from light sources 39),
and the underside illumination device (130 or 220) can
essentially back-light a document placed over the scan window.
Sesek i-fi-156, 58 (emphasis added). We agree. The Examiner further
cites paragraph 59 of Sesek, describing a distinct scenario that
contrasts illuminating the scanable area of the platen with the selected
scan window. In this distinct scenario, Sesek describes,
when the scan window illumination devices 130 of FIG. 6 and
220 of PIG. 7 are used to illuminate the scanable area of a platen
without regard to a selected scan window comprising an area
smaller than the overall scanable area, then the scan window
illumination devices can be termed generically as "illumination
devices".
Sesek i159 (emphasis added). Thus, Sesek does not only teach
illuminating the entire platen, contrary to Appellant's first argument.
Second, Appellant argues:
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Appeal2014-006518
Application 11/669, 116
The fact that window illumination device 220 may indeed
illuminate the portion of the user cropped scan window does not
in any way mean that window illumination device 220
necessarily indicates a dimension of the cropped window. Note
that nowhere does Sesak [sic] disclose that ONLY the scan
window is illuminated by device 220. Note that nowhere does
Sesak [sic] disclose that window illumination device 220 may,
by itself, be used to identify the perimeter of the scan window.
Reply Br. 8. However, an obviousness analysis does not require the cited
reference to necessarily disclose the teaching for which it is cited. Rather,
all that is required is that Sesek would have at least suggested to one of
ordinary skill in the art, at the time of the invention, that the perimeter of the
scan window can be identified. We agree that the cited teachings of Sesek at
least suggest the disputed "moving" limitation recited in claim 16. As such,
we are not persuaded by Appellant's second argument.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Lee and Sesek teaches or suggests the disputed
limitations as recited in claim 16 and the limitation recited in claim 19,
which is not separately argued. Therefore, we sustain the rejection of claims
16 and 19 under 35 U.S.C. § 103(a).
Dependent claims 8, 17, and 25
With respect to dependent claims 8, 17, and 25, Appellant presents
arguments similar to argument presented with respect to independent claim
16. Specifically, Appellant argue[ s] "neither illumination device 130 nor
light source 132 indicate at least one dimension of Appellant's claimed scan
area based on a scaling value." App. Br. 13. As discussed above with
respect to claim 16, we concur with the Examiner that Sesek's scanning light
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Application 11/669, 116
assembly 220 identifies the perimeter of the scan window. See Sesek ilil 56,
58.
Further, as discussed above with respect to independent claims 1 and
20, Lee is cited to teach "determin[ing] a scan area for a document to be
scanned based upon the selected scaling value." Thus, Appellant's argument
that Sesek does not teach "at least one dimension of Appellant's claimed
scan area based on a scaling value" is unpersuasive. App. Br. 13.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Lee and Sesek teaches or suggests the disputed
limitations recited in claims 8, 17, and 25. Therefore, we sustain the
rejection of claims 8, 17, and 25 under 35 U.S.C. § 103(a).
Dependent claim 4
Claim 4 recites "the first light source is configured to illuminate a spot
on a top surface of the platen, the spot indicating the at least one dimension
of the scan area." Appellant argues "Sesak [sic] fails to disclose the forming
of a spot on the surface of the platen to indicate a dimension of the scan
window." App. Br. 12; see also Reply Br. 10. The cited portion in
paragraph 58 of Sesek describes how "the perimeter of the scan window can
be identified by the focused beams of light projected into the platen (from
light sources 39), and the underside illumination device (130 or 220) can
essentially back-light a document placed over the scan window." As such,
we are unpersuaded by Appellant's argument.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Lee and Sesek teaches or suggests the disputed
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limitation recited in claim 4. Therefore, we sustain the rejection of claim 4
under 35 U.S.C. § 103(a).
Dependent claim 18
Claim 18 recites "the illumination is formed on a transparent platen
from a light source below a bottom of the transparent platen that directs light
through the bottom of the transparent platen towards a top of the transparent
platen."
Appellant attempts to distinguish Sesek's LEDs 39 on the basis that
"Sesak [sic] specifically requires that the light sources 39 direct light
through a side of the platen 11." App. Br. 14. However, the cited portion in
Sesek describes "by actuating the 'illuminate' switch 244 the scanning light
assembly 220 can be caused to move to the center of the scanable area of the
platen 11 and then to illuminate the lower side llL of the platen 11 using the
scanning light source 226 (FIG. 8)" and "by using position information from
the position detector 214, 216 the scanning light assembly 220 can be caused
to move to a position beneath the selected scan window on the platen 11."
Sesek i-f 56 (emphasis added). Further, Figures 7 and 8 of Sesek depict
scanning light assembly 220 as being below the platen. As such, we are
unpersuaded by Appellant's argument.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Lee and Sesek teaches or suggests the disputed
limitation recited in claim 18. Therefore, we sustain the rejection of claim
18 under 35 U.S.C. § 103(a).
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Dependent claim 21
Claim 21 recites "the carriage is longitudinally movable across the
platen, wherein the scan area indicator is carried by the carriage, wherein the
platen has a transverse width and wherein the visible indication of the scan
area provided by the scan area indicator on the carriage indicates a width of
the scan area that is less than the transverse width of the platen."
With regard to claim 21, Appellant argues "[ n Jo where does Sesak
[sic] disclose that the light beam indicates a width of its scan window that is
less than the transverse width of the platen." App Br. 15. As discussed
above with respect to claims 1 and 20, the cited portion in paragraph 59 of
Sesek describes how the "selected scan window compris[ es] an area smaller
than the overall scanable area." See Sesek i-f 59. As such, we find Sesek
would have at least suggested to one of ordinary skill in the art that "the
visible indication of the scan area provided by the scan area indicator on the
carriage indicates a width of the scan area that is less than the transverse
width of the platen," as recited in claim 21.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Lee and Sesek teaches or suggests the disputed
limitation recited in claim 21. Therefore, we sustain the rejection of claim
21under35 U.S.C. § 103(a).
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Application 11/669, 116
DECISION
The Examiner's rejection of claims 1-5, 7-9, 11, 14, 16-25 and 27 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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