Ex Parte Haneda et al

Board of Patent Appeals and Interferences

Feb 26, 2004

08839361 (B.P.A.I. Feb. 26, 2004)

1
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was not written for publication and is not binding precedent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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NORIHISA HANEDA
and
ATSUSHI ITO
__________
Appeal No. 2003-1866
Application 08/839,361
__________
HEARD: February 3, 2004
__________
Before HAIRSTON, RUGGIERO, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 9-27, 32-37 and 40-43, which are all of the claims pending
in the present application. Claims 1-8, 28-31, 38, and 39 have
Appeal No. 2003-1866
Application 08/839,361
2
been canceled. An amendment filed July 8, 2002 after final
rejection was approved for entry by the Examiner.
The disclosed invention relates to a system for printing an
image appearing on a visual image medium as well as recording, on
a digital medium, image data representing the image appearing on
the visual image medium. A billing feature in the form of a fee
charging apparatus which prints charging information on a slip is
incorporated into the system. The charging information is also
transmitted to a charging information confirming apparatus
including a display where a sales clerk can visually compare the
displayed charging information with the charging information on
the printed slip.
Claims 9 and 13 are illustrative of the invention and read
as follows:
9. An image filing apparatus comprising:
a visible image medium reading device reading a visible
image appearing on a visible image medium and outputting digital
image data representing the visible image;
a display device displaying a digital output medium
selection screen for guiding selection of a digital output medium
from a plurality of digital output media;
an input device used to select an output media displayed on
said display device;
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Application 08/839,361
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a digital medium recording device recording on the digital
output medium selected by said input device, the digital image
data representing the visible image and outputted from said
visible image medium reading device; and
a charging information printer printing information
necessary for a recording service charge, said information
relating to the recording executed in said digital medium
recording device.
13. An image printing system comprising:
an image printing apparatus and a charging information
confirming apparatus, said image printing apparatus and said
charging information confirming apparatus being connected so
as to communicate with each other,
said image printing apparatus including,
a digital medium reading device reading digital image data
recorded on a digital medium;
an image printer printing an image represented by the
digital image data read by said digital medium reading device;
a charging information printer printing charging information
necessary for a print service charge, said charging information
relating to image print processing executed in said image
printer; and
a charging information transmitting device sending the
charging information to said charging information confirming
apparatus,
said charging information confirming apparatus including,
a charging information receiving device receiving the
charging information sent from said charging information
transmitting device; and
a display device displaying the charging information
received by said charging information receiving device,
Appeal No. 2003-1866
Application 08/839,361
1 As indicated in the Advisory Office action mailed July 19, 2002, Paper
No. 28, the Examiner has withdrawn the 35 U.S.C. § 112, first paragraph,
rejection of claims 34 and 42.
4
wherein the displayed charging information is visually
compared to the printed charging information in order to confirm
the charging information.

The Examiner relies on the following prior art:
Kristy 5,218,455 Jun. 08, 1993
Parulski et al. (Parulski) 5,270,831 Dec. 14, 1993
Fredlund et al. (Fredlund) 5,666,215 Sep. 09, 1997
(filed Aug. 03, 1995)
Yamamoto 5,715,034 Feb. 03, 1998
(filed Dec. 20, 1995)
Truc et al. 5,872,591 Feb. 16, 1999
(filed Feb. 21, 1996)
Claims 9-27, 32-37 and 40-43, all of the appealed claims,
stand finally rejected under 35 U.S.C. § 103(a).1 As evidence of
obviousness, the Examiner offers Kristy in view of Yamamoto with
respect to claims 13-27, adds Fredlund to the basic combination
with respect to claims 9-12, 32, 33, 41, and 43, adds Truc to the
basic combination with respect to claim 37, and adds Parulski to
the basic combination with respect to claim 40. In a separate
rejection under 35 U.S.C. § 103(a), claims 34-36 and 42 stand
finally rejected as being unpatentable over Kristy in view of
Truc.
Appeal No. 2003-1866
Application 08/839,361
2 The Appeal Brief was filed July 8, 2002 (Paper No. 27). In response
to the Examiner’s Answer mailed August 1, 2002 (Paper No. 29), a Reply Brief
was filed October 1, 2002 (Paper No. 30), which was acknowledged and entered
by the Examiner in the communication dated October 16, 2002 (Paper No. 32).
5
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs2 and the Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
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Application 08/839,361
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claims 9-12, 32-37, and 40-43. We reach the opposite conclusion
with respect to claims 13-27. Accordingly, we affirm-in-part.
Appellants’ arguments in response to the Examiner’s
rejections of the appealed claims are organized according to a
suggested grouping of claims indicated at page 5 of the Brief.
We will consider the appealed claims separately only to the
extent separate arguments for patentability are presented. Any
dependent claim not separately argued will stand or fall with its
base claim. Note 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). Only those arguments actually made by
Appellants have been considered in this decision. Arguments
which Appellants could have made but chose not to make in the
Brief have not been considered [see 37 CFR § 1.192(a)].
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out
a prima facie case of obviousness. If that burden is met, the
burden of going forward then shifts to Appellant to overcome the
prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the
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Application 08/839,361
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relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
With respect to independent claim 9, the representative
claim for Appellants’ first suggested grouping (including
claims 9-12, 32, 41, and 43), Appellants assert that the Examiner
has not established a prima facie case of obviousness based on
the proposed combination of Kristy, Fredlund, and Yamamoto. In
particular, Appellants contend (Brief, pages 11-16; Reply Brief,
pages 4-6) that none of the applied prior art teaches or suggests
the claimed feature of “ . . . displaying a digital output medium
selection screen for guiding selection of a digital output medium
from a plurality of digital output media.” Initially, Appellants
assert (Brief, page 23) that Kristy does not provide for the
selection of output media since, in their characterization of the
disclosure of Kristy, there is no suggestion of a user selection
of output media since the skilled minilab operator is disclosed
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Application 08/839,361
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as using the photofinishing lab for producing a permanent record
of images while the unskilled consumer uses the lab for producing
image prints.
After reviewing the disclosure of Kristy in light of the
arguments of record, we do not agree with Appellants’ interpre-
tation of such disclosure. Our review of Kristy reveals that,
while there is indeed a discussion (column 4, lines 6-27) of the
use of the photofinishing lab by a skilled lab operator for pro-
ducing a permanent record of images on, for example, an optical
compact disc, Kristy also discloses (column 4, lines 58-62) that
the lab operator can alternatively utilize a thermal printer for
supplying image prints to a customer.
Given the clear teaching in Kristy to provide the user with
a choice of digital output media, i.e., optical disc permanent
record or thermal printer produced prints, it is our view that
the skilled artisan would have recognized and appreciated the
obviousness of enabling such selection of output media through a
display screen, especially in view of the fact that an inter-
active video display terminal 16 is provided as an integral part
Appeal No. 2003-1866
Application 08/839,361
3 In considering the language of appealed claim 9, we have given the
broadest reasonable interpretation to the recitation “digital output medium.”
In doing so, we see no reason why the thermal printer 24 in Kristy, which
processes the digital image files from computer 14, would not be considered to
be a digital output medium.
4 The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground of
rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961);
In re Boyer, 363 F.2d 455, 458, n.2, 150 USPQ 441, 444, n.2 (CCPA 1966).
9
of the system of Kristy.3 Although the Examiner has applied the
Fredlund reference to address the digital output medium selection
feature of representative claim 9, it is our opinion, given our
interpretation of the teaching nature of the disclosure of
Kristy, that Fredlund is not necessary for a proper rejection
under 35 U.S.C. § 103(a). Further, while Appellants attack
(Brief, page 14) the addition of the charging system disclosure
of Yamamoto to the Examiner’s proposed combination since, in
Appellants’ view, Yamamoto has no disclosure of recording digital
data, we find this argument unpersuasive since, as pointed out by
the Examiner (Answer, page 9), Kristy clearly provides this
feature. Accordingly, we sustain the Examiner’s obviousness
rejection of representative claim 9, and claims 10-12, 32, and 43
which fall with claim 9 in accordance with Appellants’ claim
grouping, based solely on the combination of Kristy and
Yamamoto.4
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Application 08/839,361
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We also sustain the Examiner’s obviousness rejection of
independent claim 41, which includes the feature of a digital
input medium selection screen, based on the combination of
Kristy, Fredlund, and Yamamoto. Although Appellants have grouped
claim 41 in the grouping including claims 9-12, 32, 41, and 43,
separate arguments for claim 41 have been presented by Appellants
in the Briefs which have been discussed by the Examiner in the
Answer. After reviewing the arguments of record in the Briefs
and Answer, we find no error in the Examiner’s position that
Fredlund provides a teaching to the skilled artisan of utilizing
plural digital input media in a photofinishing operation such as
in Kristy, the selection of which digital input media, in our
view, would be obviously recognized and appreciated by the
skilled artisan as being implemented by Kristy’s interactive
video display terminal.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of dependent claim 33, grouped and argued
separately by Appellants, based on the combination of Kristy,
Fredlund, and Yamamoto, we sustain this rejection as well. The
limitations in claim 33, which is dependent on claim 9 discussed
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Application 08/839,361
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supra, are directed to the feature of selecting among displayed
thumbnail images the images to be recorded on a recording device.
In addressing this feature, the Examiner (Answer, page 6) points
to the discussion at column 4, lines 42-57 of Kristy which
discusses the display of low resolution miniature (thumbnail)
images which are indexed to a corresponding higher resolution
image file.
Appellants’ argument in response (Brief, page 19; Reply
Brief, page 8) suggests that, while Kristy clearly discloses the
display of thumbnail images, the purpose of the display is solely
to easily locate the stored higher resolution images, not to use
the displayed thumbnail images for selection of images to be
recorded. We do not find this argument to be persuasive. It is
apparent to us that the disclosed purpose of the thumbnail images
in Kristy is to rapidly access the selected corresponding high
resolution image that is desired for “a requested photofinishing
operation.” (Kristy, column 4, line 57). It is equally
apparent, alluded to by the Examiner (Answer, page 21) that from
the entirety of the disclosure in Kristy, the “photofinishing
operation” would clearly encompass an image recording operation
Appeal No. 2003-1866
Application 08/839,361
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as claimed. Since, as previously discussed with regard to
claim 9, Fredlund is not needed for a proper rejection under
35 U.S.C. § 103(a), we sustain the Examiner’s obviousness
rejection of claim 33 based solely on the combination of Kristy
and Yamamoto.
We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection,
in which Truc is added to Kristy, of independent claims 34 and
42, which also are directed to the thumbnail image selection
feature discussed above with regard to claim 33. Although the
Examiner has added Truc to the Kristy reference as the basis for
the rejection, it is our view, for all of the reasons discussed
above with regard to claim 33, that Truc is not needed for a
proper rejection under 35 U.S.C. § 103(a). Accordingly, we
sustain the Examiner’s obviousness rejection of claims 34 and 42
based on Kristy alone.
Turning to a consideration of claims 35 and 36, we sustain
the Examiner’s obviousness rejection of these claims as well
based on Kristy alone. Although Appellants have grouped these
claims along with claims 34 and 42 which include limitations
directed to selection of thumbnail images, claims 35 and 36
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Application 08/839,361
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contain no such limitations. In fact, the language of claims 35
and 36 is directed to a selection screen for selecting among an
image printing service and an image filing service, features
which we found to be clearly taught at column 4, lines 58-62
of Kristy as previously discussed with regard to claim 9.
Similarly, with respect to dependent claim 37, which adds
a charging information limitation to claim 35, in which the
Examiner’s stated rejection has combined Kristy with Truc and
Yamamoto, we sustain the obviousness rejection of this claim
solely on the combination of Kristy and Yamamoto. As previously
discussed, Yamamoto provides a clear teaching of the use of a
charging information printer in an image printing device, while
Truc is not necessary for this rejection since Kristy suggests
the obviousness to the skilled artisan of the service selection
screen set forth in parent claim 35.
With respect to independent claim 40, grouped and argued
separately by Appellant, we also find no persuasive arguments
from Appellants that would convince us of any error in the
Examiner’s position which offers the combination of Kristy,
Yamamoto, and Parulski. As asserted by the Examiner (Answer,
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Application 08/839,361
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pages 16, 17, and 23), we find a clear suggestion in Parulski of
providing a user with a choice of visible medium input devices,
i.e., photo or film readers, as claimed, while the Parulski
reference incorporation of Kristy (column 1, lines 35-41) into
its disclosure suggests its combination. We also reiterate our
previous view that Kristy’s clear teaching of an interactive
display terminal would suggest the obviousness to the skilled
artisan of enabling the input medium selection by a screen
selection display, and that Yamamoto’s charging information
disclosure has clear applicability to the system of Kristy.
Accordingly, since the Examiner’s prima facie case of obvious-
ness has not been overcome by any convincing arguments from
Appellants, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 40 based on the combination of
Kristy, Yamamoto, and Parulski.
Turning to a consideration of the Examiner’s obviousness
rejection of independent claims 13, 18, and 23 based on the
proposed combination of Kristy and Yamamoto, we note that these
claims are directed to details of the fee charging printing,
displaying, and confirming features of Appellants’ invention.
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To address the claimed fee charging features, the Examiner
relies on Yamamoto and, in particular, directs attention (Answer,
page 9) to the illustration in Figure 21 of Yamamoto along with
the accompanying description beginning at column 23, line 49.
According to the Examiner, Yamamoto’s bar code reader 231
corresponds to the claimed charging information transmitting
device, while the display 232 corresponds to the claimed charging
information receiving device where the displayed price is
visually compared to printed charging information on the
information card J.
In response, Appellants assert (Brief, pages 8 and 9) that
the Examiner has not established a prima facie case of
obviousness since the features relied on in Yamamoto do not
correspond to those as claimed. After reviewing the Yamamoto
reference, we are in agreement with Appellants’ position as
stated in the Brief. In particular, we agree that Yamamoto’s bar
code reader and register do not satisfy the claimed limitations
since these devices are separate from and are not included within
the image printing device as specifically set forth in each of
the independent claims 13, 18, and 23.
Appeal No. 2003-1866
Application 08/839,361
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We are aware that the Examiner (Answer, page 19) suggests a
possible alternative interpretation of Yamamoto in which the
information card preparation apparatus (Fig. 17) is considered
the charging information transmitting device, and the bar code
reader the charging information receiving device. We are in
agreement with Appellants (Reply Brief, page 3), however, that
this interpretation does not satisfy the claim language since
Yamamoto’s information card preparation apparatus can not
reasonably be interpreted as sending information to the charging
information receiving device as claimed.
In view of the above discussion, because the Examiner has
not established a prima facie case of obviousness since all of
the claimed limitations are not taught or suggested by the
applied prior art references, the 35 U.S.C. § 103(a) rejection
of independent claims 13, 18, and 23, as well as claims 14-17,
19-22, and 24-27 dependent thereon, based on the combination of
Kristy and Yamamoto is not sustained.
In summary, with respect to the Examiner’s 35 U.S.C.
§ 103(a) rejection of the appealed claims, we have sustained
the rejection of claims 9-12, 32-37, and 40-43, but have not
Appeal No. 2003-1866
Application 08/839,361
17
sustained the rejection of claims 13-27. Therefore, the
Examiner’s decision rejecting claims 9-27, 32-37 and 40-43 is
affirmed-in-part.
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
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR:psb
Appeal No. 2003-1866
Application 08/839,361
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Birch Stewart Kolasch & Birch
P.O. Box 747
Falls Church, VA 22040-0747