Ex Parte Hirata

Board of Patent Appeals and Interferences

Mar 21, 2003

09164583 (B.P.A.I. Mar. 21, 2003)

1 Application for patent filed October 1, 1998, entitled
"Image Forming Apparatus That Permits Easy Job Registration."
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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and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MANABU HIRATA

Appeal No. 2001-1624
Application 09/164,5831

ON BRIEF

Before THOMAS, BARRETT, and BARRY, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-18.
We reverse.
Appeal No. 2001-1624
Application 09/164,583
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BACKGROUND
The invention relates to an apparatus and method for
registering a new job in a printer in a simple fashion by
selecting a job that is already registered, editing or revising
the copy modes if desired, and registering the job as a new job.
This is similar to the well-known technique of creating a new
document in a word processing system by retrieving an old
document, editing it (or not), and giving it a new name.
Claim 18 is reproduced below.
18. A job registration method of an image forming
apparatus, comprising:
inputting image data;
registering said image data with operating modes as a job by
a first registering means;
selecting a job from among the jobs registered by said first
registering means; and
registering said selected job as a new job by a second
registering means.
The examiner relies on the following reference:
Gauronski et al. (Gauronski) 5,206,735 April 27, 1993
Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gauronski.
We refer to the final rejection (Paper No. 9) (pages
referred to as "FR__") and the examiner's answer (Paper No. 16)
(pages referred to as "EA__") for a statement of the examiner's
Appeal No. 2001-1624
Application 09/164,583
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rejection, and to the brief (Paper No. 15) (pages referred to as
"Br__") and reply brief (Paper No. 17) (pages referred to as
"RBr__") for a statement of appellant's arguments thereagainst.
OPINION
Comments regarding Summary of the Invention
We have considered the examiner's disagreements with the
Summary of the Invention (EA3) and appellant's response (RBr1-3).
Normally we would not say anything about this matter because it
is a matter of procedure, not substance, and the panel evaluates
the rejection based on the claim language, not the Summary of the
Invention. However, in view of the effort appellant took in
responding, we present a short discussion.
We find nothing wrong with the Summary of the Invention and,
in fact, find it to be succinct, complete, and accurate. While
the examiner objects to the summary of conventional copying
machines as improper in a description of the invention, we find
such a description helpful as background in understanding the
invention without having to refer to the specification. The
Summary of the Invention accurately describes the claimed
invention. As to the examiner's objection to the analysis of
certain claims in the Summary, the Summary of the Invention
points out (at Br3) that this is recommended practice in the
Manual of Patent Examining Procedure § 1206.
Appeal No. 2001-1624
Application 09/164,583
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Anticipation
Appellant notes that each of the independent claims has
language which recites selecting a job from among registered jobs
and registering the job as "a new job," with or without revision
(Br5). It is argued that Gauronski selects a job, edits the job,
and then returns the edited job to memory so that the original,
unedited job no longer exists, so Gauronski does not disclose
registering the edited job as a "a new job" (Br5-6). It is
argued that "new job" clearly refers to a job that is added to a
job list as another job to be processed in addition to the (old)
job that was used to "create" the "new job" (Br6; RBr4), whereas
Gauronski is merely an edited job that replaces the job on the
job list that was used to create the "edited job" (Br6).
The examiner states that the specification does not support
the view that a "new job" is a job in addition to the "old job"
that was revised (EA10). The examiner refers to page 3,
lines 24-26, page 4, lines 3-5, and page 21, lines 18-20, as
support for the interpretation that a revised job is a new job
and that there is no reference to keeping the old job (the job
that was revised) (EA10). The examiner maintains that "[i]f a
job is edited then it is referred to a s [sic] a new job" (FR6).
The examiner states that there is no requirement in the
specification that the old job, which is revised or edited, is
Appeal No. 2001-1624
Application 09/164,583
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kept (EA10), or that "the new job must be or [sic, of] a nature
to include the old job plus the revised one" (EA11).
Appellant refers to the description of the new registration
key F503 registering a selected job as a new job with or without
revision and the revise key F505 revising the copy modes of a
registered, but not yet processed job, but registration of a new
job does not take place (RBr4). It is argued that one of
ordinary skill in the art would clearly understand from the
disclosure the difference between a revised (edited) job and the
registration of a "new job" (RBr4).
We conclude that the examiner erred in interpreting the
revised job in Gauronski to be a "new job." There is clearly a
semantic distinction between a "revised job," the same job but
changed, modified, or edited in some way, and a "new job," a job
which has just been created. Contrary to the examiner's
findings, the specification clearly distinguishes between a "new
job," created by revising an existing job, and a "revised job."
As shown in Fig. 8, there are separate paths for "New" and
"Revise." As shown in Fig. 11, there is a separate new
registration key F503, a delete key F504, a revise key F505, and
an end key F506 for use in connection with selection of a job
that is already registered (spec. at 23, lines 23-26). The new
registration key F503 is pressed when the selected job is
registered as a new job with or without revision (spec. at 23,
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Application 09/164,583
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line 26, to page 24, line 2). However, "[w]hen the revise key
F505 is operated, the copy modes of a registered job are revised
but registration of a new job does not take place." (Emphasis
added.) (Spec. at 24, lines 5-7.) To take a word processing
example, if a user retrieves an existing document, revises it,
and saves it under the same name, this becomes a "revised
document," whereas if the user retrieves an existing document and
saves it under a new name, with or without revision, this becomes
a "new document" using the common meaning of words. The examiner
has not said how else appellant could claim the invention if
there is no difference between a "revised job" and a "new job."
Because Gauronski does not disclose saving (registering) the
revised job as a "new job," it fails to anticipate the claims on
appeal. Accordingly, the rejection of claims 1-18 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Appeal No. 2001-1624
Application 09/164,583
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Administrative Patent Judge )
McDERMOTT WILL & EMERY
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096