Ex Parte Iwakiri

Patent Trial and Appeal Board

Apr 11, 2013

11447924 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NAOTO IWAKIRI
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Appeal 2010-009981
Application 11/447,924
Technology Center 2800
____________

Before BRUCE R. WINSOR, JENNIFER L. McKEOWN,
and DAVID C. McKONE, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
[Appellant’s] invention relates generally to an image
information detecting apparatus with an image information
detecting unit that receives recording light representing image
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information, and records the image information by storing
electric charges generated therein by the recording light. More
specifically, the present invention relates to an image
information detecting apparatus with a wireless transmission
capability.
Spec. 1:5-11. Claim 1, which is illustrative of the invention, and claim 9
read as follows:
1. An image information detecting apparatus,
comprising:
an image information detecting unit which receives
recording light representing image information, and which
records the image information by storing electric charges
generated therein by the recording light;
a wireless communication means which wirelessly
transmits information to and which wirelessly receives
information from an external device;
a wire communication means which communicates with
the external device through a communication cable that is
detachable from the image information detecting apparatus;
a wire transmission setting means which enables the wire
communication means; and
a wireless transmission prohibiting means which disables
the wireless communication means if the wire communication
means is enabled by the wire transmission setting means.
9. The image information detecting apparatus
according to claim 1, wherein if the wireless communication
means is disabled by the wireless transmission prohibiting
means, the wireless communication means only wirelessly
receives information from the external device.
Claim 9 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. Ans. 5-6.
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Claims 1-8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable of Yamamoto (US 2004/0114725 A1; published June 17,
2004). Ans. 3-5.
Rather than repeat the arguments here, we refer to the Briefs (App. Br.
filed Nov. 13, 2009; Reply Br. filed May 5, 2010) and the Answer (Ans.
mailed Mar, 5, 2010) for the respective positions of Appellant and the
Examiner.

ISSUES
The dispositive issues raised by Appellant’s contentions are as
follows:1
Did the Examiner err in finding that the invention claimed in claim 9
is not enabled?
Did the Examiner err in finding that Yamamoto teaches or suggests “a
wire transmission setting means which enables the wire communication
means” and “a wireless transmission prohibiting means which disables the
wireless communication means if the wire communication means is enabled
by the wire transmission setting means” (hereinafter the “setting means” and
“prohibiting means,” respectively), as recited in claim 1?

1 Appellant’s contentions raise further issues. However, as the identified
issues are dispositive of the appeal before us, we do not reach the additional
issues.
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ANALYSIS
Claim 9
Claim 1 recites that the “wireless transmission prohibiting means
. . . disables the wireless communication means if the wire communication
means is enabled by the wire transmission setting means.” Claim 9, which
depends from claim 1, recites that “if the wireless communication means is
disabled by the wireless transmission prohibiting means, the wireless
communication means only wirelessly receives information from the
external device.”
The Examiner finds that claim 9 is not enabled by the Specification
because “the device of claim 9 would be inoperable since the apparatus
claimed requires the wireless communication means to wirelessly receive
information from the external device when the wireless communication
means is disabled.” Ans. 6. The Examiner further explains that “[c]laim 1
specifies that the wireless communication means transmits and receives
information thus disabling the device would disable both of these functions
thus making it impossible to receive information.” Ans. 10. In other words,
the Examiner construes “disabl[ing] the wireless communication means” to
mean completely disabling the wireless communication means.
The Appellant contends that
the specification makes clear that the wireless communication
unit has both transmission and receiving functions. However, if
the wireless communication unit is disabled, only the
transmission function of the wireless communication unit may
be disabled. Thus, a person having ordinary skill in the art
would understand that the wireless communication unit has
both transmission and receiving functions, and would also
understand that one of the functions may be disabled while the
other function remains operative. Accordingly, a person having
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ordinary skill in the art would have been able to make and use
an information detecting apparatus which, “if the wireless
communication means is disabled by the wireless transmission
prohibiting means, the wireless communication means only
wirelessly receives information from the external device.”
App. Br. 24-25 (citing Spec. 7:21-32).
Appellant respectfully submits that the Examiner improperly
incorporates limitations into the claim language not recited
therein. As noted by the Examiner on page 10 of the
Examiner's Answer, claim 1 describes that the wireless
communication means transmits and receives information.
Appellant respectfully submits that the Examiner’s position
improperly imports the limitation that disabling the device does
“disable both of these functions thus making [the device
inoperable].” Claim 1 simply recites, inter alia, “disables the
wireless communication means,” and does not limit the extent
of the disablement, whereas the features of claim 9 further
define the extent of the disablement such that “the wireless
communication means only wirelessly receives information.”
Reply Br. 11-12. In other words, Appellant contends that “disabl[ing] the
wireless communication means” should be construed to mean at least
partially disabling the wireless communication means, or the like.
We agree with the Examiner. The broadest reasonable meaning of the
phrase, recited in claim 1, “disables the wireless communication means” is
that the wireless communication means is completely disabled.2 This is
consistent with the ordinary meaning of the words as they would be
understood by those skilled in the art, and with Appellant’s Specification.
See Spec. 4:17-22, 9:1-5, 12:18-21.

2 . Relevant definitions are “disable . . . vt . . . 2: to make incapable . . . ,”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 329 (10th ed. 1999),
“incapable . . . adj . . . 1: lacking capacity, ability, or qualification for the
purpose or end in view; as . . . d: not able or fit for the doing or performance
. . . ,” id. at 586-87.
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Claim 9, which incorporates all of the limitations of claim 1, recites
that “if the wireless communication means is disabled [(i.e., completely
disabled)] by the wireless transmission prohibiting means, the wireless
communication means only wirelessly receives information from the
external device [i.e., is partially disabled)].” Appellant’s Specification
discusses complete disablement (i.e., disabling both the transmitting and
receiving functions) of the wireless transmission means, Spec. 4:17-22, 9:1-
5, 12:18-21, and partial disablement (i.e., disabling only the transmitting
function) of the wireless transmission means, Spec. 7:21-32. However, as
found by the Examiner, the Appellant’s Specification does not enable one
skilled in the art to make and use the invention wherein the wireless
communication means is both completely and partially disabled at the same
time as recited by claim 9. Accordingly, we sustain the rejection of claim 9.
Appellant has asserted that the Examiner’s rejection should have been
brought, if at all, under 35 U.S.C. § 112, second paragraph. Reply Br. 11.
That the Examiner could have rejected the same claim language on one or
more other statutory bases does not demonstrate error in the rejection set
forth by the Examiner.
Claim 1
The Examiner rejects claim 1 as obvious over Yamamoto. The
Examiner maps the setting and prohibiting means of claim 1 to Yamamoto’s
control portion 44. Ans. 6-7. The Examiner explains:
Yamamoto . . . teach[es] control portion 44 can disable a
wireless communication if a wire communication means is
enabled given the teachings in ¶0076, “In response to the
connection of the connectors 29 and 43, the control portion 44
switches the communication path and the power supply path to
the cable basis.” It is the Examiners position that in order for
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the control portion to switch the communication path and the
power supply path to the “cable basis,” there must be a non-
cable basis state to switch from. Given the embodiment shown
in FIG. 5 as discussed in ¶0076 it would be obvious to one of
ordinary skill that when Yamamoto teaches control portion 44
switching to a “cable basis,” (i.e., when 43 and 29 are
connected) it is switching from a non-cable basis or in the case
of FIG. 5 when 43 and 42 are connected which results in a
wireless state. The teaching makes it obvious to one of
ordinary skill that although Yamamoto only explicitly describes
the device switching to a cable basis, it obviously had to switch
from a non-cable basis and the Examiner feels that given the
present embodiment the non-cable basis would be a wireless
state.
Id.
Appellant contends that Yamamoto teaches that wireless
communication is terminated by an operator disconnecting the wireless
communication means 42 from the connector 43 of the electronic cassette 39
and wired communication is initiated by the operator connecting the
connector 29 of the system control and power portions 27, 28 to the
connector of the electronic cassette 39. See App. Br. 14.
We agree with Appellant. When Yamamoto’s cassette control portion
44 (i.e., setting means) enables wired communication in response to
connection of connector 29 to connector 43, wireless communication has
already been disabled by disconnection of wireless communication means 42
from connector 43. Therefore, Yamamoto’s cassette control portion 44,
which the Examiner maps to the prohibiting means, has nothing to disable.
The Examiner does not persuasively articulate how one of ordinary skill in
the art would have found it obvious to fill this gap in Yamamoto’s teachings.
Accordingly, we do not sustain the rejection of claim 1 and claims 2-
8, 10, and 11, which depend from claim 1.
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ORDER
The decision of the Examiner to reject claim 9 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement, is
affirmed.
The decision of the Examiner to reject claims 1-8, 10, and 11 under
35 U.S.C. § 103(a) as unpatentable of Yamamoto is reversed. Ans. 3-5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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