Ex Parte Lee

Board of Patent Appeals and Interferences

Dec 10, 2001

08648386 (B.P.A.I. Dec. 10, 2001)

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for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GANG-BOCK LEE
____________
Appeal No. 1999-0009
Application No. 08/648,386
____________
HEARD: May 24, 2001
____________
Before FLEMING, LALL, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on the appellant’s request, (Paper
No. 17), that we reconsider our decision in Ex parte Lee,
No. 1999-0009 (Bd. Pat. App. & Int. June 20, 2001), which
affirmed the rejection of claims 9, 11-15, 17, 19, 20, and 22
under 35 U.S.C. § 103(a) as being obvious over U.S. Patent No.
5,493,421 (Uetama) in view of U.S. Patent No. 5,420,693
(Horiuchi) further in view of U.S. Patent No. 4,992,884 (Sakata)
even further in view of U.S. Patent No. 5,335,085 (Nakatsuma).
Our decision also reversed the rejection of claims 1, 7, and 8
under § 103(a) as being obvious over Uetama in view of Horiuchi;
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Application 08/648,386
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the rejection of claim 2 under § 103(a) as being obvious over
Uetama in view of Horiuchi further in view of Nakatsuma; the
rejection of claim 3 under § 103(a) as being obvious over Uetama
in view of Horiuchi further in view of Sakata; the rejection of
claims 4-6, 10, 16, 18, and 21 under § 103(a) as being obvious
over Uetama in view of Horiuchi further in view of Sakata even
further in view of Nakatsuma; and the rejection of claims 24-31
as being obvious over Uetama in view of Sakata and Nakatsuma.
Rather than reiterate appellant’s arguments in toto, we
refer the reader to the request for the details thereof. After
reconsidering our original decision in light of the arguments,
we are persuaded of error therein regarding the nonobviousness of
claims 9, 11-15, 17, 19, 20, and 22. Therefore, we grant the
appellant’s request. We consider the following claims:
• claims 9, 11-14, and 22
• claims 15, 17, 19, and 20
• claim 23.
We begin with claims 9, 11-14, and 22.
I. Claims 9, 11-14, and 22
The examiner asserts, “[s]ince Uetama serves the same
purpose as that served by the claimed invention, i.e., stop or
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Application 08/648,386
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omit printing the unwanted excess data, it would have been
obvious ... to applied [sic] the idea of Uetama to avoid printing
excess black data, since black and blank are the two opposition
conventions used in image printing and having too much of any
kind of the two means the whole document image will not be
properly printed.” (Final Rejection at 3.) Noting that “the
board held that the following limitations: ‘determining whether
the stored image data contains a predetermined number of
sequential lines of black data; and stopping the print operation
and displaying a print stop message, when said predetermined
number of sequential lines of black data has been determined to
have been stored in said memory,’ ... were not taught by the
applied art,” (Req. Reh’g at 10), the appellant argues, “[t]he
foregoing limitations are also found in claims [sic] 9.” (Id.)
Claims 9, 11-14, and 22 specify in pertinent part the
following limitations: “determining whether the stored image data
contains a predetermined number of sequential lines of black
data; and stopping the print operation and displaying a print
stop message, when said predetermined number of sequential lines
of black data has been determined to have been stored in said
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Application 08/648,386
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memory.” Accordingly, the claims require inter alia preventing a
facsimile machine from printing when a predetermined number of
sequential lines of black data have been stored in its memory.
The examiner fails to show a teaching or suggestion of the
limitations in the applied prior art. "’A prima facie case of
obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.’" In re Bell, 991 F.2d
781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, although Uetama teaches “[a] facsimile apparatus
capable of economizing the recording paper[,]” col. 1, ll. 8-9,
the reference does not prevent the apparatus from printing when a
predetermined number of sequential lines of black data have been
stored in its memory. To the contrary, Uetama prints marginal,
compressed data when a predetermined number of sequential lines
of blank data have been received by the apparatus. Specifically,
“in the case where a predetermined number of lines of total blank
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line data is [sic] received successively, subsequently successive
total blank line data are not printed but what is called the
marginal portion is printed by compression. As a consequence,
the unrequired [sic] marginal portion in the original is deleted
for printing, thereby conserving the amount of recording paper
consumption.” Col. 4, ll. 27-33. The addition of Horiuchi,
Sakata, and Nakatsuma does not cure the defect of Uetama.
Because Uetama prints marginal, compressed data when a
predetermined number of sequential lines of blank data have been
received, we are not persuaded that the teachings from the
applied prior art would have suggested the limitations of
“determining whether the stored image data contains a
predetermined number of sequential lines of black data; and
stopping the print operation and displaying a print stop message,
when said predetermined number of sequential lines of black data
has been determined to have been stored in said memory.”
Therefore, we reverse the rejection of claims 9, 11-14, and 22 as
being obvious over Uetama in view of Horiuchi further in view of
Sakata even further in view of Nakatsuma. We proceed to
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claims 15, 17, 19, and 20.
II. Claims 15, 17, 19, and 20
The examiner asserts, “Nakatsuma teaches setting up a mode
such that when the mode is activated, printing of image data
other than the report image data is not allowed, which serves the
same purpose as that of the claimed invention wherein when an
operation mode (the black data reception stop mode) is set and
has been determined activated, printing of other image data is
not allowed.” (Final Rejection at 5.) The appellant argues,
“Uetama does, however desire to print all the black data
received.” (Req. Reh’g at 13.)
“Claims are not interpreted in a vacuum, but are part of and
are read in light of the specification.” Slimfold Mfg. Co. v.
Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1 USPQ2d 1563, 1566
(Fed. Cir. 1987) (citing Hybritech Inc. v. Monoclonal
Anti-bodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed.
Cir. 1986); In re Mattison, 509 F.2d 563, 565, 184 USPQ 484, 486
(CCPA 1975)). Here, claims 15, 17, 19, and 20 specify in
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Application 08/648,386
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pertinent part the following limitations: “determining whether a
black data reception stop mode has been activated while scanning
said image data on said document; printing the image data scanned
during said scanning step when said black data reception stop
mode has not been activated.”
The specification describes the black data reception stop
mode as follows.
Following step 206 of storing received or copied
image data in memory unit 20, central processing
unit 10 detects, step 207, whether a sequential
predetermined number of lines, i.e., a whole page or
half a page of stored image data, is black data. Here,
black data is [sic] intended to be detected by page
unit (e.g., one page), but it can be detected by line
unit (e.g., 3 lines, 5 lines, or more). When central
processing unit 10 determines that the number of lines
of black data stored in memory unit 20 is not more than
the predetermined number of lines, the image data is
read from memory unit 20 and provided to printer 70 to
be printed, step 209, in a normal printing operation.
On the other hand, when central processing unit 10
determines in step 207 that the number of lines of
black data stored in memory unit 20 is more than the
predetermined number of lines, central processing unit
10 proceeds to step 208. In step 208, central
processing unit 10 controls printer 70 to print image
data corresponding to a quarter of one page of stored
image data as black data and the rest as white data.
(Spec. at 8-9.) Reading claims 15, 17, 19, and 20 in light of
the specification, the limitations require inter alia
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Application 08/648,386
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deactivating a mode for preventing a facsimile machine from
printing when a predetermined number of sequential lines of black
data have been stored in its memory.
Uetama does not teach a black data reception stop mode that
prevents its facsimile apparatus from printing when a
predetermined number of sequential lines of black data have been
stored in its memory. As explained regarding claims 9, 11-14,
and 22, Uetama prints marginal, compressed data when a
predetermined number of sequential lines of blank data have been
received by the apparatus.
Because Uetama prints marginal, compressed data when a
predetermined number of sequential lines of blank data have been
received, we are not persuaded that the teachings from the
applied prior art would have suggested the limitations of
“determining whether a black data reception stop mode has been
activated while scanning said image data on said document;
printing the image data scanned during said scanning step when
said black data reception stop mode has not been activated.”
Therefore, we reverse the rejection of claims 9, 11-14, and 22 as
being obvious over Uetama in view of Horiuchi further in view of
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Sakata even further in view of Nakatsuma. We proceed to
claim 23.
III. Claim 23
A rejection not referred to in an examiner’s answer is
assumed to have been withdrawn. Ex parte Emm, 118 USPQ 180, 181
(Bd. Pat. App. & Int. 1958) (citing Ex parte Charch, 102 USPQ
363, 364 (Bd. Pat. App. & Int. 1954) and Ex parte Hill, 93 USPQ
45, 46 (Bd. Pat. App. & Int. 1952)). Here, although the examiner
had finally rejected claim 23, (Final Rejection at 2), he neither
repeats nor references the rejection of the claim in his answer.
Therefore, we conclude that the rejection of claim 23 under § 103
has been withdrawn.
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CONCLUSION
In summary, we grant the appellant's request to reverse the
rejection of claims 9, 11-15, 17, 19, 20, and 22 under § 103(a).
The rejection of claims 1-8, 10, 16, 18, 21, and 23-31 under
§ 103(a), moreover, remain reversed.
GRANTED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1999-0009
Application 08/648,386
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