Ex Parte MAEDA et al

Board of Patent Appeals and Interferences

Sep 15, 2005

09185212 (B.P.A.I. Sep. 15, 2005)

1 Application for patent filed November 3, 1998, which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of Japanese Application
No. 9-313028, filed August 13, 1997.
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for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROSHI MAEDA, YOUICHI KIMURA and RIEKO TODA
____________
Appeal No. 2005-0436
Application No. 09/185,2121
____________
ON BRIEF
____________
Before KRASS, SAADAT AND MACDONALD, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-17, which are all of the claims pending in
this application.
We affirm.
BACKGROUND
Appellants’ invention relates to an image processing device
for managing contents of image processing and image data for each
inputted image. According to Appellants, appropriate image
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processing is applied to each inputted image data without
applying unnecessary processing (specification, page 7).
Additionally, in case of interruption in inputting the image, the
remaining incomplete images are recognized and processed upon
resuming the image processing (specification, page 8).
Representative independent claim 1 is reproduced as follows:
1. An image processing device which comprises image data
input means for inputting image data, image data storage means
for storing input image data received from said image data input
means, image data confirmation means for confirming
characteristics of each input image data, management table means
for managing on an image basis as each image is inputted from the
image data input means the characteristics of each input image
data confirmed by said image data confirmation means as
management information of said each input image data with
reference to the corresponding each input image data stored in
said image data storage means, and image processing means for
performing image processing with respect to said each input image
data,
wherein:
said management table means manages input request
information indicative of a request for transmitting each
processed input image data from said image processing means, and
input completion information indicative of the completion of an
input of said each input image data responsive to said request in
connection with the corresponding each input image data stored in
said image data storage means.
The prior art references of record relied upon by the
Examiner in rejecting the appealed claims are:
Tanaka et al. (Tanaka) 5,682,549 Oct. 28, 1997
Suzuki et al. (Suzuki) 5,923,013 Jul. 13, 1999
(filed May 5, 1997)
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Morikawa 5,960,247 Sep. 28, 1999
(filed Nov. 10, 1997)
Kusumoto 6,088,135 Jul. 11, 2000
(filed Oct. 9, 1997)
Claim 1-4, 6-10, 12, 14-17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Suzuki and Tanaka.
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Suzuki, Tanaka and Morikawa.
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Suzuki, Tanaka and Kusumoto.
We make reference to the answer (Paper No. 23, mailed August
12, 2003) for the Examiner’s complete reasoning in support of the
rejection, and to the brief (Paper No. 22, filed May 16, 2003)
and the reply brief (Paper No. 24, filed October 6, 2003) for
Appellants’ arguments thereagainst.
OPINION
With respect to the rejection of claims 1-4, 6-10, 12, 14-17
over Suzuki and Tanaka, Appellants argue that Suzuki controls the
print system on a “page by page” basis which constitute the
entire content of a page of a print job (brief, page 21).
Appellants assert that such teachings are not related to the
composition for a plurality of input image data required to form
a page and is different from the claimed managing the process for
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each input image data (brief, page 23). Appellants further argue
that, when considered in view of the disclosure, the claimed
input image data refers to sub-page-images in contrast with the
“so-called” page images taught in the references (reply brief,
pages 3-5). With respect to Tanaka, Appellants argue that access
to the stored data in the form of a document is through a so-
called “small card” which is different from the claimed image
processing device (brief, page 28).
In response, the Examiner relies on Appellants’ disclosure
which describes “the image output table manages for each page
information relating to ...” and “identification number for
identifying each page of the image data” (specification, page 44)
which indicate that the disclosed images pertain to either page
or document images (answer, page 12). The Examiner further
argues that Tanaka was mainly relied on for teaching management
table means that manages input request and completion information
which would enhance the use of the management tables in
precessing the requested images (answer, page 13).
As a general proposition, in rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting
a prima facie case of obviousness. See In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) and In re Fine,
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837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Here,
we find the Examiner’s reliance on the teachings of Suzuki and
Tanaka to be reasonable and sufficient to support a prima facie
case of obviousness. In particular, we find that Suzuki
discloses a print control system wherein the information related
to the image data of each page is processed, stored and sent to a
printer. We are not convinced by Appellants’ argument that
processing of the image data on a page or job basis of Suzuki may
be distinguished from the claimed “image basis” of the inputted
image data because the claims require sub-page images (reply
brief, page 4). Appellants particularly rely on the disclosed
details of the image data in pages 42, 44 and 53 of the
specification for concluding that the claimed image data input
refers to sub-page-images (reply brief, pages 4-7).
Reviewing these pages of the specification reveals that the
image data of one page could include multiple images (page 42,
lines 9-12). However, other parts of the specification refer to
ID information for identifying “each page of the image” that has
been processed (page 44) or processing images of documents (page
53). Although a page of the image or images of a document relate
to the output after the input request and input completion steps
are finished, there is nothing in the specification that requires
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inputting multiple images for each page. In particular, the
claims merely recite “image data” and “image basis” without any
reference to how the image data corresponds to a page. In
determining the scope of claim 1, limiting the term “image data”
to something necessarily less than a page, would have placed us
on the wrong side of the fine line between reading a claim in
light of the specification, and reading a limitation into the
claim from the specification. See Comark Communications, Inc. v.
Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed.
Cir. 1998). Here, although the specification allows the break up
of a page into multiple images, neither the specification
precludes an image data constituting a page image nor the claims
require multiple images for each page.
We further disagree with Appellants arguments based on the
use of a small card for storing and handling the image data and
find the Examiner’s stated reason for combining the references to
be reasonable. In fact, the motivation, suggestion or teaching
may come explicitly from statements in the prior art, the
knowledge of one of ordinary skill in the art, or, in some cases
the nature of the problem to be solved. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). The
enhancements made to the management table by combining Tanaka
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with Suzuki provides sufficient teaching and suggestion in the
references to show that one of ordinary skill in the art would
have been led to look into other methods of image processing to
enhance the use of management tables (answer, page 13).
In view of the analysis above, we find the Examiner’s
reliance on the combination of Suzuki and Tanaka to be reasonable
and sufficient to support a prima facie case of obviousness with
respect to claims 1 and 14. Accordingly, the 35 U.S.C. § 103
rejection of claims 1-4, 6-10, 12, 14-17 is sustained.
Regarding claims 11 and 13, we note Appellants’ indication
that they stand or fall with claim 1 (brief, page 15). Therefore
we sustain the 35 U.S.C. § 103 rejection of claim 11 over Suzuki,
Tanaka and Morikawa and of claim 13 over Suzuki, Tanaka and
Kusumoto.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-4 and 6-17 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
MSD/ki
Appeal No. 2005-0436
Application No. 09/185,212
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