Ex parte Matsui

Board of Patent Appeals and Interferences

Jan 30, 2002

08477770 (B.P.A.I. Jan. 30, 2002)

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publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TSUNEHIRO MATSUI
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Appeal No. 2000-0369
Application No. 08/477,770
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ON BRIEF
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Before JERRY SMITH, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-6, which
are all of the claims pending in this application.
We REVERSE.
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Application No. 08/477,770
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BACKGROUND
Appellant's invention relates to a system for automatically distributing received
documents to alternative memories in a network rather than automatic storage in the
memory of a facsimile machine attached to the network. An understanding of the invention
can be derived from a reading of exemplary claim 1, which is reproduced below.
1. A facsimile apparatus connected to at least one personal
computer, comprising:
receiving means for receiving, through a public line, a communication
procedure signal and a document from a transmitting station;
mail box information storage means for storing first mail box
information corresponding to a mail box of said facsimile apparatus and
second mail box information corresponding to a mail box of said personal
computer;
storage means for storing a document destined for the mail box
information storage means; and
control means including
(a) first determining means for determining whether or not
a document to be received is destined for the mail box of said facsimile
apparatus or said personal computer based on the communication
procedure signal received by said receiving means,
(b) second determining means for comparing designation
information in the communication procedure signal with the first and second
mail box information stored in said mail box
information storage means to determine whether or not the document to be
received is the document destined for a mail box of said personal computer,
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Application No. 08/477,770
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(c) receive control means for controlling said receiving
means to receive the document when said second determining means
determines that the document to be received is the document destined for a
mail box of said personal computer,
(d) storage control means for storing the document
received by said receiving means into said storage means,
(e) transfer means for transferring the document stored in
said storage means to said personal computer via a network, and
(f) erasing means for erasing the document, which is
transferred by said transfer means, in said storage means.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Silverberg 5,091,790 Feb. 25, 1992
Fuller et al. (Fuller) 5,224,156 Jun. 29, 1993
Claims 1-6 stand rejected under 35 U.S.C. § 103 as being unpatentable over Fuller
in view of Silverberg.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the
examiner's answer (Paper No. 19, mailed Mar. 17, 1999) for the examiner's reasoning in
support of the rejections, and to the appellant's brief (Paper No. 18, filed May 26, 1998)
and reply brief (Paper No. 20, filed May 17, 1999) for the appellant's arguments
thereagainst.
OPINION
Appeal No. 2000-0369
Application No. 08/477,770
4
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we make the determinations which follow.
Appellant argues that neither Fuller nor Silverberg discloses a first or second
determining means nor do the references disclose the use of a communication procedure
signal. (See reply brief at pages 1-2.) We agree with appellant. The examiner maintains
that the signal from the depression of the asterisk “*” key followed by a mailbox number
and the pound key “#” is a communication procedure signal.
(See answer at pages 4-5.) The examiner relies on columns 5-6 of Fuller to teach
reception of the mailbox number and storage of the message in the appropriate mailbox.
The examiner then admits that Fuller does not transfer the stored document
to a personal computer and relies upon the teachings of Silverberg for this feature.
While we agree with the examiner that Fuller does not transfer the stored document to a
personal computer, we find that Fuller does teach that recipients can have a notification at
a remote location of receipt of documents and/or have documents
automatically forwarded to another facsimile machine. (See Fuller at columns 7-9, Fig. 4
and 6.) While this is close to a personal computer and at times may even be a personal
computer, we find that Fuller stores the document and then determines the appropriate
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Application No. 08/477,770
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handling of the document rather than determining prior to reception and storage as recited
in the language of independent claim 1. Claim 1 requires:
(a) first determining means for determining whether or not
a document to be received is destined for the mail box of said facsimile
apparatus or said personal computer based on the communication
procedure signal received by said receiving means,
(b) second determining means for comparing designation
information in the communication procedure signal with the first and second
mail box information stored in said mail box information storage means to
determine whether or not the document to be received is the document
destined for a mail box of said personal computer. (Emphasis added.)
Therefore, we agree with appellant that Fuller does not teach or suggest the first or second
determining means for a document to be received as defined by the language of claim 1.
(See reply brief at pages 2-3.) We find that Fuller determines the additional routing of a
received document not routing of a to be received document.
Appellant argues that the second determining means does not compare destination
information in the communication procedure signal with the first and second mail box
information stored in said mail box information storage means to determine whether or not
the document to be received is the document destined for a mail box of
said personal computer. We agree with appellant. Appellant argues that there is no
comparison of the “*” to determine the destination of the document. We agree with
appellant. Since the examiner has not provided a teaching of all the elements of the
claimed invention as recited in the language of independent claim 1, we will not sustain the
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rejection of claim 1 and its dependent claims 2 and 3. Similarly, we will not sustain the
rejection of independent claim 4 and its dependent claims 5 and 6.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-6 under 35 U.S.C. §
103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
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