Ex Parte Motoyama et al

Board of Patent Appeals and Interferences

Feb 19, 2010

10684434 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TETSURO MOTOYAMA, AVERY FONG,
and YEVGENIYA LYAPUSTINA
____________________

Appeal 2009-008304
Application 10/684,434
Technology Center 2100
____________________

Decided: February 19, 2010
____________________

Before LEE E. BARRETT, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1, 5,
8, 9, 13, 16, 17, 21, 24, 25, 29, and 32-44 under 35 U.S.C. § 134(a) (2002).
Claims 2-4, 6, 7, 10-12, 14, 15, 18-20, 22, 23, 26-28, 30, and 31 have been
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canceled. An Oral Hearing regarding this appeal was conducted on
February 4, 2010. We have jurisdiction under 35 U.S.C. § 6(b)(2002).
We REVERSE.

A. INVENTION
According to Appellants, the invention generally relates to an
application unit monitoring device which can monitor a user’s usage of a
target application of an application unit, and which can easily and efficiently
communicate data of the monitored usage (Spec. 2, ll. 20-22).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. An image forming device comprising:

an operation panel of said image forming device, the operation
panel comprising a plurality of operations to be selected by a user;

a clock unit;

a monitoring unit configured to monitor data of selecting of the
plurality of operations of the operation panel by the user, and to
generate a log of the monitored data in one of multiple formats,
wherein the multiple formats include at least one of a time stamp
including a time of selecting of the plurality of operations of the
operation panel or a frequency of selection of the plurality of
operations of the operation panel;

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a communicating unit configured to receive the log of the
monitored data, and to communicate data based on the log of the
monitored data in one of the formats.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Aikens US 5,414,494 May 9, 1995
Wygodny US 6,202,199 B1 Mar. 13, 2001

Claims 1, 5, 8, 9, 13, 16, 17, 21, 24, 25, 29, and 32-44 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the teachings of Wygodny in
view of Aikens.
The rejection of claims 5, 8, 13, 16, 21, 24, 29, and 32 under
35 U.S.C. § 112 has been withdrawn.

II. ISSUE
Have Appellants shown that the Examiner erred in finding that
Wygodny in view of Aikens teaches or would have suggested “a monitoring
unit configured to monitor data of selecting of the plurality of operations of
the operation panel by a user” (claim 1)? The issue turns on whether
Aikens’ monitoring unit is configured to monitor the selection data of the
operation panel.

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

Wygodny
1. Wygodny discloses monitoring and analyzing the execution of
computer programs (col. 1, ll. 14-15).
Aikens
2. Aikens discloses the automatic notification to selected remote devices
in response to machine conditions (col. 1, ll. 24-29).
3. Key machine operating events which define the proper execution of
the control system such as user interface buttons being set, changes in
application software operating states, etc., are input as they occur (col.
4, ll. 51-61; Fig. 3).
4. Suitable buttons enable the user to select operations (col. 7, ll. 43-48).
5. Job related events for automatic notification are a notification that the
job has been completed, notification after the completion of X number
of copies, or notification after a given job interrupt (col. 8, ll. 24-27;
Fig. 7).

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IV. PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

V. ANALYSIS
Appellants contend that “Wygodny merely monitors how a software
program is being executed” (App. Br. 11), whereas “the claims are directed
to selecting operations on an operation panel of an image forming device
selected by a user” (Id.). Appellants also contend that “Aikens discloses
detecting machine conditions for automatic notification to remote stations,
but at no point does Aikens disclose or suggest monitoring what buttons a
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user presses on an operation panel of an image forming device” (App. Br.
13).
The Examiner finds that “Aikens is directed to monitoring key events
in an image forming device” (Ans. 7), and “[s]ince user interface buttons are
used to select certain functions…, user selection of operations is monitored”
(Id.). In particular, the Examiner concludes that “Aikens teaches an
operation panel can include buttons that initiate operations” and “[e]ntering
commands through such an interface would be key operating events and one
of ordinary skill in the art would understand such commands can initiate
software operations, making it obvious to monitor such key events” (Ans. 9).
Accordingly, an issue we address on appeal is whether Wygodny in
view of Aikens teaches or would have suggested “a monitoring unit
configured to monitor data of selecting of the plurality of operations of the
operation panel by a user” (claim 1). In particular, we address whether
Aikens’ monitoring unit is configured to monitor the selection data of the
operation panel.
After reviewing the record on appeal, we agree with Appellants. In
particular, Aikens discloses the automatic notification to selected remote
devices in response to machine conditions (FF 2). Although the Examiner
finds that “user interface buttons are used to select certain functions” (Ans.
7) and that it would have been “obvious to monitor such key events” (Ans.
9), we find that the functions selected by the user in Aikens are not “data of
selecting of the plurality of operations of the operation panel by a user” as
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required by claim 1. That is, we find that Aikens monitors the
conditions/functions that are selected by the user, rather than monitoring the
selecting by the user as claimed.
Though Aikens discloses that key machine operating events such as
user interface buttons being set are input as they occur (FF 3), that suitable
buttons enable the user to select operations (FF 4), and that job related
events for automatic notification include notification after the completion of
X number of copies (FF 5), we do not agree with the Examiner that “user
selection of operations is monitored” (Ans. 7).
Thus, though we agree with the Examiner that “user interface buttons
are used to select certain functions” (Ans. 7) and that it would have been
“obvious to monitor such key events” (Ans. 9), claim 1 does not merely
require user selection or monitoring of key events. Contrary to the
Examiner’s conclusion, claim 1 requires monitoring of “data of selecting of
the plurality of operations of the operation panel by a user.”
We also find that Wygodny does not cure these deficiencies of
Aikens. Wygodny merely discloses monitoring the execution of computer
programs (FF 1), and also is not directed to monitoring data of selecting of
operations. As such, we will reverse the rejection of representative claim 1
and independent claims 9 and 25 standing therewith, and claims 5, 8, 13, 16,
17, 21, 24, 29, and 32-44 depending therefrom, over Wygodny in view of
Aikens.
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VI. CONCLUSION
Appellants have shown that the Examiner erred in concluding that
claims 1, 5, 8, 9, 13, 16, 17, 21, 24, 25, 29, and 32-44 are unpatentable over
the teachings of Wygodny in view of Aikens under 35 U.S.C. § 103(a).

VII. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1, 5, 8,
9, 13, 16, 17, 21, 24, 25, 29, and 32-44 is reversed.

REVERSED

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