Ex Parte Nagoshi et al

Board of Patent Appeals and Interferences

Oct 27, 2011

10663688 (B.P.A.I. Oct. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOICHI NAGOSHI, TAKAYUKI FUKUSHIMA,
IKUO YOSHIDA, TAKESHI OOTSUKA and KIYOHIKO HONDA
___________

Appeal 2009-014753
Application 10/663,688
Technology Center 2100
____________

Before ROBERT E. NAPPI, DENISE M. POTHIER, and
JULIE K. BROCKETTI, Administrative Patent Judges.

BROCKETTI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE

Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims
28, 29, 36-48 and 55-63. Claims 1-27, 30-35 and 49-54 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Exemplary Claim
Exemplary independent claim 28 under appeal reads as follows:
28. A multifunction apparatus having at least a scanning function and
not having a facsimile transmission function, the multifunction apparatus
connected with a server via a network, the server storing information
regarding a menu, the menu being displayable on the multifunction
apparatus, the multifunction apparatus comprising:

a scanner configured to scan a document;

a panel configured to display a menu representing functions of the
multifunction apparatus; and

a controller configured to communicate with the server, to receive the
information regarding the menu from the server, and to display a menu on
the panel based on the information regarding the menu received from the
server,

the controller being further configured to send, to the server, based on
the information regarding the menu, scanned image data with predetermined
information indicating another multifunction apparatus having a facsimile
transmission function and being capable of transmitting the image data to a
receiving apparatus by facsimile transmission, when a predetermined menu
indicating a facsimile transmission function is displayed on the panel of the
multifunction apparatus, the information regarding the menu including the
predetermined menu indicating the facsimile transmission function, and
when a facsimile transmission is selected on the predetermined menu,
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whereby the server transmits, to the another multifunction apparatus, the
image data scanned by the multifunction apparatus, based on the
predetermined information, the server being distinct from the multifunction
apparatus and from the another multifunction apparatus.

Rejection on Appeal
The Examiner rejected claims 28, 29, 36-48 and 55-63 under 35 U.S.C.
§ 103(a) as being unpatentable over Kitada (US 2004/0024811 A1) in view of
Tanimoto (US 6,885,469 B1).

Appellants’ Contentions

(1) Appellants contend that the Examiner erred in rejecting claims 28, 37-
40, 45, 55 and 57-591 because:
“KITADA, particularly as described in the first embodiment thereof, clearly
has a facsimile transmission capability.”
(App. Br. 17).
“The fax server 80 is not a multifunction device but a server and
cannot reasonably be considered to be a multifunction device, particularly
where, as here, KITADA explicitly distinguishes between the multifunction
devices 10, 20, and 30 and the fax server 80.”
(App. Br. 17).
“[T]here is no sending of ‘scanned image data with predetermined
information indicating another multifunction apparatus having a facsimile
transmission function’ as recited by the pending claims.”

1 Separate patentability is not argued for dependent claims 37-40, 45, and 57-59.
According, we select claim 28 as representative and group these claims with claim
28. See 37 C.F.R. § 41.37(c)(1)(vii).
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(App. Br. 19, 20).
“While the examiner relies upon TANIMOTO to teach transmitting the
image data to the receiving apparatus by facsimile transmission, this feature is not
taught by TANIMOTO.”
(App. Br. 23).
(2) Appellants contend that the Examiner erred in rejecting claim 29
because:
The prior art does not teach scanning a document when the facsimile
transmission is selected on the menu. (App. Br. 29).
(3) Appellants contend that the Examiner erred in rejecting claims 36 and
56 because:
The prior art does not teach that the information regarding the menu is
utilized for the multifunction apparatus and for another multifunction apparatus.
(App. Br. 30).
(4) Appellants contend that the Examiner erred in rejecting claims 41 and
422 because:
The prior art does not teach a job ID. (App. Br. 31).
(5) Appellants contend that the Examiner erred in rejecting claims 43, 44,
46 and 623 because:
The prior art does not teach job parameters with respect to the features of
copying, printing and facsimile transmission. (App. Br. 32, 33).

2 Claim 42 is not separately argued from claim 41. According, we select claim 41
as representative and group claim 42 with claim 41. See 37 C.F.R. §
41.37(c)(1)(vii).
3 Appellants have grouped claims 43, 44, 46 and 62 together in their arguments
(App. Br. 32). According, we select claim 43 as representative and group claims
44, 46 and 62 with claim 43. See 37 C.F.R. § 41.37(c)(1)(vii).
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(6) Appellants contend that the Examiner erred in rejecting claim 47
because:
The prior art does not teach a maximum number of characters that can be
displayed on the display of the multifunction apparatus. (App. Br. 34).
(7) Appellants contend that the Examiner erred in rejecting claim 48
because:
“none of the profile items of information…relate to the capabilities of the
multifunction apparatus.” (App. Br. 35).
(8) Appellants contend that the Examiner erred in rejecting claim 60
because:
The prior art does not teach transmitting a job execution result upon
completion of facsimile transmission. (App. Br. 36).
(9) Appellants contend that the Examiner erred in rejecting claim 61
because:
The prior art does not teach image data and a job parameter being
transmitted by the server to “another multifunction apparatus.” (App. Br. 37).
(10) Appellants contend that the Examiner erred in rejecting claim 63
because:
The prior art does not teach that the “another multifunction apparatus”
transmits, to the receiving apparatus, the image data scanned by the multifunction
apparatus based on the job parameter. (App. Br. 38).

Issues on Appeal

Did the Examiner err in rejecting claims 28, 29, 36-48 and 55-63 because
Kitada and Tanimoto fail to teach or suggest the disputed claim limitations?
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ANALYSIS

We have reviewed the Examiner’s rejections in light of the Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions.

Claims 28 and 55
Appellants contend that unlike the multifunction device of Appellants’
claims which recite that the multifunction device does not have facsimile
transmission capability, Kitada’s multifunction devices have facsimile
transmission capability. (App. Br. 17). The Examiner notes that Kitada teaches of
an embodiment in which the multifunction device described does not include a fax.
(Ans. 8). Kitada describes a multifunction device that can include a multiple
scanner, photocopier and printer but not a fax machine (See Kitada ¶0023 ll. 15-
17). Under the teachings of Kitada, this type of multifunction device sends an
image and other data to a scan server which then sends the data to a fax server for
facsimile transmission to a recipient. (Id. ¶0026). Consequently, it operates the
same as Appellants’ device in that the data to be faxed is routed from an initial
multifunction device that does not by itself have facsimile transmission capability
to another device that does have facsimile transmission capability.
Appellants further contend that the fax server of Kitada is not a
multifunction device. (App. Br. 17). We note that the Examiner is using the fax
server 80 of Kitada to illustrate that it is well known for a multifunction device that
does not include facsimile transmission capabilities to send data to the fax server
for facsimile transmission to a recipient. On the other hand, the Examiner is using
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Tanimoto to illustrate that a fax server can be a multifunction apparatus. (Ans. 9).
As seen in Fig. 1 of Tanimoto, the fax server also includes a printer and a scanner.
Therefore, we agree with the Examiner that it would be obvious for one of ordinary
skill in the art could use a multifunctional fax server as taught by Tanimoto as the
fax server of Kitada for facsimile transmissions. We find Appellants’ arguments
regarding Tanimoto unpersuasive since the Examiner is using Tanimoto merely to
illustrate that a fax server can be a multifunction device and not for the reasons
articulated by Appellants in the Appeal Brief.
Appellants further contend that Kitada does not teach sending scanned
image data with predetermined information indicating another multifunction
apparatus having a facsimile transmission function. (App. Br. 19, 20). We
disagree and find that Kitada teaches sending scanned image data along with a
request that data be faxed to a specific fax number. Appellants have not provided a
specific definition regarding “predetermined information.” Thus, the
predetermined information can include Kitada’s request that the document be
faxed as well as the fax number. Consequently, the predetermined information in
Kitada indicates that the scanned image should be faxed and, as such, indicates that
it will need to be routed to the fax server (i.e. the apparatus with a facsimile
transmission function). The scan server receives this information and routes the
scanned document to the fax server. (See Kitada ¶¶ 0026, 0047). Furthermore, we
note that our interpretation of “predetermined information” is consistent with
Appellants’ own specification citations noted in the Appeal Brief for this claim
element. (App. Br. 10).
Notably, independent claims 28 and 55 recite “the server storing information
regarding a menu[.]” We find that this information regarding the menu is non-
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functional descriptive material.4 Our reviewing court has held that non-functional
descriptive material cannot lend patentability to an invention that would have
otherwise been anticipated by the prior art. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the descriptive
material will not distinguish the invention from the prior art in terms of
patentability). The content of non-functional descriptive material is not entitled to
weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed.
Cir. 1994) (“Lowry does not claim merely the information content of a memory.”).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential)
(discussing non-functional descriptive material).

Claim 29
Appellants contend that Kitada does not teach scanning a document when
the facsimile transmission is selected on the menu. (App. Br. 29). We disagree.
Kitada teaches multifunctional devices that scan and allow faxes to be sent via a
fax server. We find that it is implicit that when a user selects the option to fax a
document via the menu displayed in Fig. 5 of Kitada, the document must be first
scanned prior to the fax server transmitting the fax. Consequently, it is obvious to
scan the document when the fax selection is made on the menu.

Claims 36 and 56

4 Some of the dependent claims attempt to further limit what the information
regarding the menu contains. While the Examiner has found many of the
limitations in the prior art, we note that it is unnecessary as these limitations are
not entitled to patentable weight.
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Appellants contend that Kitada does not teach that the information regarding
the menu is utilized for the multifunction apparatus and for another multifunction
apparatus. (App. Br. 30). We disagree. The Examiner cites to paragraphs 0027
and 0033 of Kitada which teach that displays on the multifunction apparatuses
allow users to e-mail, fax and perform other functions. (Ans. 9). Based on this
teaching, we conclude that Kitada suggests these capabilities are displayed on the
menus across all multiple multifunction devices. Furthermore, although not
expressly mentioned by the Examiner, we draw Appellants’ attention to paragraph
0025 of Kitada which teaches that all of the multifunction apparatuses have access
to the company’s global directory (e.g., a menu) stored on the directory server.
Therefore, all of the multifunction devices utilize the same information in a menu.
See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that patents are
"relevant for all they contain.")

Claims 41 and 42
Appellants contend that Kitada does not disclose a job ID. (App. Br. 31).
We disagree. The Examiner states that Kitada teaches tracking jobs. (Ans. 9).
Kitada also teaches of a job log. (See Kitada ¶0043, ll. 19-21). We find that it is
inherent in keeping a job log that each job is associated with a job ID.

Claims 43, 44, 46 and 62
Appellants contend that Kitada does not teach job parameters with respect to
the features of copying, printing and facsimile transmission. (App. Br. 32, 33).
We disagree. The Examiner points to Kitada as illustrating various job parameters.
(Ans. 9). Kitada clearly states that scanning parameters including paper size and
resolution settings. (See Kitada ¶0039, ll. 5-12). We find that it is well known to
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one of ordinary skill in the art to apply these parameters also to copying, printing
and facsimile transmission functions. We note that claim 62 is dependent on claim
61in which we affirm the Examiner’s rejection of claim 61. As such, the
Examiner’s rejection of claim 62 is affirmed as discussed above.

Claim 47
Appellants contend that the prior art does not teach a maximum number of
characters that can be displayed on the display of the multifunction apparatus.
(App. Br. 34). We find that this limitation is non-functional descriptive material
and as discussed above is not entitled to any patentable weight.

Claim 48
Appellants contend that the prior art does not teach that the information
regarding the menu contains information regarding the capabilities of the
multifunction apparatus. We disagree. As stated above, we find that this
limitation is non-functional descriptive material and as discussed above is not
entitled to any patentable weight. However, we note that Fig. 3 of Kitada clearly
shows that the menu states the capabilities of the multifunction apparatus in that it
lists the choices of facsimile and e-mail.

Claim 60
Appellants contend that the prior art does not teach a job execution result
upon completion of facsimile transmission. (App. Br. 36). We disagree. The
Examiner has applied Tanimoto to illustrate this limitation in that a job execution
result (i.e. error in execution) is displayed when an error is detected. (Ans. 9). We
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find reporting an error in the execution of a facsimile transmission is a job
execution result.

Claim 61
Appellants contend that the prior art does not teach image data and a job
parameter being transmitted by the server to “another multifunction apparatus.”
(App. Br. 37). We disagree. Kitada clearly discloses that the image data and the
instruction that the image be faxed to a particular recipient (i.e., job parameter) is
transmitted from the multifunction apparatus to the scan server and then routed to
the fax server (i.e., the another multifunction apparatus). (See Kitada ¶0026).

Claim 63
Appellants contend that the prior art does not teach that the another
multifunction apparatus transmits, to the receiving apparatus, the image scanned by
the multifunction apparatus based on the job parameter. (App. Br. 38). We
disagree. The Examiner states that Kitada teaches the image data to be scanned
and sent to the another apparatus based on parameters set. (Ans. 10). We further
clarify that in Kitada the fax server sends the image scanned by the multifunction
apparatus to a receiving apparatus based on the request to fax and whom to fax it to
(i.e., job parameters). (See Kitada ¶0026, ll. 6-8, ¶0034, ll. 16-19, ¶0047)

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 28, 29, 36-48 and 55-63
as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 28, 29, 36-48 and 55-63 are not patentable.

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DECISION
The Examiner’s rejection of claims 28, 29, 36-48 and 55-63 is affirmed.
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)(iv).

AFFIRMED
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