Ex Parte Okigami

Patent Trial and Appeal Board

Sep 9, 2016

14280497 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/280,497 05/16/2014
2292 7590 09/13/2016
BIRCH STEW ART KOLASCH & BIRCH, LLP
POBOX747
FALLS CHURCH, VA 22040-0747
FIRST NAMED INVENTOR
Masafumi Okigami
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1560-0687PUS 11 2404
EXAMINER
PACHOL, NICHOLAS C
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
09/13/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAFUMI OKIGAMI
Appeal2016-006725
Application 14/280,497
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. EV ANS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from rejections
of claims 6, 7, 10, and 15-17, i.e., all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to various aspects
of an information-processing or communications system in which an image-
1 According to Appellant, the real party in interest is Sharp Kabushiki
Kaisha. App. Br. 1.
Appeal2016-006725
Application 14/280,497
forming apparatus (e.g., a printer) prints an image based on image data
received from an external device (e.g., a mobile phone with a camera).
Spec. ,-r,-r 3, 26, 35; Abstract. 2
Representative Claim
Claim 7 exemplifies the subject matter of the claims under
consideration and reads as follows, with italics identifying the limitations at
issue:
7. An image forming apparatus, comprising:
a receiving section that receives an image data from an
external device by a wireless communication; and
an image forming section that forms an image based on
the image data received by the receiving section,
wherein after the communication between the external
device and the image forming apparatus is established with a
non-contact wireless method by bringing the external device
close to the image forming apparatus and holding the external
device over the image forming apparatus in a state that a file
name of the image is displayed on the external device, the
image data related to the displayed file name is outputted from
the external device to the image forming apparatus with an
IEEE 802.11 standard.
App. Br. 8 (Claims App.).
The Prior Art Supporting the Re} ections on Appeal
Oba et al. ("Oba")
Kato
US 2004/0078169 Al
US 2009/0066998 Al
Apr. 22, 2004
Mar. 12, 2009
2 This decision employs the following abbreviations: "Spec." for the
Specification, filed May 16, 2014; "Non-Final Act." for the Non-Final
Office Action, mailed August 6, 2015; "App. Br." for the Appeal Brief, filed
December 17, 2015; and "Ans." for the Examiner's Answer, mailed
April 27, 2016.
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Application 14/280,497
The Rejections on Appeal
Claims 6, 7, 10, and 15-17 stand provisionally rejected on the ground
of obviousness-type double patenting as unpatentable over one or more
claims in one or more copending applications. Non-Final Act. 3-5;
Ans. 2--4.
Claims 7 and 15-17 stand rejected under 35 U.S.C. § 112 i-f 2 as
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention. Non-Final Act. 5-7; Ans. 4---6.
Claims 6, 7, 10, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato. Non-Final Act. 8-12; App. Br. 3; Ans. 7-11.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kato and Oba. Non-Final Act. 12-13; App. Br. 3; Ans. 11-12.
ANALYSIS
We have reviewed the rejections of claims 6, 7, 10, and 15-17 in light
of Appellant's arguments that the Examiner erred. In doing so, we have
evaluated only the arguments that Appellant actually makes on appeal.
Arguments that Appellant could have made but declined to make are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
For the reasons explained below, we disagree with Appellant's
assertions regarding error by the Examiner.
The Rejection for Obviousness-Type Double Patenting
In the Non-Final Office Action, the Examiner rejected all pending
claims on the ground of obviousness-type double patenting. Non-Final
Act. 3-5. In the Appeal Brief, Appellant does not present any arguments
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Application 14/280,497
addressing the double-patenting rejection. App. Br. 4--6. In the Answer, the
Examiner repeats the double-patenting rejection. Ans. 2--4.
Because Appellant does not contest the double-patenting rejection, we
summarily sustain that rejection. 3 See Hyatt v. Dudas, 551 F .3d 1307, 1314
(Fed. Cir. 2008) (explaining that"[ w ]hen the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived"); see also Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 07.2015 Nov. 2015)
("If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.").
The Rejection of Claims 7 and
15-17 Under35U.S.C.§112f2
In the Non-Final Office Action, the Examiner rejected claims 7 and
15-17 as indefinite. Non-Final Act. 5-7. In the Appeal Brief, Appellant
does not present any arguments addressing---or even acknowledge-the
indefiniteness rejection. App. Br. 4--6. In the Answer, the Examiner repeats
the indefiniteness rejection. Ans. 4---6.
Because Appellant does not contest the indefiniteness rejection, we
summarily sustain that rejection. See In re Berger, 279 F.3d 975, 980,
984--85 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
3 In a footnote, Appellant states that a terminal disclaimer was filed. App.
Br. 3 n.1. In the event of further prosecution, we leave it to the Examiner to
evaluate the terminal disclaimer as to whether it is sufficient to overcome the
rejection.
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Application 14/280,497
rejection under 35 U.S.C. § 112 if 2 when the appellant failed to contest the
rejection on appeal); see also MPEP § 1205.02.
The Rejections of Claims 6--7, 10,
and 15-17 Under 35 U.S.C. § 103(a)
Independent Claim 7
Appellant argues that Kato does not disclose establishing
communication between an "external device" and an "image forming
apparatus" through "a non-contact wireless method by bringing the external
device close to the image forming apparatus and holding the external device
over the image forming apparatus in a state that a file name of the image is
displayed on the external device." App. Br. 4--5. In particular, Appellant
contends that Kato fails to disclose or suggest two features: (1) establishing
communication through "a non-contact wireless method" and
(2) establishing communication by "holding the external device over the
image forming apparatus in a state that a file name of the image is displayed
on the external device." Id. at 4--5.
For "a non-contact wireless method," Appellant contends that Kato
does not disclose or suggest such a method because Kato describes a
communication that occurs when a portable terminal device (the "external
device") touches a multifunction peripheral (the "image forming
apparatus"). App. Br. 5 (quoting Kato if 64).
The Examiner finds, however, that Kato teaches other methods that
involve "non-contact" communication, e.g., methods according to Bluetooth
and IEEE 802.11 standards. Non-Final Act. 9, 10, 12; Ans. 8-9, 11, 13. We
agree with the Examiner that in paragraph 40, among other places, Kato
discloses "using Bluetooth communication [that] would not require any
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Application 14/280,497
touching of the devices, only maintaining a close distance of the devices."
Ans. 13. Moreover, Appellant admits that Kato discloses a communicating
unit in the multifunction peripheral (the "image forming apparatus") that
"performs non-contact bi-directional communication" with the portable
terminal device (the "external device"). App. Br. 4.
For "holding the external device over the image forming apparatus in
a state that a file name of the image is displayed on the external device,"
Appellant contends that Kato describes selecting a document by name as
shown in Figure 3 and then specifying print setting information for the
selected document as shown in Figure 4. App. Br. 5. Based on that
sequence, Appellant asserts that "logic would dictate that the last displayed
screen, i.e., the [print] settings screen, would be displayed" during image
data output rather than the "file to be printed/processed." Id.
The Examiner finds, however, that (1) Kato "discloses that the name
of the document can be displayed in conjunction with the print settings" and
(2) "the document name of the image to be transmitted ... meets the
limitation of displaying the file name." Ans. 13-14 (citing Kato i-fi-140, 58,
Fig. 3, Fig. 4).
We agree with the Examiner that Kato discloses an "external device"
that displays "the name of the document data ... and various pieces of print
setting information for that document data" when a user enters information
according to Figures 3 and 4. Kato i158. The display of the selected
document's name during image data output satisfies the requirement for the
display of "a file name of the image."
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Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claim 7 for obviousness based on Kato. Hence,
we sustain the obviousness rejection.
Independent Claims 6, 10, 15, and 17 and Dependent Claim 16
Appellant does not present any patentability arguments for the other
pending claims beyond the arguments regarding claim 7. App. Br. 6. For
instance, Appellant asserts that "claim 16 is patentable over Kato for at least
those reasons presented above with respect to claim 7." Id. Because
Appellant does not argue the claims separately, we sustain the obviousness
rejections of claims 6, 10, and 15-17.
DECISION
We affirm the Examiner's decision to reject claims 6, 7, 10, and
15-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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