Ex Parte Okigami

Patent Trial and Appeal Board

Jul 13, 2016

13865667 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/865,667 04/18/2013
127226 7590 07115/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
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.
1560-0687PUS2 1071
EXAMINER
GUILLERMETY, FRED
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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
Appeal2015-003339
Application 13/865,667
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
Appellant 1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-19, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Sharp Kabushiki
Kaisha. App. Br. 1.
Appeal2015-003339
Application 13/865,667
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
forming apparatus (e.g., a printer) prints an image based on image data
received from an external device (e.g., a mobile phone). Spec. 1: 11-16,
7:4--8:4; Abstract. 2
The claims under consideration include independent claims 1, 9,
and 15, as well as dependent claims 2-8 (based on claim 1), 10-14 (based on
claim 9), and 16-19 (based on claim 15).
Representative Claims
Independent claim 1 exemplifies the subject matter of the claims
under consideration. Claim 1 reads as follows, with italics identifying the
limitations at issue and underlining identifying key claim language:
1. An image forming apparatus, comprising:
a receiver that receives image data from an external
device;
an image forming unit that forms an image based on the
received image data; and
a transmitter that transmits a communication address of
the image forming apparatus to the external device;
wherein the receiver receives image data transmitted by
the external device utilizing the communication address of the
image forming apparatus,
2 This decision employs the following abbreviations: "Spec." for
Specification; "Final Act." for the Final Office Action, mailed February 13,
2014; "App. Br." forthe Appeal Brief, filed July 31, 2014; and "Ans." for
the Examiner's Answer, mailed October 21, 2014.
2
Appeal2015-003339
Application 13/865,667
wherein a communication to the external device is
performed by wireless communication,
wherein when image data selected from a plurality of
thumbnails displayed on the external device is transmitted from
the external device utilizing the communication address of the
image forming apparatus. the receiver receives the selected
image data,
wherein the communication address of the image forming
apparatus is uniquely associated with and identifies the image
forming apparatus, and
wherein the communication address of the image forming
apparatus is used for forming the image based on the image
data of the external device.
App. Br. 12 (Claims App'x).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Oba et al. ("Oba") US 2004/0078169 Al
Misawa et al. ("Misawa") US 2006/0044601 Al
Matsueda US 2008/0239382 Al
Kuroda et al. ("Kuroda") US 2008/0252917 Al
Minatogawa US 2008/0297607 Al
Kato US 2009/0066998 Al
The Rejections on Appeal
Apr. 22, 2004
Mar. 2, 2006
Oct. 2, 2008
Oct. 16, 2008
Dec. 4, 2008
Mar. 12, 2009
Claims 1---6, 9--12, 15-16, and 18-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kato in view of Oba and Minatogawa. Final
Act. 2-11; App. Br. 4; Ans. 2.
Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato in view of Oba, Minatogawa, and Matsueda. Final
Act. 11-13; App. Br. 5; Ans. 2.
3
Appeal2015-003339
Application 13/865,667
Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato in view of Oba, Minatogawa, Matsueda, and
Misawa. Final Act. 13-14; App. Br. 5; Ans. 2.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kato in view of Oba, Minatogawa, and Kuroda. Final Act. 15; App.
Br. 5; Ans. 2.
ANALYSIS
We have reviewed the rejection of claims 1-19 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). 3
For the reasons explained below, we disagree with Appellant's
assertions regarding error by the Examiner.
Appellant argues that neither Kato, Oba, nor Minatogawa discloses
sending an image forming apparatus's address to an external device. App.
Br. 7-9. Based on that asserted failure, Appellant contends that the cited
3 An appeal brief must include a "statement identifying ... all other prior
and pending appeals" known to an appellant or its legal representative that
"may be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal." 37 C.F.R.
§ 41.37(c)(l)(ii). Appellant does not identify any related appeals. App.
Br. 1, 11. In contrast, the Examiner notes that this Appeal 2015-003339 in
Application 13/865,667 relates to Appeal 2015-002367 in Application
13/907,583 because the two applications name the same inventor, have the
same assignee, "disclose and claim incredibly similar subject matter," and
are "connected by Terminal Disclaimer." Ans. 3. The Examiner also notes
that the two appeals involve substantially the same arguments. Id.
4
Appeal2015-003339
Application 13/865,667
prior art fails to teach or suggest various limitations containing the phrase
"communication address of the image forming apparatus." App. Br. 7,
9-10.
The Examiner finds, however, that Kato discloses an image forming
apparatus (multifunction peripheral 100) that transmits initialization
information for Bluetooth communications to an external device (portable
terminal device 200). Final Act. 2-3. More particularly, the Examiner finds
that when the portable terminal device 200 gets "within close range" of the
multifunction peripheral 100, the two devices "begin communicating via
NFC/RFID and from there exchange the necessary information to handshake
the Bluetooth connection." Ans. 5.
Although the Examiner acknowledges that "Kato' s disclosure only
mentions the address information going from" the portable terminal device
200 to the multifunction peripheral 100, the Examiner finds that "in this
arrangement there are only two ways to send the Bluetooth address
information." Ans. 5. The Examiner further finds that"[ w ]ith only two
ways to exchange the Bluetooth address information, it would have been
obvious to try either method in Kato's arrangement .... " Id. at 6. The
Examiner reasons that:
(1) there was a recognized need to exchange Bluetooth address
information over NFC/RFID, (2) there were a finite number
(i.e., two) of identified, predictable solutions to the recognized
need (printer to phone or phone to printer), and (3) one of
ordinary skill in the art could have pursued either solution and
had a reasonable expectation of success.
Ans. 6; see also Final Act. 3 ("It is noted that there are a limited number of
choices available as to which device provides the identification data (namely
two) and there is a reasonable expectation of success associated with each.").
5
Appeal2015-003339
Application 13/865,667
In KSR International Co. v. Telejlex Inc., the Supreme Court
explained that "the fact that a combination was obvious to try might show
that it was obvious under§ 103." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Appellant does not address the Examiner's obvious-to-try
determination or respond to the Examiner's reasoning. App. Br. 6-10. We
agree with the Examiner that it would have been obvious to try either
method in Kato's arrangement, and we adopt the Examiner's reasoning.
In addition, the Examiner relies on Oba as evidence that "either device
can provide identification data when pairing Bluetooth devices." Final
Act. 4; see also Ans. 8 ("Oba clearly suggests that the card ID (that is
Bluetooth Address) can be sent from either device."), 9 ("Oba is relied upon
to further evidence that it is well known in the art for the exchange of
address information to occur in either direction."). Appellant criticizes the
Examiner's reliance on Oba, arguing that "the ID (Bluetooth address) which
is transmitted in Oba is not an address which is inherent to the image
forming apparatus" but instead corresponds to "an ID for identifying a
[mobile] terminal." App. Br. 8-9. But that argument is not persuasive of
error in the Examiner's obvious-to-try determination.
We observe that even if Oba does not disclose explicitly that either
device can provide identification data when pairing Bluetooth devices, Kato
includes that disclosure. In particular, Kato explains that the portable
terminal device 200 may include a tag containing communication setting
information and that the "communication setting information may be
transmitted to the [multifunction peripheral] MFP 100" from the portable
terminal device 200. Kato i-fi-151-52. As an alternative, Kato explains that
the multifunction peripheral 100 may include a tag containing
6
Appeal2015-003339
Application 13/865,667
communication setting information and that a control unit transfers the
communication setting information in the multifunction peripheral 100 to the
portable terminal device 200. Kato i-f 53.
Appellant contends that the image data's transmission direction
according to claim 1 "is completely opposite to that of Oba." App. Br. 9.
The Examiner responds that Kato discloses transmitting image data from a
mobile device (portable terminal device 200) to an image forming apparatus
(multifunction peripheral 100) according to claim 1. Ans. 8-9. As the
Examiner correctly states, where a rejection rests on a combination of
references, an appellant cannot establish nonobviousness by attacking the
references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Thus, Appellant's contention concerning transmission-direction
differences fails to persuade us that the Examiner erred.
Appellant further contends that claim 1 requires that "an address of
the image forming apparatus side is transmitted to an external device first
without obtaining an address of the external device." App. Br. 9. But
claim 1 does not include language requiring transmission of the image
forming apparatus's address before receipt of the external device's address.
Id. at 12 (Claims App'x). Nor do the other claims under consideration
include language like that. Id. at 12-16 (Claims App'x).
Appellant also contends that an apparatus according to claim 1
advantageously addresses a security problem due to "leakage of personal
information" that could result from transmission of the external device's
address before receipt of the image forming apparatus's address. App. Br. 9.
As discussed above, however, claim 1 does not require transmission of the
7
Appeal2015-003339
Application 13/865,667
image forming apparatus's address before receipt of the external device's
address.
But even if claim 1 did contain such a requirement, we agree with the
Examiner that the alleged advantage "is inherent to the obviousness rejection
of Kato in view of what was obvious to try .... " Ans. 9. "The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious." Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017
(Fed. Cir. 1986).
Appellant recognizes that the Examiner relies on Minatogawa "to
show that selecting images using thumbnails instead of a list is known in the
art." App. Br. 9. But Appellant does not advance any patentability
arguments based on any differences between the claimed subject matter and
Minatogawa. Id. at 6-10.
Appellant urges that independent claims 9 and 15 are "allowable at
least for the similar reasons as stated" for claim 1. App. Br. 10. Appellant
also urges that dependent claims 2-8, 10-14, and 16-19 are "allowable at
least for their dependency" on the associated independent claims. Id. But
Appellant does not articulate any patentability arguments for claims 2-19
beyond the arguments regarding claim 1. Id. For instance, Appellant fails to
address the rejections resting in part on Matsueda, Misawa, and Kuroda. Id.
at 6-10. Because Appellant did not argue the claims separately, they stand
or fall together. See 37 C.F.R. § 41.37(c)(l)(iv).
8
Appeal2015-003339
Application 13/865,667
CONCLUSION
Appellant's arguments have not persuaded us that the Examiner erred
in rejecting claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over the
cited prior art.
DECISION
We affirm the Examiner's rejection of claims 1-19 under 35 U.S.C.
§ 103(a).
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
9