Ex Parte OkigamiDownload PDFPatent Trial and Appeal BoardDec 27, 201613952549 (P.T.A.B. Dec. 27, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/952,549 07/26/2013 Masafumi OKIGAMI 1560-0687PUS3 6013 127226 7590 12/29/2016 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 EXAMINER SHIFERAW, HENOK ASRES ART UNIT PAPER NUMBER 2672 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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 Appeal 2016-007744 Application 13/952,549 Technology Center 2600 Before MAHSHID D. SAADAT, JOHN A. EVANS, 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 a rejection of claims 31—36, i.e., all pending claims. Because the claims have been twice rejected, we have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). See Ex parte Lemoine, 46USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm. 1 According to Appellant, the real party in interest is Sharp Kabushiki Kaisha. Br. 1. Appeal 2016-007744 Application 13/952,549 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 transmitted by an external device (e.g., a mobile phone with a camera). Spec. 1:13—16, 5:7—18; Abstract.2 Exemplary Claim Claim 31 exemplifies the subject matter of the claims under consideration and reads as follows: 31. 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 an image is displayed on the external device, the image data related to the displayed image is outputted from the external device to the image forming apparatus with an IEEE 802.11 standard. Br. Claims App. 1. 2 This decision employs the following abbreviations: “Spec.” for the Specification, filed July 26, 2013; “Non-Final Act.” for the Non-Final Office Action, mailed July 31, 2015; “Br.” for the Appeal Brief, filed December 4, 2015; and “Ans.” for the Examiner’s Answer, mailed June 10, 2016. 2 Appeal 2016-007744 Application 13/952,549 The Prior Art Supporting the Rejection on Appeal Yang Sakai Kato US 2005/0128968 A1 June 16, 2005 US 2006/0101280 A1 May 11, 2006 US 2009/0066998 A1 Mar. 12, 2009 The Rejection on Appeal Claims 31—36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yang, Kato, and Sakai. Non-Final Act. 3—10. We have reviewed the rejection of claims 31—36 in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we disagree with Appellant’s assertions regarding error by the Examiner. The Rejection of Claim 31 Under 35 U.S.C. § 103(a) Appellant argues that the Examiner erred in rejecting claim 31 Yang, Kato, and Sakai each fail to disclose or suggest establishing a non-contact wireless communication by holding the external device over the communicating section in a state that an image is displayed on the external device, and then outputting, image data related to the displayed image, from the external device to the image forming apparatus using an IEEE 802.11 standard as recited in claim 31 [and] the combination of these three references cannot possibly be found to disclose or suggest said element. More specifically, Appellant asserts that Yang does not disclose or suggest printing image data “by bringing the external device close to the image forming apparatus and holding the external device over the image ANALYSIS because: Br. 6. 3 Appeal 2016-007744 Application 13/952,549 forming apparatus in a state that an image is displayed on the external device” as recited in claim 31. Br. 4 (emphasis omitted). According to Appellant, “Yang merely discloses ... a mobile device” that accesses and selects from among available printers “by referring to their respective network addresses” in the information received from the printers. Id. (citing Yang 125, Abstract). Appellant also asserts that Kato does not disclose or suggest establishing communication by “holding the external device over the image forming apparatus in a state that an image is displayed on the external device” and then outputting “image data related to the displayed image” using “an IEEE 802.11 standard” as recited in claim 31. Br. 5 (emphasis omitted). According to Appellant, a user initially selects a document by name as shown in Figure 3 and subsequently specifies print setting information for the selected document as shown in Figure 4. Id. (citing Kato 11 57, 61, Figs. 3—4). Appellant contends this sequence “suggests that the last displayed screen, i.e., the settings screen, would be displayed” when outputting “image data related to the displayed image.” Id. (citing Kato 161). Appellant additionally contends Kato does not disclose using a non-contact wireless method for communicating because Kato states in one paragraph that “communication ... is established” when a portable device (the “external device”) and a multifunction peripheral (the “image forming apparatus”) are “touched [to] each other.” Id. at 5—6. We are not persuaded by Appellant’s arguments because they attack the references individually. 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 4 Appeal 2016-007744 Application 13/952,549 (Fed. Cir. 1986). Here, the rejection rests on the combination of disclosures in Yang, Kato, and Sakai. Non-Final Act. 3—6; Ans. 2—3. “[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant does not address what the Yang-Kato-Sakai combination “taken as a whole would suggest to one of ordinary skill in the art” and, therefore, has not persuasively argued that the Examiner erred. Br. 4-6. The Examiner finds, and we agree, that Yang teaches establishing a non-contact wireless communication by bringing an external device close to an image forming apparatus and holding the external device over the image forming apparatus. Non-Final Act. 3^4 (citing Yang || 40, 49). In particular, Yang teaches that a printer (the “image forming apparatus”) “outputs a wireless signal with such a low intensity that only” a mobile terminal (the “external device”) within the printer’s limited range “can recognize the wireless signal.” Yang 140. “[Djuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Under that interpretation, establishing non-contact wireless communication by “bringing . . . close to” and “holding . . . over” encompasses establishing non-contact wireless communication after detecting a low-intensity wireless signal. In the Non-Final Office Action, the Examiner did not rely on Kato for establishing non-contact wireless communication according to claim 31. 5 Appeal 2016-007744 Application 13/952,549 Non-Final Act. 3—4. In the Answer, however, the Examiner finds that Kato teaches that limitation. Ans. 3. In particular, the Examiner finds that after a user makes a print selection, the user brings the portable device “within close range of the printer . . . where they [the printer and the device] begin communicating via NFC/RFID . . . .” Id. (citing Kato 1 57, Figs. 1, 3, 5). The Examiner also finds that “it is well-known in the art that in NFC/RFID communication, the device has to be near or within a communicable range to establish the communication between the two devices.” Id. Appellant did not file a Reply Brief and did not contest the Examiner’s findings concerning NFC/RFID communication. Moreover, Appellant admits that NFC communication in Kato “may be contact or non-contact.” Br. 5—6 (citing Kato H 37, 39). Regarding image display, Kato teaches that “the user selects document data” from a display on the portable device (e.g., Figure 3) using “the name of the document data,” such as “document 2.” Kato H 57—58, Fig. 3; see Br. 5 (citing Kato 1 57, Figs. 3—4); see also Non-Final Act. 4—5; Ans. 3. Kato also teaches that “the user specifies print setting information” from another display on the portable device (e.g., Figure 4), including scaling (reduce/enlarge), stapling, l-sided/2-sided, and quantity. Kato 11 57—58, Fig. 4; see Br. 5 (citing Kato 1 57, Figs. 3—4). Claim 31 requires that “an image is displayed on the external device” and that the displayed image “relate[s] to” the transmitted image data. Under the broadest reasonable interpretation, Kato satisfies this requirement regardless whether during operation the Figure 3 display precedes or follows the Figure 4 display. In particular, the display of either the document name for the transmitted image data according to Figure 3 or the print setting 6 Appeal 2016-007744 Application 13/952,549 information for the transmitted image data according to Figure 4 satisfies the requirement that the displayed image “relate[s] to” the transmitted image data. The Examiner finds that Sakai teaches transmitting image data “with an IEEE 802.11 standard” as recited in claim 31. Non-Final Act. 5—6; Ans. 4. Appellant does not dispute that finding. Br. 4—6. For the reasons discussed above, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 31 for obviousness based on Yang, Kato, and Sakai. Hence, we sustain the rejection. The Rejection of Claims 32—36 Under 35 U.S.C. § 103(a) Appellant does not present any patentability arguments for claims 32—36 beyond the arguments regarding claim 31. Br. 4—6. Accordingly, we sustain the rejection of claims 32—36 for obviousness based on Yang, Kato, and Sakai based on the same reasons stated for claim 31. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner’s decision to reject claims 31—36. 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 7 Copy with citationCopy as parenthetical citation