Ex Parte Okigami

Patent Trial and Appeal Board

Sep 9, 2016

14280492 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/280,492 05/16/2014
127226 7590 09/13/2016
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.
1560-0687PUS 10 2429
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
Appeal2016-006709
Application 14/280,492
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
.6. .... ,1 .. • .. ,....,-TTr'1.r-"\ l\-1,....Al/'\.r'" • ,• Appeuant' seeKs our review unaer j) u.~.L. s lj4~aJ rrom reJecnons
of claims 23-29, 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
1 According to Appellant, the real party in interest is Sharp Kabushiki
Kaisha. App. Br. 1.
Appeal2016-006709
Application 14/280,492
information-processing 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. i-fi-13, 26, 35; Abstract. 2
Representative Claim
Claim 23 exemplifies the subject matter of the claims under
consideration and reads as follows, with italics identifying the limitations at
issue:
23. A digital camera, comprising:
a display section that displays an image based on image
data; and
an outputting section that outputs an image data selected
from a plurality of image data to an information processing
apparatus,
wherein after the communication between the digital
camera and the information processing apparatus is established
with a non-contact wireless method by bringing the digital
camera close to the information processing apparatus and
holding the digital camera over the information processing
apparatus in a state that an image is displayed on the digital
camera, the image data related to the displayed image is
outputted from the digital camera to the information processing
apparatus with an IEEE 802.11 standard.
App. Br. 9 (Claims App.).
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 5, 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 14/280,492
The Prior Art Supporting the Re} ections on Appeal
Oba et al. ("Oba")
Kato
US 2004/0078169 Al Apr. 22, 2004
US 2009/0066998 Al Mar. 12, 2009
The Rejections on Appeal
Claims 23-29 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 23-26 and 29 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 23, 24, and 26-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato. Non-Final Act. 7-14; App. Br. 4; Ans. 7-13.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kato and Oba. Non-Final Act. 14--15; App. Br. 4; Ans. 13-14.
ANALYSIS
We have reviewed the rejections of claims 23-29 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
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Application 14/280,492
Act. 3-5. In the Appeal Brie±: Appellant does not present any arguments
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 23-26
and 29 Under 35 U.S.C. § 112 f 2
In the Non-Final Office Action, the Examiner rejected claims 23-26
and 29 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. 4 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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Appeal2016-006709
Application 14/280,492
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 23-29 Under 35 U.S.C. § 103(a)
Independent Claim 23
Appellant argues that Kato does not disclose establishing
communication between a "digital camera" and an "information processing
apparatus" through "a non-contact wireless method by bringing the digital
camera close to the information processing apparatus and holding the digital
camera over the information processing apparatus in a state that an image is
displayed on the digital camera." App. Br. 4---6. 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 digital camera over the
information processing apparatus in a state that an image is displayed on the
digital camera." Id. at 5---6.
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 "digital
camera") touches a multifunction peripheral (the "information processing
apparatus"). App. Br. 5---6 (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, 11, 13; Ans. 9, 11, 13, 15.
We agree with the Examiner that in paragraph 40, among other places, Kato
discloses "using Bluetooth communication [that] would not require any
touching of the devices, only maintaining a close distance of the devices."
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Application 14/280,492
Ans. 15. Moreover, Appellant admits that Kato discloses a communicating
unit in the multifunction peripheral (the "information processing apparatus")
that "performs non-contact bi-directional communication" with the portable
terminal device (the "digital camera"). App. Br. 5.
For "holding the digital camera over the information processing
apparatus in a state that an image is displayed on the digital camera,"
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.
In response, the Examiner notes that "[a]ll the claims require is for an
image to be displayed." Ans. 15. The Examiner then finds that "[t]he
representation of the document name of the image to be transmitted, and/ or
the print setting information corresponding to the document as disclosed in
Figures 3 and 4 and paragraph 40, meets the limitation of displaying an
image while transmitting the document data." Id. at 15-16.
We discern no error in the Examiner's claim interpretation. "[D]uring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification." In re Hyatt, 211F.3d1367,
1372 (Fed. Cir. 2000). Appellant did not reply and did not dispute the
Examiner's claim interpretation.
In addition, we discern no error in the Examiner's application of the
claim language to Kato. The display of the selected document's name or the
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Application 14/280,492
associated print setting information during image data output satisfies the
requirement for the display of "an image."
Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claim 23 for obviousness based on Kato. Hence,
we sustain the obviousness rejection.
Dependent Claims 24 and 25 and Independent Claims 26-29
Appellant does not present any patentability arguments for the other
pending claims beyond the arguments regarding claim 23. App. Br. 6. For
instance, Appellant asserts that "claim 25 is patentable over Kato for at least
those reasons presented above with respect to claim 23." Id. Because
Appellant does not argue the claims separately, we sustain the obviousness
rejections of claims 24--29.
DECISION
We affirm the Examiner's decision to reject claims 23-29.
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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