Ex Parte Okigami

Patent Trial and Appeal Board

Sep 30, 2016

13952548 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/952,548 07/26/2013
127226 7590 10/04/2016
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.
1560-0687PUS4 6161
EXAMINER
GUILLERMETY, FRED
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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
Appeal2015-006021
Application 13/952,548
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 1---6, 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. Br. 1.
Appeal2015-006021
Application 13/952,548
forming apparatus (e.g., a printer or multifunction peripheral) prints an
image based on image data received from an external device (e.g., a mobile
phone with a camera). Spec. 1: 13-15, 6:2-7:9; Abstract. 2
Representative Claim
Claim 1 exemplifies the subject matter of the claims under
consideration and reads as follows, with italics identifying the limitation at
issue in claim 1 :
1. An image forming apparatus that has a receiver for
receiving image data from an external device and forms an
image based on the received image data, comprising:
a transmitter that transmits a communication address of
the image forming apparatus to the external device, wherein
the receiver receives image data transmitted with the
communication address of the image forming apparatus by the
external device,
a communication between the external device and the
image forming apparatus is performed wirelessly,
the communication address of the image forming
apparatus is uniquely associated with and identifies the image
forming apparatus,
the communication address of the image forming
apparatus is used for forming the image based on the image
data of the external device,
the image forming apparatus further comprises a display
unit that displays a list of file names of image data transmitted
from the external device with the communication address of the
image forming apparatus,
2 This decision employs the following abbreviations: "Spec." for the
Specification, filed July 26, 2013; "Final Act." for the Final Office Action,
mailed July 31, 2014; "Br." for the Appeal Brief, filed December 22, 2014;
and "Ans." for the Examiner's Answer, mailed March 27, 2015.
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Application 13/952,548
the image forming apparatus determines whether or not
the external device has approached within a given range,
when determining that the external device has not
approached within the given range, the image forming
apparatus waits until the external device approaches within the
given range, and
when determining that the external device has
approached within the given range, the image forming
apparatus transmits the communication address or identification
information identifying the image forming apparatus to the
external device.
Br. 14--15 (Claims App.).
The Prior Art Supporting the Re} ections on Appeal
Oba et al. ("Oba") US 2004/0078169 Al Apr. 22, 2004
Matsueda US 2008/0239382 Al Oct. 2, 2008
Minatogawa US 2008/0297607 Al Dec. 4, 2008
Kato US 2009/0066998 Al Mar. 12, 2009
The Rejections on Appeal
Claims 1 and 4--6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato, Oba, and Matsueda. Final Act. 2-11; Br. 7.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato, Oba, Matsueda, and Minatogawa. Final Act. 11-12;
Br. 7.
ANALYSIS
We have reviewed the rejections of claims 1---6 in light of Appellant's
arguments that the Examiner erred. For the reasons explained below, we are
unpersuaded by Appellant's assertions regarding error by the Examiner.
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Application 13/952,548
The Rejection of Claims 1, 5, and 6 under 35 U.S.C. § 103(a)
Claim 1 requires an "image forming apparatus" comprising "a display
unit that displays a list of file names of image data transmitted from the
external device with the communication address of the image forming
apparatus." Br. 14--15 (Claims App.). Claims 5 and 6 include similar
limitations regarding displaying a "list of file names of image data
transmitted from the external device with the communication address of the
image forming apparatus." Id. at 16, 17; see Br. 8-9.
The Examiner finds that Kato "fails to explicitly disclose" an "image
forming apparatus" that displays a list of file names for transmitted image
data. Final Act. 4, 8, 10-11. But the Examiner also finds that Matsueda
teaches "using a printer's display to display a list of print jobs that are not
stored on the printer itself." Ans. 3; see Final Act. 4--5, 8, 11.
Appellant argues that none of the applied references teaches or
suggests an "image forming apparatus" that displays a list of file names for
transmitted image data. Br. 9. In particular, Appellant contends that in
Matsueda ( 1) a server (corresponding to an "external device") stores various
print jobs and (2) a multifunction printer (corresponding to an "image
forming apparatus") includes a display unit that displays a list of selectable
print jobs (corresponding to a "list of file names"). Id. at 9-10. Appellant
attempts to distinguish the claims from Matsueda by asserting that Matsueda
fails to disclose or suggest displaying a list of file names for "transmitted"
image data. Id. at 10-11.
In response, the Examiner asserts that "Appellant has applied a
piecemeal analysis of [the] references and has not addressed the rejection as
a whole." Ans. 2. The Examiner explains that the rejection rests not only
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Application 13/952,548
Matsueda's teaching regarding using a printer's display to display a list of
print jobs stored external to the printer but also on Kato. Id. at 2-3. Based
on the combined teachings of Kato and Matsueda, the Examiner reasons that
one of ordinary skill in the art would recognize that "the list of print jobs that
can be selected must be transmitted from the external device with the
communication address of the image forming apparatus" because in Kato
only two entities interact, i.e., an "image forming apparatus" and an
"external device." Id. at 3 (citing Kato Fig. 1 ).
We agree with the Examiner's findings and reasoning. Kato discloses
two entities that interact, i.e., the multifunction peripheral 100
(corresponding to an "image forming apparatus") and the portable terminal
device 200 (corresponding to an "external device"). E.g., Kato Fig. 1.
"[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 the Examiner's findings as to
what the Kato-Matsueda combination "taken as a whole would suggest to
one of ordinary skill in the art" and has not established Examiner error.
Br. 8-11.
Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claims 1, 5, and 6 for obviousness based on
Kato, Oba, and Matsueda. Hence, we sustain the rejection.
The Rejection of Claims 2 and 3 under 35 U.S.C. § 103(a)
Claim 2 depends from claim 1 and requires, among other features, that
the "image forming apparatus" include "a display processing unit that
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displays on the display unit a thumbnail of image data selected in
accordance with a received list of file names." Br. 15 (Claims App.).
Claim 3 depends from claim 2 and requires that the "image forming
apparatus" include "a printing condition accepting unit that accepts a
printing condition for the selected image data." Id.
The Examiner finds that Kato "fails to explicitly disclose" thumbnails
for image data. Final Act. 12. The Examiner specifically finds that
Minatogawa teaches "using thumbnails instead of a list" to select images.
Id.; Ans. 3. Appellant contends that claim 2 differs from Minatogawa
because Minatogawa shows thumbnails of image data displayed by an
"external device" rather than an "image forming apparatus," as required by
claim 2. Br. 12.
In response, the Examiner asserts that "Appellant has again engaged
in a piecemeal analysis of the references" and that "the rejection is based on
the combination of references." Ans. 4. The Examiner reasons that one of
ordinary skill in the art would recognize that Minatogawa's teaching
regarding thumbnail use for image-selection purposes applies to any display,
not just the particular digital camera disclosed in Minatogawa. Id.
We agree with the Examiner's findings and reasoning. Appellant
does not address the Examiner's findings as to what the Kato-Minatogawa
combination "taken as a whole would suggest to one of ordinary skill in the
art" and has not established Examiner error. Br. 11-12. Appellant does not
present any patentability arguments regarding claim 3 beyond the arguments
regarding claim 2. Br. 11-12.
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Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claims 2 and 3 for obviousness based on Kato,
Oba, Matsueda, and Minatogawa. Hence, we sustain the rejection.
The Rejection of Claim 4 under 35 U.S.C. § 103(a)
Claim 4 depends from claim 1 and requires that the "image forming
apparatus" include "a data transmitter that transmits data representing a
notification of a printing result to the external device." Br. 15 (Claims
App.). The Examiner finds that "it is well known in the art to inform the
originator of a print job of its results" and that "doing so would have
predictably and advantageously let the originator know how the job turned
out and when another job could be issued." Final Act. 5.
Appellant argues that "the Examiner has failed to provide
reference(s)" disclosing the "data transmitter" required by claim 4 and that
"none of the prior art of record discloses or suggest[ s] the feature recited in
claim 4." Br. 11.
An obviousness analysis "need not seek out precise teachings directed
to the specific subject matter of the challenged claim" because the analysis
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
Here, Appellant does not identify errors in the finding that "it is well
known in the art to inform the originator of a print job of its results" or
expressly challenge the basis for the finding. Br. 11; see Ans. 3. Instead,
Appellant simply alleges that the "prior art of record" lacks that feature. Id.
The applicable rules require that the arguments in an appeal brief "explain
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Application 13/952,548
why the examiner erred as to each ground of rejection contested by
appellant." 37 C.F.R. § 41.37(c)(l)(iv). Moreover, Appellant does not
argue that the subject matter of claim 4 amounts to anything more than the
predictable use of prior-art features according to their familiar functions.
Br. 11. Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claim 4 for obviousness. Hence, we sustain the
rejection.
DECISION
We affirm the Examiner's decision to reject claims 1---6.
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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