Ex Parte Okigami et alDownload PDFPatent Trial and Appeal BoardSep 29, 201613904946 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/904,946 05/29/2013 127226 7590 10/03/2016 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. 1560-0685PUS 1 3123 EXAMINER RUDOLPH, VINCENT M ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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 and MASANORI MATSUMOTO Appeal2015-005465 Application 13/904,946 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 Appellants1 seek our review under 35 U.S.C. § 134(a) from rejections of claims 1-7, 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 Appellants, the real party in interest is Sharp Kabushiki Kaisha. Br. 1. Appeal2015-005465 Application 13/904,946 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, 2:24--4: 1; 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. A communication system having an external device, and an image forming apparatus including a receiving section for receiving image data from the external device, for printing an image based on the received image data, wherein the image forming apparatus comprises a sending section for sending a communication address of the image forming apparatus to the external device, the image forming apparatus makes the receiving section receive image data sent with the communication address of the image forming apparatus by the external device, the communication address of the image fonning apparatus is uniquely associated with and identifies the image forming apparatus, and the communication address of the image forming apparatus is used for forming the image based on the image data of the external device, and the external device comprises: a data selection receiving section for receiving a selection of image data through plural thumbnails displayed on a display section; and 2 This decision employs the following abbreviations: "Spec." for the Specification, filed May 29, 2013; "Final Act." for the Final Office Action, mailed August 1, 2014; "Br." for the Appeal Brief, filed December 17, 2014; and "Ans." for the Examiner's Answer, mailed March 26, 2015. 2 Appeal2015-005465 Application 13/904,946 an image data sending section for wirelessly sending the selected image data to the image forming apparatus with the communication address of the image forming apparatus, and the image forming apparatus: receives the selected image data by the receiving section when the selected image data is sent with the communication address of the image forming apparatus from the external device; comprises an accepting section for accepting a selection indicating whether a communication between the external device and the image forming apparatus is performed by a first communication system method or a second communication system method; performs sending and/or receiving the image data with the communication address of the image forming apparatus by the first communication system method not by the second communication system method, when the first communication system method is selected, performs sending and/or receiving the image data with the communication address of the image forming apparatus by the second communication system method not by the first communication system method, when the second communication system method is selected; determines whether or not the external device has approached within a given range; waits until the external device approaches within the given range, when determining that the external device has not approached within the given range; and transmits the communication address or identification information identifying the image forming apparatus to the external device, when determining that the external device has approached within the given range. Br. 14--15 (Claims App.). 3 Appeal2015-005465 Application 13/904,946 The Prior Art Supporting the Rejection on Appeal Oba et al. ("Oba") US 2004/0078169 Al Apr. 22, 2004 Yamaoka US 2007 /0153320 Al July 5, 2007 Minatogawa US 2008/0297607 Al Dec. 4, 2008 Kato US 2009/0066998 Al Mar. 12, 2009 Ohara US 2011/0261389 Al Oct. 27, 2011 (filed Aug. 6, 2008) The Rejection on Appeal Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kato, Oba, Minatogawa, Ohara, and Yamaoka. Final Act. 2-15; Br. 7. ANALYSIS We have reviewed the rejections of claims 1-7 in light of Appellants' arguments that the Examiner erred. For the reasons explained below, we are unpersuaded by Appellants' assertions regarding error by the Examiner. The Rejection of Claims 1, 4, and 5 under 35 U.S.C. § 103(a) Claim 1 requires "an image forming apparatus" comprising "an accepting section for accepting a selection indicating whether a communication between the external device and the image forming apparatus is performed by a first communication system method or a second communication system method." Br. 14--15 (Claims App.). Claims 4 and 5 include similar limitations concerning accepting "a selection indicating whether a communication between the external device and the image forming apparatus is performed by a first communication system method or a second communication system method." Id. at 17, 18; see id. at 8-9. The Examiner finds that Ohara teaches accepting "a selection indicating whether a communication between the external device and the 4 Appeal2015-005465 Application 13/904,946 image forming apparatus is performed by a first communication system method or a second communication system method." Final Act. 6, 10, 14. Appellants argue that none of the applied references teaches or suggests the recited selection between "a first communication system method" and "a second communication system method." Br. 9. In particular, Appellants contend that in Ohara a multifunction peripheral selects one communications means for communicating with an external device from among several available communications means. Id. at 10 (citing Ohara i-f 100). Appellants then contend that the claims differ from Ohara because "a user operating" the claimed "accepting section" makes the recited selection instead of "a standard of some sort" as in Ohara. Id. Appellants assert that the Specification describes a user making the recited selection and that Figure 10 "shows an example" of a user making the recited selection. Id. at 10-11 (citing Spec. 36: 1-14, Fig. 10). In response, the Examiner asserts that Appellants' "interpretation of the claim is at odds with what is explicitly recited in the claim" and that "[t]he claim makes no mention of a user whatsoever." Ans. 3. As for the Specification, the Examiner determines that it contains "no explicit definitions or any sort of language that would preclude a typical broadest reasonable interpretation of the claims as written." Id. Appellants submitted no reply and did not ( 1) contest the Examiner's claim interpretation or (2) dispute the Examiner's determination that the Specification fails to narrow the broadest reasonable interpretation of the claims as written. We agree with the Examiner's findings and reasoning. Appellants' arguments are not commensurate in scope with the claims. Br. 8-11. An 5 Appeal2015-005465 Application 13/904,946 appellant cannot rely on an unclaimed feature to establish patentability. See In re Self, 671F.2d1344, 1348, 1350 (CCPA 1982). In addition, we discern no error in the Examiner's application of Ohara' s teachings to the claim language. Accordingly, Appellants' arguments have not persuaded us that the Examiner erred in rejecting claims 1, 4, and 5 for obviousness based on Kato, Oba, Minatogawa, Ohara, and Yamaoka. Hence, we sustain the rejection. The Rejection of Claims 2 and 6 under 35 U.S.C. § 103(a) Claims 2 and 6 depend from claims 1 and 5 respectively and require that the "image forming apparatus" include "a notification section for wirelessly notifying error information to the external device when an error is [sic] occurred." Br. 15, 19 (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. 7, 15. Appellants argue that "the Examiner has failed to provide reference(s)" disclosing the "notification section" required by claims 2 and 6 and that "none of the prior art of record discloses or suggest[ s] the feature recited in claims 2 and 6." Br. 11-12. 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., 6 Appeal2015-005465 Application 13/904,946 550 U.S. 398, 418 (2007). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. Here, Appellants do 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. 11-12. Instead, Appellants simply allege that the "prior art of record" lacks that feature. Id. at 12. The applicable rules require that the arguments in an appeal brief "explain why the examiner erred as to each ground of rejection contested by appellant." 37 C.F.R. § 41.37(c)(l)(iv). Moreover, Appellants do not argue that the subject matter of claims 2 and 6 amounts to anything more than the predictable use of prior-art features according to their familiar functions. Br. 11-12. Accordingly, Appellants' arguments have not persuaded us that the Examiner erred in rejecting claims 2 and 6 for obviousness. Hence, we sustain the rejection. The Rejection of Claims 3 and 7 under 35 U.S.C. § 103(a) Claims 3 and 7 depend from claims 1 and 5 respectively. Br. 16, 19 (Claims App.). Appellants do not present any persuasive patentability arguments for these dependent claims beyond the arguments regarding the independent claims. Br. 11. For instance, Appellants assert that claims 3 and 7 "are allowable at least for their dependency" on the associated independent claim. Id. Accordingly, we sustain the obviousness rejection of these dependent claims. DECISION We affirm the Examiner's decision to reject claims 1-7. 7 Appeal2015-005465 Application 13/904,946 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 8 Copy with citationCopy as parenthetical citation