Ex Parte Sasaki

Patent Trial and Appeal Board

Sep 16, 2013

11206066 (P.T.A.B. Sep. 16, 2013)

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.
11/206,066 08/18/2005 Futoshi Sasaki 00862.119387. 5373
5514 7590 09/17/2013
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
EXAMINER
ZIMMERMAN, MARK K
ART UNIT PAPER NUMBER
2673
MAIL DATE DELIVERY MODE
09/17/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FUTOSHI SASAKI
____________

Appeal 2011-005659
Application 11/206,066
Technology Center 2600
____________

Before JOHN A. JEFFERY, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8-22, 32, and 33. Claims 1-7 and 23-31 have been cancelled or
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on September 5, 2013.
We affirm.
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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a printing system having an image
supply device (e.g., a camera) and a printer that prints an image based on
image data supplied from the camera. Spec. 1:6-10; Abstract. Before
transmitting image data to the printer, the image supply device determines
whether to resize or rotate the image in accordance with the communication
protocol between the camera and the printer. Spec. 27:3-28:10.
Claims 8, 15, 32, and 33 are independent. Claim 8 is illustrative of
the invention (disputed limitation in italics):
8. An image supply device for supplying image data
to a printer by directly communicating with the printer,
comprising:
a storage unit that stores image files, wherein each of the
image files includes image data;
an acquisition unit that acquires device information of the
printer in accordance with a communication with the printer;
a selection unit that selects an image file to be printed
among the image files stored in the storage unit;
a determination unit that determines whether or not a
resizing process or a rotation process is performed on image
data of the image file selected by the selection unit in
accordance with a version of a communication protocol with
the printer, the version of the communication protocol being
included in the device information;
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a conversion unit that performs the resizing or rotation
process on the image data of the image file to be printed, if the
determination unit determines that the resizing process or
rotation processing is performed; and
a transmission unit that transmits image data on which
the resizing or rotation process has been performed by the
conversion unit to the printer in response to a data request from
the printer.
Prior Art Relied Upon
The Examiner relies upon the following prior art in rejecting the
claims:
Yoshino US 6,131,111 Oct. 10, 2000
Tateyama US 2001/0013949 A1 Aug. 16, 2001
Tanaka US 2003/0081251 A1 May 1, 2003
Matsuoka US 6,633,667 B1 Oct. 14, 2003
Newell US 6,668,319 B1 Dec. 23, 2003
Ogiwara US 2004/0021902 A1 Feb. 5, 2004
Matsuura US 6,714,685 B2 Mar. 30, 2004
Jackson US 6,760,128 B2 July 6, 2004
Kazunobu US 2004/0263651 A1 Dec. 30, 2004
Nitta US 6,882,440 B1 Apr. 19, 2005
Rejections on Appeal
The Examiner has rejected claims 8, 11, 12, 15, 18, and 19 under 35
U.S.C. § 103(a) as being unpatentable over Ogiwara, Tanaka, and Newell.
Ans. 3-12, 28-29.
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The Examiner has rejected claims 9 and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Ogiwara, Tanaka, Newell, and Matsuura. Ans.
12-13, 28.
The Examiner has rejected claims 10 and 17 under 35 U.S.C. § 103(a)
as being unpatentable over Ogiwara, Tanaka, Newell, Jackson, and Nitta.
Ans. 14-16, 28.
The Examiner has rejected claims 13 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Ogiwara, Tanaka, Newell, and Matsuoka. Ans.
16-17, 29.
The Examiner has rejected claims 14 and 21 under 35 U.S.C. § 103(a)
as being unpatentable over Ogiwara, Tanaka, Newell, and Kazunobu. Ans.
17-19, 29.
The Examiner has rejected claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Ogiwara, Tanaka, Newell, and Yoshino. Ans. 19-
21.
The Examiner has rejected claims 32 and 33 under 35 U.S.C. § 103(a)
as being unpatentable over Ogiwara, Tanaka, Newell, and Tateyama. Ans.
21-29.
ANALYSIS
The Examiner finds that the combination of Ogiwara and Tanaka
teaches most limitations of claim 8, including a “determination unit that
determines whether or not a resizing process or a rotation process is
performed.” Ans. 4-6. Finding that the combination of Ogiwara and Tanaka
does not teach that the determination whether to perform a resizing or
rotation process is “in accordance with a version of a communication
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protocol with the printer, the version of the communication protocol being
included in the device information [of the printer],” the Examiner relies on
Newell for teaching that feature in concluding that claim 8 would have been
obvious. Ans. 6-8.
Newell teaches a system in which one device communicates with
other devices using a protocol to obtain information regarding features and
protocol versions supported by the other devices. Ans. 6; Newell, col. 1, ll.
8-12. As explained in Newell, a given protocol or protocol version supports
a given set of features that may be requested by a first device and that are
supported by a second device. Newell, col. 2, ll. 55-60. Each device in
Newell’s system broadcasts via one or more declarations the features and
protocols supported by that device. Newell, col. 8, ll. 20-57. In one
implementation, the device generates a declaration for each protocol or
protocol version supported by the device so that each declaration identifies
one protocol or protocol version and the features supported by the device for
that protocol or protocol version. Newell, col. 8, ll. 35-44; see also Ans. 35.
Upon receiving declarations from other devices, each device constructs a
match table identifying the features and protocol versions supported by other
devices that match the features and protocol versions supported by the
device. Newell, col. 9, ll. 28-42. When a device requests a feature from
another device, it consults its match table and compares the feature with the
features supported by the device to which the request is directed. Newell,
col. 10, ll. 9-22; see also Ans. 36. When multiple protocol versions are
supported, the comparison will typically include the protocol versions
supported by the devices. Newell, col. 10, ll. 22-30; see also Ans. 36.
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Appellant contends the Examiner erred in relying on Newell. App.
Br. 22-24. First, Appellant states that “[i]n Newell, the protocol version is
but one feature of many that are used to determine if a device can satisfy a
particular request for a feature.” App. Br. 23. Appellant further asserts
Newell merely discloses acquiring protocol versions in the
match table to determine what protocol versions are supported
by the device but does not disclose using a version of a
communication protocol to determine whether or not a resizing
process or a rotation process is performed on image data of the
image file.

App. Br. 24.
Appellant has not persuaded us the Examiner erred. First, the
Examiner finds that the combination of Ogiwara and Tanaka, not Newell,
teaches determining whether to perform a resizing or rotating process. Ans.
6. Therefore, Appellant’s argument that Newell does not teach determining
whether to resize or rotate an image is unpersuasive. Appellant cannot
establish nonobviousness by attacking references individually when the
rejection is based on a combination of references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Furthermore, claim 8 broadly recites the determination is “in
accordance with a version of a communication protocol with the printer, the
version of the communication protocol being included in the device
information.” As explained above, Newell teaches determining feature
availability by comparing features and protocol versions supported by the
communicating devices. See Newell, col. 10, ll. 9-30; Ans. 36. Under the
broadest reasonable interpretation of the claim language, we find that
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determining “in accordance with a version of a communication protocol”
encompasses Newell’s comparison of protocol versions, even though Newell
also teaches comparing features. Accordingly, we concur with the Examiner
that the combination of Ogiwara, Tanaka, and Newell teaches or suggests “a
determination unit that determines whether or not a resizing process or a
rotation process is performed . . . in accordance with a version of a
communication protocol with the printer, the version of the communication
protocol being included in the device information,” as recited in claim 8.
In the reply brief, Appellant takes issue with portions of the Response
to Arguments section of the Examiner’s Answer explaining the Examiner’s
understanding of the references. Reply Br. 7. Although the Examiner labels
them as “Exhibits,” we view the diagrams on pages 30-32 of the Answer,
which include specific citations to the references, as no more than the
Examiner’s attempt to summarize the relevant teachings of the references in
a compact manner. Moreover, to the extent Appellant disagrees with
Examiner’s characterization of Newell, Appellant has not persuaded us the
Examiner’s rejection of claim 8 is in error. See Reply Br. 7-11. As
described above, and as supported by the Examiner’s citations to Newell,
Newell teaches or suggests determining feature availability “in accordance
with a version of a communication protocol,” as recited in claim 8.
For these reasons, we sustain the Examiner’s obviousness rejection of
the following claims over Ogiwara, Tanaka, and Newell: (i) independent
claim 8, (ii) independent claim 15, which recites a similar “determining”
limitation, and (iii) dependent claims 11, 12, 18, and 19, not argued
separately. We also sustain the Examiner’s obviousness rejections, based on
various combinations of references, of dependent claims 9, 10, 13, 14, 16,
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17, and 20-22, not argued separately by Appellant. Finally, Appellant
repeats essentially the same arguments for independent claims 32 and 33,
and, therefore, we sustain the Examiner’s obviousness rejection of those
claims over Ogiwara, Tanaka, Newell, and Tateyama.
DECISION
The Examiner’s rejections of claims 8-22, 32, and 33 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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