Ex Parte Uchida et al

Patent Trial and Appeal Board

Mar 19, 2013

11675125 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUKI UCHIDA, SHOGO HYAKUTAKE,
and MINORU AOSHIMA
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Appeal 2011-0023971
Application 11/675,125
Technology Center 2100
____________________

Before JEAN R. HOMERE, DAVID M. KOHUT and BRYAN F. MOORE,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Ricoh Corp and Ricoh Corp Ltd. (App. Br. 1.)
An oral hearing was held in this appeal on March 14, 2013.
Appeal 2011-002397
Application 11/675,125

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2, 4-7, 9-12, and 14-21. Claims 1, 3, 8, and 13
have been canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a document management system having a
document manager (60) for retrieving from a selected application service
provider (ASP) documents requested by an image processing device (70, 72,
74, 76) according to a user’s request including destination information
regarding the storage medium to which the retrieved document is to be
stored. (Fig. 1, Spec. 2-3.)
Illustrative Claim
Independent claim 2 further illustrates the invention. It reads as
follows:
2. A document manager, comprising:
a communications interface configured to receive a
document retrieval request from an image processing device;
a retrieval module configured to retrieve a document
from a selected application service provider (ASP) based on the
document retrieval request;
a determination module configured to determine that a
medium storage request has been received from the image
processing device, the medium storage request including
destination information regarding a storage medium remote
from the image processing device to which the document is to
be stored; and
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Application 11/675,125

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the communication interface configured to send the
document to the storage medium remote from the image
processing device where the document is stored.

Prior Art Relied Upon
Wu US 5,991,756 Nov. 23, 1999
O’Brien US 6,351,776 B1 Feb. 26, 2002

Rejection on Appeal
The Examiner rejects claims 2, 4-7, 9-12, and 14-21 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Wu and O’Brien.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 6-8, and the Reply Brief, pages 2-5.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Wu and O’Brien teaches or suggests a
medium storage request including destination information regarding a
storage medium remote from an image processing device to which the
document is to be stored, as recited in claim 2?

Appellants argue that the Examiner erred in finding that the proffered
combination teaches or suggests the disputed limitations emphasized above.
(App. Br. 6-8; Reply Br. 2-5.) In particular, Appellants argue that while Wu
discloses retrieving at a server documents specified in a search request that
identifies the requesting client, the search request is not a medium storage
request including destination information regarding the storage to which the
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Application 11/675,125

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requested document is to be stored. (App. Br. 6-7.) Further, Appellants
submit that Wu’s disclosure of a URL request transmitted to a webserver is
not a request to store a document in a specified destination storage medium.
(Reply Br. 2.)
In response, the Examiner finds that Wu’s disclosure of using a
TCP/IP protocol to display a hypertext document requested by a client by
passing packets from a source node to a destination node corresponding to
the client, taken in combination with O’Brien’s disclosure of storing
information in a remote storage device teaches or suggests the disputed
limitations. (Ans. 4, 6-7.)
Based upon our review of the record before us, we agree with the
Examiner’s underlying factual findings and ultimate conclusion of
obviousness regarding claim 2. We note at the outset that Appellants do not
dispute the Examiner’s finding that Wu’s disclosure of retrieving a link to a
document requested by a client teaches identifying the client. However,
Appellants dispute that such identification of the client also indicates the
destination storage medium where the requested document is to be stored.
(Reply Br. 7.) While we agree with Appellants that the user’s request for a
document as taught by Wu does not expressly identify the destination
storage medium where the requested document is to be stored, Wu’s
disclosure of forwarding the requested document to a destination node (col.
1, ll. 25-26) teaches or suggests a destination node where the requested
document is likely to be stored. Further, we find that O’Brien’s disclosure of
storing a document at a destination storage medium remotely located from a
client device (col. 4, ll. 7-10) complements Wu’s teaching by specifying an
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alternative location where a document is be stored. We further note that
because the disputed limitations are directed to a CPU that is programmed to
store a requested document to a specified location (App. Br. 3), one of
ordinary skill in the art would know how to program Wu’s client computer
in order to store a retrieved document in the location specified by O’Brien’s
disclosure. We are therefore satisfied that the suggestion provided in Wu,
taken in combination with the cited disclosure of O’Brien’s, teaches the
disputed limitations. It follows that the Examiner did not err in rejecting
claim 2 over the combination of Wu and O’Brien.
Regarding claims 4-7, 9-12, and 14-21, Appellants reiterate
substantially the same arguments submitted for patentability of claim 2
above. (App. Br. 8.) As discussed above, these arguments are not
persuasive. See 37 C.F.R. § 1.37(c)(1)(vii). Consequently, we have found
no error in the Examiner’s rejections of claims 4-7, 9-12, and 14-21.

DECISION
We affirm the Examiner’s obviousness rejections of claims 2, 4-7, 9-
12, and 14-21 as set forth above.
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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