Ex Parte Yoshida

Board of Patent Appeals and Interferences

Sep 27, 2010

10057364 - (D) (B.P.A.I. Sep. 27, 2010)

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.
10/057,364 01/24/2002 Tomoya Yoshida 02036/LH 2010
1933 7590 09/27/2010
HOLTZ, HOLTZ, GOODMAN & CHICK PC
220 Fifth Avenue
16TH Floor
NEW YORK, NY 10001-7708
EXAMINER
JOO, JOSHUA
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
09/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TOMOYA YOSHIDA
_____________

Appeal 2009-006216
Application 10/057,364
Technology Center 2400
______________

Before, ROBERT E. NAPPI, CARL W. WHITEHEAD, JR. and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006216
Application 10/057,364

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 14-30.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims.

INVENTION
The invention is directed to an apparatus that can automatically
restore itself through the use of internet. This prevents a service from
having to visit the site to fix the problem. See Spec: 1-9. Claim 14 is
representative of the invention and reproduced below:
14. An apparatus administration system, comprising:
an administrated apparatus located in a first local network
and connected to the Internet through a first firewall server of
the first local network;
an administrating apparatus located in a second local
network and connected to the Internet through a second firewall
server of the second local network; and
a relaying server located outside the first and second local
networks and connected to the Internet for enabling the
administrated apparatus and the administrating apparatus to
indirectly communicate with each other via the Internet;
wherein the administrated apparatus comprises: a
transmitting section which transmits trouble type information to
the relaying server through the first firewall server and the
Internet, an accessing section which accesses the relaying
server and obtains restoration work information based on the
trouble type information from the relaying server through the
first firewall server and the Internet, and a control section which
controls the administrated apparatus to conduct an automatic
restoration process in accordance with the restoration work
information;

2 Claims 1-13 were cancelled in an Amendment After Non-Final, filed
September 28, 2005.
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Appeal 2009-006216
Application 10/057,364

wherein the restoration work information is provided to the
relaying server by the administrating apparatus through the
second firewall server and the Internet; and
wherein the relaying server comprises a memory which
stores the trouble type information transmitted from the
administrated apparatus.

REFERENCES
Motoyama US 5,887,216 Mar. 23, 1999
Teng US 6,240,456 B1 May 29, 2001
Mui US 6,362,870 B2 Mar. 26, 2002
(filed Oct. 26, 1998)

Wiklof US 6,618,162 B1 Sep. 9, 2003
(filed Jan. 26, 1999)

REJECTIONS AT ISSUE
Claims 14-23 and 25-29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Teng in view of Motoyama and Mui. Ans. 3-10.
Claims 24 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teng in view of Motoyama, Mui, and Wiklof. Ans. 10.

ISSUE
35 U.S.C. § 103 rejections
Appellants argue on pages 10-26 of the Appeal Brief and pages 2-7 of
the Reply Brief that the Examiner’s rejection of claims 14-30 is in error.
Appellant argues that Teng in view of Motoyama and Mui does not disclose
the relaying server as claimed in independent claims 14, 25, and 28. App.
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Appeal 2009-006216
Application 10/057,364

Br. 15-17, 20-24; Reply Br. 3-6. Dependent claims 15-24, 26-27, and 29-30
are dependent upon claims 14, 25, and 28 (respectively) and contain similar
limitations to claims 14, 25, and 28.
Thus, with respect to claims 14-30, Appellant’s contention presents us
with the issue: Did the Examiner err in finding that Teng in view of
Motoyama and Mui discloses the relaying server as claimed in independent
claims 14, 25, and 28?3

ANALYSIS
35 U.S.C. § 103 rejections
Appellant’s contention has persuaded us of error in the Examiner’s
rejection of claims 14, 25, and 28. Claim 14 recites “a relaying server
located outside the first and second local networks and connected to the
Internet…wherein the administrated apparatus…transmits trouble type
information to the relaying server…controls the administrated apparatus to
conduct an automatic restoration process…wherein the restoration work
information is provided to the relaying server by the administrating
apparatus…and wherein the relaying server comprises a memory which
stores the trouble type information transmitted from the administrated
apparatus.” Independent claims 25 and 28 recite similar limitations. Claims
15-24, 26-27, and 29-30 depend upon independent claims 14, 25, and 28.
Appellant argues that the combination of Teng with Motoyama and Mui

3 Appellant makes additional arguments regarding claims 14-30. App. Br.
10-26; Reply Br. 2-7. We do not reach these additional issues since the
issue of whether Teng in view of Motoyama and Mui discloses the relay
server as claimed in independent claims 14, 25, and 28 is dispositive of the
case.
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Appeal 2009-006216
Application 10/057,364

does not disclose the relaying server as described in the independent claims.
App. Br. 15-17, 20-24; Reply Br. 3-6. We agree.
The Examiner has not shown how the combination of Teng with
Motoyama and Mui discloses the relaying server as claimed. Specifically,
the Examiner has not shown: (1) that the relay server is located outside of
both local networks and connected to the Internet; (2) that the printer, i.e.,
administrated apparatus, sends information to the relaying server; (3) that an
automatic restoration process is conducted in accordance with the restoration
work information; (4) that the administrating apparatus provides the
restoration work information to the relaying server; and (5) that the relaying
server comprises a memory that stores the trouble type information. Some
of these functions are shown in the references, but the Examiner has not
shown how the teachings of Teng with Motoyama and Mui suggest
performing these functions in one relay server. The additional teachings of
Wiklof do not make up for the deficiencies noted above. As such, we do not
sustain the Examiner’s rejection of claims 14-30.

CONCLUSION
The Examiner erred in finding that Teng in view of Motoyama and
Mui discloses the relaying server as claimed in independent claims 14, 25,
and 28.

SUMMARY
The Examiner’s decision to reject claims 14-30 under 35 U.S.C. §
103(a) is reversed.

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Appeal 2009-006216
Application 10/057,364

REVERSED

ELD

FRISHAUF, HOLTZ, GOODMAN & CHICK, PC
220 FIFTH AVENUE
16TH FLOOR
NEW YORK, NY 10001-7708
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