Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Aug 9, 2021

2020002632 (P.T.A.B. Aug. 9, 2021)

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.
15/960,697 04/24/2018 Shinsaku TOHKI 70404.3873/dj 3504
54072 7590 08/09/2021
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
HANG, VU B
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
08/09/2021 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):
JKEATING@KBIPLAW.COM
epreston@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINSAKU TOHKI and TAKAYA NAKATANI

Appeal 2020-002632
Application 15/960,697
Technology Center 2600
____________

Before JOHNNY A. KUMAR, CATHERINE SHIANG,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 2–10. Claim 1 is cancelled. We have jurisdiction
over the pending rejected claims under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sharp
Kabushiki Kaisha. (Appeal Br. 2.)
Appeal 2020-002632
Application 15/960,697

2
THE INVENTION
Appellant’s disclosed and claimed invention is directed to an image
processing apparatus provided with an operation console including a power
key and an energy saving key controlling transitions between a standby
mode, a normal mode, and an energy saving mode. (Spec., Title, 21:10–19.)
Independent claim 2, reproduced below, is illustrative of the subject
matter on appeal:
2. A image processing apparatus having a standby state, a
normal state, and an energy-saving state, comprising:
a power key that, when operated, causes said image
processing apparatus to transition from said standby state to
said normal state; and
an operation key, wherein
said operation key is a hardware key,
in response to an operation of said operation key, a
process is executed that differs depending on whether said
image processing apparatus is in said normal state or said
energy saving state when said operation key is operated, and
said operation key is illuminated when said image
processing apparatus is in said normal state or said energy-
saving state.
(Appeal Br. 9 (Claims App.).)
REJECTIONS
The Examiner rejected claims 2–7 under 35 U.S.C. § 103(a) (pre-
AIA), as being unpatentable over Maeda (US 2009/0040541 Al, pub. Feb.
12, 2009), Maki (US 2007/0124440 Al, pub. May 31, 2007), and Watanabe
et al. (US 2007/0165262 A1, pub. July 19, 2007). (Final Act. 2–4.)
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Application 15/960,697

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The Examiner rejected claims 8–10 under 35 U.S.C. § 103(a) (pre-
AIA), as being unpatentable over Maeda, Maki, Watanabe, and Park et al.
(US 20l0/0138292 Al, pub. June 3, 2010). (Final Act. 4–8.)
ISSUE ON APPEAL
Appellant’s arguments present the following dispositive issue2:
Whether the Examiner erred in rejecting independent claims 2, 6, and
7 as obvious over the combination of Maeda, Maki, and Watanabe. (Appeal
Br. 11–18.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
arguments, and adopt as our own, (1) the findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 2–8);
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 3–4), and concur with the
conclusions reached by the Examiner.
Appellant argues that the combination of Maeda, Maki, and Watanabe
does not teach or suggest the independent claim requirements that the image
processing apparatus have a standby state, a normal state, and an energy-
saving state, or have a power key that, when operated, causes a transition
from the standby state to the normal state. (Appeal Br. 5–7.)

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Supplemental Appeal Brief (filed Sept. 23, 2019);
the Reply Brief (filed Feb. 18, 2020); the Final Office Action (mailed
May 1, 2019); and the Examiner’s Answer (mailed Dec. 20, 2019) for the
respective details.
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Application 15/960,697

4
In the Examiner’s Answer, the Examiner finds that Maeda teaches
both of these limitations:
Maeda, teaches an image processing apparatus (see Figure 1
(100) and paragraph [0051]) configured to operate in the (1)
standby mode (see Figure 6 and paragraph [0103]; (2) normal
operating mode (see Figure 6 (606) and paragraphs [0110-
0111); and (3) sleep mode (see Figure 5 (Power Save key) and
paragraph [0101]). The examiner interprets the normal
operating mode as the state of the image processing apparatus
when it is executing an image processing job, such as in the
process of performing the printing operation or the copying
operation.
Maeda also teaches a start key for enabling a user to
instruct the image processing apparatus to start the type of job
instructed by the user, such as a copy operation or sending
operation (see Figure 5 (503) and paragraph [0102]), wherein
before performing the operation, the image processing
apparatus is in the standby mode to enable the user to select an
image processing function to execute a type of job (see Figure 6
(601) and paragraphs [0103-0104]).
(Ans. 3–4.)
In reply, Appellant contends that these findings are set forth for the
first time in the Answer, and that applicable procedures such as set forth in
MPEP § 1207.02 were not followed. (Reply Br. 2–3.) However, this
objection relates to a petitionable subject matter under 37 C.F.R. § 1.181 and
therefore is not before us since we lack jurisdiction over petitionable
matters. See, e.g., MPEP § 706.01 (“[T]he Board will not hear or decide
issues pertaining to objections and formal matters which are not properly
before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily
hear a question that should be decided by the Director on petition . . . .”).
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Application 15/960,697

5
Nonetheless, Appellant goes on to address the substance of the
Examiner’s findings, arguing that what Maeda calls a “standby mode” is
actually the claimed “normal state,” relying on the reference in Maeda to a
“standby mode (normal operating state)” — i.e., according to Appellant,
through this language, Maeda explicitly equates “standby mode” to the
“normal operating state.” (Reply Br. 4.) Appellant further argues that the
Examiner errs in finding the claimed “normal state” in Maeda to be “the
state of the image processing apparatus when it is executing an image
processing job,” because one of ordinary skill would not have understood
the claimed “normal state” to be a state in which “specific ones of the
functions are respectively able or unable to be performed,” but not “where
the image processing apparatus must be operating.” (Reply Br. 5.) Finally,
Appellant argues that the Examiner’s reliance on the “start key” of Maeda as
corresponding to the claimed “power key” is in error, because the transition
caused by the start key in Maeda does not correspond to the claimed
transition due to the above-argued lack of separate standby and normal states
in Maeda. (Reply Br. 6.)
We are not persuaded by Appellant’s arguments. The independent
claims require that the image processing apparatus has a “standby state” and
a “normal state” (as well as an “energy-saving state,” not at issue here), but
neither the claims nor the specification defines those terms. The
specification does give examples of those states: “image forming apparatus
100 makes a transition from a standby mode (in which, for example, only the
FAX receiving operation is possible . . .) to a normal mode, in which every
operational mode of image forming apparatus 100 is usable.” (Spec. 21:11–
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Application 15/960,697

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14.) However, nothing in the specification limits the scope of “standby
state” or “normal state” to those examples.
The “standby mode” of Maeda (which Maeda also characterizes as
“normal operating state”) is a state in which the device is not performing any
function, but rather is waiting for the user to select a function — as the
specification states, “standby mode [is] a state with no job to be processed
by the printing apparatus.” (Maeda ¶¶ 101, 103.) Certainly, Maeda’s
standby mode is reasonably considered a “standby state” in accord with the
ordinary meaning of “standby.”
Likewise, the Examiner reasonably characterizes the state of the
Maeda device after the “start key” is pressed, at which time the standby state
ends and a copying or sending operation is performed, as a “normal state” as
claimed. (Ans. 3–4; Maeda ¶¶ 102, 110.) By the same token, the “start key”
satisfies the claim requirement of a power key that transitions from the
standby state to the normal state. (Ans. 4; Maeda ¶ 102.) As stated in
Maeda:
A start key 503 is a key for enabling the user to instruct the
printing apparatus 100 to start the types of jobs instructed by
the user, such as copying operations or sending operations for
the job to be processed.
(Maeda ¶ 102.)
Accordingly, we sustain the Examiner’s rejection of independent
claims 2, 6, and 7 over the combination of Maeda, Maki, and Watanabe. We
also sustain the Examiner’s rejection of claims 3–5 over the combination of
Maeda, Maki, and Watanabe, and of claims 8–10 over the combination of
Maeda, Maki, Watanabe, and Park, which claims are not argued separately
with particularity. (Appeal Br. 8.)
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–7 103(a) Maeda, Maki,
Watanabe
2–7
8–10 103(a) Maeda, Maki,
Watanabe, Park
8–10
Overall
Outcome
2–10

TIME PERIOD FOR RESPONSE
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