Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Apr 2, 2021

2019005970 (P.T.A.B. Apr. 2, 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.
14/923,568 10/27/2015 Kazushi YAMANEKI YMCHP0101USA 1723
72119 7590 04/02/2021
MARK D. SARALINO ( SHARP )
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
SARPONG, AKWASI
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUSHI YAMANEKI, MANABU MATSUMOTO, and
KAZUMA OGAWA
Appeal 2019-005970
Application 14/923,568
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL L. SILVERMAN, and
MICHAEL T. CYGAN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. See Final Act. 1. We have
jurisdiction 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.
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Application 14/923,568
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CLAIMED SUBJECT MATTER
The claims are directed to an image forming apparatus and image data
processing method. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An image processing apparatus performing a plurality of
different data output processings for image data including a
blank page, comprising:
a storage portion for storing setting information indicating
whether or not to perform data output processing of the image
data with a blank page excluded for each of the data output
processing; and
a control portion for judging whether or not each data
output processing is an output processing to be performed with a
blank page of the image data excluded based on the setting
information stored in the storage portion, executing a first data
output processing which is judged as a data output processing to
be performed with the blank page excluded by excluding the
blank page, and executing a second data output processing which
is judged as processing performed without excluding the blank
page, by including the blank page,
wherein the plurality of different data output processings
are processings performed by a plurality of different data output
functions of the image processing apparatus,
the plurality of different data output functions include at
least two of a document filing functions of image data, a data
transmission function through a network, a print function, a
facsimile transmission function of image data provided, and an
electronic mail transmission function,
the first data output processing is executed by at least one
of the document filing function of image data, the data
transmission function through the network, the print function,
and the electronic mail transmission function, and the second
data output processing is executed by the facsimile transmission
function of image data provided, said first and second data output
processings are applicable to the same image data to output first
and second output data respectively.
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Application 14/923,568
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gotoh US 2010/0053682 A1 Mar. 4, 2010
Muraishi US 2011/0228348 A1 Sept. 22, 2011

REJECTION
Claims 1–16 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gotoh in view of Muraishi.
OPINION
We adopt the Examiner’s findings in the Final Action and Answer and
we add the following for emphasis.
Appellant argues that the combination of Gotoh and Muraishi does not
teach or suggest the limitations of “the plurality of different data output
processings are processings performed by a plurality of different data output
functions,” “the plurality of different data output functions include at least
two of a document filing functions of image data, a data transmission
function through a network, a print function, a facsimile transmission
function of image data provided, and an electronic mail transmission
function,” and “said first and second data output processings are applicable
to the same image data to output first and second output data respectively.”
See Appeal Br. 8–12.
In particular, Appellant argues that the claim recites, the first and
second data output processings are applicable to the same image data to
output first and second output data respectively. Appeal Br. 9. Appellant
argues that the same image data input applies to the two different data output
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processings. Id. For example, according to Appellant, the same image data
input applies to the electronic mail transmission function and to the facsimile
transmission function. Id.
Appellant argues Gotoh’s paragraph 33, relied on by the Examiner,
does not teach or suggest the limitation of “said first and second data output
processings are applicable to the same image data to output first and second
output data respectively” as recited and defined in claim 1. Appeal Br. 9–
10.
Appellant quotes the Examiner’s findings, in pertinent part stating that
after the image is scanned and stored, the same image is read
from the cache or the temporary storage and faxed through
Telephone lines to an external device) said first and second data
output processings are applicable to the same image data.
Section 0033- thus it is the same image which was scanned, that
gets faxed via the telephone lines to an external device hence
the scanned image data reads on the first image data while the
faxed image data reads on the second output data.

Appeal Br. 10 (quoting Final Act. 2–3). Appellant explains that the
Examiner, therefore, attempts to construe the “data output functions”
of claim 1 and specifically the “document filing functions of image
data” of claim 1 as corresponding to the internal storing of input
image data that is obtained from scanning as part of the process of
faxing. Id.
Appellant argues that claim 1 itself and the Specification of the
present invention makes clear that the data output processings and the data
output functions including the “document filing functions” of claim 1
correspond to output functions of the image processing apparatus. Appeal
Br. 10. According to Appellant the Specification makes clear that the
internal storing of input image data that is obtained from scanning does not
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correspond to such an output function. Appeal Br. 10–11. Appellant quotes
for example, Paragraph 27 of the Specification stating:
[0027] The document reading portion 16 is a processing portion
which reads a document by scanning and stores data of the read
document image as the image data 15 a in the storage portion
15 temporarily or for a long period of time. The image data
stored as the image data 15 a is transmitted thorough
the network, subjected to printing, transmitted by attaching to
an electronic mail, transmitted by facsimile, or saved as
electronic data directly (document filing).

Appeal Br. 11. Appellant explains that a document is read by
scanning and this input data is stored as the image data temporarily or
for a long period of time, but, importantly, this image data does not
correspond to the output processings or output functions. Id. As
Paragraph 27 makes clear this input image data that has been stored
may subsequently be output (i.e., “transmitted thorough the network,
subjected to printing, transmitted by attaching to an electronic mail,
transmitted by facsimile, or saved as electronic data directly
(document filing)”). Id. According to Appellant the stored input
image data obtained from scanning is not output data itself and does
not correspond to an output processing or an output function; not as
defined in claim 1 and in the Specification. Id. Appellant argues that
the scanned image data does not read on the first data output of claim
1 because the scanned image data is input data, not output data, in the
context of claim 1. Id.
Appellant argues that alternatively, in the Examiner’s own
view, the second data output processing (corresponding to the
facsimile transmission function) is applicable to the image data
(scanned image data) to output only a first data output (facsimile
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transmission). Appeal Br. 11–12. Appellant argues that contrary to
this interpretation, claim 1 recites that “said first and second data
output processings are applicable to the same image data to output
first and second output data respectively.” Id. at 12. Gotoh does not
disclose a first data output processing which is applicable to the image
data to which the second data output processing (facsimile
transmission) is applied, as in claim 1. Id.
At the outset, we note that Appellant’s argument that the
“document filing functions” (i.e., scanning) of claim 1 correspond to
output functions contradicts its argument that the scanned image data
is input data, not output data, in the context of claim 1. Compare
Appeal Br. 10 with Appeal Br. 11.
Nonetheless, we do not agree with Appellant’s argument that
Gotoh does not teach the disputed limitations. The Examiner finds,
and we agree, that Gotoh teaches that the image forming apparatus
100 of Figure 1 executes an image filing mode (i.e., first data output
processing) during a job such as the copier mode, and the printer
mode, the facsimile transmission mode, the facsimile reception mode or the
image transmission mode (i.e., second data output processing). Ans. 3
(citing para. 152). The Examiner finds, and we agree, that the image filing
mode reads on the first data output processing, because the image data
obtained by the image input apparatus 101 (i.e., one apparatus) or the image
data received from outside are converted into an image file (i.e., JPEG or
TIFF file) by the image processing apparatus 102 (i.e., another apparatus 2).
Ans. 3–4 (citing para. 153).
Thus, we agree with the Examiner that the image filing mode
constitutes an output function consistent with claim 1 reciting one of the
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plurality of different data output functions as “a document filing functions of
image data.” See Ans. 5 and claim 1. The Examiner finds, that after the
above processing function (i.e., image filing mode), the second data
processing function such as printing, copying, facsimile can
be implemented. Id.
The Examiner relies on Gotoh, paragraph 41 stating
further, in the scan to email mode, which is an image
transmission mode, the image processing apparatus 102
transmit, to a mail processing section (not shown), the image
data subject to image processing. In scan to ftb mode, which is
another image transmission mode, the image processing
apparatus 102 transmits, to a predetermined folder, the image
data subject to image processing

Ans. 4 (quoting para. 41). The Examiner also relies on Gotoh,
paragraph 9, stating “job apparatus for executing any of an image
print job, an image transmission job, and an image filing job.” Id.
(quoting para. 9).
Thus, we agree with the Examiner that the image filing mode (i.e.,
first data output processing) is applicable to the same image that can be
either printed, copied or used in a facsimile mode. Id. We also agree with
the Examiner that one skilled in the art would understand that after
processing the image with one mode (i.e., image filing) and the same image
would be used in any other mode (i.e., image transmission mode). Id.
The Examiner further finds, and we agree, that Gotoh teaches more
than at least two of the plurality of different data output functions include at
least two of a document filing functions of image data, a data transmission
function through a network, a print function, a facsimile transmission
function of image data provided, and an electronic mail transmission
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function. Ans. 5 (citing para. 152 and quoting “during a job such as Copier
mode, the printer mode, the facsimile transmission mode or the image
transmission mode”) (emphasis and underlining omitted).
Thus, we agree with the Examiner that the first data output processing
is performed by an image filing mode (i.e., data output function) and second
data output processing is performed by another data output function selected
from the list of a copier mode, the printer mode, the facsimile transmission
mode, and the image transmission mode. Ans. 5–6.
Finally, we agree with the Examiner’s finding that in paragraph 153,
the image data obtained by the image input apparatus 101 is the input data.
Ans. 6. We also agree with the Examiner that the image file being converted
into JPEG or TIFF file is the output data. Id.
Accordingly, we affirm the Examiner’s rejection of claim 1 and for
the same reasons the Examiner’s rejection of claims 2–16 not separately
argued.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 103 Gotoh, Muraishi 1–16

Appeal 2019-005970
Application 14/923,568
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED