Ex Parte Araki et al

Patent Trial and Appeal Board

Oct 13, 2017

13776258 (P.T.A.B. Oct. 13, 2017)

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.
13/776,258 02/25/2013 Asuka ARAKI 740250-946 6013
78198 7590 10/17/2017
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive LEWIS, JUSTIN V
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
10/17/2017 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):
info@ sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASUKA ARAKI, AYAKO KAWANO,
MAYUMI OKAWA, KOUICHINOBUSHIMA, and
HIDEO NAKAO
Appeal 2015-007728
Application 13/776,2581
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Asuka Araki et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision in the Final Office Action (dated Oct. 7, 2014,
hereafter “Final Act.”) rejecting claims 1—5. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
1 Riso Kagaku Corporation is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest in Appellants’
Appeal Brief (filed Dec. 23, 2014, hereafter “Br.”). Br. 2.
Appeal 2015-007728
Application 13/776,258
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “a data editing apparatus and program
for casing-in bookbinding that makes it possible to recognize the range of
each chapter by observing an edge of a book produced by bookbinding.”
Spec. 1,11. 7-9.
Claims 1 and 5 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A data editing apparatus that edits data about a plurality of
book sheets of a book, each book sheet belonging to one
of a plurality of chapters, to bind the plurality of book
sheets by a casing-in operation in such a manner that
chapter range images, which indicate respective ranges of
the plurality of chapters, are displayed on an edge of the
book so that the chapter range images that are adjacent to
each other are arranged at different positions from each
other in a top-bottom direction, and the data editing
apparatus comprising:
a marker image edit unit that judges whether a
number of pages of each chapter is less than or equal to a
setting threshold and edits the data in such a manner that a
marker image emphasizing the chapter range image is
adjacent to the chapter range image indicating the range of
a chapter having book sheets the number of which is less
than or equal to the setting threshold.
REJECTION
The Examiner rejected claims 1—5 under 35 U.S.C. § 103(a) as being
unpatentable over Kanamoto (US 2012/0063867 Al, pub. Mar. 15, 2012) and
Erisalu (US 2012/0146322 Al, pub. June 14, 2012).
2
Appeal 2015-007728
Application 13/776,258
ANALYSIS
The Examiner finds that Kanamoto discloses most of the limitations of
independent claims 1 and 5, but fails to disclose a “marker image edit unit,”
as per claim 1, or a “data editing program for causing a computer to function
as a marker image data unit,” as per claim 5. Final Act. 2—3. Nonetheless,
the Examiner finds that Erisalu discloses, inter alia,
a marker image (chapter abbreviation indicia 140)
emphasizing the chapter range image is adjacent to the
chapter range image (chapter bars 130), thus judging that
the number of pages of each chapter is less than or equal to
a setting threshold and indicating the range of said chapter
having book sheets, the number of which is less than or
equal to a predetermined threshold.
Id. at 4 (citing Erisalu, para. 25, Fig. 3). The Examiner concludes that it
would have been obvious for a person of ordinary skill in the art
to incorporate the Erisalu chapter marking teachings into
the Kanamoto binding system, causing the Kanamoto
computer 101 to judge whether or not a number of pages
within a chapter is less than or equal to a particular
threshold (chapter size/length), specify that Erisalu chapter
bars 130 are to be printed on the edges of sheets within each
chapter, and causing the Kanamoto JDF application
program 604 to specify that Erisalu chapter abbreviation
indicia 140 should be printed in association with and
spatially related to the aforementioned chapter bars 130, in
order to yield a resultant omniview contents display system
which permits an ostensible user to locate sections of the
printed media at a glance, as explicitly taught by Erisalu
(see paragraph 24).
Id. at 4—5.
Appellants argue that neither Kanamoto nor Erisalu discloses a
marker image edit unit, as recited by independent claims 1 and 5. Br. 4.
According to Appellants, in contrast to the claimed invention where
3
Appeal 2015-007728
Application 13/776,258
“markers MG appear only for chapters/sections below a certain
size/threshold,” in Erisalu, “indicator lines 120 connect all chapter bars 130
with chapter abbreviation indicia 140.” Id. at 5—6.
In response, the Examiner notes that none of independent claims 1 and
5 recites that “‘markers MG’ appear only for chapters/sections below a
certain size/threshold,” as Appellants argue, and thus “Appellants are
arguing the non-existence of limitations not positively recited in the claims.”
Examiner’s Answer 10—11 (dated June 12, 2015, hereafter “Ans.”)
(emphasis added). Furthermore, the Examiner takes the position that,
because Kanamoto discloses applying imaging data to the pages of a book
on a chapter-by-chapter basis and Erisalu discloses “forming ‘chapter range
images’ ... in the form of chapter bars 130” and “‘marker images’, in the
form of chapter abbreviation indicia 140,” the combined teachings of
Kanamoto and Erisalu disclose that
in its creation of imaging data for the pages of each
chapter, the Kanamoto JDF application program 604
establishes a particular threshold value (the number of
pages in a chapter), and determines that said threshold
number of pages is to be equal to (or dictate) the thickness
of an associated Erisalu chapter bar 130 to indicate the
location of said chapter within the book, with said JDF
application program 604 also providing/editing “marker
image” chapter abbreviation indicia 140 adjacent to and
detailing the page content related to each chapter bar 130.
Ans. 9 (citing Kanamoto, paras. 113, 114; Erisalu, Fig. 3).
Although we appreciate the Examiner’s position that none of
independent claims 1 and 5 recites the term “only,” nonetheless, the
reasonable interpretation of these claims requires the presence of a “marker
image” when a marker image edit unit “judges” that a number of pages of a
4
Appeal 2015-007728
Application 13/776,258
chapter is less than or equal to a threshold value. In other words, when the
claimed marker image edit unit “judges” that the number of pages of a
chapter is less than or equal to a threshold value (setting), then the marker
image edit unit edits data to present a “marker image.” We do not agree with
the Examiner’s position that, merely because the claims do not recite the term
“only,” the claims may be interpreted to mean that the presence of a “marker
image” may occur when a marker image edit unit “judges” that a number of
pages of a chapter is not less than or equal to a threshold value. Neither a
plain reading of the claims, nor a review of Appellants’ Specification,
supports such an interpretation.
With respect to the disclosure of Erisalu, Appellants are correct in that
abbreviation indicia 140 (marker image) and chapter bars 130 (chapter range
image) are present regardless of the number of pages of a chapter. See Br. 5.
We could not find any portion in Erisalu, and the Examiner has not pointed to
any portion, that discloses a marker image edit unit that “judges” whether a
number of pages of a chapter is less than or equal to a threshold value in
order to have a “marker image.” We agree with Appellants that “Erisalu’s
chapter abbreviation indicia 140 and chapter bars 130 are present... for each
and every chapter without exception.” Id.
We further agree with Appellants that Kanamoto’s system likewise
does not judge whether the number of pages of a chapter is less than or equal
to a threshold value in order to have a “marker image.” See id. at 4 (citing to
Final Act. 3).
Hence, as neither Kanamoto nor Erisalu discloses that a “marker
image” is present when a marker image edit unit “judges” that a number of
pages of a chapter is less than or equal to a threshold value, the Examiner’s
5
Appeal 2015-007728
Application 13/776,258
finding that the combined teachings of Kanamoto and Erisalu somehow
disclose such a limitation requires speculation on the Examiner’s part.
Speculation cannot form the basis for concluding obviousness. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of independent claims 1 and 5, and their respective
dependent claims 2-4, as unpatentable over Kanamoto and Erisalu.
SUMMARY
The Examiner’s decision to reject claims 1—5 under 35 U.S.C. § 103(a)
as unpatentable over Kanamoto and Erisalu is reversed.
REVERSED
6