Ex Parte Hirohata et al

Patent Trial and Appeal Board

Jun 21, 2018

14470089 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/470,089 08/27/2014
72119 7590 06/25/2018
MARK D. SARALINO (SHARP)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19THFLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Hitoshi HIROHATA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HARAP0321USA 8995
EXAMINER
SARPONG, AKWASI
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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 HITOSHI HIROHATA and NAOTO FUKUSHIMA
Appeal2017-008165
Application 14/470,089
Technology Center 2600
Before DENISE M. POTHIER, CARL L. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1' 2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-16. App. Br. 1. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
July 19, 2016, the Appeal Brief (App. Br.) filed November 23, 2016, the
Examiner's Answer (Ans.) mailed March 9, 2017, and the Reply Brief
(Reply Br.) filed May 8, 2017.
2 The real party in interest is listed as Sharp Kabushiki Kaisha. App. Br. 2.
Appeal2017-008165
Application 14/470,089
Invention
Appellants' invention relates to a technique for enabling a separating
function and a double-side scanning/reading function for document bundles
having single-sided documents, double-sided documents, or both single-
sided and double-sided documents. See Spec. 7:8-9:8. The separating
function detects an interleaving document located between any of these
document bundles. See id. at 7 :22-8 :21. This arrangement permits
continuous reading of document bundles and eliminates blank documents
without missing image data and regardless of whether the documents are
single-sided or double-sided. See id. at 8:22-9:8, 20:2-9, 23:10-20.
Claim 1 is reproduced below with emphasis:
1. A control device for controlling an image processing system,
the image processing system comprising:
an image input section, which (i) is capable of
continuously reading documents from a plurality of bundles of
documents which bundles are stacked so that an interleaving
paper is placed between any adjacent ones of the plurality of
bundles, each of which bundles is made up of at least one
document and (ii) creates image data of each of read
documents;
an interleaving paper detecting section for detecting
image data of the interleaving paper from the image data
created by the image input section; and
an output section for carrying out an output process with
respect to the image data created by the image input section,
the image input section having a double-side reading
function of reading double sides of each of the documents and
then creating image data of each of the double sides,
an output section for carrying out an output process with
respect to the image data created by the image input section,
the image input section having a double-side reading
function of reading double sides of each of the documents and
then creating image data of each of the double sides,
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Application 14/470,089
the output section having a separating function of
carrying out the output process with respect to each image data
of a bundle of documents separated by the image data of the
interleaving paper detected by the interleaving paper detecting
section,
said control device comprising a function setting section
for enabling the double-side reading function when enabling
the separating function.
The Examiner relies on the following as evidence of unpatentability:
Takahashi
Gotoh
US 6,985,245 B 1
US 2010/0053682 Al
The Rejection
Jan. 10,2006
Mar. 4, 2010
Claims 1-16 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Gotoh and Takahashi. Final Act. 3-18.
THE CONTENTIONS
Regarding representative claim 1, 3 the Examiner finds Gotoh teaches
its limitations, including the output section (e.g., image output apparatus
103) having a separating function and the control device having a function
setting section for enabling the double-sided reading function when enabling
the separating function. Final Act. 4--5 (citing Gotoh i-fi-175, 76, 169, 170,
172, 218, Fig. 3). The Examiner indicates Gotoh does not "clearly state[]
that the [separating] function can be performed by the [image output]
apparatus" (id. at 5), turning to Takahashi's teachings. Id. at 5---6 (citing
Takahashi 27:40-53).
3 Claims 1-16 are argued as a group. App. Br. 9-19. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 14/470,089
Appellants present two main arguments. First, Appellants argue
Gotoh and Takahashi do not disclose the recited "separating function" in the
claims. App. Br. 10-16; Reply Br. 2-5. Second, Appellants assert Gotoh
and Takahashi do not teach the "function setting section" in the claims.
App. Br. 17-19; Reply Br. 5---6.
ISSUES
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
Gotoh and Takahashi collectively would have taught or suggested
(I) the output section having a separating function of carrying out the
output process with respect to each image data of a bundle of documents
separated by the image data of the interleaving paper detected by the
interleaving paper detecting section,
(II) said control device comprising a function setting section for
enabling the double-side reading function when enabling the separating
function.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants in their Appeal Brief, and in light of the arguments
and evidence produced. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) ). "[A ]ny arguments or authorities not included in the appeal brief will
be refused consideration by the Board for purposes of the present appeal."
37 C.F.R. § 41.37(c)(l)(iv). Based on the record before us, we are not
persuaded of error in the rejection of claim 1.
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I.
Appellants contend that, if a blank page corresponds to the recited
"interleaving paper," Gotoh's separating function must carry out the output
process with each image data of the document bundles separated by the
image data of the blank page, which Gotoh does not. App. Br. 10.
Appellants assert Gotoh instead teaches excluding blank page image data
from being displayed or previewed by the image display device. App. Br.
10-11 (citing Gotoh i-f 10); see also Reply Br. 3. For this reason, Appellants
argue Gotoh's output process does not include "each image data of a bundle
of documents is outputted separated by the image data of the blank page" as
required by claim 1. App. Br. 11; see also Reply Br. 4--5.
We are not persuaded. Claim 1 recites "a separating function of
carrying out the output process with respect to each image data of a bundle
of documents separated by the image data of the interleaving paper." App.
Br. 20 (Claims App'x). Notably, the Specification describes a blank
document as an interleaving paper. Spec. 2 :21-22 (stating "an interleaving
paper is detected when a document has been determined to be blank."). As
such, we determine the Examiner's mapping of a blank document to the
recited "interleaving paper" is reasonable. Final Act. 5 (stating "the blank
paper reads on the interleave paper") (emphasis omitted); Ans. 3 ("a blank
page is being interpreted as the interleave page between bundles of
documents in the claim.").
Next, although Gotoh discloses excluded blank pages from a
display/print preview (Gotoh i-f 10, cited in App. Br. 10), Gotoh teaches a
user can select to enable a blank page skip mode (e.g., "BLANK PAGE
SKIP" button in Fig. 15) or not when performing a preview display. Gotoh
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i-fi-f 186-194, Figs. 13, 15. In the scenario where the blank page skip mode
has not been selected or deselected (e.g., S102), Gotoh teaches all scanned
image data (e.g., S103), including blank page image data, is read out (e.g.,
S108), displayed (e.g., S109), and sent (e.g., Sl 14). Id. i-fi-f 194, 197, Fig. 13.
Contrary to Appellants' assertion (App. Br. 11; Reply Br. 2-3), Gotoh's
print preview process (as well as its print process) in the above scenario can
be carried out on the image data for a blank document. As such, Gotoh
teaches and suggests an embodiment where a print preview/printing process
(e.g., an output process4) is performed on both the blank document image
data (e.g., an interleaving paper's image data) as well as document bundles
image data (e.g., image data for document(s) before and after to a blank
document) separated by the blank document image data (i.e., carrying out
the recited "separating function." 5).
The Examiner presents consistent findings and conclusions. The
Examiner explains Gotoh teaches a system where an odd sheet can be
detected from a group of paper sheets, such as when a blank document is
scanned between a one-sided document and a two-sided document that are
not separated. See Ans. 2-3 (citing Gotoh i-fi-1 4, 169 (discussing generating a
tag or blank document signal)); see also Final Act. 5 (discussing Gotoh
i-f 169 and the blank document determination section 53). Specifically,
Gotoh describes a user can select between a blank-document skip mode and
4 The Specifications describes an "output process" to include a "file creating
process," "a print process" and "an image transmitting process." Spec.
22: 15-23. The examples are non-limiting. See id.
5 The Specification describes the "separating function" to include carrying
out the output process with respect to each document bundle. Spec. 2:8-10;
see also id. at 27:2-7.
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a blank-document-page mode. Gotoh i-f 4. When a blank-document-page
mode is selected and an odd sheet is detected, Gotoh suggests a separating
function of carrying out an output process (e.g., preview printing/printing)
with respect to both the image data of a document bundle (e.g., the one-side
document or the two-sided document) separated by the image data of the
interleaving paper (e.g., a blank-page document) detected by the blank-
document-page mode function. See Gotoh i-f 4. We thus disagree Gotoh
fails to teach "the interleaving paper" is not "detected by the interleaving
paper detecting section" as recited. See App. Br. 10-11.
Appellants next contend Takahashi's delimiter page is used to
recognize when to insert color printed material in monochrome printed
material, which differs from distinguishing document bundles as claimed,
and thus, asserts Takahashi does not have the recited "separating function."
App. Br. 12-14. This argument is unavailing.
First, many of the features disputed in Takahashi, including those
related to ( 1) inserting a delimiter or banner page between continuous
colored data and continuous black-and-white data, (2) when the interleaving
paper is placed between document bundles, and (3) the interleaving paper
detecting section (App. Br. 12-15), are not being relied upon in formulating
the obviousness rejection (Final Act. 4---6; Ans. 2-3). That is, the Examiner
turns to Takahashi for a more general and limited purpose- to include (1)
an apparatus that prints (e.g., an output process) based on how image data
has been separated (Final Act. 5---6), including separated by interleaving
paper image data (Ans. 3--4), and (2) a separator to achieve this function and
distinguish betweenjobs (Ans. 4 (citing Takahashi 26:42--43)).
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Second, one cannot show nonobviousness by attacking Takahashi
individually where the rejection is based on Gotoh and Takahashi
collectively. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Along these lines, Appellants
argue "[t]he combination of Gotoh and Takahashi does not disclose the
claim 1 features." App. Br. 15; see also Reply Br. 4--5. Appellants assert
"[ c ]laim 1 is specific about what the interleaving paper is, and it not what
Gotoh discloses." Id. This argument does not argue with sufficient
specificity what feature in claim 1 the references fail to teach, including
what specific claimed feature of the interleaving paper Gotoh does not
disclose. Nonetheless, to the extent an argument has been presented, we
disagree for the above reasons.
Appellants further argue Gotoh does not support documents can be
single-sided scanning/ double-sided scanning documents or teach selecting a
duplex scanning mode. App. Br. 15-16. We disagree. As the Examiner
indicates, Gotoh teaches a sheet-feed scanning mode to select a one-side
mode for scanning one side of the document and a duplex mode for scanning
two sides of the document. Gotoh i-fi-1218-20, cited in Ans. 5. We
additionally note that the document type the Examiner discusses in the
Advisory Action (Adv. Act.) includes blank documents and generating a
blank document determination signal. See Gotoh i-f 170, cited in Adv. Act. 3.
Lastly, the Background Art section discusses a known image forming
apparatus that include a function (i) to detect interleaving papers and (ii) to
carry out an output process with respect to each document bundle (e.g., a
separating function). Spec. 2: 1-3: 10. The disclosure indicates this
technique cannot handle a document bundle made up of both a single-sided
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document and a double-sided document having information on both sides.
Spec. 4:16-5:3. However, as discussed further in the next section, this
feature is not in the claims.
II.
Appellants argue the cited art fails to teach the recited "function
setting section" because "claim 1 enables the double-side reading function
so that all documents are read without missing the back side( s) of the
documents, even where the groups of documents include both a group of
single-sided documents and a group of double-sided documents." App. Br.
1 7. We are not persuaded.
Appellants read limitations into representative claim 1 that do not
exist. Claim 1 does not recite a function setting section for enabling or
configured to handle a document group that has both a single-sided
document and a double-sided document with information on both surfaces.
Rather, claim 1 recites "a plurality of bundles of documents, ... each of
which bundles is made up of a least one document" and "a function setting
section for enabling the double-side reading function when enabling the
separating function." App. Br. 20 (Claims App'x). Moreover, we decline to
import embodiments found in the disclosure into claim 1. See, e.g., Spec.
5:9--15 (discussing carrying out an output process for each document bundle
even in the case where a bundle is made up of both a single-sided document
and a double-sided document).
Appellants also argue Gotoh does not disclose a function setting
section for enabling a double-side reading function when enabling a
separating function, contending the cited paragraphs do not address
double-sided reading or separating. App. Br. 17-19 (citing Gotoh i-fi-13, 76,
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218-20, 223). We are not persuaded. First, we refer above regarding how
Gotoh and Takahashi teach the recited "separating function." Second, as
also stated above, Gotoh teaches both a known duplex scanning (e.g.,
double-sided reading function) mode and a known blank-document-page
insert mode. See Gotoh i-fi-1 4, 218-20, 222, Fig. 15; see also Ans. 5 (citing
Gotoh i-fi-1218-20 and Takahashi 23 :35--45, 53-67). Furthermore, as broadly
recited, "a function setting section" is not limited to one window or a single
tab. App. Br. 20 (Claims App'x); see In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
In the Reply Brief, Appellants recognize "[t]he combination of Gotoh
and Takahashi ... provides ... an arrangement in which a user selects a
plurality of functions manually to enable a plurality of functions." Reply
Br. 6. Nonetheless, Appellants assert "[t]he subject matter of claim 1 is
distinct from the combination of Gotoh and Takahashi on that point." Id.
Yet, this contention amounts to nothing more than a mere assertion without
sufficient factual evidence, which is not persuasive. See, e.g., In re Huang,
100 F.3d 135, 139--40 (Fed. Cir. 1996).
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-16, which are not
separately argued.
DECISION
We affirm the Examiner's rejection of claims 1-16 under§ 103.
No time period for taking any subsequent action in connection with
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this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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