Ex Parte Honma

Patent Trial and Appeal Board

Feb 26, 2019

14310271 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/310,271 06/20/2014
54072 7590 02/28/2019
SHARP KABUSHIKI KAISHA
C/0 KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Tomoyuki Honma
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.
70404.2360/ha 9876
EXAMINER
SIDDO, IBRAHIM
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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@KBIPLA W.COM
uspto@kbiplaw.com
epreston@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOYUKI HONMA
Appeal 2018-003699
Application 14/310,271
Technology Center 2600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, and 4--18, i.e., all pending claims. Because the
claims have been twice rejected, we have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI
1994) (precedential).
We affirm.
1 Appellant identifies the real party in interest as Sharp Kabushiki Kaisha.
Br. 2.
Appeal2018-003699
Application 14/310,271
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention relates to an
information processing device and an image output system, each of which
use application data which has been converted into data of a compatible
format file for printing." Spec. 1: 12-15. 2 The Specification explains that:
[a]n information processing device includes: a data generating
section generating compatible format data of application data; a
selecting section causing selection of an output process among
plural types of output processes that can use the compatible
format data; a searching section searching image output
device( s) connected on a network and extracting just an image
output device at least capable of carrying out the selected output
process; a disclosure/reception section disclosing the image
output device extracted by the searching section and receiving
(a) a selection of an image output device serving as a
compatible format data transmission destination, (b) an entry
of an output setting, and ( c) an instruction for executing the
output setting; and a command generating section generating
a command for causing the selected output process to be
executed based on the entered output setting, upon receiving
the instruction for executing the output process from the
disclosure/reception section.
Id. at 97 (Abstract).
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed June 20, 2014; "Adv. Act." for the Advisory Action,
mailed January 19, 2017; "Non-Final Act." for the Non-Final Office Action,
mailed April 4, 2017; "Br." for the Appeal Brief, filed June 30, 2017; and
"Ans." for the Examiner's Answer, mailed November 2, 2017.
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Application 14/310,271
1. A method of processing data which is transmitted from
an information processing device to an image output device and
converting application data prepared based on an application
program to format data capable of being printed out, the method
comprising the steps of:
(A) causing selection of a printing process that uses the
format data to perform printing;
(B) searching image output devices connected via a
network to extract at least one of the image output devices that
is capable of printing the format data during the printing
process previously selected in step (A);
(C) causing the information processing device to obtain,
from the at least one of the image output devices extracted,
information on a process capable of being carried out by the at
least one of the image output devices by use of the format data,
the information including information on the printing process
previously selected in step (A) and information on a process
other than printing;
(D) (i) causing the information processing device to
display the at least one of the image output devices extracted
such that a user is able to select, from the at least one of the
image output devices extracted, an image output device capable
of serving as a transmission destination of the format data,
(ii) causing the information processing device to
display a process capable of being carried out by use of
the format data by the selected image output device, the
displaying being carried out based on information on the
process obtained from the selected image output device
and the displaying being carried out such that the user is
able to select the process,
(iii) causing the information processing device to
cause (a) an entry of a process setting of the selected
process and (b) an instruction to execute the process with
use of a user interface, and
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(iv) causing the information processing device to
receive (a) the entry of the process setting and (b) the
instruction; and
(E) causing the selected image output device to execute
the selected process based on the entered process setting, upon
receiving the instruction to execute the process in the step (D).
Br. 12-13 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § I03(a), the
Examiner relies on the following prior art:
Lobiondo US 5,287,194
Selvaraj US 2008/0180712 Al
Inoue US 2010/0110500 Al
Hehmeyer et al. ("Hehmeyer") US 2010/0235216 Al
Taneda et al. ("Taneda") US 8,081,324 B2
The Rejections on Appeal
Feb. 15, 1994
July 31, 2008
May 6, 2010
Sept. 16, 2010
Dec. 20, 2011
Claims 1 and 5-18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lobiondo, Taneda, and Inoue. Non-Final Act. 3-11.
Claim 2 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Lobiondo, Taneda, Inoue, and Hehmeyer. Non-Final Act. 11-12.
Claim 4 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Lobiondo, Taneda, Inoue, and Selvaraj. Non-Final Act. 12-13.
ANALYSIS
We have reviewed the§ I03(a) rejections in light of Appellant's
arguments that the Examiner erred. For the reasons explained below, we
concur with the Examiner's conclusions concerning unpatentability under
§ I03(a). We adopt the Examiner's findings and reasoning for the§ I03(a)
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Application 14/310,271
rejections in the Non-Final Office Action (Non-Final Act. 2-13) and Answer
(Ans. 2-7). We add the following to address and emphasize specific
findings and arguments.
The§ 103 (a) Rejection of Claims 1 and 5-18
INDEPENDENT CLAIMS 1 AND 7:
ALLEGED DEFICIENCIES IN THE REFERENCES
Appellant argues that the Examiner erred in rejecting independent
claims 1 and 7 because "Lobiondo does not teach or suggest that the printers
... perform processes other than printing (e.g., sending facsimiles or
emails)." Br. 7. That argument does not persuade us of Examiner error
because the Examiner relies on Inoue, not Lobiondo, to teach or suggest an
"image output device," e.g., a printer, that performs a "process other than
printing" according to the claims. See Non-Final Act. 6-7; Ans. 3-5.
The Examiner correctly finds that Inoue discloses an "image output
device" that performs a "process other than printing" according to the
claims. Inoue ,r,r 34, 38, 90-93, Fig. 8; see Non-Final Act. 6 (citing Inoue
,r 91 ); Ans. 3 ( citing Inoue ,r 91 ). In particular, Inoue describes a
"multifunction peripheral (MFP) capable of executing a plurality of
functions such as a scan function, a printing function, and a facsimile
transmission function." Inoue ,r 34. The Specification identifies a
multifunction peripheral as an "image output device." Spec. 1 :22-2:3,
19: 11-15. Inoue instructs that a multifunction peripheral may include a
color-reading mode, an image-scaling function, an encryption function, and
an OCR function. Inoue ,r,r 91-93, Fig. 8; see Non-Final Act. 6 (citing Inoue
,r 91 ); Ans. 3 ( citing Inoue ,r 91 ). Moreover, the multifunction peripheral
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may "transmit[] image data to a file server" or "transmit[] image data to an
e-mail server by e-mail." Inoue ,r 38, Fig. 8.
Appellant contends that "no logical combination of Lobiondo,
Taneda, and Inoue teaches or suggests that the printers ... of Lobiondo
obtain information on a process other than printing." Br. 7. That contention
does not distinguish claims 1 and 7 from Lobiondo or the other references
because the claims do not require that an "image output device," e.g., a
printer, obtains "information on a process other than printing." Br. 12-14
(Claims App.). Instead, the claims specify that an "information processing
device," e.g., a computer, obtains "information on a process capable of being
carried out by" an "image output device," e.g., a printer, including
"information on a process other than printing." Id.
Further, the Examiner correctly finds that in Inoue an "information
processing device," i.e., an administrator computer, obtains information on
(1) a printing process and (2) a process other than printing, e.g., a color-
reading mode, an image-scaling function, an encryption function, and an
OCR function. Non-Final Act. 6 (citing Inoue ,r,r 86, 90-91, Fig. 7); Ans. 3
(citing Inoue ,r,r 34, 82-83, 91, Fig. 7); see Inoue ,r,r 34--36, 90-93,
Figs. 7-8. Consistent with that finding, the Specification identifies a
computer as an "information processing device." Spec. 1:18-19, 10:8-9,
78: 13-16, 90: 10-11. In Inoue, the administrator computer obtains
"extended function information" about a color-reading mode, an image-
scaling function, an encryption function, and an OCR function. Inoue
,r,r 35-36, 91-93, Fig. 8; see id. ,r,r 7, 10.
Appellant asserts that in Inoue process selection occurs "after
searching for apparatuses on the network" and "obtaining the function
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information of the selected apparatus." Br. 8. Appellant then asserts that in
Lobiondo process selection occurs "before searching for the printers" that
"are capable of performing the printing process." Id. Based on those
assertions, Appellant contends that the combination of references does not
yield the claimed invention because "one of ordinary skill in the art would
have modified Lobiondo and Taneda such that the step of obtaining
information on a process capable of being carried out by the printers ... of
Lobiondo would have been performed before the selection of a printing
process." Id. at 8-9. Appellant then urges that "no logical and proper
combination of Lobiondo, Taneda, Inoue, teaches or suggests" step (B) in
claims 1 and 7, which occurs after "selection of a printing process" in
step (A). Id. at 9.
Appellant's arguments do not persuade us of Examiner error because
they misapprehend how the Examiner applies the references to the claims.
The Examiner does not rely on a combination of references to teach or
suggest step (B) in claims 1 and 7. See Non-Final Act. 3; Ans. 4. Instead,
the Examiner correctly finds that Lobiondo teaches or suggests steps (A)
and (B): "Lobiondo teaches the concept of selecting a printing process that
uses the format data to perform printing first, and then search [for] a printing
device capable of printing the format data." Adv. Act. 2; see Non-Final
Act. 2; see also Ans. 4--5.
Specifically, Lobiondo discloses (1) a multifunction machine with a
controller section, a scanner section, and a printer section and (2) a network
with a plurality of multifunction machines. Lobiondo, 3 :5-8, 3: 18-27,
5:68---6:2, Figs. 1-2; see id. at 4:7-8, 8:14--34 (claim 5); see also Ans. 3.
A user at a workstation enters print-job criteria, such as required completion
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time, document type ( e.g., facsimile, e-mail, copy), "sizing criteria,
formatting, [and] margins." Lobiondo, 2:48-51, 3:32-38, 3:51---63; see id.
at 6:22-25, 7:16-40 (claim 1); see also Ans. 4. A scheduler (computer)
determines what machines on the network "are capable of producing the
job," e.g., "does the job require color reproduction, special paper, graphics,
etc." Lobiondo, 4:46-50; see id. at 2:24--31, 3:29-30, 3:41-50, 3:64---65; see
also Ans. 4, 6. The scheduler then checks the job-capable machines for their
availability. Lobiondo, 4:50-52; see id. at 2:24--31, 3:64---65, 7:16-40
( claim 1 ). The scheduler "optimally schedules the job to one or a plurality
of' machines "based on [machine] availability and capability" to "obtain an
efficient use of all available resources." Id. at 2:51-54, 3:49-50, 6:27-29;
see id. at 3:41-50, 3:64---65. In addition, the scheduler "sends [a]
confirmation back to the user that the job is either being printed at one or
more locations, will be printed at a determined location at a later time, or
cannot meet the entered criteria and as such cannot print the job." Id.
at 6:30-34; see id. at 2:35-38, 5:23-27. If the scheduler cannot meet the
entered print-job criteria, the confirmation may include a prompt for the user
to enter updated print-job criteria, such as a later completion time. Id.
at 6:34--41, 7:16-40 (claim 1); see id. at 5:23-33; see also Ans. 4--5.
Thus, Lobiondo discloses "selection of a printing process" according
to step (A), e.g., due to entering print-job criteria, such as required
completion time, document type ( e.g., facsimile, e-mail, copy), "sizing
criteria, formatting, [and] margins." Lobiondo, 2:48-51, 3:32-38, 3:51---63;
see id. at 6:22-25, 7:16-40 (claim 1); see also Ans. 4. A "selection of a
printing process" occurs because a user enters print-job criteria. Lobiondo
also discloses "searching image output devices connected via a network"
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according to step (B), e.g., to determine job-capable devices. Lobiondo,
4:46-50; see id. at 2:24--31, 3:41-50, 3:64--65; see also Ans. 4.
Further, the Examiner correctly finds that Inoue discloses step (C) in
claims 1 and 7. See Non-Final Act. 6; Ans. 3. As explained above, in Inoue
an administrator computer ("information processing device") obtains
information on (1) a printing process and (2) a process other than printing,
e.g., a color-reading mode, an image-scaling function, an encryption
function, or an OCR function. See Non-Final Act. 6; Ans. 3; see also Inoue
,r,r 34--36, 90-93, Figs. 7-8. As Appellant asserts, the administrator
computer obtains information about a processing apparatus after the
administrator selects the processing apparatus from among those connected
to the network. Inoue ,r 85, Fig. 7; see ,r,r 90-92, Fig. 8. But that sequence
of events does not impair the rejection because an obviousness analysis
should consider "what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art." See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971).
Here, as the Examiner correctly reasons, "the limitation [step (C)] is
disclosed, and as such, the teachings of Inoue can be used to modify the
workstation ... of Lobiondo such that the combination as a whole teaches
all the limitations claimed in claims 1 and 7." Ans. 4. "A person of ordinary
skill is also a person of ordinary creativity, not an automaton," and "in many
cases ... will be able to fit the teachings of multiple patents together like
pieces of a puzzle." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21
(2007). We note that Appellant did not file a Reply Brief to refute the
Examiner's reasoning in the Answer.
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Application 14/310,271
INDEPENDENT CLAIMS 1 AND 7:
MOTIVATION TO COMBINE THE REFERENCES
Appellant argues that "the Examiner failed to adequately explain how
and why the combination of Lobiondo and Taneda would have allegedly
been further modified in view of Inoue." Br. 9. Appellant also argues that
"one of ordinary skill in the art would not have been motivated to modify
Lobiondo in view of Taneda and Inoue in the manner alleged by the
Examiner." Id.
Appellant's arguments do not persuade us of Examiner error. "[T]he
law does not require that the references be combined for the reasons
contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992); see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371
(Fed. Cir. 2017). "[ A ]ny need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining" references. KSR, 550 U.S. at 420.
Here, the Examiner properly finds that Inoue benefits a user in
Lobiondo because Inoue "provide[s] the user with all the capability of all"
devices "that can print his/her print job such that the user can efficiently
select" a device "that can print his/her formatted print job." Ans. 4. Further,
the Examiner properly finds that "Inoue' s teaching to have the user to know
the capability of the" devices "by display[ing] the capabilities of the"
devices to facilitate selection improves on Lobiondo's prompt for the user to
enter updated print-job criteria when the networked machines cannot meet
the initially entered print-job criteria. Id. at 4--5. Because "the system
already fail[ ed] once," displaying device capabilities allows the user to
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confidently select a suitable device. Id. at 5---6. We note that Appellant did
not file a Reply Brief to refute the factual findings in the Answer.
SUMMARY FOR INDEPENDENT CLAIMS 1 AND 7
For the reasons discussed above, Appellant's arguments have not
persuaded us that the Examiner erred in rejecting claims 1 and 7 for
obviousness based on Lobiondo, Taneda, and Inoue. Thus, we sustain the
§ 103(a) rejection of claims 1 and 7.
DEPENDENT CLAIMS 5, 6, AND 8-18
Claims 5, 6, and 8-13 depend from claim 1, while claims 14--18
depend from claim 7. Appellant does not argue patentability separately for
these dependent claims. Br. 5-11. Thus, we sustain the§ 103(a) rejection
of these dependent claims for the same reasons as claims 1 and 7. See
37 C.F.R. § 4I.37(c)(l)(iv).
The§ 103(a) Rejections of Claims 2 and 4
Claims 2 and 4 depend from claim 1. Appellant does not argue
patentability separately for these dependent claims. Br. 5-11. Thus, we
sustain the§ 103(a) rejections of these dependent claims for the same
reasons as claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 1, 2, and 4--18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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