Ex Parte Inoue

Patent Trial and Appeal Board

Aug 23, 2016

13087482 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/087,482 04/15/2011
54072 7590 08/25/2016
SHARP KABUSHIKI KAISHA
C/O KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Kiyoshi Inoue
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.
70404.2329/ng 6341
EXAMINER
JACKSON, DARYL L
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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 KIYOSHI INOUE
Appeal2015-002788
Application 13/087,482
Technology Center 2600
Before ALLEN R. MacDONALD, JEFFREYS. SMITH, and
JOHN R. KENNY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1---6. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2015-002788
Application 13/087,482
Exemplary Claim
Exemplary claim 1 reads as follows (emphasis added):
1. An image forming apparatus, comprising:
an image forming portion which forms an image of image data
on recording paper; and
a paper feed portion which feeds the recording paper to the
image forming portion,
the image forming apparatus being configured to carry out a
repeat printing function which forms images by repeatedly arranging
the image data on one sheet of the recording paper, and a trial printing
function which, when forming a plurality of the images for one of the
image data, forms only one image for the image data first, and
subsequently, forms the image again in response to input of an image
formation instruction, wherein
the image forming portion enables execution of the trial
printing function in a mode of executing the repeat printing function,
and in forming the image by the trial printing function, forms only the
one image on a part of the recording paper for the image data to be
printed by means of repeat printing, and in response to input of an
instr11ction to execute printing by the repeat printing fi.1nction, feeds
the recording paper on which the image is formed by the trial printing
function again by the paper feed portion and forms a scheduled
quantity of images by the repeat printing function in a blank space on
the fed recording paper, and
the trial printing function is repeated so as to form the image
again after first forming the one image, and an indication is added to
the one image formed by the trial printing function if the one image
is not used to form the scheduled quantity of images by the repeat
printing function.
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Appeal2015-002788
Application 13/087,482
Rejection on Appeal
The Examiner rejected claims 1---6 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Ebina et al. (US 2007 /0285697
Al), Tamayo et al. (US 2008/0130037 Al), and Kato (US 6,141,111). 1
Appellant's Contentions2
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Referring to column 5, lines 39-42 of Kato, an extra-copy
designation sheet 100 depicted in FIG. 4A of Kato is described.
The extra-copy designation sheet 100 includes: an image index
portion 102, which is a print (reduced-sized image) based on
image data; and an extra-copy check portion 103, which enables
a user to designate a particular image for "extra-copy printing."
In other words, according to Kato, by adding an "x" to
the extra-copy check portion 103 in FIG. 4A, it is possible for
the user to designate the particular image for "extra-copy
printing."
However, there is no teaching or suggestion in Kato,
even if somehow combined with Ebina in view of Tamayo, that
"an indication is added to the one image formed by the trial
printing function if the one image is not used to form the
scheduled quantity of images by the repeat printing function,"
as claimed.
App. Br. 5---6, emphasis added.
1 Separate patentability is not argued for claims 2---6. Except for our ultimate
decision, this rejection of claims 2---6 is not discussed further herein.
2 These contentions are determinative as to the rejections on appeal.
Appellant's additional contentions are not discussed particularly herein.
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Appeal2015-002788
Application 13/087,482
2. Appellant also contends that the Examiner erred in rejecting claim
1under35 U.S.C. § 103(a) because:
[I]n Kato:
(1) an "x" must be added adjacent to the image in order to print
the image - therefore, even if the "x" is considered an
"indication," it is not provided to restrict printing of the image
(i.e., indicate that the image is not used for repeat printing); and
(2) the "x" of Kato is not provided on the image itself, i.e., it is
not "added to the one image" as claimed, but instead the "x" of
Kato is provided adjacent to the image (in the extra-copy check
portion 103 of Kato).
App. Br. 6.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellant's above contention 1 regarding an indication is added,
we agree with Appellant except as to the phrase "teaching or suggestion."
The analysis supporting a § 103 rejection is not limited to a teaching or
suggestion. Rather, the requirement is only that the Examiner show "'the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains."' KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007)(quoting 35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he
analysis need not seek out precise teachings directed to the specific subject
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Appeal2015-002788
Application 13/087,482
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.").
Against this backdrop, we conclude that, as to the point argued by
Appellant, the Examiner fails to provide such a showing in the rejection
from which this appeal is taken. The Examiner found "As shown in [Kato]
Fig. 8 check data corresponding to desired images for a schedule quantity of
extra-copy. Examiner interprets the unchecked boxes are added indications
of images not used from the scheduled quantity of images." Final Act. 6.
We conclude that unchecked boxes (i.e., the lack of an indication) is not
sufficient to render obvious the required "an indication is added." We agree
that the Examiner has failed to provide sufficient articulated reasoning as to
this argued limitation.
As to Appellant's above contention 2, we disagree with Appellant.
We do not find the argued limitations "restrict printing of the image" and
"on the image itself' explicitly set forth in claim 1. Nor do we find
language in claim 1 which would lead to these requirements. Rather, the
claim more broadly recites that "an indication is added to the one image
formed by the trial printing function."
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1---6 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
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Appeal2015-002788
Application 13/087,482
DECISION
The Examiner's rejection of claims 1---6 is reversed.
REVERSED
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