Ex Parte OKIGAMI

Patent Trial and Appeal Board

Jul 1, 2016

13907583 (P.T.A.B. Jul. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/907,583 05/31/2013
127226 7590 07/06/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Masafumi OKIGAMI
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.
1560-0686PUS 1 3550
EXAMINER
GUILLERMETY, FRED
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
07/06/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAFUMI OKIGAMI
Appeal2015-002367
Application 13/907,583
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. EV ANS, 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---6, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Sharp Kabushiki
Kaisha. App. Br. 1.
Appeal2015-002367
Application 13/907,583
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to various aspects
of a communication system in which an image forming device (e.g., a
printer) prints an image based on image data received from a mobile
terminal (e.g., a mobile phone). Spec. 1: 13-17, 3: 10-4: 8; Abstract. 2
The claims under consideration include independent claims 1-3 and 5,
as well as dependent claims 4 and 6.
Representative Claims
Independent claims 1 and 3 exemplify the subject matter of the claims
under consideration. Claims 1 and 3 read as follows, with italics identifying
the limitations at issue and underlining identifying key claim language:
1. A communication system having a mobile terminal and
an image forming device, the image forming device including a
reception section that receives image data from the mobile
terminal and printing an image based on the received image
data,
wherein the image forming device further includes a
transmission section that transmits a communication address of
the image forming device to the mobile terminal,
wherein the reception section receives image data
transmitted with the communication address of the image
.forming device by the mobile terminal,
wherein communication between the mobile terminal and
the image forming device is performed in wireless
communication corresponding to an IEEE 802.11 standard,
2 This decision employs the following abbreviations: "Spec." for
Specification; "Final Act." for the Final Office Action, mailed February 20,
2014; "App. Br." for the Appeal Brief, filed August 19, 2014; and "Ans." for
the Examiner's Answer, mailed October 27, 2014.
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Application 13/907,583
wherein the communication address of the image forming
device is uniquely associated with and identifies the image
forming device,
wherein the communication address ofthe image forming
device is used for printing the image based on the image data of
the mobile terminal, and
wherein the mobile terminal includes:
a selection accepting section that accepts a
selection of wireless printing application program from
plural application programs;
a display processing section that displays, side by
side, thumbnails of plural items of image data stored in a
storage section after the wireless printing application
program is started;
a data selection accepting section that accepts a
selection of image data from plural thumbnails displayed
on a display section; and
an image data transmission section that wirelessly
transmits the selected image data with the
communication address of the image forming device to
the image forming device,
wherein the reception section receives the selected image
data, when the selected image data is transmitted with the
communication address of the image forming device from the
mobile terminal.
3. A mobile terminal, comprising:
a selection accepting section that accepts a selection of
wireless printing application program from plural application
programs;
an address reception section that receives a
communication address of an image forming device in wireless
communication corresponding to an IEEE 802.11 standard after
the wireless printing application program is started;
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Application 13/907,583
a display processing section that displays, side by side,
thumbnails of plural items of image data stored in a storage
section after the wireless printing application program is
started;
a data selection accepting section that accepts a selection
of image data from plural thumbnails displayed on a display
section; and
an image data transmission section that wirelessly
transmits the selected image data with the communication
address of the image forming device to the image forming
device,
wherein the communication address ofthe image forming
device is uniquely associated with and identifies the image
forming device,
wherein the communication address ofthe image forming
device is used for printing the image based on the image data of
the mobile terminal.
App. Br. 12, 13-14 (Claims App'x).
The Prior Art Supporting the Rejection on Appeal
As evidence ofunpatentability, the Examiner relies on the following
prior art:
Oba et al. ("Oba")
Minatogawa
Kato
US 2004/0078169 Al
US 2008/0297 607 Al
US 2009/0066998 Al
The Rejection on Appeal
Apr. 22, 2004
Dec. 4, 2008
Mar. 12, 2009
Claims 1---6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kato in view of Oba and Minatogawa. Final Act. 2-12; App. Br. 5;
Ans. 2.
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ANALYSIS
We have reviewed the rejection of claims 1---6 in light of Appellant's
arguments that the Examiner erred. In doing so, we have evaluated only the
arguments that Appellant actually makes on appeal. Arguments that
Appellant could have made but declined to make are considered waived.
See 37 C.F.R. § 41.37(c)(l)(iv). 3
For the reasons explained below, we disagree with Appellant's
assertions regarding error by the Examiner.
Appellant argues that neither Kato, Oba, nor Minatogawa discloses
sending an image forming device's address to a mobile terminal. App.
Br. 7-8. Based on that asserted failure, Appellant contends that the cited
prior art fails to teach or suggest various limitations containing the phrase
"communication address of the image forming device." App. Br. 7, 9-10.
The Examiner finds, however, that Kato discloses an image forming
device (multifunction peripheral 100) that transmits initialization
information for Bluetooth communications to a mobile terminal (portable
3 An appeal brief must include a "statement identifying ... all other prior
and pending appeals" known to an appellant or its legal representative that
"may be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal." 37 C.F.R.
§ 41.37(c)(l)(ii). Appellant does not identify any related appeals. App.
Br. 1, 10. In contrast, the Examiner notes that this Appeal 2015-002367 in
Application 13/907,583 relates to Appeal 2015-003339 in Application
13/865,667 because the two applications name the same inventor, have the
same assignee, "disclose and claim incredibly similar subject matter," and
are "connected by Terminal Disclaimer." Ans. 3. The Examiner also notes
that the two appeals involve substantially the same arguments. Id. We agree
with the Examiner that Appellant should have identified the two appeals as
related.
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Application 13/907,583
terminal device 200). Final Act. 2-3. More particularly, the Examiner finds
that when the portable terminal device 200 gets "within close range" of the
multifunction peripheral 100, the two devices "begin communicating via
NFC/RFID and from there exchange the necessary information to handshake
the Bluetooth connection." Ans. 5.
Although the Examiner acknowledges that "Kato' s disclosure only
mentions the address information going from" the portable terminal device
200 to the multifunction peripheral 100, the Examiner finds that "in this
arrangement there are only two ways to send the Bluetooth address
information." Ans. 5. The Examiner further finds that "[w]ith only two
ways to exchange the Bluetooth address information, it would have been
obvious to try either method in Kato's arrangement .... " Id. at 6. The
Examiner reasons that:
(1) there was a recognized need to exchange Bluetooth address
information over NFC/RFID, (2) there were a finite number
(i.e., tv,ro) of identified, predictable solutions to the recognized
need (printer to phone or phone to printer), and (3) one of
ordinary skill in the art could have pursued either solution and
had a reasonable expectation of success.
Ans. 6; see also Final Act. 4 ("It is noted that there are a limited number of
choices available as to which device provides the identification data (namely
two) and there is a reasonable expectation of success associated with each.").
In KSR International Co. v. Teleflex Inc., the Supreme Court
explained that "the fact that a combination was obvious to try might show
that it was obvious under§ 103." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Appellant does not address the Examiner's obvious-to-try
determination or respond to the Examiner's reasoning. App. Br. 6-10. We
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agree with the Examiner that it would have been obvious to try either
method in Kato's arrangement, and we adopt the Examiner's reasoning.
In addition, the Examiner relies on Oba as evidence that "either device
can provide identification data when pairing Bluetooth devices." Final
Act. 4; see also Ans. 8 ("Oba clearly suggests that the card ID (that is
Bluetooth Address) can be sent from either device."), 9 ("Oba is relied upon
to further evidence that it is well known in the art for the exchange of
address information to occur in either direction."). Appellant criticizes the
Examiner's reliance on Oba, arguing that "the ID (Bluetooth address) which
is transmitted in Oba is not an address which is inherent to the image
forming apparatus" but instead corresponds to "an ID for identifying a
[mobile] terminal." App. Br. 8. But that argument is not persuasive of error
in the Examiner's obvious-to-try determination.
We observe that even if Oba does not disclose that either device can
provide identification data when pairing Bluetooth devices, Kato includes
that disclosure. In particular, Kato explains that the portable terminal device
200 may include a tag containing communication setting information and
that the "communication setting information may be transmitted to the
[multifunction peripheral] MFP 100" from the portable terminal device 200.
Kato i-fi-151-52. As an alternative, Kato explains that the multifunction
peripheral 100 may include a tag containing communication setting
information and that a control unit transfers the communication setting
information in the multifunction peripheral 100 to the portable terminal
device 200. Kato i153.
Appellant contends that the image data's transmission direction
according to claim 1 "is completely opposite to that of Oba." App. Br. 9.
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The Examiner responds that Kato discloses transmitting image data from a
mobile terminal (portable terminal device 200) to an image forming device
(multifunction peripheral 100) according to claim 1. Ans. 8-9. As the
Examiner correctly states, where a rejection rests on a combination of
references, an appellant cannot establish nonobviousness by attacking the
references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Thus, Appellant's contention concerning transmission-direction
differences fails to persuade us that the Examiner erred.
Appellant further contends that claim 1 requires that "an address of
the image forming device side is transmitted to a mobile terminal first
without obtaining an address of the mobile terminal." App. Br. 9. But
claim 1 does not include language requiring transmission of the image
forming device's address before receipt of the mobile terminal's address. Id.
at 12 (Claims App'x). Nor do the other claims under consideration include
language like that. Id. at 13-15 (Claims App'x).
Appellant also contends that a system according to claim 1
advantageously addresses a security problem due to "leakage of personal
information" that could result from transmission of the mobile terminal's
address before receipt of the image forming device's address. App. Br. 9.
As discussed above, however, the claim 1 does not require transmission of
the image forming device's address before receipt of the mobile terminal's
address.
But even if claim 1 did contain such a requirement, we agree with the
examiner that the alleged advantage "is inherent to the obviousness rejection
of Kato in view of what was obvious to try .... " Ans. 9. "The fact that
appellant has recognized another advantage which would flow naturally
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from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious." Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017
(Fed. Cir. 1986).
Appellant recognizes that the Examiner relies on Minatogawa "to
show that selecting images using thumbnails instead of a list is known in the
art." App. Br. 9. But Appellant does not advance any patentability
arguments based on any differences between the claimed subject matter and
Minatogawa. Id. at 6-10.
Appellant urges that independent claims 2, 3, and 5 are "allowable at
least for the similar reasons as stated" for claim 1. App. Br. 10. Appellant
also urges that dependent claims 4 and 6 are "allowable at least for their
dependency" on the associated independent claims. Id. But Appellant does
not articulate any patentability arguments for claims 2---6 beyond the
arguments regarding claim 1. Id. Because Appellant did not argue the
claims separately, they stand or fall together. See 37 C.F.R.
§ 41.37(c)(l)(iv).
CONCLUSION
Appellant has not established that the Examiner erred in rejecting
claims 1---6 under 35 U.S.C. § 103(a) as unpatentable over Kato in view of
Oba and Minatogawa.
DECISION
The final rejection of claims 1-6 is affirmed.
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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)(l )(iv).
AFFIRMED
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