Ex Parte Tani et al

Patent Trial and Appeal Board

Sep 26, 2017

13275998 (P.T.A.B. Sep. 26, 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.
13/275,998 10/18/2011 Takeshi Tani 70404.2352/sz 8502
54072 7590 09/28/2017
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
MILIA, MARK R
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
JKEATING@KBIPLAW.COM
u spto @ 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 TAKESHI TANI and MIKIYA OKADA
Appeal 2017-004502
Application 13/275,998
Technology Center 2600
Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appeal 2017-004502
Application 13/275,998
INVENTION
The invention is directed to an image forming apparatus having a trial
copy function and a control method thereof. Spec. 1:10—12. Claim 1 is
illustrative and is reproduced below:
1. An image forming apparatus including a display that
displays an information input screen image allowing input of
information, and an input that is arranged on said display and
specifies a designated position on said information input screen
image, and
having a trial copy function of producing, when an
instruction to produce multiple set of copies of a one- or multi­
page document is given, a copy or a set of copies to allow a user
to confirm that the copy or the set of copies are well; wherein
if said trial copy function is designated and a position of
one or a plurality of copy start keys displayed on said information
input screen image is specified by said input, after the copy or
the set of copies of said document are produced, said display
erases said one or a plurality of copy start keys from said
information input screen image, and displays a first key that,
when operated, directly causes execution of the trial copy and a
second key that produces copies of remaining number of set
number of copies, on said information input screen image; and
if said trial copy function is not designated and a position
of said one or a plurality of copy start keys displayed on said
information input screen image is specified by said input, all of
said multiple set of copies are produced; said one or a plurality
of copy start keys function as one or a plurality of keys that
produce a copy or a set of copies of said document if said trial
copy function is designated, and function as one or a plurality of
keys that produce all of said multiple set of copies if said trial
copy function is not designated.
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REFERENCES
Okada et al.
Kodama et al.
Ishigure
US 2006/0092453 Al
US 2009/0150779 Al
US 2010/0134826 Al
May 4, 2006
June 11, 2009
June 3, 2010
Sep. 24, 2010Shibukawa et al. JP 2010-212955
REJECTIONS AT ISSUE
Claims 1, 2, 4, 5, 11, 12, 14, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shibukawa and Okada.
Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shibukawa, Okada, and Ishigure.
Claims 6—10 and 16—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shibukawa, Okada, and Kodama.
The issue presented for our review by Appellants and the Examiner is
whether the Examiner’s obviousness rejection is proper. Because we cannot
determine the proper scope of the claim, we do not answer this issue. The
issue we decide is whether the claim satisfies the requirements of 35 U.S.C.
§112, second paragraph.
ISSUES
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Application 13/275,998
ANALYSIS
Section 103 rejections of claims 1—20
Where a claim is so indefinite that “considerable speculation as to
meaning of the terms employed and assumptions as to the scope of such
claims” is needed, it would be imprudent for us to pass judgment on such a
rejection (under § 103(a)). See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
We are unable to determine whether the Examiner’s obviousness rejection is
proper because discerning the proper scope of the claim requires undue and
improper speculation, as discussed in our new ground of rejection below.
We pro forma reverse the Examiner’s rejections of claims 1—20 under
35 U.S.C. § 103(a).
New Ground of Rejection under 35 U.S.C. Section 112, second
paragraph
Under 35 U.S.C. § 112, second paragraph, the Specification must
conclude with “one or more claims particularly pointing out and distinctly
claiming the subject matter” regarded as the invention. This definiteness
requirement “secure[s] to the patentee all to which he is entitled” and
“apprise[s] the public of what is still open to them.” Markman v. Westview
Instruments, Inc., 517 U.S. 370, 373 (1996) (quotation and brackets
omitted).
Applying the broadest reasonable interpretation of a claim, the Office
establishes a prima facie case of indefmiteness with a rejection explaining
how the metes and bounds of a pending claim are not clear because the
claim contains words or phrases whose meaning is unclear. See In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); Ex Parte
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Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable ... as
indefinite”).
In this proceeding, we apply the test for indefmiteness approved by
the Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.” Ex Parte McAward, Appeal
2015-006416 ( PTAB August 25, 2017) (precedential), quoting Packard,
751 F.3d at 1310, 1314; see also Packard at 1313 (stating that “claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms”).
The limitations of claim 1 are ambiguous, and are amenable to
multiple interpretations. The ambiguities of claim 1 appear to be the result
of translating the claim from another language into the English language,
where the literal meaning of the claim is different than the actual meaning in
Appellants’ original disclosure. We ask the Examiner and Appellants to
resolve all ambiguities in all pending claims during subsequent prosecution.
As the Federal Circuit stated in Halliburton Energy Servs., Inc. v. M-ILLC,
514 F.3d 1244, 1255 (Fed. Cir. 2008):
the patent drafter is in the best position to resolve the ambiguity
in the patent claims, and it is highly desirable that patent
examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
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To aid Appellants and the Examiner, we identify the following ambiguities
in claim 1.
The claim term “a trial copy function of producing, when an
instruction to produce multiple set of copies ... is given, a copy or a set of
copies to allow a user to confirm that the copy or the set of copies are well”
is amenable to two plausible constructions. The literal meaning of this term
encompasses activating a trial function to produce a trial copy, when also
giving an instruction to produce multiple copies, before confirming the trial
copy “is well.” However, the scope of this claim term, when read in light of
Appellants’ Specification, encompasses producing a trial copy to confirm
whether the trial copy “is well,” or satisfactory, before producing additional
copies. See Spec. 10:21—33; 12:15-16; 13:1—4; 15:16—30; Fig. 7. The two
plausible constructions render this claim term unclear. Miyazaki, 89
USPQ2d at 1211. Further, the literal construction of producing a trial copy
to allow a user to confirm the copy is well, when giving an instruction to
produce multiple copies (before confirming the trial copy is well), is
“incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention” to a person of ordinary skill. Packard, 751 F.2d at 1311.
The claim term “if said trial copy function is designated” makes no
sense in the context of Appellants’ disclosure. The ordinary meaning of
“designate” is to set apart for a specific purpose, or to call by a distinctive
term or expression. The ordinary meaning of the claim term “if said trial
copy function is designated” encompasses calling the trial copy function by
a distinctive term or expression, which would not result in any subsequent
action of producing a trial copy. Appellants’ Specification discloses “if an
area having the indication of ‘trial copy’ is pressed,” a trial copy is
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ultimately produced. Spec. 10:32—33; 15:16—30. The scope of “if said trial
copy function is designated,” when read in light of the Specification,
encompasses, “if the trial copy key is pressed.” However, the word
“designated” as claimed does not mean pressed or selected by a user. Given
that this claim term is open to multiple meanings, and the ordinary meaning
of this claim term makes little sense in light of the Specification, the scope is
unclear.
If we were to interpret “if said trial copy function is designated” to
mean if said trial copy function key is pressed by a user, then the subsequent
condition of “and a position of one or a plurality of copy start keys displayed
on said information input screen image is specified by said input” makes no
sense. For example, the broadest reasonable interpretation of “copy start
keys” encompasses keys that cause the system to start producing all copies.
If we interpret these conditionals to mean if a user presses a trial copy key
(to produce a trial copy), and if a user also presses a copy start key (to
produce all copies), then this results in mutually exclusive conditions, which
would never be performed. A user would either press a trial copy key to
produce a trial copy, or would press a copy start key, to produce all copies.
A user would not do both together. The meaning of this claim term is
“incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention.”
Further, the literal meaning of “specify” is to mention or name
specifically. The scope of “and a position of one or a plurality of copy start
keys displayed on said information input screen image is specified by said
input” encompasses mentioning or naming a position of a copy start key on
an input screen, which does not result in producing a copy. Given that the
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claimed conditions are open to multiple meanings, and the ordinary meaning
is incoherent, the scope is unclear.
Further, “said input” is unclear, because the meaning of this claim
term encompasses a value or data that is “input,” and also encompasses an
arrangement of input keys on a display. For example, the preamble recites
“allowing input of information, and an input that is arranged on said
display.” The antecedent basis of the subsequent phrase “said input” recited
in the body of the claim is unclear.
The claim term “after the copy or the set of copies of said document
are produced, said display” performs several functions, is disconnected from
the adjacent conditional “if said trial copy function is designated and a
position of one or a plurality of copy start keys displayed on said
information input screen image is specified by said input.” Further, the
claim does not recite a limitation that causes the system to produce the trial
copy. Rather, the claim recites that a trial copy is produced, without reciting
a cause that produces the trial copy, and that, at any time after the copy is
produced, additional functions are performed. The literal meaning of
if said trial copy function is designated and a position of one or
a plurality of copy start keys displayed on said information input
screen image is specified by said input, after the copy or the set
of copies of said document are produced, said display erases [a
copy start key] and displays [first and second keys]
encompasses if the trial function is called by a distinctive term, and if a
position of a copy start key on an input screen is mentioned or named, and,
at any time after a trial copy is produced, then the display erases a copy start
key and displays first and second keys. Appellants’ Specification discloses
that the results of a user pressing a trial copy key are: (a) producing a trial
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copy, then (b) erasing start keys 232, 234 shown in Figure 8 from the
display, and (c) displaying trial copy key 646 and trial end key 642 on a
screen that also displays print setting keys, as shown in Figure 10. See Spec.
15:16—30. Because this claim term is amenable to multiple interpretations,
the scope is unclear.
The claim term “after the copy or the set of copies of said document
are produced . . . causing] execution of the trial copy” is unclear, because
“the copy” as claimed is a trial copy, and the subsequently claimed “the trial
copy” is also a trial copy. The claim does not indicate whether antecedent
basis of “the trial copy” in the claim is “the copy,” or whether “the trial
copy” is a different trial copy that lacks antecedent basis.
The meaning of “said display erases said one or a plurality of copy
start keys from said information input screen image, and displays ... a
second key that produces copies of remaining number of set number of
copies, on said information input screen image” is incoherent. The claim
does not recite a specific function of the “copy start key.” The broadest
reasonable meaning of “copy start key” encompasses a key that causes the
system to start producing all of the remaining copies. One of ordinary skill
would not be able to ascertain the meaning of erasing the copy start key, and
at the same time displaying a key that is the same as the copy start key.
The claim term
if said trial copy function is not designated and a position of said
one or a plurality of copy start keys displayed on said information
input screen image is specified by said input, all of said multiple
set of copies are produced; said one or a plurality of copy start
keys function as one or a plurality of keys that produce a copy or
a set of copies of said document if said trial copy function is
designated, and function as one or a plurality of keys that produce
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all of said multiple set of copies if said trial copy function is not
designated
makes no sense in the English language.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
1 under 35 U.S.C. § 112, second paragraph, for indefmiteness. Claim 11
recites similar limitations and is rejected for the reasons given in our
rejection of claim 1. Claims 2—10 and 12—20 depend from their respective
independent claims 1 and 11. As such, claims 2—10 and 12—20 are also
indefinite. Therefore, we reject claims 1—20 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim Appellants’ invention.
DECISION
We pro forma reverse the Examiner’s rejections of claims 1—20 under
35 U.S.C. § 103.
In a new ground of rejection, we reject claims 1—20 under 35 U.S.C.
§112, second paragraph, as being indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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).
REVERSED
37 C.F.R, $ 41.50(b)
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