Ex Parte Yamada

Patent Trial and Appeal Board

Mar 20, 2013

11294406 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROKAZU YAMADA
____________

Appeal 2010-011275
Application 11/294,406
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-18. Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to “an image forming apparatus to which a
function can be added by downloading and installing software for adding the
function, and a function adding method of the image forming apparatus.”
(Spec. 1). Claim 1, reproduced below, is representative of the claimed
subject matter:
1. An image forming apparatus to which a function can be
added by downloading and installing software for adding the
function, comprising:
an information acquiring unit which acquires function
information regarding the function which can be added to the
image forming apparatus;
an operation panel which displays a first key in a
selectable state, wherein the first key corresponds to a second
key displayed to enable selection of the function when the
function is added; and
a function managing unit which downloads and installs
the software for adding the function, to add the function when
the first key is selected.

(Disputed limitations emphasized).

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REJECTIONS
1. Claims 1-3, 8, 10, 11, 16, and 18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Minagawa (US Patent Application
Publication 2004/0223182).

2. Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Minagawa and Guthrie (US Patent Application Publication
2004/0158811).

3. Claims 5 and 13 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings and suggestions of
Minagawa, Guthrie, and Gazdik (US Patent 6,301,708).

4. Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Minagawa, Guthrie, and Miyamoto (US Patent 6,662,363).

5. Claims 7 and 15 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings and suggestions of
Minagawa, Guthrie, Miyamoto, and Barfield (US Patent 6,948,166).

6. Claims 9 and 17 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combined teachings and suggestions of
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Minagawa and Kim (US Patent Application Publication
2004/0006766).

ANALYSIS
Representative Claim 1
Based on Appellant’s arguments, we decide the appeal of the first-
stated anticipation rejection on the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).

Issue: Under §102, did the Examiner err in finding that the cited Minagawa
reference discloses:
An image forming apparatus to which a function can be
added by downloading and installing software for adding the
function, comprising:
. . . .
an operation panel which displays a first key in a
selectable state, wherein the first key corresponds to a second
key displayed to enable selection of the function when the
function is added,
within the meaning of representative claim 1, and the commensurate
language of independent claims 10 and 18? (Disputed limitations
emphasized).
Disputed limitation 1: Appellant contends Minagawa does not
disclose “adding a function or software for the function to an image forming
apparatus, which is identified with reference numeral 1500 in Figure 2.”
(App. Br. 7).
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We observe that Appellant broadly construes “the invention is not
limited to MFP’s [Multi-Function Peripheral], and applies to any type of
image forming apparatus, including printers.” (App. Br. 7, emphasis added).
Therefore, on this record, we are not persuaded that the Examiner’s
claim interpretation is overly broad, unreasonable, or inconsistent with the
Specification:
The Examiner considers a combination of a client
apparatus and printer disclosed by Minagawa (Fig. 1) as an
image forming apparatus. Nerwin v. Erlichman, 168 USPQ 177,
179 (PTO Bd. Of Int. 1969). The mere fact that a given
structure is integral does not preclude its consisting of various
elements. The current application specification also describes
the image forming apparatus as a complex apparatus
(Specification paragraph 0048), it comprises a CPU 1, a ROM
2, a RAM3, a HDD 4, an input unit 5, a display 6, a printer 7, a
scanner 8, and an interface 9 (Specification paragraph 0052).
(Ans. 18).

Disputed limitation 2: Appellant contends that “Minagawa does not
disclose an operation panel which displays a first key in a selectable state,
wherein the first key corresponds to a second key displayed to enable
selection of the function, when the function is added, as in Appellant[s’]
independent claim 1.” (App. Br. 6, emphasis added). In particular,
Appellant contends “[t]he ‘install start’ button [in Minagawa] does not
correspond to a key that is used to select the function that is installed by
pressing the ‘install start’ button.” (App. Br. 6-7).
We disagree. Consistent with the Examiner’s finding of anticipation
(Ans. 16), we find Minagawa’s Figure 35 discloses an operation panel
which displays a first key in a selectable state [Minagawa’s start install
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button 1101], wherein the first key corresponds to a second key displayed to
enable selection of the function when the function is added, within the
meaning of representative claim 1. As found by the Examiner (Ans. 16), we
agree that any key associated with the software installed by selecting the
first key (Minagawa’s start install button 1101) is the second key (e.g.,
Minagawa watermark key (Fig. 7) is replaced by a newly installed
“PRINTING METHOD” user interface which includes a key (second key)
that enables selection of single-sided printing (Fig. 9)).
For these reasons, on this record, we are not persuaded of Examiner
error regarding the finding of anticipation for representative independent
claim 1, and for independent claims 10 and 18 which recite the
aforementioned disputed limitations in commensurate form. Therefore, we
sustain the Examiner’s anticipation rejection of claim 1, and claims 2, 31, 8,
10, 11, 16, and 18 (not argued separately) which fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).

1 Regarding dependent claim 3, Appellant merely recites the language of the
claim, briefly refers to the discussion of claim 1 regarding Minagawa’s
“install button,” and then asserts the language of claim 3 is not disclosed by
Minagawa. (App. Br. 8). See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”). See also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”)
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Claims 4-7 and 12-15 rejected under § 103
Regarding the Examiner’s rejections 2-5 under § 103, Appellant
contends that dependent claims 4-7 and 12-15 include features which are not
disclosed in Minagawa. (App. Br. 8-9). Appellant additionally contends
that the cited secondary references do not overcome the deficiencies of
Minagawa. (Id.). However, a statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim. See 37 C.F.R. § 41.37(c)(1)(iv). Moreover, we find no
deficiencies in Minagawa, for the reasons discussed above regarding claim
1. On this record, we are not persuaded of Examiner error. Therefore, we
sustain the Examiner’s obviousness rejections of dependent claims 4-7 and
12-15
Claims 9 and 17 rejected under § 103
Claim 9 recites: “The image forming apparatus according to claim 1,
wherein the first key is displayed in the same position and the same design
as the second key in the case where the software for adding the function is
installed and the function is added.” Regarding the Examiner’s rejection of
claims 9 and 17 under § 103, Appellant contends:
Paragraph [0022] of Kim discloses at operation 36, the
device driver file, which is provided from the outside and
installed at operation 34, is also copied and stored in the
computer, for example, in a hard disk drive of the computer. At
operation 38, after installation of the device driver, an icon for
reinstallation of the device driver is generated. The icon is for
reinstallation of a device driver and is not for enabling selection
of the function. The Kim patent does not provide the feature of
displaying a first key in the same position and having the same
design as the second key, wherein the second key is a key to
select the function as in claim 9. Thus, claim 9 is
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distinguishable over Minagawa and Kim. Dependent claim 17
is distinguishable over Minagawa and Kim for reasons similar
to those discussed with respect to claim 9.
(App. Br. 9).
As an initial matter of claim construction, the scope of an apparatus
claim is not limited by a “wherein” clause that does not limit the claim to a
particular structure.2 Assuming arguendo that weight may be given to the
disputed “wherein” clause, we find the weight of the evidence supports the
Examiner’s legal conclusion of obviousness. In particular, we find Kim’s
reinstallation of a device driver at least suggests displaying the respective
keys in the same position and the same design, as proffered by the Examiner.
(See Ans. 20; Kim, Fig. 2, #38, para. [0022]). Therefore, we sustain the
Examiner’s obviousness rejection of representative claim 9 over Minagawa
and Kim. Claim 17 (not separately argued) falls with claim 9. See 37 C.F.R.
§ 41.37(c)(1)(iv).

2 See MPEP § 2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012).

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Reply Brief
Appellant presents a new argument for claim 3 in the Reply Brief (7)
that was not raised in the principal Brief. We find this argument to be
untimely and do not give it consideration. The Examiner relied upon paras.
[0108]-[0113] and Figures 7-13 of Minagawa in the Final Office Action (p.
3, mailed Nov. 18, 2009). Although Appellant had full opportunity to
address these findings in the principal Brief, Appellant did not address these
cited portions of Minagawa until the Reply Brief (7). “Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered.” McBride v. Merrell Dow and Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted). “The
failure to raise all issues and arguments diligently, in a timely fashion, has
consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision).

DECISION
We affirm the Examiner’s rejection of claims 1-3, 8, 10, 11, 16, and
18 under § 102.
We affirm the Examiner’s rejections of claims 4-7, 9, 12-15, and 17
under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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