Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Aug 12, 2020

15255476 - (D) (P.T.A.B. Aug. 12, 2020)

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.
15/255,476 09/02/2016 Kunihiko TSUJIMOTO KOHNP0139WOUSA 5046
72119 7590 08/12/2020
MARK D. SARALINO ( SHARP )
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
ROGERS, SCOTT A
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
08/12/2020 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte KUNIHIKO TSUJIMOTO

_________________

Appeal 2019-003157
Application 15/255,476
Technology Center 2600
_________________

Before JASON V. MORGAN, DEBORAH KATZ, and JOHN A. EVANS,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–13. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Sharp Kabushiki Kaisha. (Appeal Br.
2.)
2 We consider the Final Office Action issued July 11, 2018 (“Final Act.”),
the Appeal Brief filed December 7, 2018 (“Appeal Br.”), the Examiner’s
Answer issued on January 18, 2019 (“Ans.”), and the Reply Brief filed
March 11, 2019 (“Reply Br.”).
Appeal 2019-003157
Application 15/255,476

2
Appellant claims a system for processing images that can be
controlled by portable devices, such as smart phones. (Spec. ¶¶ 1–2.)
Appellant presents five independent claims: claims 1, 7, 8, 9, and 10.
(See Appeal Br. 13–16.) Claim 1 is representative and recites:
An image processing system in which an image processing
device generates image data and transmits it to an image receiving
device, wherein
the image receiving device includes a controller that executes:
a step of accepting a selection of an image processing
device through a print scanning application program stored in
advance; and
a step of transmitting destination information of the
image receiving device and setting information for generating
image data to the image processing device for which the
selection is accepted, and
the image processing device includes a controller that executes:
a step of generating image data based on the setting
information transmitted from the image receiving device; and
a step of transmitting the generated image data to a
destination indicated by the destination information transmitted
from the image receiving device,
wherein the image receiving device displays a screen for
accepting a selection of an image processing device able to
communicate with the image receiving device on an application of the
image receiving device so as to accept the selection of an image
processing device.

(Appeal Br. 13.)
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Application 15/255,476

3
The Examiner rejected claims 1–5 and 7–13 under 35 U.S.C. § 103(a)
as being obvious over Parks3 and either Bunn4 or Nuggehalli.5
Appellant refers to elements of claim 1 regarding the steps carried out
by the image processing device (i.e., transmitting destination information,
generating image data, and transmitting the generated image data), but fails
to raise any argument about these elements in light of the Examiner’s
rejection. (See Appeal Br. 9.) “A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.” 37 C.F.R. § 41.37(c)(1)(iv) (2018). See In re Lovin, 652 F.3d
1349, 1356 (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.”) Thus, to the extent
Appellant refers to these portions of claim 1 to argue against the Examiner’s
rejection, we are not persuaded of any error in the prima facie case against
the patentability of claim 1.
Instead, Appellant raises an argument against the rejection of
dependent claim 12, which recites:
The image processing system according to claim 1, wherein the
image receiving device displays one or more image processing

3 Parks et al., “Image-Processing System and Image-Processing Method,”
U.S. Patent 8,914,479 B2, issued December 16, 2014.
4 Bunn et al., “Exposing Mobile-Enterprise Printers Using a Universal Plug
and Play Proxy,” U.S. Patent Application Publication 2004/0167974 A1,
published August 26, 2004.
5 Nuggehalli and Hong, “Document Processing Job Control via a Mobile
Device,” U.S. Patent Application Publication 2013/0021643A1, published
January 24, 2013.
Appeal 2019-003157
Application 15/255,476

4
devices and the image receiving device accepts the selection of the
image processing device from the one or more displayed image
processing devices.
(Appeal Br. 16.)
The Examiner cites to Parks for teaching an image receiving device
that accepts the selection of an image processing device form one or more
displayed image processing devices. (See Final Act. 10, citing Parks 9:40–
42.) Parks teaches that the problem of inaccurate GPS coordinates used to
identify multifunctional peripheral devices (“MFPs”) in a system “can be
overcome by displaying a list of MFPs 10 registered in the session on the
display unit 32 of the mobile phone 11 and allowing the user to select the
appropriate MFP 10.” (Parks 9:39–43.)
Appellant argues that this portion of Parks does not render the system
of claim 12 obvious because it describes screen selection of an MPF from
several MFPs only when a session between a mobile phone and the MFP is
not properly started. (See Appeal Br. 11, citing Parks 9:40–42; see Reply
Br. 2.) According to Appellant, claim 12 does not place any conditions on
when a screen for selecting an image processing device is used on the image
receiving device, and therefore is not rendered obvious by this teaching of
Parks. (See Appeal Br. 11.)
We are not persuaded by Appellant’s argument. Appellant does not
dispute that Parks teaches an image receiving device that displays one or
more image processing devices and accepts the selection of the image
processing devices displayed. Claim 12 is not limited by the reason for
displaying multiple image processing devices and, therefore, encompasses
any reason. “[A] generic claim cannot be allowed to an applicant if the prior
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Application 15/255,476

5
art discloses a species falling within the claimed genus.” In re Slayter, 276
F.2d 408, 411 (CCPA 1960).
The Examiner also rejected claim 6 as being obvious under 35 U.S.C.
§ 103(a) over Parks, Nuggehalli, and Numata.6 (See Final Act. 10–11.)
Appellant does not raise any arguments against the rejection of claim 6.
Accordingly, we are not persuaded that the Examiner erred.

Conclusion
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–5, 7–13

103(a) Parks, Bunn or
Nuggehalli
1–5, 7–13

6 103(a) Parks, Nuggehalli,
Namata
6
Overall
Outcome
1–13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.]

AFFIRMED

6 Numata, U.S. Patent Application Publication 2012/0086980 A1, published
April 12, 2012.