Ex Parte Honma

Patent Trials and Appeals BoardFeb 26, 2019

14310271 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/310,271 06/20/2014 54072 7590 02/28/2019 SHARP KABUSHIKI KAISHA C/0 KEA TING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 FIRST NAMED INVENTOR Tomoyuki Honma 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. 70404.2360/ha 9876 EXAMINER SIDDO, IBRAHIM ART UNIT PAPER NUMBER 2675 NOTIFICATION DATE DELIVERY MODE 02/28/2019 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 TOMOYUKI HONMA Appeal 2018-003699 Application 14/310,271 Technology Center 2600 Before JAMES R. HUGHES, ERIC S. FRAHM, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 2, and 4--18, i.e., all pending claims. Because the claims have been twice rejected, we have jurisdiction under 35 U.S.C. Â§Â§ 6(b) and 134(a). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm. 1 Appellant identifies the real party in interest as Sharp Kabushiki Kaisha. Br. 2. Appeal2018-003699 Application 14/310,271 STATEMENT OF THE CASE The Invention According to the Specification, the "invention relates to an information processing device and an image output system, each of which use application data which has been converted into data of a compatible format file for printing." Spec. 1: 12-15. 2 The Specification explains that: [a]n information processing device includes: a data generating section generating compatible format data of application data; a selecting section causing selection of an output process among plural types of output processes that can use the compatible format data; a searching section searching image output device( s) connected on a network and extracting just an image output device at least capable of carrying out the selected output process; a disclosure/reception section disclosing the image output device extracted by the searching section and receiving (a) a selection of an image output device serving as a compatible format data transmission destination, (b) an entry of an output setting, and ( c) an instruction for executing the output setting; and a command generating section generating a command for causing the selected output process to be executed based on the entered output setting, upon receiving the instruction for executing the output process from the disclosure/reception section. Id. at 97 (Abstract). Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows (with formatting added for clarity): 2 This decision uses the following abbreviations: "Spec." for the Specification, filed June 20, 2014; "Adv. Act." for the Advisory Action, mailed January 19, 2017; "Non-Final Act." for the Non-Final Office Action, mailed April 4, 2017; "Br." for the Appeal Brief, filed June 30, 2017; and "Ans." for the Examiner's Answer, mailed November 2, 2017. 2 Appeal2018-003699 Application 14/310,271 1. A method of processing data which is transmitted from an information processing device to an image output device and converting application data prepared based on an application program to format data capable of being printed out, the method comprising the steps of: (A) causing selection of a printing process that uses the format data to perform printing; (B) searching image output devices connected via a network to extract at least one of the image output devices that is capable of printing the format data during the printing process previously selected in step (A); (C) causing the information processing device to obtain, from the at least one of the image output devices extracted, information on a process capable of being carried out by the at least one of the image output devices by use of the format data, the information including information on the printing process previously selected in step (A) and information on a process other than printing; (D) (i) causing the information processing device to display the at least one of the image output devices extracted such that a user is able to select, from the at least one of the image output devices extracted, an image output device capable of serving as a transmission destination of the format data, (ii) causing the information processing device to display a process capable of being carried out by use of the format data by the selected image output device, the displaying being carried out based on information on the process obtained from the selected image output device and the displaying being carried out such that the user is able to select the process, (iii) causing the information processing device to cause (a) an entry of a process setting of the selected process and (b) an instruction to execute the process with use of a user interface, and 3 Appeal2018-003699 Application 14/310,271 (iv) causing the information processing device to receive (a) the entry of the process setting and (b) the instruction; and (E) causing the selected image output device to execute the selected process based on the entered process setting, upon receiving the instruction to execute the process in the step (D). Br. 12-13 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence ofunpatentability under 35 U.S.C. Â§ I03(a), the Examiner relies on the following prior art: Lobiondo US 5,287,194 Selvaraj US 2008/0180712 Al Inoue US 2010/0110500 Al Hehmeyer et al. ("Hehmeyer") US 2010/0235216 Al Taneda et al. ("Taneda") US 8,081,324 B2 The Rejections on Appeal Feb. 15, 1994 July 31, 2008 May 6, 2010 Sept. 16, 2010 Dec. 20, 2011 Claims 1 and 5-18 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Lobiondo, Taneda, and Inoue. Non-Final Act. 3-11. Claim 2 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Lobiondo, Taneda, Inoue, and Hehmeyer. Non-Final Act. 11-12. Claim 4 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Lobiondo, Taneda, Inoue, and Selvaraj. Non-Final Act. 12-13. ANALYSIS We have reviewed theÂ§ I03(a) rejections in light of Appellant's arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning unpatentability under Â§ I03(a). We adopt the Examiner's findings and reasoning for theÂ§ I03(a) 4 Appeal2018-003699 Application 14/310,271 rejections in the Non-Final Office Action (Non-Final Act. 2-13) and Answer (Ans. 2-7). We add the following to address and emphasize specific findings and arguments. TheÂ§ 103 (a) Rejection of Claims 1 and 5-18 INDEPENDENT CLAIMS 1 AND 7: ALLEGED DEFICIENCIES IN THE REFERENCES Appellant argues that the Examiner erred in rejecting independent claims 1 and 7 because "Lobiondo does not teach or suggest that the printers ... perform processes other than printing (e.g., sending facsimiles or emails)." Br. 7. That argument does not persuade us of Examiner error because the Examiner relies on Inoue, not Lobiondo, to teach or suggest an "image output device," e.g., a printer, that performs a "process other than printing" according to the claims. See Non-Final Act. 6-7; Ans. 3-5. The Examiner correctly finds that Inoue discloses an "image output device" that performs a "process other than printing" according to the claims. Inoue ,r,r 34, 38, 90-93, Fig. 8; see Non-Final Act. 6 (citing Inoue ,r 91 ); Ans. 3 ( citing Inoue ,r 91 ). In particular, Inoue describes a "multifunction peripheral (MFP) capable of executing a plurality of functions such as a scan function, a printing function, and a facsimile transmission function." Inoue ,r 34. The Specification identifies a multifunction peripheral as an "image output device." Spec. 1 :22-2:3, 19: 11-15. Inoue instructs that a multifunction peripheral may include a color-reading mode, an image-scaling function, an encryption function, and an OCR function. Inoue ,r,r 91-93, Fig. 8; see Non-Final Act. 6 (citing Inoue ,r 91 ); Ans. 3 ( citing Inoue ,r 91 ). Moreover, the multifunction peripheral 5 Appeal2018-003699 Application 14/310,271 may "transmit[] image data to a file server" or "transmit[] image data to an e-mail server by e-mail." Inoue ,r 38, Fig. 8. Appellant contends that "no logical combination of Lobiondo, Taneda, and Inoue teaches or suggests that the printers ... of Lobiondo obtain information on a process other than printing." Br. 7. That contention does not distinguish claims 1 and 7 from Lobiondo or the other references because the claims do not require that an "image output device," e.g., a printer, obtains "information on a process other than printing." Br. 12-14 (Claims App.). Instead, the claims specify that an "information processing device," e.g., a computer, obtains "information on a process capable of being carried out by" an "image output device," e.g., a printer, including "information on a process other than printing." Id. Further, the Examiner correctly finds that in Inoue an "information processing device," i.e., an administrator computer, obtains information on (1) a printing process and (2) a process other than printing, e.g., a color- reading mode, an image-scaling function, an encryption function, and an OCR function. Non-Final Act. 6 (citing Inoue ,r,r 86, 90-91, Fig. 7); Ans. 3 (citing Inoue ,r,r 34, 82-83, 91, Fig. 7); see Inoue ,r,r 34--36, 90-93, Figs. 7-8. Consistent with that finding, the Specification identifies a computer as an "information processing device." Spec. 1:18-19, 10:8-9, 78: 13-16, 90: 10-11. In Inoue, the administrator computer obtains "extended function information" about a color-reading mode, an image- scaling function, an encryption function, and an OCR function. Inoue ,r,r 35-36, 91-93, Fig. 8; see id. ,r,r 7, 10. Appellant asserts that in Inoue process selection occurs "after searching for apparatuses on the network" and "obtaining the function 6 Appeal2018-003699 Application 14/310,271 information of the selected apparatus." Br. 8. Appellant then asserts that in Lobiondo process selection occurs "before searching for the printers" that "are capable of performing the printing process." Id. Based on those assertions, Appellant contends that the combination of references does not yield the claimed invention because "one of ordinary skill in the art would have modified Lobiondo and Taneda such that the step of obtaining information on a process capable of being carried out by the printers ... of Lobiondo would have been performed before the selection of a printing process." Id. at 8-9. Appellant then urges that "no logical and proper combination of Lobiondo, Taneda, Inoue, teaches or suggests" step (B) in claims 1 and 7, which occurs after "selection of a printing process" in step (A). Id. at 9. Appellant's arguments do not persuade us of Examiner error because they misapprehend how the Examiner applies the references to the claims. The Examiner does not rely on a combination of references to teach or suggest step (B) in claims 1 and 7. See Non-Final Act. 3; Ans. 4. Instead, the Examiner correctly finds that Lobiondo teaches or suggests steps (A) and (B): "Lobiondo teaches the concept of selecting a printing process that uses the format data to perform printing first, and then search [for] a printing device capable of printing the format data." Adv. Act. 2; see Non-Final Act. 2; see also Ans. 4--5. Specifically, Lobiondo discloses (1) a multifunction machine with a controller section, a scanner section, and a printer section and (2) a network with a plurality of multifunction machines. Lobiondo, 3 :5-8, 3: 18-27, 5:68---6:2, Figs. 1-2; see id. at 4:7-8, 8:14--34 (claim 5); see also Ans. 3. A user at a workstation enters print-job criteria, such as required completion 7 Appeal2018-003699 Application 14/310,271 time, document type ( e.g., facsimile, e-mail, copy), "sizing criteria, formatting, [and] margins." Lobiondo, 2:48-51, 3:32-38, 3:51---63; see id. at 6:22-25, 7:16-40 (claim 1); see also Ans. 4. A scheduler (computer) determines what machines on the network "are capable of producing the job," e.g., "does the job require color reproduction, special paper, graphics, etc." Lobiondo, 4:46-50; see id. at 2:24--31, 3:29-30, 3:41-50, 3:64---65; see also Ans. 4, 6. The scheduler then checks the job-capable machines for their availability. Lobiondo, 4:50-52; see id. at 2:24--31, 3:64---65, 7:16-40 ( claim 1 ). The scheduler "optimally schedules the job to one or a plurality of' machines "based on [machine] availability and capability" to "obtain an efficient use of all available resources." Id. at 2:51-54, 3:49-50, 6:27-29; see id. at 3:41-50, 3:64---65. In addition, the scheduler "sends [a] confirmation back to the user that the job is either being printed at one or more locations, will be printed at a determined location at a later time, or cannot meet the entered criteria and as such cannot print the job." Id. at 6:30-34; see id. at 2:35-38, 5:23-27. If the scheduler cannot meet the entered print-job criteria, the confirmation may include a prompt for the user to enter updated print-job criteria, such as a later completion time. Id. at 6:34--41, 7:16-40 (claim 1); see id. at 5:23-33; see also Ans. 4--5. Thus, Lobiondo discloses "selection of a printing process" according to step (A), e.g., due to entering print-job criteria, such as required completion time, document type ( e.g., facsimile, e-mail, copy), "sizing criteria, formatting, [and] margins." Lobiondo, 2:48-51, 3:32-38, 3:51---63; see id. at 6:22-25, 7:16-40 (claim 1); see also Ans. 4. A "selection of a printing process" occurs because a user enters print-job criteria. Lobiondo also discloses "searching image output devices connected via a network" 8 Appeal2018-003699 Application 14/310,271 according to step (B), e.g., to determine job-capable devices. Lobiondo, 4:46-50; see id. at 2:24--31, 3:41-50, 3:64--65; see also Ans. 4. Further, the Examiner correctly finds that Inoue discloses step (C) in claims 1 and 7. See Non-Final Act. 6; Ans. 3. As explained above, in Inoue an administrator computer ("information processing device") obtains information on (1) a printing process and (2) a process other than printing, e.g., a color-reading mode, an image-scaling function, an encryption function, or an OCR function. See Non-Final Act. 6; Ans. 3; see also Inoue ,r,r 34--36, 90-93, Figs. 7-8. As Appellant asserts, the administrator computer obtains information about a processing apparatus after the administrator selects the processing apparatus from among those connected to the network. Inoue ,r 85, Fig. 7; see ,r,r 90-92, Fig. 8. But that sequence of events does not impair the rejection because an obviousness analysis should consider "what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art." See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, as the Examiner correctly reasons, "the limitation [step (C)] is disclosed, and as such, the teachings of Inoue can be used to modify the workstation ... of Lobiondo such that the combination as a whole teaches all the limitations claimed in claims 1 and 7." Ans. 4. "A person of ordinary skill is also a person of ordinary creativity, not an automaton," and "in many cases ... will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). We note that Appellant did not file a Reply Brief to refute the Examiner's reasoning in the Answer. 9 Appeal2018-003699 Application 14/310,271 INDEPENDENT CLAIMS 1 AND 7: MOTIVATION TO COMBINE THE REFERENCES Appellant argues that "the Examiner failed to adequately explain how and why the combination of Lobiondo and Taneda would have allegedly been further modified in view of Inoue." Br. 9. Appellant also argues that "one of ordinary skill in the art would not have been motivated to modify Lobiondo in view of Taneda and Inoue in the manner alleged by the Examiner." Id. Appellant's arguments do not persuade us of Examiner error. "[T]he law does not require that the references be combined for the reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). "[ A ]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining" references. KSR, 550 U.S. at 420. Here, the Examiner properly finds that Inoue benefits a user in Lobiondo because Inoue "provide[s] the user with all the capability of all" devices "that can print his/her print job such that the user can efficiently select" a device "that can print his/her formatted print job." Ans. 4. Further, the Examiner properly finds that "Inoue' s teaching to have the user to know the capability of the" devices "by display[ing] the capabilities of the" devices to facilitate selection improves on Lobiondo's prompt for the user to enter updated print-job criteria when the networked machines cannot meet the initially entered print-job criteria. Id. at 4--5. Because "the system already fail[ ed] once," displaying device capabilities allows the user to 10 Appeal2018-003699 Application 14/310,271 confidently select a suitable device. Id. at 5---6. We note that Appellant did not file a Reply Brief to refute the factual findings in the Answer. SUMMARY FOR INDEPENDENT CLAIMS 1 AND 7 For the reasons discussed above, Appellant's arguments have not persuaded us that the Examiner erred in rejecting claims 1 and 7 for obviousness based on Lobiondo, Taneda, and Inoue. Thus, we sustain the Â§ 103(a) rejection of claims 1 and 7. DEPENDENT CLAIMS 5, 6, AND 8-18 Claims 5, 6, and 8-13 depend from claim 1, while claims 14--18 depend from claim 7. Appellant does not argue patentability separately for these dependent claims. Br. 5-11. Thus, we sustain theÂ§ 103(a) rejection of these dependent claims for the same reasons as claims 1 and 7. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). TheÂ§ 103(a) Rejections of Claims 2 and 4 Claims 2 and 4 depend from claim 1. Appellant does not argue patentability separately for these dependent claims. Br. 5-11. Thus, we sustain theÂ§ 103(a) rejections of these dependent claims for the same reasons as claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). DECISION We affirm the Examiner's decision to reject claims 1, 2, and 4--18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 11