Ex Parte Maeda

Patent Trial and Appeal Board

Oct 31, 2016

10876947 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/876,947 0612512004
37013 7590 11/02/2016
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
FIRST NAMED INVENTOR
ToruMaeda
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.
CAN0-1011 2253
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
mail@rkmllp.com
EOfficeAction@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORU MAEDA
Appeal2014-001312
Application 10/87 6,94 7
Technology Center 2400
Before THU A. DANG, CATHERINE SHIANG, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 37--41, 48, 51, and 53. Claims 1-36, 42--47, 49,
50, and 52 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2014-001312
Application 10/87 6,94 7
A. INVENTION
According to Appellant, the invention relates to "an image
communication system using an electronic-mail apparatus which delivers
messages, documents and the like via a communication network" (Spec. 1,
11. 8-11).
B. REPRESENTATIVE CLAIM
Claim 37 is exemplary:
37. A receiving apparatus comprising:
a reception unit configured to receive a first electronic
mail, to which an image file is attached, from a transmitting
apparatus, in a case where the receiving apparatus has not yet
transmitted capability information indicating a capability of an
image processing function of the receiving apparatus to the
transmitting apparatus;
a processing unit configured to process the first
electronic mail received by the reception unit; and
a transmission unit configured to transmit, after the first
electronic mail has been received by the reception unit, a
second electronic mail including the capability information to
the transmitting apparatus as a response to the first electronic
mail so as to enable the transmitting apparatus to recognize the
capability of the image processing function of the receiving
apparatus,
wherein the units are implemented, at least in part, by a
computer and a memory device of the receiving apparatus.
App. Br. 17 (Claims App'x).
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Application 10/87 6,94 7
C. PRIOR ART REFERENCES AND REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Claims 37--40, 48, 51, and 53 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Bloomfield (US 6,025,931;
issued Feb. 15, 2000), and Toyoda et al. (US 5,812,278; issued Sept. 22,
1998).
Claim 41 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Bloomfield, Toyoda, and Mori (US 6,061, 146; issued
May 9, 2000).
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding the combination of Bloomfield and Toyoda teaches or suggests a
"receiving apparatus" comprising "a reception unit configured to receive a
first electronic mail, to which an image file is attached, from a transmitting
apparatus" and "a transmission unit configured to transmit ... a second
electronic mail including the capability information to the transmitting
apparatus as a response to the first electronic mail" (claim 3 7).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Bloomfield
1. Bloomfield discloses sending hardcopy document via a fax device to
its recipient via electronic mail through a data network (Abstract), wherein
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Application 10/87 6,94 7
the system receives and saves fax image data generated by the sender's fax
device that represents the document to be communicated via e-mail (col. 13,
11. 10-13), and the sender is provided with an optional confirmation that the
e-mail address and fax image data have been received by the system (col. 1,
11. 18-22).
2. The attachment is converted to a widely popular image format (e.g.,
TIFF) which is compatible with a majority of browsers and email readers
(col. 13, 1. 66-col. 14, 1. 2), wherein when the e-mail device operating a
browser or e-mail reader is not immediately compatible with the image data
format/encoding into which the attachment has been converted/encodes,
additional user interaction will be necessary to appropriately decode the
attachment prior to viewing (col. 14, 11. 8-14).
Toyoda
3. Toyoda discloses transmitting a prescribed paper size and a prescribed
image resolution treatable in the apparatus of the receiving side from the
apparatus of the receiving side to the apparatus of the transmitting side (col.
13, 1. 67---col. 14, 1. 3). When an electronic mail asking about a prescribed
paper size and a prescribed image resolution is transmitted from the
transmitting side to the receiving side, another electronic mail for informing
about the prescribed paper size and a prescribed image resolution is returned
from the receiving side to the transmitting side (col. 14, 11. 7-13).
IV. ANALYSIS
As to claim 3 7, Appellant contends
... the Bloomfield reference does not disclose the claimed
transmission unit configured to transmit, after the Fax-Email
270 (allegedly the claimed first electronic mail) has been
received by the E-mail device 118 (apparently alleged to be the
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Application 10/87 6,94 7
claimed reception unit), a second electronic mail including the
capability information to the Facsimile-to-Electronic mail
communication system 100 (allegedly the claimed transmitting
apparatus) as a response to the Fax Email 270 so as to enable
the system 100 to recognize the capability of the image
processing function of the receiving apparatus (to which the E-
mail device 118 belongs).
App. Br. 7.
Although Appellant does not contest the Examiner's finding that
Toyoda discloses sending a prescribed email (Step S 122) from the Receiving
Side to the Transmitting Side indicating capability information so as to
enable the system to recognize the capability of the image processing
function of the receiving apparatus (App. Br. 9-10), Appellant contends a
person of ordinary skill in the art would not have found it obvious to arrive
at Appellant's invention "without the benefit of hindsight" (App. Br. 10). In
particular, Appellant contends Bloomfield's Fax-Email 270 "closely
corresponds to the electronic mail transmitted at step S128 in FIG. 9 of the
Toyoda et al. reference," wherein a person of ordinary skill in the art "would
transmit the Fax-Email 270 [of Bloomfield] as part of step S128 in FIG. 9 of
the Toyoda et al. reference, which occurs after step S122" (id.).
Appellant also contends that even if the Examiner finds Toyoda's
Request Email to be the claimed "first electronic mail" (App. Br. 13), there
is "no reason to add an image file to the Request Email" because "doing so
would appear to a person of ordinary skill in the art to detrimentally further
lengthen communication time," wherein "the Examiner has not established a
prima facie case of obviousness" to do so (App. Br. 14).
We have considered all of Appellant's arguments and evidence
presented. However, we disagree with Appellant's contentions regarding the
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Application 10/87 6,94 7
Examiner's rejections of the claims. We are unpersuaded of error with
respect to the Examiner's conclusion that the claimed subject matter would
have been obvious over the combined teachings.
We agree with the Examiner's finding "Bloomfield teaches sending
the initial fax-email to the sender ... ,"which includes an attachment, and
"Toyoda teaches sending an email from the recipient to the sender," which
includes "capability information of the recipient" (Ans. 4). In particular,
Bloomfield discloses a fax device sending a hardcopy document attachment
to its recipient via electronic mail (FF 1 ), wherein if the e-mail device
operating a browser or e-mail reader is not immediately compatible with the
image data format/ encoding into which the attachment has been
converted/encodes (i.e., as a response to the electronic mail), additional user
interaction will be necessary to appropriately decode the attachment (FF 2).
Furthermore, Toyoda discloses sending a second electronic mail for
providing capability information of the receiving side (the prescribed paper
size and a prescribed image resolution) from the receiving side to the
transmitting side in response to a first email from the transmitting side
indicating that capability information of the receiving side is needed (FF 3).
We agree with the Examiner's finding that Bloomfield's "additional
user interaction" may comprise "the transmission of the recipient capability
information to the sender" as taught in Toyoda (Ans. 5). That is, we agree
with the Examiner that Bloomfield discloses and suggests that as a response
to receiving a first email including an email attachment, additional steps are
used to enable the recipient device to obtain the appropriate format/encoding
(FF 1-2), and that Toyoda discloses and suggests sending a second email
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including the capability information to the transmitting apparatus as a
response to receipt of a first email (FF 3).
We disagree with Appellant's contention that a person of ordinary
skill in the art would not have found it obvious to arrive at Appellant's
invention "without the benefit of hindsight" (App. Br. 10). We are guided
by the Supreme Court's viewing the modification of prior art teachings by a
practitioner in the art: an improved product in the art is obvious if that
"product [is] not [one] of innovation but of ordinary skill and common
sense" (KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). The
skilled artisan is "[a] person of ordinary creativity, not an automaton" (id.).
We find this reasoning is applicable here. We find such modification
of Bloomfield's system in need of capability information of the recipient
device, to provide the needed capability information as disclosed in Toyoda
as a response, would have merely been a "predictable use of prior art
elements according to their established functions" (id. at 417).
Appellant has not provided any evidence that such modification
would have been "uniquely challenging or difficult for one of ordinary skill
in the art" (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007)), or would have yielded unexpected results. Instead, as the
Examiner finds, Bloomfield discloses requiring additional user interaction
after receiving an email attachment without the recipient's appropriate
capability information, wherein Bloomfield's "additional user interaction"
may comprise "the transmission of the recipient capability information to the
sender" as taught in Toyoda (Ans. 5). We agree with the Examiner that
Appellant's invention is simply a modification of familiar prior art teachings
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(as taught or suggested by the cited references) that would have realized a
predictable result (KSR, 550 U.S. at 421).
Therefore, on this record, and by the preponderance of evidence, we
are not persuaded of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness. Accordingly, we also
sustain the Examiner's§ 103(a) rejection of claim 37 and claims 37--40, 48,
51, and 53 falling therewith (App. Br. 15) over Bloomfield and Toyoda.
Appellant does not provide substantive arguments for claim 41 depending
from claim 3 7 (id.), according! y, we also affirm the rejection of claim 41
over Bloomfield and Toyoda, in further view of Mori.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 3 7--41, 48, 51, and 5 3
under 35 U.S.C. § 103(a).
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).
AFFIRMED
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