Ex Parte Ohno

Patent Trial and Appeal Board

Jul 28, 2015

11006620 (P.T.A.B. Jul. 28, 2015)

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.
11/006,620 12/08/2004 Shinichi Ohno 03500.102852. 6373
5514 7590 07/28/2015
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
EXAMINER
CHEN, HUO LONG
ART UNIT PAPER NUMBER
2676
MAIL DATE DELIVERY MODE
07/28/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINICHI OHNO
____________

Appeal 2013-001585
Application 11/006,620
Technology Center 2600
____________

Before BRUCE R. WINSOR, TERRENCE W. McMILLIN,
and KAMRAN JIVANI, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1–24, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

1 The real party in interest identified by Appellant is Canon Kabushiki
Kaisha. (App. Br. 5.)
Appeal 2013-001585
Application 11/006,620

2
STATEMENT OF THE CASE
Appellant’s disclosed invention relates to “releasing a power-saving
mode in a printer connected to a network.” (Spec. 1:7–8.) Claim 1, which is
illustrative, reads as follows:

1. An information processing apparatus for
performing a communication via a network with a print control
apparatus which activates a second interface unit in response to
reception of a first activation instruction through a first
interface unit, said information processing apparatus
comprising:
a first instruction control unit configured to
transmit, via the network, upon input of a print instruction via a
printer driver by a user, the first activation instruction to the
print control apparatus for shifting the print control apparatus
from a first power status in which no print job can be received
to a second power status in which a print job can be received
but cannot be processed;
a reception unit configured to receive, from the
print control apparatus via the network, information indicating
that the print control apparatus has activated a communication
function of the second interface in response to the first
activation instruction transmitted by said first instruction
control unit; and
an output control unit configured to output, via the
network without an instruction by the user, a print job to the
print control apparatus for shifting the print control apparatus
from the second power status to a third power status in which
the print job can be processed and for controlling the print
control apparatus to process the print job, after the reception
unit receives the information from the print control apparatus,
wherein power consumed in the second power
status is larger than power in the first power status and power
consumed in the third power status is larger than power in the
second power status.
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Application 11/006,620

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The Examiner relies on the following prior art in rejecting the claims:
Hashimoto et al. US 2002/0054318 A1 May 9, 2002
(“Hashimoto”)
Parry US 2002/0120659 A1 Aug. 29, 2002
Yamada ’268 US 2002/0134268 A1 Sept. 26, 2002
Agasaveeran et al. US 6,594,709 B1 July 15, 2003
(“Agasaveeran”)
Sandfort et al. US 2003/0179402 A1 Sept. 25, 2003
(“Sandfort”)
Kim US 2004/0156074 A1 Aug. 12, 2004
Yamada ’907 2 US 6,807,907 B2 Oct. 26, 2004
Collard US 6,813,037 B1 Nov. 2, 2004
Nakazawa US 2005/0086332 A1 Apr. 21, 2005

Claims 1, 3, 9, 11, 17, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yamada ’268, Agasaveeran, Collard, and Hashimoto.
(See Final Act. 7–13.)
Claims 2, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamada ’268, Agasaveeran, Collard, Hashimoto, and
Parry. (See Final Act. 13–15.)
Claims 4, 8, 12, 16, 20, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yamada ’268, Agasaveeran, Collard,
Hashimoto, and Nakazawa. (See Final Act. 15–18.)

2 Yamada ’907 is not relied upon by the Examiner. Appellant cites to
Yamada ’268 by column and line numbers. (See, e.g., App. Br. 29.)
However, the copy of Yamada ’268 in the record has page and paragraph
numbers, but has neither column nor line numbers, making Appellant’s
citations unclear and difficult to follow. Although Appellant offers no
explanation, we believe Appellant is citing to Yamada ’907, the issued
patent corresponding to Yamada ’268, rather than the reference relied upon
by the Examiner, and we have considered the Appellant’s arguments
accordingly.
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Application 11/006,620

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Claims 5, 7, 13, 15, 21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yamada ’268, Agasaveeran, Collard,
Hashimoto, and Kim. (See Final Act. 18–20.)
Claims 6, 14, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamada ’268, Agasaveeran, Collard, Hashimoto, and
Sandfort. (See Final Act. 20–22.)
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Aug. 6, 2012; “Reply Br.” filed Nov. 7, 2012) for the positions of
Appellant and the Final Office Action (“Final Act.” mailed Oct. 12, 2011)
and Answer (“Ans.” mailed Sept. 7, 2012) for the findings and conclusions
of the Examiner.

ISSUE
The dispositive issue3 presented by Appellant’s arguments is: Does
the combination of Yamada ’268, Agasaveeran, Collard, and Hashimoto,
and, in particular, does Hashimoto, teach or suggest
information processing apparatus comprising:
a first instruction control unit configured to transmit, via
the network, upon input of a print instruction via a printer
driver by a user, the first activation instruction to the print
control apparatus for shifting the print control apparatus from a
first power status . . . to a second power status . . .[,]
a reception unit configured to receive, from the print
control apparatus via the network, information indicating that
the print control apparatus has activated a communication
function of the second interface in response to the first
activation instruction transmitted by said first instruction
control unit[,] and

3 Appellant’s arguments present additional issues. Because the identified
issue is dispositive of the appeal, we do not reach the additional issues.
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Application 11/006,620

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an output control unit configured to output, via the
network without an instruction by the user, a print job to the
print control apparatus for shifting the print control apparatus
from the second power status to a third power status in which
the print job can be processed . . . ,
as recited in claim 1? In other words, does Hashimoto teach or suggest a
printer driver including a printer wake-up procedure in which, upon input of
a print instruction, the printer is first transitioned from a first power status to
a second power status and, upon receipt of confirmation that the transition
has been effected, the printer is then transitioned from the second power
status to a third power status in which the print job can be executed?

ANALYSIS
The Examiner relies on Hashimoto to teach “that a recording
apparatus (printer system) has multiple sleep modes (paragraph 11). The
recording apparatus (printer system) is able to shift from the one sleep mode
[(i.e., “first power status)] to another [(i.e., “second power status)] and then
shift to a standby mode [(i.e., “third power status”)] (Fig.11).” (Final. Act.
10; accord Ans. 4, 6–7; see also Hashimoto ¶¶ 54, 89, 110–111.) Appellant
contends “simply having the ability to shift from sleep level 0 [(i.e., “first
power status)] to sleep level 1 [(i.e., “second power status)] and then to a
stand-by mode [(i.e., “third power status”)] is not what is being claimed, but
rather, a specific process for effecting the shift is what is being claimed.”
(Reply Br. 4.)
Appellant’s arguments persuade us of error. We agree with the
Examiner that Hashimoto teaches a printer that could respond to a printer
driver that is adapted to perform a printer wake-up procedure in which, upon
input of a print instruction, the printer is first transitioned from a first power
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status to a second power status and upon receipt of confirmation that the
transition has been effected, the printer is then transitioned from the second
power status to a third power status in which the print job can be executed,
(See Final Act. 10; Hashimoto ¶¶ 110–111, Fig. 11.) However, the
Examiner points to no teaching or suggestion in Hashimoto, or in Yamada
’268, Agasaveeran, or Collard, that would lead one of ordinary skill in the
art to actually adapt a print driver to cause a printer to perform the recited
wake-up procedure upon input of a print instruction.
Accordingly, we do not sustain the rejections of claim 1, independent
claims 9 and 17, which recite similar limitations and were rejected on
substantially the same bases as claim 1 (Final Act. 13), and claims 2–8, 10–
16, and 18–24, which depend from claims 1, 9, and 17 respectively,

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 17–24 are rejected on a new ground of rejection under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
Our reviewing court has found transitory, propagating signals are not
within any of the four statutory categories set forth in 35 U.S.C. § 101.
Therefore, a claim directed to a transitory propagating signal is not statutory
under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). “A
transitory propagating signal . . . is not a ‘process, machine, manufacture, or
composition of matter.’ [These] four categories define the explicit scope
and reach of subject matter patentable under 35 U.S.C § 101; thus, such a
signal cannot be patentable subject matter.” Id. According to U.S. Patent &
Trademark Office (USPTO) guidance:
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The broadest reasonable interpretation of a claim drawn to a
computer readablle [sic] medium . . . typically covers forms of
non-transitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media . . . . When the broadest reasonable
interpretation of a claim covers a signal per se, the claim must
be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted).
Moreover, “[a] claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for patent
protection and therefore is directed to non-statutory subject matter,” Manual
of Patent Examining Procedure (MPEP) § 2106(I) (9th Ed., 2014) (emphasis
added) (citation omitted); cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA
1972) (“Claims which are broad enough to read on obvious subject matter
are unpatentable even though they also read on nonobvious subject
matter.”).
Claim 17 recites, in pertinent part, “[a] computer-readable medium
storing a computer-executable program used to direct an information
processing apparatus . . . .” (App. Br. 50 (Claims Appendix.).) (Emphasis
added.) Appellant’s Specification is silent as to the meaning of “computer-
readable medium” and, therefore, does not exclude transitory media from the
broadest reasonable interpretation of a “computer-readable medium.” Nor
does the recitation of the medium “storing a . . . program” preclude
transitory media. “[A] signal with embedded data [stores the data] . . . for
data can be copied and held by a transitory recording medium, albeit
temporarily, for future recovery of the embedded data.” Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).
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Therefore, we conclude the broadest reasonable interpretation of
claim 17, in light of Appellant’s Specification, encompasses a propagating
transitory signal, which is non-statutory subject matter.
We recognize that the Examiner relies on a different claim
construction. (Final Act. 13 (citing US 2005/0128515 A1, ¶ 954).)
However, claim construction is an issue of law that we review de novo.
Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir.
2009). Further, the hard disk 1503 disclosed in the passage relied on by the
Examiner is at most an example of a medium, and does not preclude other
media, including transitory signals. Additionally, the hard disk 1503 stores
an initialization program for an image processing unit 1501 (Spec. 30:21–
23); we see no disclosure that it stores a “program used to direct an
information processing apparatus,” as recited in claim 17.
Claims 18–24 depend from claim 17 and recite no limitation that
would exclude a transitory signal; therefore claims 18–24 also encompass a
non-statutory propagating transitory signal.

DECISION
The decision of the Examiner to reject claims 1–24 is reversed.
We enter a new ground of rejection for claims 17–24 under 35 U.S.C.
§ 101.
Section 41.50(b) provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”

4 Publication US 2005/0128515 A1 is the printed publication corresponding
to the instant application. Paragraph 95 corresponds to the Specification at
page 30, line 21 through page 31, line 2.
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Application 11/006,620

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Section 41.50(b) also provides that Appellant, 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 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.
37 C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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