Ex Parte Okigami

Patent Trial and Appeal BoardMar 27, 2017

14280410 (P.T.A.B. Mar. 27, 2017)

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. 14/280,410 05/16/2014 Masafumi Okigami 1560-0687PUS7 4551 127226 7590 03/29/2017 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 EXAMINER PACHOL, NICHOLAS C ART UNIT PAPER NUMBER 2672 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAFUMI OKIGAMI Appeal 2017-003833 Application 14/280,410 Technology Center 2600 Before MAHSHID D. SAADAT, JOHN A. EVANS, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final rejection of claims 1—8, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Sharp Kabushiki Kaisha. Br. 1. Appeal 2017-003833 Application 14/280,410 STATEMENT OF THE CASE The Invention According to the Specification, the invention relates to various aspects of an information-processing or communications system in which an image forming apparatus (e.g., a printer) prints an image based on image data received from an external device (e.g., a mobile phone with a camera). Spec. 3, 8; Abstract.2 Exemplary Claim 1. An image forming apparatus that has a receiving section receiving image data from an external device and forms an image based on the received image data, comprising: a sending section that sends a communication address of the image forming apparatus to the external device, and a storage section that stores a list of image file names sent by the external device using the communication address of the image forming apparatus and a file of image data selected using the external device, wherein communication between the external device and the image forming apparatus is performed wirelessly. Br. 7 (Claims App.). The Prior Art Supporting the Rejections on Appeal Oba et al. (“Oba”) US 2004/0078169 A1 Apr. 22, 2004 Tabata US 2006/0101344 Al May 11, 2006 Kato US 2009/0066998 Al Mar. 12, 2009 2 This decision employs the following abbreviations: “Spec.” for the Specification, filed May 16, 2014; “Final Act.” for the Final Office Action, mailed October 22, 2015; “Br.” for the Appeal Brief, filed February 17, 2016; and “Ans.” for the Examiner’s Answer, mailed July 29, 2016. 2 Appeal 2017-003833 Application 14/280,410 The Rejections on Appeal Claims 1—8 stand provisionally rejected on the ground of obviousness- type double patenting as unpatentable over one or more claims in one or more copending applications. Final Act. 3^4; Ans. 3^4. Claims 1—8 stand rejected under 35U.S.C. § 112 Tf 2 as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention. Final Act. 6—7; Ans. 6. Claims 1—8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kato, Oba, and Tabata. Final Act. 7—11; Ans. 7—11. ANALYSIS We have reviewed the rejections of claims 1—8 in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we disagree with Appellant’s assertions regarding error by the Examiner. We adopt the Examiner’s findings in the Final Office Action (Final Act. 7—11) and Answer (Ans. 7—12). We add the following to address and emphasize specific findings and arguments. The Rejection for Obviousness-Type Double Patenting In the Final Office Action, the Examiner rejected claims 1—8 on the ground of obviousness-type double patenting. Final Act. 3^4. In the Appeal Brief, Appellant does not present any arguments addressing the double patenting rejection. Br. 3—6. In the Answer, the Examiner repeats the double-patenting rejection. Ans. 3^4. 3 Appeal 2017-003833 Application 14/280,410 Because Appellant does not contest the double-patenting rejection, we summarily sustain that rejection.3 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that “[wjhen the appellant fails to contest a ground of rejection to the Board, ... the Board may treat any argument with respect to that ground of rejection as waived”); see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 07.2015 Nov. 2015) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). The Rejection Under 35 U.S.C. § 112 f 2 for Indefiniteness In the Final Office Action, the Examiner rejected claims 1—8 as indefinite. Final Act. 6—7. In the Appeal Brief, Appellant does not present any arguments addressing the indefmiteness rejection. Br. 3—6. In the Answer, the Examiner repeats the indefmiteness rejection. Ans. 5—6. Because Appellant does not contest the indefmiteness rejection, we summarily sustain that rejection.4 See In re Berger, 279 F.3d 975, 980, 984—85 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112 12 when the appellant failed to contest the rejection on appeal); see also MPEP § 1205.02. 3 In a footnote, Appellant states that a terminal disclaimer was filed concurrently with the Appeal Brief. Br. 3 n. 1. In the event of further prosecution, we leave it to the Examiner to evaluate the terminal disclaimer as to whether it is sufficient to overcome the rejection. 4 In a footnote, Appellant states that “[t]he final Action further includes a rejection under 35 U.S.C. 112, second paragraph, which Appellant has not brought on Appeal.” Br. 3 n.l. 4 Appeal 2017-003833 Application 14/280,410 The Rejection Under 35 U.S.C. § 103(a) for Obviousness Independent Claim 1 Appellant argues that the Examiner erred in rejecting independent claim 1 because the combination of Kato, Oba, and Tabata fails to disclose or suggest “a storage section that stores a list of image file names sent by the external device using the communication address of the image forming apparatus and a file of image data selected using the external device” as claimed. Br. 4—5. Appellant points out that the Examiner acknowledged that Kato and Oba do not disclose a storage section according to claim 1. Id. at 4 (citing Final Act. 8—9). Appellant then argues that “Tabata merely discloses displaying, in list form, a plurality of jobs received from multiple external devices” and, therefore, “fails to overcome the deficiencies of Kato and Oba.” Id. at 5. Appellant’s arguments do not persuade us of Examiner error. Citing Tabata Figure 2B as support, the Examiner finds that Tabata discloses “a list of images that are sent by each respective [external] device.” Ans. 11 (citing Tabata 122, Fig. 2B). Figure 2B is reproduced below: 4! 4 43 42 h=L FUNCTION SELECTION COPY FAX PRINTER SCANNER PC NAME FILENAME PC NAME FILENAME PC NAME FILENAME -32 Tabata Fig. 2B. Figure 2B depicts a display screen for an image-forming apparatus. Id. 16—17, 19. That display screen shows a list of image file 5 Appeal 2017-003833 Application 14/280,410 names along with the names of the external devices or PCs that sent the image files to the image-forming apparatus. The Examiner finds that this list of image file names “would have to be stored in some form within memory.” Ans. 11; see Final Act. 9 (citing Tabata 122). In addition, the Examiner finds that “the image data itself would also be stored” because Tabata discloses that “all information pertaining to a job is stored.” Ans. 11 (citing Tabata 7, 29). “[Djuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Under a broad but reasonable interpretation, we conclude that claim 1 encompasses the storage of file names and image data for any non-transitory period. Thus, we discern no error in the Examiner’s mapping of claim l’s storage requirements to Tabata. For using the recited communication address of the image-forming apparatus, the Examiner finds that Tabata discloses that the external devices or PCs send image files “over a network, and would have [to] be done via an address” for the image-forming apparatus. Ans. 12 (citing Tabata 129); see Final Act. 9. In addition, the Examiner properly finds that Kato “discloses that image data is transmitted between the two devices, and this would be through the establishment of communication utilizing the addresses of each device.” Ans. 12 (citing Kato 42 44). Appellant did not address these findings. Accordingly, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 1 for obviousness based on Kato, Oba, and Tabata. Hence, we sustain the obviousness rejection of claim 1. 6 Appeal 2017-003833 Application 14/280,410 Independent Claims 5 and 7 and Dependent Claims 2-4,6, and 8 Appellant asserts that “independent claims 5 and 7 are patentable” because the references fail to “disclose or suggest storing a list of image file names sent by the external device using the communication address of the image forming apparatus and a file of image data selected using the external device as discussed above with respect to claim 1.” Br. 5—6. For the reasons discussed with respect to claim 1, we sustain the obviousness rejection of claims 5 and 7. Appellant does not make any separate patentability arguments for dependent claims 2-4, 6, and 8. Br. 5—6. Accordingly, we sustain the obviousness rejection of these dependent claims for the same reasons as the independent claims. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner’s decision to reject claims 1—8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7