Ex Parte Suzuki et al

Patent Trial and Appeal Board

Nov 28, 2016

12175080 (P.T.A.B. Nov. 28, 2016)

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.
12/175,080 07/17/2008 Nobuhiko SUZUKI 006760.00222 9908
30755 7590 11/30/2016
BANNER & WITCOFF, LTD.
ATTORNEYS FOR CLIENT NO. 016689
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
ZHANG, FAN
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
PTO-30755 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUHIKO SUZUKI and HIROKO ISHIKAWA
Appeal 2015-007882
Application 12/175,080
Technology Center 2600
Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007882
Application 12/175,080
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 12—15, and 17—20. Claims 2 and 5—11 are withdrawn, and
claims 3 and 16 are cancelled. App. Br. ii—x. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads in-part as follows (emphasis
and formatting added):
1. An image scanning apparatus, comprising:
a generally enclosed body; . . . and
a switching unit configured to
switch the scanner light source on in response to[:]
the judging unit judging that the transition, from
the state in which the removable writable memory
is not attached to the image scanning apparatus to
the state in which the removable writable memory
is attached to the image scanning apparatus,
occurred in the image scanning apparatus and
the writable condition judging unit judging that the
removable writable memory is in the
predetermined writable condition, and
maintain the scanner light source off in response to[:]
the judging unit judging that the transition, from
the state in which the removable writable memory
is not attached to the image scanning apparatus to
the state in which the removable writable memory
is attached to the image scanning apparatus,
occurred in the image scanning apparatus and
the writable condition judging unit judging that the
removable writable memory is not in the
predetermined writable condition.
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Appeal 2015-007882
Application 12/175,080
Rejections
The Examiner rejected claims 1, 4, 12, 14, 15, 17, 18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Okamoto
(JP 10-20952; published January 23, 1998), Ono (US 7,936,474 B2; issued
May 3, 2011), Wakai (US 2007/0019020 Al; published January 25, 2007),
Choi (US 2004/0101325 Al; published May 27, 2004), and Sugita (JP
401007761 A; published January 11, 1989).1
The Examiner rejected claims 13 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over various combinations of Okamoto, Ono, Wakai,
Choi, Sugita, and Cheung (US 2002/0171819 Al; published November 21,
2002).2
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
None of Okamoto, Ono, Wakai, and Sugita discloses or
suggests a switching unit for the scanner light source as recited
in independent claims 1 and 15, namely one which switches on
or off the scanner light source in response to attachment of a
removable writable memory. Choi merely discloses a light
source lamp that is warmed up when a key input signals are
entered. However, the warming-up behavior as described in
1 Separate patentability is not argued for claims 4, 12, 14, 15, 17, 18, and 20.
Except for our ultimate decision, the rejection of these claims is not
discussed further herein.
2 Separate patentability is not argued for claims 13 and 19. Claim 13 is
argued by virtue of its dependence from claim 1. App. Br. 14. Thus, the
rejection of claim 13 turns on our decision as to claim 1. Except for our
ultimate decision, the rejection of claims 13 and 19 is not discussed further
herein.
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Appeal 2015-007882
Application 12/175,080
Choi is completely unrelated to attachment of a removable
memory. The Final Office Action characterizes Choi as
disclosing the light lamp source switch is “programmable based
on various conditions” (Final Office Action, p. 6). However, it
is apparent each of the “various” conditions pertains only to
actuation of the operation panel or a preset time delay. See
Choi, [0037]-[0039]. Nothing in Choi would have led the
skilled worker to switch the light lamp on or off depending on
attachment of a removable writable memory.
App. Br. 11-12.
2. Further, Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
[E]ven if the five references of Okamoto, Ono, Wakai, Sugita,
and Choi were combined, the resulting apparatus simply would
have a light source lamp which is warmed up when a key input
is entered through the operation unit.
App. Br. 12.
3. Additionally, Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
The Final Office Action’s contention that it would have
been obvious to provide a switching unit configured to switch a
scanner light source on or off depending on the detection of a
writable memory comes not from anything taught in the five
references relied on in the § 103 rejection, but instead only from
the hindsight gleaned from reading the present disclosure. Put
another way, the Final Office Action’s ultimate finding of
obviousness entirely lacks the needed evidentiary
underpinnings and instead is premised on precisely the sort of
“mere conclusory statements” that the U.S. Supreme Court said
are insufficient to sustain obviousness rejections. KSR [Int’l
Co. v. Teleflex Inc., 550 U.S. 398 (2007)].
App. Br. 13, emphasis added.
[T]he Answer does little more than piece together five
references and assert that the skilled worker somehow would
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Appeal 2015-007882
Application 12/175,080
have known how to combine them and arrive at something
taught by none of them. This is not prima facie obviousness. It
is hindsight.
Reply Br. 5, emphasis added.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions. Except as noted below, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight the
following points.
As to Appellants’ above contention 1, we disagree. Appellants argue
that Okamoto, Ono, Wakai, and Sugita do not disclose or suggest “a
switching unit for the scanner light source.” App. Br. 11. However,
Examiner did not cite Okamoto, Ono, Wakai, and Sugita for this limitation.
Rather, the Examiner relied on Choi to teach “turning on/off the light source
lamp of a scanner is programmable based on various conditions.” Final Act.
5—6. Further, Appellants argue that Choi does not disclose or suggest
warming-up behavior related to detection of attachment of a removable
memory. App. Br. 11. However, Examiner did not cite Choi for this
limitation. Rather, the Examiner relied on Okamoto to teach “detect
attachment of the removable writable memory.” Final Act. 3.
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Application 12/175,080
We conclude that Appellants’ argument does not address the actual
reasoning of the Examiner’s rejections. Instead, Appellants attack the
references singly for lacking teachings that the Examiner relied on a
combination of references to show. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 425-26 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir.
1986). The effect of Appellants’ argument is to raise and then knock down a
straw man rejection of claim 1 that was never made by the Examiner in that
the Examiner did not rely solely on Choi as argued. In other words,
Appellants argue findings the Examiner never made. This form of argument
is inherently unpersuasive to show Examiner error. Our reviewing court
requires that references must be read, not in isolation, but for what they
fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at
1097 (Fed. Cir. 1986).
As to Appellants’ above contention 2, we disagree. Appellants
speculate that the combination of Okamoto, Ono, Wakai, Sugita, and Choi
render obvious “a light source lamp which is warmed up when a key input is
entered through the operation unit.” App. Br. 12. Even if we were to agree
that the cited combination also renders obvious an invention other than the
invention of Appellants claim 1, this is simply not a relevant argument as to
whether the Examiner has provided a proper final conclusion that the
combination of references renders obvious the claimed invention. A
combination of references is not precluded from rendering obvious any
number of distinct inventions.
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Application 12/175,080
As to Appellants’ above contention 3, we disagree. Appellants cite to
KSR, yet fail to fully quote the Court’s “hindsight” discussion. The full
point the Court made was:
The Court of Appeals, finally, drew the wrong
conclusion from the risk of courts and patent examiners falling
prey to hindsight bias. A factfinder should be aware, of course,
of the distortion caused by hindsight bias and must be cautious
of arguments reliant upon ex post reasoning. See Graham, 383
U.S., at 36, 86 S.Ct. 684 (warning against a “temptation to read
into the prior art the teachings of the invention in issue” and
instructing courts to “‘guard against slipping into the use of
hindsight’” (quoting Monroe Auto Equipment Co. v.
Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (C.A.6
1964))). Rigid preventative rules that deny factfinders recourse
to common sense, however, are neither necessary under our
case law nor consistent with it.
KSR, 550 U.S. at 421. Beyond alleging improper hindsight Appellants’
argument fails to explain the basis for their allegation. For example,
Appellants do not provide objective evidence of nonobviousness (secondary
considerations) to show the combination is less obvious than concluded by
the Examiner (see Power Integrations, Inc. v. Fairchild Semiconductor Int 7
Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013)), or explain why elements of the
Examiner’s combination are superfluous (see In reNTP, Inc., 654 F.3d
1279, 1299 (Fed. Cir. 2011)).3 Nonetheless, we have reviewed the rejection
for improper hindsight and find none. We conclude the Examiner’s
rejection takes into account only knowledge which was within the level of
3 Although Appellants separately argue that the references fail to achieve the
result of the claims (Contentions 1 and 2, discussed supra) (See NTP 654
F.3d at 1299), we have found those arguments unpersuasive.
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Application 12/175,080
ordinary skill in the art at the time the invention was made. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
More particularly as to Appellants’ allegation in above contention 3
that the Examiner has engaged in impermissible hindsight, we find no
impermissible hindsight as Choi shows the turning light source lamp on/off
can be based on various conditions of the scanner and as the Examiner
points out Okamoto shows a known condition of a scanner is “the transition,
from the state in which the removable writable memory is not attached to the
image scanning apparatus to the state in which the removable memory is
attached to the image scanning apparatus, occurred in the image scanning
apparatus.” Final Act. 4. The Examiner correctly points out the rejection is
based “on factual evidence and logical analysis within the knowledge and
capability of an ordinary skilled in the art.” Ans. 9.
We conclude the Examiner’s rejection takes into account only
knowledge which was within the level of ordinary skill in the art at the time
the invention was made, and does not include knowledge gleaned only from
the Appellants’ disclosure. See McLaughlin, 443 F.2d at 1395. We deem it
reasonable for the Examiner to conclude
it would have been obvious for an ordinary skilled in the art to
combine the teaching of all to turn on the copier/scanner light
source lamp during preheating process when a writable storage
memory is detected in order to ensure that the copier/scanner is
ready for operation for improving processing efficiency; and to
keep the light source lamp off when a writable storage memory
is not detected to avoid unnecessary operation for saving
energy.
Final Act. 6.
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Appeal 2015-007882
Application 12/175,080
CONCLUSIONS
(1) Examiner has not erred in rejecting claims 1, 4, 12—15, and 17—20
as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 4, 12—15, and 17—20 are not patentable.
DECISION
The Examiner’s rejections of claims 1, 4, 12—15, and 17—20 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
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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