Ex Parte Tanaka

Patent Trial and Appeal Board

Sep 25, 2012

11101128 (P.T.A.B. Sep. 25, 2012)

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.
11/101,128 04/07/2005 Kazuyoshi Tanaka 05236/LH 4280
1933 7590 09/26/2012
HOLTZ, HOLTZ, GOODMAN & CHICK PC
220 Fifth Avenue
16TH Floor
NEW YORK, NY 10001-7708
EXAMINER
CATO, MIYA J
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
09/26/2012 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 KAZUYOSHI TANAKA
____________

Appeal 2010-005468
Application 11/101,128
Technology Center 2600
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
DENISE M. POTHIER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4-11, 14-16, 19, and 20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s image forming apparatus includes an image storing device
with an area for storing image data for each color beforehand. See generally
Abstract; Spec. 20-23; Figs. 1-4. Claim 1 is illustrative:
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1. A replacement image storing device for use in a color image
forming apparatus which stores dispersively in a plurality of image storing
devices image data of each color constituting a color image of an original
document, the replacement image storing device comprising:
an area in which there has been stored beforehand all of image data of
a plurality of colors constituting a color image of an overlay image to be
overlaid with the color image of the original document, wherein the overlay
image is an image to be printed in addition to the color image of the original
document.

THE REJECTIONS
1. The Examiner rejected claims 1, 4-10, 16, 19, and 20 under 35
U.S.C. § 103(a) as unpatentable over Moriura (US 7,034,961 B2; Apr. 25,
2006 (filed Oct. 3, 2001)), Hirose (US 2004/0158675 A1; Aug. 12, 2004),
and Iwamura (US 2004/0148507 A1; July 29, 2004). Ans. 3-13.1
2. The Examiner rejected claims 11, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Moriura and Iwamura. Ans. 13-16.

THE OBVIOUSNESS REJECTION OVER MORIURA, HIROSE, AND IWAMURA
The Examiner finds that Moriura’s image forming apparatus has hard
disks (HDDs) storing data corresponding to particular image colors, but does
not disclose a replacement image storing device with an area in which there
has been stored beforehand all image data of plural colors of the recited
overlay image. Ans. 3-5. The Examiner, however, cites (1) Hirose for
teaching replacement storage, and (2) Iwamura for teaching an overlay
image in concluding that the claim would have been obvious. Ans. 3-5.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed September
2, 2009; (2) the Examiner’s Answer mailed October 28, 2009; and (3) the
Reply Brief filed December 11, 2009.
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According to the Examiner, Hirose’s hard disk device stores memory
module data before processing, and therefore serves as a replacement storage
device in connection with these modules. Ans. 4-5, 16-17.
Appellant argues that the cited prior art does not teach or suggest a
replacement image storing device with an area in which there has been
stored beforehand all image data of plural colors constituting a color image.
App. Br. 8-13; Reply Br. 2-8. Although Appellant acknowledges that
Hirose’s hard disk device aids in replacing memory modules by functioning
as a backup, Appellant emphasizes that the hard disk device is not itself a
replacement disk since it is not physically exchanged with another disk.
Reply Br. 2-6. Appellant adds that not only does Moriura store data for
different colors in corresponding HDDs, data is not stored beforehand on
Hirose’s hard disk device, but rather stored periodically during normal
operations. App. Br. 9-12; Reply Br. 7-8.
Appellant makes similar arguments regarding independent claims 6
and 16 (App. Br. 14-18; Reply Br. 2-8), but adds that Hirose does not copy
image data to at least one image storing device that has not been replaced as
recited in claim 6, but rather does just the opposite. App. Br. 15-16.

ISSUES
Under § 103, has the Examiner erred by finding that Moriura, Hirose,
and Iwamura collectively would have taught or suggested:
(1) a replacement image storing device with an area in which there has
been stored beforehand all image data of plural colors constituting a color
image as recited in claim 1?
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(2) an image forming apparatus where when any image storing device
is replaced with a replacement image storing device, the image data of at
least one color stored in the replacement device is copied to at least one
image storing device that has not been replaced as recited in claim 6?
(3)(a) storing beforehand in a replacement image storing device all of
image data of plural colors constituting a color image of an overlay image,
and (b) replacing any one of the plural image storing devices with the
replacement image storing device in which all of the image data of the plural
colors of the color image has been stored as recited in claim 16?

ANALYSIS
Claims 1, 4, and 5
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1 which recites, in pertinent part, a
replacement image storing device with an area in which there has been
stored beforehand all image data of plural colors constituting a color image.
We emphasize “replacement” and “beforehand” here, for the Examiner and
Appellant disagree whether Hirose’s hard disk device 4 is a replacement
storage device with data stored beforehand.
We note at the outset that storing data beforehand in the recited
replacement image storing device is a product-by-process limitation that
does not further patentably distinguish over the image storing devices with
stored data in the cited prior art. Since patentability of a product does not
depend on its method of production, In re Thorpe, 777 F.2d 695, 698 (Fed.
Cir. 1985), the recited image storing device reads on known image storing
devices with stored data regardless of when the data is stored in those
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devices. And since the particulars of this stored data, namely that it is all
image data of plural colors constituting a color image of an overlay image,
merely pertains to the data’s content, the recited image data particulars
constitutes non-functional descriptive material as it does not further limit the
claimed invention functionally. Such non-functional descriptive material
does not patentably distinguish over prior art that otherwise renders the
claims unpatentable.2
Turning to the cited prior art, during normal operation, data stored in
each memory module 2 in Hirose is copied to hard disk device 4 at
predetermined periods to mirror module data in that device. Hirose, ¶¶
0050, 0053; Figs. 7-8 (step A1). When a memory module fails and access to
that module is subsequently requested, mirrored data in the hard disk device
is accessed. Hirose, ¶ 0055; Fig. 8 (steps A2-A5). When the failed module
is removed, CPU 1 accesses the hard disk device responsive to requests to
access the failed module instead of the module. Hirose, ¶ 0056; Fig. 8 (step
A7). After inserting a new memory module (or the module recovers),
corresponding data is copied from the hard disk device to the inserted
module to resume normal operation. Hirose, ¶ 0058; Fig. 8 (step A11).
Based on this functionality, we see no error in the Examiner’s position
that Hirose’s hard disk device is a replacement storage device since it
effectively functions as a temporary replacement for a failed memory
module. Despite Appellant’s arguments to the contrary (Reply Br. 4-6),
nothing in the claim requires the recited replacement storage device to

2 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
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physically replace another storage device (as is the case with Hirose’s
memory modules when they fail). Rather, the disputed limitation is fully
met by temporary replacement storage devices, such as Hirose’s hard disk
device.
Nor do we find error in the Examiner’s position that Hirose’s
temporary replacement storage device has an area in which data has been
stored beforehand—namely before other processes begin. See Ans. 4 (citing
Hirose, ¶ 0053). Accord Ans. 17 (noting that memory module data is
mirrored in Hirose’s hard disk device before process execution).3 That
Hirose periodically stores module data in the hard disk device during normal
operations as Appellant indicates (Reply Br. 7) does not obviate storing data
in that device before other processes begin (“beforehand”), such as accessing
that stored data after removing a failed module in Step A7 in Hirose’s
Figure 8.
We likewise see no error in the Examiner’s combining this teaching
with Moriura for teaching a replacement image storing device with an area
in which there has been stored beforehand (i.e., before subsequent processes)
all image data of plural colors constituting a color image. To be sure,
Moriura stores image data for different colors in HDDs, namely one for each
color (yellow, magenta, cyan, and black) as shown in Figure 3 and as
Appellant indicates. App. Br. 12 (citing Moriura, col. 9, ll. 59-63; col. 10, ll.
33-36). Nevertheless, we see no reason why skilled artisans could not copy
data from Moriura’s multiple storage devices to a single storage device as a

3 Although this citation refers to the Examiner’s response to arguments
regarding claim 6, it nonetheless applies here as well. Cf. Ans. 18 (noting
the breadth of the term “beforehand” in connection with claim 11).
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consolidated backup as suggested by Hirose. Such an enhancement would
predictably yield a single replacement image storage device with stored
image data of all colors (yellow, magenta, cyan, and black) obtained from
the respective storage devices from which this data was copied. In short,
this enhancement merely predictably uses prior art elements according to
their established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 4 and 5 not separately argued with
particularity.

Claims 6-10
We also sustain the Examiner’s rejection (Ans. 6-8) of representative
claim 6 which recites, in pertinent part, an image forming apparatus where
when any image storing device is replaced with a replacement image storing
device, the image data of at least one color stored in the replacement device
is copied to at least one image storing device that has not been replaced.
First, we are unpersuaded by Appellant’s arguments regarding the
recited replacement image storing device with previously-stored data (App.
Br. 14-15; Reply Br. 2-8) for the reasons noted above. We likewise find
Appellant’s arguments regarding the recited copying functionality
unpersuasive. In short, we see no error in the Examiner’s position (Ans. 7,
17) that Hirose’s fourth embodiment in Figure 11 at least suggests the
recited copying function, for data in a failed memory module is copied to
free memory areas 8 in other memory modules that have not failed. Hirose,
¶¶ 0069-71; Fig. 11. Notably, when a failed memory module is detected,
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corresponding mirrored data in the hard disk device is copied to free
memory areas of modules that have not failed. Hirose, ¶ 0070. Appellant’s
argument that Hirose copies data from an installed image storing device to a
replacement device (App. Br. 16) does not squarely address—let alone
persuasively rebut—the Examiner’s position based on Hirose’s data copying
to free memory areas noted above.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 6, and claims 7-10 not separately argued with
particularity.

Claims 16, 19, and 20
We also sustain the Examiner’s rejection (Ans. 10-13) of
representative claim 16 reciting (1) storing beforehand in a replacement
image storing device all of image data of plural colors constituting a color
image of an overlay image, and (2) replacing any one of the plural image
storing devices with the replacement image storing device in which all of the
image data of the plural colors of the color image has been stored.
As noted above, we find no error in the Examiner’s combining Hirose
with Moriura for teaching replacing an image storing device with an area in
which there has been stored beforehand (i.e., before subsequent processes)
all image data of plural colors constituting a color image. Appellant’s
arguments regarding Hirose’s replacing a failed memory module (App.
Br. 18-19) do not squarely address—let alone persuasively rebut—the
Examiner’s reliance on Hirose’s hard disk device (Ans. 18) as functioning as
a replacement storage device as noted above.
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 16, and claims 19 and 20 not separately argued with
particularity.

THE OBVIOUSNESS REJECTION OVER MORIURA AND IWAMURA
The Examiner finds that Moriura discloses every recited feature of
representative claim 11 including plural image storing devices (HDDs)
which are said to teach the recited storage device functionality. Ans. 13-16,
18. Although the Examiner acknowledges that Moriura lacks an overlay
image to be printed in addition to the original document’s color image, the
Examiner cites Iwamura for teaching this feature in concluding that the
claim would have been obvious. Ans. 15-16.
Appellant argues that since Moriura’s HDDs each store data for only
one respective color, they do not each store beforehand all image data of
plural colors constituting a color image of an overlay image as claimed.
App. Br. 20-22; Reply Br. 8-10.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 11 by finding
that Moriura and Iwamura collectively would have taught or suggested
plural image storing devices each for storing image data of at least one color
of inputted image data of a color image of an original document, and for
storing beforehand all image data of plural colors constituting a color image
of an overlay image?

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ANALYSIS
We begin by noting that, unlike the other independent claims, claim
11 does not recite a replacement image storing device as Appellant indicates.
App. Br. 21. And as noted above, the Examiner’s rejection does not rely on
Hirose, but rather on Moriura’s and Iwamura’s collective teachings.
Ans. 13-16, 18.
The dispute hinges on whether Moriura teaches or suggests plural
image storing devices each for storing image data of at least one color of
inputted image data of a color image of an original document, and for
storing beforehand all image data of plural colors constituting a color image
of an overlay image. We emphasize the term “each” here, for Appellant
argues that Moriura’s HDDs do not each store all image data of plural colors
for an overlay image as claimed, but rather each store only one color. App.
Br. 20-22; Reply Br. 8-10.
This argument, however, is not commensurate with the scope of the
claim. First, the claim recites that the image storing devices are “for” storing
the recited image data which merely recites the devices’ intended use
(emphasis added). That is, so long as the image storing devices are capable
of performing this intended function, namely storing the recited image data,
the disclosed image storing devices fully meet this limitation. See In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Since Appellant has
not shown that Moriura’s HDDs are incapable of storing the recited
collective image data despite their storing individual color data, we see no
error in the Examiner’s reliance on Moriura for teaching this limitation.
Ans. 18.
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Second, Appellant’s argument presupposes that the term “each”
modifies both recited device storage functions, namely (1) for storing image
data of at least one color of inputted image data of a color image of an
original document, and (2) for storing beforehand all image data of plural
colors constituting a color image of an overlay image.
But the claim can be reasonably interpreted more broadly: namely,
that the term “each” modifies only storage function (1) above, and not
storage function (2). That is, claim 11 can be reasonably interpreted to recite
plural image storing devices (1) each for storing image data of at least one
color of inputted image data of a color image of an original document, and
(2) for storing beforehand all image data of plural colors constituting a color
image of an overlay image.4 With this interpretation, nothing precludes
Moriura’s HDDs (1) each for storing their respective individual color data,
and (2) collectively for storing beforehand all image data of plural colors
constituting a color image of an overlay image as claimed.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 11, and claims 14 and 15 not separately argued with
particularity.

4 To the extent that this alternative interpretation regarding what clause the
term “each” modifies rises to the level of indefiniteness under 35 U.S.C.
§ 112, second paragraph, is a question that is not before us. We do note,
however, that “if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Nevertheless, we leave this question to the Examiner to
determine in the first instance should prosecution reopen after this decision.
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CONCLUSION
The Examiner did not err in rejecting claims 1, 4-11, 14-16, 19, and
20 under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 4-11, 14-16, 19, and 20 is
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)(1)(iv).

AFFIRMED

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