Ex Parte Tonegawa

Patent Trial and Appeal BoardJul 27, 2015

10548428 (P.T.A.B. Jul. 27, 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. 10/548,428 09/08/2005 Nobuyuki Tonegawa 00862.023500. 7617 5514 7590 07/27/2015 FITZPATRICK CELLA HARPER & SCINTO 1290 Avenue of the Americas NEW YORK, NY 10104-3800 EXAMINER PACHOL, NICHOLAS C ART UNIT PAPER NUMBER 2672 MAIL DATE DELIVERY MODE 07/27/2015 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 NOBUYUKI TONEGAWA ____________ Appeal 2013-004460 Application 10/548,428 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, CAROLYN D. THOMAS, and ROBERT L. KINDER, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from a non-final rejection of claims 1, 3–6, 22, 38, and 42–46.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 An oral hearing was held for this appeal on June 23, 2015. 2 According to Appellant, the real party in interest is Canon Kabushiki Kaisha (App. Br. 5.) 3 Claims 2, 7–21, 23–37, and 39–41 have been canceled. Appeal 2013-004460 Application 10/548,428 2 STATEMENT OF THE CASE Introduction Appellant’s “invention relates to an image data communication technique and, more particularly, to an image communication technique of attaching image data to email and exchanging the image data” (see Spec. 1:5–8). Claim 1 is illustrative of the invention and reads as follows: 1. An image communication apparatus comprising: an acquiring unit configured to acquire image data to be attached to an email; a selecting unit configured to select one of a first transmission mode in which image data not following an internet FAX standard can be transmitted as an attachment of the email and a second transmission mode for transmitting image data following the internet FAX standard as an attachment of the email; a setting unit configured to set, as a source address of the email, a different email address according to which transmission mode is selected by the selecting unit, wherein the setting unit sets a first email address which specifies a user who transmits the email as the source address of the email if the selecting unit selects the first transmission mode, and sets a second email address which is different from the first email address and which is associated with said image communication apparatus as the source address of the email if the selecting unit selects the second transmission mode; and a transmitting unit configured to transmit the email containing the image data acquired by said acquiring unit with the source address set by said setting unit. The Examiner’s Rejections Claims 1, 2, 22, and 38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sato (US 2001/0015823 A1; Aug. 23, 2001) and Mori (US 6,470,379 B1; Oct. 22, 2002). Appeal 2013-004460 Application 10/548,428 3 Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Sato, Mori, and Kagaya (JP 2001-069297; Mar. 16, 2001). Claims 4–6 and 42–46 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sato, Mori, and Rublee (US 2003/0043416 A1; Mar. 6, 2003). Issue on Appeal Appellant’s contentions present us with the following issue: Has the Examiner erred in rejecting the claims as being obvious over Sato and Mori, or over Sato and Mori in combination with Kagaya or Rublee because the combination of references does not teach or suggest the disputed features recited in Appellant’s claims 1 and 22? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contentions that the Examiner has erred. We disagree with Appellant’s conclusions. Claim 1 and 22 Appellant does not dispute the teachings of Sato but contends that “Mori functions quite contrary to the claimed invention” because “Mori sets a mail address to be input to the ‘From’ field of the header based on whether the user has input the mail address as the transmitter address in S204 of Fig. 6” (App. Br. 24). Appellant specifically asserts Mori’s disclosure in Figures 8A–8D indicates: The only time that the source address is set different from the default apparatus address is if the user inputs a unique transmitter address in S202. Therefore, it is clear that, in Mori, which address is included in the mail header as the source address is not dependent upon which transmission mode is Appeal 2013-004460 Application 10/548,428 4 selected, but rather, is entirely dependent upon whether or not the user inputs the unique user transmitter address. (App. Br. 25). Appellant further argues the proposed combination of Sato and Mori would not have resulted in the disputed features of claims 1 and 22 (id.). In particular, Appellant asserts the combination would have shown “what mail address is included in the ‘From’ field is very clearly not dependent upon which transmission mode is selected” but rather “what mail address is included in the ‘From’ field as the source address is entirely dependent upon whether or not the user input their mail address as the source, regardless of the mode of transmission” (App. Br. 26–27). The Examiner “relie[s] on Sato to teach that there is a selection between two types of modes for sending data. Mori is used to show that a different address is indicated in the sender field depending on the mode that is used” (Ans. 21). Additionally, the Examiner presents detailed findings with respect to the applied references and finds Mori teaches determining the transmission address while Sato describes how the transmission mode is selected based on the recipient address (Ans. 22 (citing Mori, col. 8, l. 54– col. 9, l. 16 and col. 9, l. 51–col. 10, l. 34)). We agree with the Examiner’s findings and explanation regarding the combination of Mori with Sato to teach the elements missing in Sato (see Ans. 4–6 and 21–22) and adopt them as our own. We also understand the Examiner’s position to be based on combining Sato’s selection of transmission mode and Mori’s disclosure regarding the transmission source address. See id. Contrary to Appellant’s arguments (App. Br. 25–27), nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art Appeal 2013-004460 Application 10/548,428 5 disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, the Examiner has relied on Mori only for disclosing how the address is selected based on the transmission mode in the embodiments described in columns 8–10. That is, although other situations described by Appellant (see App. Br. 25–26; Reply Br. 4–6) may require the user input after a pause key is depressed (Mori, Fig. 6), different addresses are entered in “From” field depending on whether the transmission is in an email mode or a fax message mode. Furthermore, we agree with the Examiner’s articulated rationale that including the sender information based on the selected transmission mode would increase the dependability of the transmission by informing the user of the sender address (see Ans. 5–6). In other words, the proposed substitution would merely require the ordinarily skilled artisan to use common sense to recognize that incorporating Mori’s “From” information based on Sato’s transmission modes would have improved the way the receiver of the transmission is informed of the sender’s address. See KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 417–18 (2007). Claims 42 and 46 Appellant contends the patentability of independent claims 42 and 46 by alleging the failure of the combination of Sato, Mori, and Rublee to disclose or suggest the limitations of these claims (App. Br. 28–31). However, we are unpersuaded by Appellant’s contentions and agree with the Examiner’s findings and the stated rationale with respect to the combination of the references and adopt them as our own (see Ans. 12–15 and 17–20). Appeal 2013-004460 Application 10/548,428 6 Remaining claims Appellant does not present separate patentability arguments for claims 3–6, 38, and 43–45 rejected under 35 U.S.C. § 103(a) as being unpatentable over Sato and Mori or in further combination with Kagaya or Rublee (App. Br. 7, 16), allowing those claims to fall with their independent base claims. CONCLUSION On the record before us, we conclude that because the references teach or suggest all the recited limitations, the Examiner has not erred in rejecting claims 1, 3–6, 22, 38, and 42–46 under 35 U.S.C. § 103(a). DECISION The decision of the Examiner to reject claims 1, 3–6, 22, 38, and 42– 46 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 Klh