Ex Parte Uemura

Patent Trial and Appeal Board

Mar 31, 2017

13408115 (P.T.A.B. Mar. 31, 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.
13/408,115 02/29/2012 Atsushi UEMURA SHIMP0116US 3566
43076 7590 04/04/2017
MARK D. SARALINO (GENERAL)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE, NINETEENTH FLOOR
EXAMINER
HARRIS, KEARAS
CLEVELAND, OH 44115-2191 ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUSHIUEMURA
Appeal 2017-000468
Application 13/408,1151
Technology Center 2600
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1—7. 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. 2).
Appeal 2017-000468
Application 13/408,115
THE CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to a printing system
which selects the dimensions of an unprintable area, i.e., printing boarders
(Abstract). Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A print controller used connected to a document data
creating unit and to a printing device, comprising:
an unprintable area setting unit, responsive to reception of
an inquiry related to dimensions of unprintable area as an area
not allowing printing provided around a printable area of a sheet
of print paper from said document data creating unit, for
selectively executing, based on whether paper size of output
paper set in said print controller is larger than paper size of a
document created by said document data creating unit, a process
for setting dimensions of said unprintable area to a default value
set by said document data creating unit, or a process for setting
the dimensions of said unprintable area to a value smaller than
the set default value for output paper having larger size than
paper size of said document;
a notifying unit for giving a notice to said document data
creating unit about the dimensions of said unprintable area set by
said unprintable area setting unit; and
a print instruction unit for forming print data based on data
related to the document received from the document data
creating unit and on the values of dimensions of unprintable area,
and instructing said printing device to print the print data.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Yada et al.
Yamaguchi
Mori
US 2004/0239959 Al Dec. 2, 2004
US 2007/0177210 Al Aug. 2, 2007
US 2007/0229904 Al Oct. 4, 2007
2
Appeal 2017-000468
Application 13/408,115
Niblett US 2009/0268232 A1 Oct. 29,2009
Yamanouchi US 8,264,739 B2 Sept. 11,2012
REJECTIONS
Claim 4 stands rejected under 35U.S.C. § 112, second paragraph, as
being indefinite (Final Act. 2—3).
Claims 1—3, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamaguchi, Yada, and Yamanouchi (id. at 3—8).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamaguchi, Yada, Yamanouchi, Appellant’s Admitted
Prior Art, and Mori (id. at 8—9).
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamaguchi, Yada, Yamanouchi, and Niblett2 (id. at 10-
12).
ISSUE 1
35 U.S.C. § 112, second paragraph: Claim 4
Appellant “does not dispute the indefmiteness rejection” of claim 4
(Br. 8). Accordingly, we summarily sustain the Examiner’s rejection of
claim 4. See Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th
ed., Rev. 11.2013 (November 2015) (“If a ground of rejection stated by the
examiner is not addressed in the [Ajppellant’s brief, [Ajppellant has waived
2 The heading in the Examiner’s Final Action lists claim 7 as rejected under
Yamaguchi, Yada, and Niblett (Final Act. 10). However, the rejection
additionally relies on Yamanouchi (id. at 11—12). We consider this harmless
error as Appellant addresses the rejection based on the combination of
Yamaguchi, Yada, Yamanouchi, and Niblett (App. Br. 7—8). Thus, we
address the rejection of claim 7 as being unpatentable over Yamaguchi,
Yada, Yamanouchi, and Niblett.
3
Appeal 2017-000468
Application 13/408,115
any challenge to that ground of rejection and the Board may summarily
sustain it”); see also 37 C.F.R. § 41.37(c)(l)(iv).
ISSUE 2
35 U.S.C. § 103(a): Claims 1 and 6
Appellant contends the invention as recited in claims 1 and 6 is not
obvious over Yamaguchi, Yada, and Yamanouchi (Br. 5—8).3 The issues
presented by the arguments are:
Issue 2a: Does the combination of Yamaguchi, Yada, and
Yamanouchi teach, suggest, or otherwise render obvious
selectively executing, based on whether paper size of output
paper set in said print controller is larger than paper size of a
document created by said document data creating unit, a process
for setting dimensions of said unprintable area to a default value
set by said document data creating unit, or a process for setting
the dimensions of said unprintable area to a value smaller than
the set default value for output paper having larger size than
paper size of said document,
as recited in independent claim 1 and similarly recited in independent claim
6?
Issue 2b: Does the combination of Yamaguchi, Yada, and
Yamanouchi teach, suggest, or otherwise render obvious “an unprintable
area setting unit, responsive to reception of an inquiry related to dimensions
3 Rather than repeat the arguments here, we refer to the Appeal Brief for the
positions of Appellant and the Final Office Action and Answer for the
positions of the Examiner. Only those arguments actually made by
Appellant have been considered in this decision. Arguments that Appellant
did not make in the Appeal Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
4
Appeal 2017-000468
Application 13/408,115
of unprintable area . . . from the document data creating unit,” as recited in
independent claim 1 and similarly recited in independent claim 6?
ANALYSIS
We disagree with Appellant’s conclusions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 2—12); and (2) the reasons set forth by
the Examiner in the Answer in response to the Appeal Brief (Ans. 13—22).
With respect to the claims argued by Appellant, we highlight and address
specific findings and arguments for emphasis as follows.
Issue 2a
Appellant contends the combination of Yamaguchi, Yada, and
Yamanouchi teach, suggest, or otherwise render obvious
selectively executing, based on whether paper size of output
paper set in said print controller is larger than paper size of a
document created by said document data creating unit, a process
for setting dimensions of said unprintable area to a default value
set by said document data creating unit, or a process for setting
the dimensions of said unprintable area to a value smaller than
the set default value for output paper having larger size than
paper size of said document,
as recited in claim 1 and similarly recited in claim 6 (Br. 6—7). Specifically,
Appellant argues Yamanouchi’s “unprintable area of the [output] paper,”
i.e., the printing border, “is fixed . . . and thus the dimension of the
unprintable area is not changed” (id. at 6). Appellant further argues Yada
does not teach “switching copy modes based on the relation between the
document size and the print [output] paper size” (id. ).
5
Appeal 2017-000468
Application 13/408,115
We are not persuaded. The Examiner finds (Final Act. 3—\\ Ans. 13—
14), and we agree, Yamaguchi teaches a “switching instruction” which
selects between “various print modes” such as a “normal print mode and a
case binding mode” which shifts printing borders (Yamaguchi 143; see
Yamaguchi Figs. 6, 8). Thus, the Examiner relies on Yamaguchi to teach
setting dimensions of an unprintable area. The Examiner further finds, and
we agree, Yamanouchi teaches selecting print settings based on an
“automatic comparison of the [output] paper size available and the page size
of [the document] to be printed” (Ans. 14; Final Act. 5 (citing Yamanouchi
9:45—50)). The Examiner then combines Yamanouchi’s disclosure with
Yamaguchi’s disclosure to teach selecting between printing modes based on
a comparison of the size of the output paper and the document to be printed
(Final Act. 5; see Ans. 15).
Appellant’s arguments are unpersuasive because those arguments
inappropriately attack the references individually when the rejection is based
on the combination of references, i.e., Yamaguchi, Yamanouchi, and Yada.
In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). In
particular, Appellant argues Yamanouchi alone does not change its printing
borders based on its comparison of document size to output paper size (Br.
6). However, the Examiner finds Yamaguchi changes printing borders
(Final Act. 3^4 (citing Yamaguchi || 43, 64, Fig. 8; Ans. 13—15 (citing
Yamaguchi Fig. 6)) and combines Yamaguchi’s teaching with
Yamanouchi’s teachings, to teach a system in which printing borders are
changed based on the comparison of document size to output paper size
(Final Act. 5; see Ans. 15). Further, Appellant’s argument that Yada does
not switch printing modes “based on the relation between the document size
6
Appeal 2017-000468
Application 13/408,115
and the print [output] paper size” (Br. 6) does not address the Examiner’s
finding that the combination of Yamaguchi and Yamanouchi switches
printing modes by comparing document size and output paper size (Final
Act. 5; see Ans. 15).
Accordingly, we are not persuaded the combination of Yamaguchi,
Yamanouchi, and Yada fails to teach, suggest, or otherwise render obvious
selectively executing, based on whether paper size of output
paper set in said print controller is larger than paper size of a
document created by said document data creating unit, a process
for setting dimensions of said unprintable area to a default value
set by said document data creating unit, or a process for setting
the dimensions of said unprintable area to a value smaller than
the set default value for output paper having larger size than
paper size of said document,
as recited in claims 1 and 6.
Issue 2b
Appellant contends Yamaguchi does not teach, suggest, or otherwise
render obvious “an unprintable area setting unit, responsive to reception of
an inquiry related to dimensions of unprintable area . . . from the document
data creating unit,” as recited in claim 1 and similarly recited in claim 6 (Br.
6—7). Specifically, Appellant argues Yamaguchi’s shift instruction “is not
given in response to an inquiry from the document data creating unit” (id. at
7).
We are not persuaded. The Examiner finds, and we agree, Yamaguchi
teaches a personal computer (PC) sends an “inquiry to print,” i.e., a print
request, to a printer; that inquiry to print includes “a notation to determine
the shift amount needed” (Ans. 19; Final Act. 3^4 (citing Yamaguchi | 55,
Fig. 2); see Yamaguchi 159 (“[T]he PC itself comprises a data generation
7
Appeal 2017-000468
Application 13/408,115
section for generating the document image data” and “an input section for
inputting a shift instruction for shifting the printing area of the body text
image based on the shift instruction . . . provided in the PC.”). The
Examiner further finds, and we agree, Yamaguchi’s printer selects a printing
mode in response to the PC’s print request (Ans. 19 (citing Yamaguchi Fig.
7); see Yamaguchi | 66).
We are not persuaded by Appellant’s argument that Yamaguchi’s shift
is not in response to an inquiry from a document data creating unit (Br. 7).
We agree with the Examiner’s broad, but reasonable, interpretation that an
inquiry includes “an inquiry to print” a document from a PC (Ans. 19).
Furthermore, in response to the print inquiry, Yamaguchi’s printer
“determines whether a shift is required by checking whether the shift amount
for the document. . . has been set” (Yamaguchi 166; see Yamaguchi | 59,
Fig. 7). That is, Yamaguchi’s printer selects a printing border shift in
response to the PC’s inquiry to print including a shift instruction and thus,
the combination teaches “an unprintable area setting unit, responsive to
reception of an inquiry related to dimensions of unprintable area . . . from
the document data creating unit,” as recited.
Accordingly, we are not persuaded the combination of Yamaguchi
fails to teach, suggest, or otherwise render obvious “an unprintable area
setting unit, responsive to reception of an inquiry related to dimensions of
unprintable area . . . from the document data creating unit,” within the
meaning of claims 1 and 6.
For the reasons discussed above, we sustain the rejection of claims 1
and 6 under 35 U.S.C. § 103(a) for obviousness over Yamaguchi,
Yamanouchi, and Yada.
8
Appeal 2017-000468
Application 13/408,115
Remaining Claims 2—5
Appellant does not argue separate patentability for dependent claims
2—5, which depend directly or indirectly from claim 1 (Br. 7). For the
reasons set forth above, therefore, we are not persuaded the Examiner erred
in rejecting these claims. See In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir.
2011) (“We conclude that the Board has reasonably interpreted Rule 41.37
to require applicants to articulate more substantive arguments if they wish
for individual claims to be treated separately”). Accordingly, we sustain the
Examiner’s decision to reject claims 2—5. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUE 3
35 U.S.C. § 103(a): Claim 7
Appellant contends the invention as recited in claim 7 is not obvious
over Yamaguchi, Yada, Yamanouchi, and Niblett (Br. 7—8).4 Specifically,
Appellant reasserts the arguments supra, that Yamaguchi, Yamanouchi, and
Yada do not teach “claim features pertaining to setting the dimensions of
unprinted area based on the recited selective processing (none of the
references teaches to change the dimensions specifically of the unprinted
area), and to perform the dimension setting operation in response to the
inquiry from the document data creating unit” {id. at 8). As discussed supra,
4 Rather than repeat the arguments here, we refer to the Appeal Brief for the
positions of Appellant and the Final Office Action and Answer for the
positions of the Examiner. Only those arguments actually made by
Appellant have been considered in this decision. Arguments that Appellant
did not make in the Appeal Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
9
Appeal 2017-000468
Application 13/408,115
we are not persuaded by these arguments. Furthermore, Appellant’s
argument that “Niblett’s generalized teachings as to collective printing do
not address the deficiencies” alleged (id.) does not address the Examiner’s
finding that the combination of Yamaguchi, Yamanouchi, and Yada teach
the disputed limitations. Accordingly, we sustain the rejection of claim 7
under 35 U.S.C. § 103(a) for obviousness over Yamaguchi, Yamanouchi,
Yada, and Niblett.
DECISION
The Examiner’s rejection of claim 4 under 35 U.S.C. § 112, second
paragraph, as being indefinite is affirmed.
The Examiner’s rejection of claims 1—3, 5, and 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Yamaguchi, Yada, and Yamanouchi is
affirmed.
The Examiner’s rejection of claim 4 under 35 U.S.C § 103(a) as being
unpatentable over Yamaguchi, Yada, Yamanouchi, Appellant’s Admitted
Prior Art, and Mori is affirmed.
The Examiner’s rejection of claim 7 under 35 U.S.C § 103(a) as being
unpatentable over Yamaguchi, Yada, Yamanouchi, and Niblett 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)(l)(iv).
AFFIRMED
10