SHARP KABUSHIKI KAISHA

Patent Trials and Appeals Board

May 19, 2021

2020000869 (P.T.A.B. May. 19, 2021)

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.
15/255,541 09/02/2016 Masafumi OKIGAMI 0023-2203PUS1 6406
2292 7590 05/19/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
PACHOL, NICHOLAS C
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
05/19/2021 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
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Appeal 2020-000869
Application 15/255,541
Technology Center 2600
________________

Before CARL W. WHITEHEAD JR., JASON V. MORGAN, and
IRVIN E. BRANCH, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as SHARP KABUSHIKI KAISHA.
Appeal Br. 1.
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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to communications of
image data from a mobile terminal to an image forming device. Abstract.
REPRESENTATIVE CLAIM
(disputed limitations emphasized and bracketing added)
1. A communication method with a mobile terminal and an
image forming device, the image forming device receiving
image data from the mobile terminal and printing an image
based on received image data, comprising:
performing a first process of executing a wireless connection
between the mobile terminal and the image forming device
based on an establishment of a non-contact communication by
approaching the mobile terminal to the image forming device;
[1] performing a second process of executing a series of
procedures of a wireless connection between the mobile
terminal and the image forming device, a transmission of
selected image data from the mobile terminal to the image
forming device, and a printing of image based on received
image data by the image forming device, based on an
establishment of a non-contact communication by approaching
the mobile terminal to the image forming device after an image
based on the selected image data is displayed; and
switching the first process and the second process with each
other by receiving an operation of a user at a mobile terminal
side.
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REFERENCES
The Examiner relies on the following references:
Name Reference Date
Strobel et al. (“Strobel”) US 2003/0014651 A1 Jan. 16, 2003
Kato US 2009/0066998 A1 Mar. 12, 2009
Kimura et al. (“Kimura”) WO 2007/026938 A1 Mar. 8, 2007
REJECTION
The Examiner rejects claims 1–6 under 35 U.S.C. § 103(a) as obvious
over Kimura, Strobel, and Kato. Final Act. 4–7.
ADOPTION OF EXAMINER’S FINDINGS AND CONCLUSIONS
We agree with and adopt as our own the Examiner’s findings as set
forth in the Answer and in the Final Action from which this appeal was
taken, and we concur with the Examiner’s conclusions. We have considered
Appellant’s arguments, but we do not find them persuasive of error. We
provide the following explanation for emphasis.
ANALYSIS
In rejecting claim 1 as obvious, the Examiner finds that Strobel’s
teaching of an encrypted document and key sent from a mobile device to a
destination printing device teaches or suggests recitation [1]:
performing a second process of executing a series of procedures
of a wireless connection between the mobile terminal and the
image forming device, a transmission of selected image data
from the mobile terminal to the image forming device, and a
printing of image based on received image data by the image
forming device, based on an establishment of a non-contact
communication by approaching the mobile terminal to the
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image forming device after an image based on the selected
image data is displayed.
Ans. 8 (citing Strobel ¶ 28).
Appellant contends the Examiner erred because in Strobel, “unlike the
claimed invention, an operation of selecting printing data on a server is
required when printing the same.” Appeal Br. 5. Thus, according to
Appellant, “Strobel fails to teach performing a second process as claimed” in
recitation [1]. Id. Appellant’s argument is not persuasive of error because it
is not commensurate with the scope of the claimed invention. Nothing in
recitation [1] precludes the claimed method from further including
operations on a server such as selecting printing data.
Appellant further contends the Examiner erred because Strobel’s
transmission of “a decryption key is not equivalent to transmitting selected
image data.” Id. That is, Appellant argues that in Strobel the mobile device
merely transmits “an identification of the desired documents and an
associated decryption key created by the data center 12 to the printing
device.” Id. (citing Strobel ¶ 21) (emphasis added). Appellant’s argument is
not persuasive of Examiner error because Strobel discloses an embodiment
in which “encrypted document(s) and [a] key are sent to the mobile device”
and then “the encrypted document(s) 14 and key are sent from the mobile
device 20 to the destination printing device 22” (id. ¶ 28 (cited in Ans. 8)).
Thus, Strobel teaches a mobile device that does more than just identify a
desired document (i.e., image data) to print. Rather, Strobel teaches a mobile
device or terminal that transmits the desired document—encrypted, but
paired with a decryption key.
Appellant further submits that the process of recitation [1] “includes a
series of procedures, including inter alia, transmitting a selected image data
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from the mobile terminal to the image forming device, . . . performed based
on establishment of a non-contact communication by approaching the
mobile terminal to the image forming device.” Reply Br. 1–2. That is,
recitation [1] includes establishing communications between the mobile
terminal and the image forming device by bringing the mobile terminal
within proximity of the image forming device. Appellant contends the
Examiner erred because “Strobel discloses only wireless communication”
and “the boundary of the wireless communication range is unclear to the
user, thus explicit operation by the user is not possible.” Id. at 2.
Appellant’s argument is not persuasive because the Specification
discloses “wireless communication section 16 is a device that supports a
Bluetooth communication protocol, for example,” that “connects by radio
with another device supporting the Bluetooth communication protocol” such
as a mobile terminal’s wireless communication section. Spec. 8:6–10. Such
connections would constitute non-contact communication that are
established by bringing the mobile terminal within proximity to (i.e., within
range of) the image forming device (i.e., the wireless communication section
of the image forming device) because wireless communications such as
Bluetooth do not require physical contact and have limited range.
The Specification discloses embodiments in which a separate
communication mechanism, such as a radio-frequency identification (RFID),
is used to transmit a Bluetooth address to enable further communications.
E.g., id. 9:18–20, 23:20–24:2. But recitation [1] does not include limitations
requiring the use of any such separate communication mechanism and we do
not read in unclaimed limitations from the Specification. In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989).
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For these reasons, we agree with the Examiner that the combination of
Strobel, Kato, and Kimura teaches or suggests recitation [1]. Appellant bases
the remaining arguments on the premise that the prior art does not teach or
suggest recitation [1]. See, e.g., Appeal Br. 5 (“As the second process is not
disclosed, the cited combination cannot reasonably be found to disclose
‘switching the first process and the second process with each other by
receiving an operation of a user at a mobile terminal side.’”). Accordingly,
we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 1, and
claims 2–6, which Appellant argues are patentable for similar reasons. Id. 6–
7.
CONCLUSION
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6 103(a) Strobel, Kato,
Kimura
1–6
TIME PERIOD FOR RESPONSE
No time period for taking 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)(1)(iv).
AFFIRMED