Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

May 17, 2021

2019005917 (P.T.A.B. May. 17, 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.
14/818,371 08/05/2015 Minami SENSU 70404.2688/sz 6583
54072 7590 05/17/2021
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
ZONG, HELEN
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
JKEATING@KBIPLAW.COM
epreston@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MINAMI SENSU and TOSHIHIRO SHOJI
____________

Appeal 2019-0059171
Application 14/818,371
Technology Center 2600
____________

Before NORMAN H. BEAMER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 2–7, which constitute all the claims pending in this
application. See Claims Appendix. Claims 1, 8, and 9 have been cancelled.
We have jurisdiction over the pending rejected claims under 35 U.S.C. §
6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Sharp Kabushiki Kaisha as the real
party in interest. (Appeal Br. 2.)
Appeal 2019-005917
Application 14/818,371

2

THE INVENTION
Appellant’s disclosed and claimed invention is directed to an image
forming apparatus allowing the user to understand how page images change
by an editing work. (Spec. 1:11–12.)
Independent claim 2, reproduced below, is illustrative of the subject
matter on appeal:
2. An image forming apparatus comprising:
a display; and
a processor; wherein
the processor controls the display to display page images
generated from input image data and a preview image of an
image to be formed on a recording medium;
the processor receives an editing instruction given on
said preview image; and
said editing instruction includes a first type of editing
instruction which is not reflected on said page images, and a
second type of editing instruction which is reflected on said
page images.
(Appeal Br. 12 (Claims Appendix).)

REJECTION
The Examiner rejected claims 2–7 under 35 U.S.C. § 103(a) as being
unpatentable by Nishiyama et al. (US 2010/0149590 A1, pub. June 17,
2010) (hereinafter “Nishiyama”) and Kujirai et al. (US 2010/0064211 A1,
pub. Mar. 11, 2010) (hereinafter “Kujirai”). (Final Act. 2.) 2

2 The Final rejection included a rejection of claims 8 and 9. Appellant
canceled claims 8 and 9 in an after-final amendment filed Jan. 23, 2019, and
the Examiner indicated the amendment was entered in an Advisory Action
mailed on Feb. 26, 2019.
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ISSUE ON APPEAL
Appellant’s arguments in the Appeal and Reply Briefs present the
following issue:3
Whether the Examiner erred in finding the combination of Nishiyama
and Kujirai teaches or suggests the limitations of
the processor controls the display to display page images
generated from input image data and a preview image of an
image to be formed on a recording medium;
the processor receives an editing instruction given on said
preview image; and
said editing instruction includes a first type of editing
instruction which is not reflected on said page images, and a
second type of editing instruction which is reflected on said page
images,
as recited in independent claim 2, and the commensurate limitation recited in
independent claim 7. (Appeal Br. 3–10; Reply Br. 2–5.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments.
In finding that the combination of Nishiyama and Kujirai teaches or
suggests the limitations at issue, the Examiner relies on Nishiyama’s
diagrams showing examples of preview display screen in a copy mode of a

3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 19, 2019, hereinafter
“Appeal Br.”); the Reply Brief (filed Aug. 2, 2019, hereinafter “Reply Br.”);
the Final Office Action (mailed Sept. 21, 2018, hereinafter “Final Act.”); the
(first) Advisory Action (mailed Dec. 5, 2018, hereinafter “First Adv. Act.”);
the (second) Advisory Action (mailed Feb. 26, 2019) (hereinafter “Second
Adv. Act.); and the Examiner’s Answer (mailed June 7, 2019, hereinafter
“Ans.”) for the respective details.
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Application 14/818,371

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multifunctional peripheral, and includes preview image 87,
enlarging/reducing key 93, and display rotation key 94. (Final Act. 2–3, 6–
7; Ans. 4, 8; Nishiyama Figs. 12–13, ¶¶ 71, 158.)
The Examiner additionally relies on Kujirai’s disclosure of an
example property screen that allows print specifications to be set for the
printer driver, and includes option 803 for output destination. (Final Act. 3,
7; First Adv. Act. 2; Ans. 5, 8; Kujirai Fig. 8, ¶¶ 76–80.)
Appellant argues that the Examiner erred in finding “the preview
image 87 of Nishiyama corresponds to both of Appellants recited ‘page
images’ and Appellant’s recited ‘preview image’” (Reply Br. 2, citing Ans.
8 (emphasis in original)), because
Appellant’s claimed “page images” are images representing a
document that has been input to the image forming apparatus,
while the “preview image” is an image representing how a page
will be printed/output from the image forming apparatus.

(Reply Br. 3.) Appellant contends that
Nishiyama does not teach or suggest any image that corresponds
to Appellant’s recited “page images,” which are different from
Appellant’s recited “preview image.” Therefore, the
functionality of the rotation key 94 of Nishiyama, which is
reflected on the preview image 87, does not and cannot
correspond to a “second type of editing instruction” that is
required to be reflected on the page images, as recited in
Appellant’s claims 2 and 7.

(Reply Br. 4, citing Nishiyama ¶¶ 71, 73, 155–158, Fig. 12.)
We agree with Appellant. The “display” of claim 2 both displays
“page images generated from input image data” and “a preview image of an
image to be formed on a recording medium.” The Examiner finds that “[t]he
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claim does not specifically point out page image and preview image are
different, and it is not clear the relationship between page images and
preview image.” (Ans. 8.) We find the Examiner erred, as the claim
language and the disclosure together adequately convey the distinctions
between the claimed “page images” and “preview images” to one skilled in
the art.
For example, Appellant’s Figure 11 illustrates a “masking operation”
(Spec. 23:20) applied to a page, with the “image after [the edit] is displayed
on finish preview screen 510” (Spec. 23:26), whereas “the page image is
displayed on document display mode screen image 530 in the same manner
as before the edit[].” (Spec. 23:28–30.) The “masking operation”
corresponds to claim 2’s requirement of an “editing instruction includes a
first type of editing instruction which is not reflected on said page images.”
Similarly, Appellant’s Figure 14 illustrates a “[c]hange of [p]age
[o]rder” (Spec. 24:31) in which “the user drags the touched page such that
the pages are arranged in the desired order” (Spec. 25:2–3), and thereafter
“document display mode screen image 530 is displayed with the page order
reflecting the page order changing operation” (Spec. 25:5–7) and “the result
of [the edit] is also displayed on finish preview screen image 510.” (Spec.
25:9–10.) The “[c]hange of [p]age [o]rder” corresponds to claim 2’s
requirement of a “second type of editing instruction which is reflected on
said page images.”
When properly interpreting claim 2’s requirement that “the processor
controls the display to display page images generated from input image data
and a preview image of an image to be formed on a recording medium,” the
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rejection does not identify how Nishiyama teaches or suggests both claimed
“page images” and the “preview image”
Additionally, the Examiner finds that “Nishiyama teaches [a] second
type [of] editing instruction: 87 in fig. 12, 87 is mapped to ‘page image’ and
‘preview image’, when an enlarging/reducing key 93, a display rotation key
94 pressed, display page image 87 reflected the key pressed.” (Ans. 8, citing
Nishiyama Fig. 12, ¶ 158.)
However, Nishiyama’s Figure 12 illustrates “a forcible preview
display” (Nishiyama ¶ 155) whose keys only allow the user “to confirm a
setting of the preview image 87 or to confirm by enlarging/reducing or
rotating the preview image 87.” (Nishiyama ¶ 158 (emphasis added).) In
other words, Nishiyama’s GUI set-up shown in Figure 12 does not accept an
editing instruction, that is, an instruction that would alter the display of
and/or content of a page, but instead permits the user to review previously
made “image processing” instructions such as “image quality adjustment
processing, two-color processing, color correction processing, spatial filter
processing, scaling processing, and output tone correction processing.”
(Nishiyama ¶ 73.)
The addition of Kujirai does not cure the deficiencies of Nishiyama.
Accordingly, we are constrained by the record to reverse the
Examiner’s obviousness rejection of independent claim 2, as well as
independent claim 7 commensurate in scope, and dependent claims 3–6.

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Application 14/818,371

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–7 103(a) Nishiyama, Kujirai 2–7

REVERSED