Ex Parte Sakiyama et al

Patent Trial and Appeal Board

Nov 16, 2012

10775080 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAISUKE SAKIYAMA, NOBUO KAMEI,
MASAYA HASHIMOTO, and TAKESHI MORIKAWA
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Appeal 2010-001459
Application 10/775,0801
Technology Center 2100
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Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
ANDREW J. DILLON, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Konica Minolta Business Technologies, Inc.
Appeal 2010-001459
Application 10/775,080

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-17, which are all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to a data output apparatus such
as a printer. See Spec., 1:¶ [0002].
Claim 1 is illustrative:
1. A data output apparatus, comprising:
a processing memory that processes input job image data
for a job;
an output unit that, after processing of the input job
image data sent to said processing memory, outputs said processed
input job image data during a first output session;
a mounting unit for mounting an expansion memory used
for image data storage;
a detection unit that detects whether or not the expansion
memory is mounted to said mounting unit; and
a controller that, when said input job image data is to be
output multiple times and, (i) if the expansion memory is mounted,
stores the processed input job image data in a first storage destination
memory for a second output session and beyond, and (ii) if the
expansion memory is not mounted, stores the input job image data
that is not processed in a second storage destination memory for a
second output session and beyond.

Appeal 2010-001459
Application 10/775,080

3
Appellants appeal the following rejection:
Claims 1-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Utsunomiya (US 6,999,186 B2, Feb. 14, 2006), Kizaki
(US Patent Pub. 2003/0035142 A1, Feb. 20, 2003), and Terajima (US
5,309,251, May 3, 1994).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37(c)(1)(vii).

ANALYSIS
Claims 1-17
Issue: Did the Examiner err in combining the teachings of
Utsunomiya, Terajima, and Kizaki, thus making Utsunomiya inoperable for
its intended use?

Appellants contend that “modifying the primary reference
Utsunomiya with at least the teachings of the secondary reference Terajima,
as proposed by the Examiner, would destroy the operability of the former”
(App. Br. 5). Appellants further contend that “for the device of Utsunomiya
to successfully execute any printing operation . . . , the external memory
must be mounted. . . . Utsunomiya cannot satisfactorily produce an output if
the external memory 1043 is not mounted” (id. at 8).
The Examiner found that “Utsunomiya does teach the proper printing
of a plurality of copies (e.g. multiple copies) without the need of the hard
Appeal 2010-001459
Application 10/775,080

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disk (Figure 1, reference 1043, 3011, 3012)” (Ans. 22 (emphasis omitted)).
We agree with the Examiner.
The U.S. Court of Appeals for the Federal Circuit “has previously
found a proposed modification inappropriate for an obviousness inquiry
when the modification rendered the prior art reference inoperable for its
intended purpose.” In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992)
(citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)). We do not
believe this to be the case here. Appellants contend that modifying
Utsunomiya to include a detection unit for detecting whether the expansion
memory is mounted would render Utsunomiya inoperable for its intended
use because it needs the expansion memory to produce outputs (i.e., you
would not want to remove the expansion memory). We disagree.
The Examiner found, and we agree, that Utsunomiya can properly
print a plurality of copies without the need of the hard disk (i.e., expansion
memory) (Ans. 22). Specifically, Utsunomiya discloses:
Upon printing a plurality of copies, two different
methods are available, as described above. In the first method,
print data 3007 for one job is stored in the input/output buffer
1032, a process for reading out the print data 3007 from the
input/output buffer 1032, and generating and outputting an
image is executed for each copy, and that process is repeated in
correspondence with the number of copies to be printed. In the
second method, rasterized image data for one job is stored in
the rasterized image storing area 3008, a process for reading out
and outputting image data from the rasterized image storage
area 3008 is executed for each copy, and that process is
repeated in correspondence with the number of copies to be
printed.
Col. 6, ll. 20-32.
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Application 10/775,080

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In other words, Utsunomiya discloses at least two methods using
either an input/output buffer 1032 or a rasterized image storing area 3008 to
produce output data. In both of these aforementioned methods, the external
memory 1043 is not being used. In fact, Utsunomiya discloses that “the
rasterized image data storage area 3012 is used as a save area when the input
buffer 1032 or the rasterized image data storage area 3008 on the RAM 1037
have become full of data” (col. 6, ll. 35-38). In other words, Utsunomiya
uses the external memory 1043 as a save area when input buffer 1032 and
the storage area 3008 are full of data. Therefore, we find that Utsunomiya
does not disclose that the external memory must be used in order to output
data, as argued by Appellants. Instead, the usage of Utsunomiya’s external
memory 1043 appears to merely be an overflow area (i.e., when the other
areas are full) and perhaps a redundancy storage area, as opposed to a
necessity to all printing operations.
As such, we find unpersuasive Appellants argument that “Utsunomiya
cannot satisfactorily produce an output if the external memory 1043 is not
mounted” (see App. Br. 8). Based on the record before us, we find no error
in the Examiner’s obviousness rejection of representative claim 1 essentially
for the reasons indicated by the Examiner.

DECISION
We affirm the Examiner’s § 103 rejection.

Appeal 2010-001459
Application 10/775,080

6
No time period for taking any 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

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