Prosecution Insights
Last updated: May 29, 2026
Application No. 18/028,814

CONTROLLING BILLING FOR APPLICATION INSTALLED IN IMAGE FORMING APPARATUS

Non-Final OA §103
Filed
Mar 28, 2023
Priority
Sep 29, 2020 — RE 10-2020-0127532 +1 more
Examiner
LEE, CLAY C
Art Unit
3699
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Hewlett-Packard Development Company, L.P.
OA Round
4 (Non-Final)
54%
Grant Probability
Moderate
4-5
OA Rounds
3m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 54% of resolved cases
54%
Career Allowance Rate
121 granted / 222 resolved
+2.5% vs TC avg
Strong +57% interview lift
Without
With
+57.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
40 currently pending
Career history
277
Total Applications
across all art units

Statute-Specific Performance

§101
1.3%
-38.7% vs TC avg
§103
92.5%
+52.5% vs TC avg
§102
4.4%
-35.6% vs TC avg
§112
0.5%
-39.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 222 resolved cases

Office Action

§103
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Response to Amendment The amendment filed January 6, 2026 has been entered. Claims 1, 3-8, and 15 remain pending in the application. Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. Claim(s) 1, 3-8, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wataishi (US 20120054758 A1; already of record in IDS) in view of Kawamura (US 20200106917 A1; already of record in IDS), and in further view of Vora (US 10649630 B1). Regarding Claims 1 and 15, Wataishi teaches An application management server, comprising a processor to (Wataishi: Abstract; Paragraph(s) 0041): A computer readable storage medium storing a computer program that when executed causes a processor to (Wataishi: Paragraph(s) 0041): receive status information regarding applications installed in an image forming device based on a control command received from the application management server via a communications module of the application management server (Wataishi: Abstract; Paragraph(s) 0055, 0107, 0036 teach(es) The application state management unit a may include a communication control unit; the examination results may be “pushed” from the application state management unit to the apparatus management server and transferred from the apparatus management server to the user terminal. This configuration enables the user to monitor the constantly-changing status of the set conditions in real time; the apparatus management system includes one or more image forming apparatuses (for descriptive purposes, the image forming apparatuses may be called the image forming apparatus in the singular form), an apparatus management server, and a user terminal that are connected via a (wired or wireless) network such as a local area network (LAN)), and based on the status information responsive to an instruction received from the [license] management server at the image forming device (Wataishi: Abstract; Paragraph(s) 0069 teach(es) An image forming apparatus includes a memory configured to store programs installed in the image forming apparatus and having plural states; a condition storing unit configured to store at least one condition defining a set of states of one or more of the programs; In response to user inputs on the management screen, the application management unit installs, starts, stops, and uninstalls the SDK applications). However, Wataishi does not explicitly teach prevent billing for an application that is classified, based on the status information, as not having a log of normal operation or as being incapable of normal operation by performing a control operation. Kawamura from same or similar field of endeavor teaches prevent billing for an application that is classified, based on the status information, as not having a log of normal operation or as being incapable of normal operation by performing a control operation (Kawamura: Paragraph(s) 0067, 0102, 0050 teach(es) when it is determined that the job is not accomplishable, the MFP decides that the billing process is not to be performed for the execution of the job; The controller (control part) is a control device that is built in the MFP and generally controls the MFP; the controller implements various processing parts). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Wataishi to incorporate the teachings of Kawamura for preventing billing for an application that is classified, based on the status information, as not having a log of normal operation or as being incapable of normal operation by performing a control operation. There is motivation to combine Kawamura into Wataishi because Kawamura’s teachings would facilitate to decide whether to bill based on determining the status of the job (Kawamura: Paragraph(s) 0102). However, the combination of Wataishi and Kawamura does not explicitly teach send, to a license management server in communication with the application management server via a network, that manages licenses for operation of the applications, a request for management of a license of the application that is classified as not having a log of normal operation or as being incapable of normal operation as part of the control operation, wherein the request is to prevent the operation of the application at the image forming device based on the received status information; and perform an additional control operation to retract the license for operation of the application that is classified as not having a log of normal operation or as being incapable of normal operation based on the status information responsive to an instruction received from the license management server. Vora from same or similar field of endeavor teaches send, to a license management server in communication with the application management server via a network, that manages licenses for operation of the applications, a request for management of a license of the application that is classified as not having a log of normal operation or as being incapable of normal operation as part of the control operation, wherein the request is to prevent the operation of the application at the image forming device based on the received status information (Vora: 1/44-61; 17/29-44; 22/40-62 teach(es) there exists a need for a GUI that streamlines software asset management for a number of different software applications. An improved GUI may provide an overview of all software applications currently licensed in the managed network as a number of selectable cards. The selectable cards may be configured to allow a user to drill down into a detailed list-view for each respective software application. This respective list-view may display important information about the software license allocation, including but not limited to an number of licenses that are being allocated and used and/or unused; this improved GUI may indicate whether the managed network is over or under paying for the software based on the license agreement. To that end, the improved GUI may provide remediation options for a user that allow the user to fix any discrepancies in over and/or under payment for the software licenses; as shown in FIG. 7C, table row 726 d shows the option to “Remove Unlicensed Installs,” which may involve uninstalling instances where the software is being used improperly. Table 726 indicates that this remediation action will affect compliance, that 15 installations could be removed, and that this remediation action would not cost anything. This remediation option may be beneficial because it would allow a user to take action that would make the software compliant without an associated cost); and perform an additional control operation to retract the license for operation of the application that is classified as not having a log of normal operation or as being incapable of normal operation based on the status information responsive to an instruction received from the license management server … (Vora: 17/29-44; 22/63 ~ 23/5 teach(es) if the network administrator can identify users that are using unlicensed software, the network administrator can move forward with an appropriate remedy (e.g., removing the unlicensed software or purchasing additional licenses). This may further be beneficial because it may allow the network administrator to reallocate unused software applications to users that are in need, resulting in a greater cost savings to managed network; the “Remove Unlicensed Installs” option in table row may be selectable to cause the computational instance on which pane is viewed to remotely access computing devices on which the unlicensed installations exist; Further, the computational instance may cause the computing devices to uninstall, deactivate, or delete the unlicensed installations). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Wataishi and Kawamura to incorporate the teachings of Vora for sending, to a license management server in communication with the application management server via a network, that manages licenses for operation of the applications, a request for management of a license of the application that is classified as not having a log of normal operation or as being incapable of normal operation as part of the control operation, wherein the request is to prevent the operation of the application at the image forming device based on the received status information; and performing an additional control operation to retract the license for operation of the application that is classified as not having a log of normal operation or as being incapable of normal operation based on the status information responsive to an instruction received from the license management server. There is motivation to combine Vora into the combination of Wataishi and Kawamura because Vora’s teaching of an improved GUI may provide an overview of all software applications currently licensed would facilitate reallocating unused software applications to users that are in need (Vora: 1/44-61; 17/29-44; 22/63 ~ 23/5). Regarding Claim 3, the combination of Wataishi, Kawamura, and Vora teaches all the limitations of claim 1 above; and Wataishi further teaches wherein the application management server further comprises a memory to store information regarding an application that has been requested to be deleted, wherein the status information comprises an installation status list of applications installed in the image forming device, and wherein the processor is to classify, as being incapable of normal operation, the application that has been requested to be deleted and is included in the installation status list (Wataishi: Paragraph(s) 0037, 0042, 0072-0075, 0107, 0005 teach(es) The image forming apparatus may be configured such that applications (e.g., SDK applications described later) can be installed and uninstalled to add and remove functions; enabling the user to monitor the constantly-changing status of the set conditions in real time). Regarding Claim 4, the combination of Wataishi, Kawamura, and Vora teaches all the limitations of claim 1 above; and Wataishi further teaches wherein the status information comprises information regarding an application that has been requested to be deleted but has failed to be deleted, and wherein the processor is to classify, as being incapable of normal operation, the application that has failed to be deleted (Wataishi: Paragraph(s) 0037-0038, 0072-0075, 0107, as stated above with respect to claim 3). Regarding Claim 5, the combination of Wataishi, Kawamura, and Vora teaches all the limitations of claim 1 above; and Wataishi further teaches wherein the status information comprises information regarding an application that is currently being deleted, and wherein the processor is to classify, as being incapable of normal operation, the application that is currently being deleted (Wataishi: Paragraph(s) 0011, 0037-0038, 0072-0075 teach(es) a state obtaining unit configured to obtain state information indicating current states of the programs). Regarding Claim 6, the combination of Wataishi, Kawamura, and Vora teaches all the limitations of claim 1 above; however the combination does not explicitly teach wherein the status information comprises information regarding the license under which the application is to operate, and wherein if the license is unavailable or has expired, the processor is to classify, as being in capable of normal operation, the application that is to operate under the license. Vora further teaches from same or similar field of endeavor teaches wherein the status information comprises information regarding the license under which the application is to operate, and wherein if the license is unavailable or has expired, the processor is to classify, as being in capable of normal operation, the application that is to operate under the license (Vora: 1/44-61; 17/29-44; 22/63 ~ 23/5, as stated above with respect to claim 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Wataishi, Kawamura, and Vora to incorporate the teachings of Vora for wherein the status information comprises information regarding the license under which the application is to operate, and wherein if the license is unavailable or has expired, the processor is to classify, as being in capable of normal operation, the application that is to operate under the license. There is motivation to combine Vora into the combination of Wataishi and Kawamura because Vora’s teaching of an improved GUI may provide an overview of all software applications currently licensed would facilitate reallocating unused software applications to users that are in need (Vora: 1/44-61; 17/29-44; 22/63 ~ 23/5). Regarding Claim 7, the combination of Wataishi, Kawamura, and Vora teaches all the limitations of claim 1 above; and Wataishi further teaches wherein the status information comprises launch log information indicating whether or not applications have been launched, and wherein the processor is to identify, based on the launch log information, an application that has never been launched and to classify the identified application as not having a log of normal operation (Wataishi: Paragraph(s) 0096, 0072-0075 teach(es) Based on the inquiry list, the set condition examination unit requests the application state obtaining unit to generate an inquiry result list indicating the states of the SDK applications included in the inquiry list). Regarding Claim 8, the combination of Wataishi, Kawamura, and Vora teaches all the limitations of claim 1 above; and Wataishi further teaches wherein the status information comprises operation log information indicating whether or not applications have been in normal operation, and wherein the processor is to identify, based on the operation log information, an application that has never been in normal operation and to classify the identified application as not having a log of normal operation (Wataishi: Paragraph(s) 0096, 0072-0075, as stated above with respect to claim 7). Response to Arguments Applicant's arguments filed January 6, 2026 have been fully considered but they are not persuasive. Regarding applicant’s argument under Claim Rejections - 35 USC § 103 that “the Wataishi, Kawamura, and Chiyo references do not disclose, and therefore do not teach "perform an additional control operation to retract the license for operation of the application that is classified as not having a log of normal operation or as being incapable of normal operation based on the status information," as recited by Applicant's independent claim 1,” examiner respectfully argues that the combination of Wataishi, Kawamura, and Vora teaches an improved GUI providing an overview of all software applications currently licensed and thus reallocating unused software applications to users that are in need (Vora: 1/44-61; 17/29-44; 22/63 ~ 23/5). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim (WO 2021055002 A1) teaches Controlling Image Forming Apparatus Equipped With Non-Genuine Toner Cartridge, including deactivate license information. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAY LEE whose telephone number is (571)272-3309. The examiner can normally be reached Monday-Friday 8-5pm EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached on (571)270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CLAY C LEE/Primary Examiner, Art Unit 3699
Read full office action

Prosecution Timeline

Show 11 earlier events
Jul 29, 2025
Response after Non-Final Action
Oct 30, 2025
Non-Final Rejection mailed — §103
Dec 10, 2025
Interview Requested
Dec 17, 2025
Applicant Interview (Telephonic)
Dec 17, 2025
Examiner Interview Summary
Jan 06, 2026
Response Filed
Apr 01, 2026
Final Rejection mailed — §103
Apr 08, 2026
Response after Non-Final Action

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

4-5
Expected OA Rounds
54%
Grant Probability
99%
With Interview (+57.1%)
3y 5m (~3m remaining)
Median Time to Grant
High
PTA Risk
Based on 222 resolved cases by this examiner. Grant probability derived from career allowance rate.

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