DETAILED ACTION
A response was received on 18 September 2025. By this response, Claims 1-5 and 7-9 have been amended. Claims 6 and 10 have been canceled. No new claims have been added. Claims 1-5 and 7-9 are currently pending in the present application.
Response to Amendment
Per the interview summary mailed 02 October 2025, Applicant was given a non-extendable period of one month from the interview date of 26 September 2025 to file a statement of the substance of the interview. However, Applicant has not provided such a statement as required. Although this is not fully responsive to the interview and the prior Office action, as a courtesy, the present response has still been fully considered. Applicant is still required to provide a statement of the substance of the interview upon receipt of the present Office action.
Response to Arguments
Applicant's arguments filed 18 September 2025 have been fully considered but they are not persuasive.
Regarding the rejection of Claims 1-10 under 35 U.S.C. 102(a)(1) as anticipated by Fukuoh et al, US Patent 8245303, and with particular reference to amended independent Claim 1, Applicant argues that Fukuoh discloses checking control modules for viruses and only the sections corresponding to job types would be checked for viruses, whereas the claimed invention determines a type or location of the virus and determining whether a function is executable even if a virus has not been removed (see pages 3-5 of the present response, citing Fukuoh, column 10, lines 32-37, and Figures 2-9 and paragraph 0008 of the present disclosure). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., determining whether a function is executable even if a virus has not been removed) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, although Applicant notes certain examples of locations (e.g. network, USB memory, internal hard disk) or types of viruses (e.g. macro, trojan, worm), these specific examples are not required by the claims. It is submitted that Fukuoh does disclose storing function availability information associated with types and locations of viruses (see column 11, lines 41-51, as previously cited; see also column 10, lines 1-9), determining functions to be executable or prohibited and setting execution availability based on such a determination (column 8, lines 27-38, as previously cited, scanning for viruses), and setting functions as prohibited when viruses are detected (column 8, lines 39-64, as previously cited, function execution held until virus detection and removal is completed), as detailed further below.
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Claim Rejections - 35 USC § 112
The rejection of Claims 6 and 10 under 35 U.S.C. 112(b) as indefinite is moot in light of the cancellation of the claims. The rejection of Claims 1-5 and 7-9 under 35 U.S.C. 112(b) is NOT withdrawn, because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “indicating whether each of the plurality of functions is to be executed or to be prohibited in accordance with a state after any of the computer viruses is detected” in lines 4-6. It is not clear what the “state” is a state of. Further, the tense of “is detected” is unclear as to when this occurs in relation to the other functions of the claimed apparatus. The claim further recites “to detect a computer virus” in line 7. It is not clear whether this is one of the viruses previously recited in lines 4 and 6. The claim additionally recites “to determine, based on the acquired virus information and the function operation availability information, each of the plurality of functions to be executable or to be prohibited” in lines 11-13. It is not clear what is actually determined here. For example, it is not clear whether this is intended to recite that the functions themselves are determined or whether that it is determined whether each function is allowed or prohibited to be executed. The claim also recites “as to be” in lines 18, 20, 23, and 27. This phrasing is grammatically unclear and not in clear idiomatic English. The claim further recites “in a case that the virus detector detects any type of computer virus” in line 22. It is not clear when this detection occurs and how the timing relates to the other functions of the claimed apparatus, or if this is intended to refer to any of the previously recited viruses. The claim additionally recites “the function operation setter sets each of the plurality of functions” in lines 22-23 and “the function execution availability determiner determines… one or more functions, among the plurality of functions, to be executed” in lines 24-26. The recitation of the steps of setting and determining in the apparatus makes it unclear whether the apparatus is infringed when the steps are performed or just by possession of the apparatus. The claim also recites “the function executer is capable of executing any one of the one or more functions” in lines 28-29. This is generally unclear as to which functions are permitted or prohibited from execution. The above ambiguities render the claim indefinite.
Claim 2 recites “different states between before and after removal” in line 6. This phrase is grammatically unclear.
Claim 3 recites “a function that is previously in the prohibited state” in line 4. The tense of the verb “is previously in” is not clear in relation to the remainder of the claims.
Claim 4 “a function that is previously in the prohibited state” in line 7. The tense of the verb “is previously in” is not clear in relation to the remainder of the claims.
Claim 8 recites an image forming apparatus in line 2 but does not provide any structures of such an apparatus.
Claim 9 recites “as to be in” in lines 5 and 19. This phrasing is grammatically unclear and not in clear idiomatic English. The claim further recites “any type of the computer virus is detected” in line 6. As a virus is detected in line 4, it is not clear what further limitation that any type of virus is detected provides since the virus is already recited as being detected. The claim additionally recites “including information associated with types and infection locations of computer viruses, indicating whether each of the plurality of functions is to be executed or to be prohibited in accordance with a state after any of the computer viruses is detected” in lines 8-11. First, it is not grammatically clear what the phrases “including information” and “indicating whether” are intended to modify. Further, all of the functions were previously set to an execution prohibition state, and therefore all functions are to be prohibited. Additionally, there is not clear antecedent basis for plural computer viruses, and the tense of “is detected” is not clear with respect to the timing in relation to the other steps of the method. The claim further recites “determining… each of the functions to be executable or to be prohibited” in lines 13-14. It is not clear what is actually determined here. For example, it is not clear whether this is intended to recite that the functions themselves are determined or whether that it is determined whether each function is allowed or prohibited to be executed. The claim additionally recites setting functions in an execution permission state or execution prohibition state in lines 15-16 and 19; however, all functions are already set in the execution prohibition state. The above ambiguities render the claim indefinite.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuoh et al, US Patent 8245303.
In reference to Claims 1 and 8, Fukuoh discloses an image forming apparatus including elements configured to storage function availability information including information associated with types and locations of viruses indicating whether the functions are to be executed or prohibited (column 10, lines 1-9; see also column 11, lines 41-51); detect a computer virus and acquire virus information that identifies the detected virus (column 6, line 54-column 7, line 3; column 8, lines 27-64); determine functions to be permitted and prohibited using the acquired virus information and function operation availability information (column 8, lines 27-38); set execution availability based on the determination and execute the selected functions (column 8, lines 27-38); and execute permitted functions, where when a virus is detected, prohibited functions are prohibited until a state where execution is permitted is entered (column 8, lines 39-64, function execution held until virus detection and removal is completed).
In reference to Claims 2-4, Fukuoh further discloses removing the detected virus where functions differ before and after removal of the virus (column 8, lines 27-64).
In reference to Claim 5, Fukuoh further discloses determining a type and location of the virus and the functions are permitted or prohibited based on the type and location (see column 11, lines 41-51).
In reference to Claim 7, Fukuoh further discloses displaying a function selection screen and accepting input, where a prohibited function cannot be selected (column 9, lines 27-39).
Claim 9 is directed to methods corresponding to the functions of Claim 1, and is rejected by a similar rationale, mutatis mutandis.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492