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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/5/2025 has been entered.
Response to Amendment
The amendment to claims was filed on 11/17/2025.
Claims 1-11 and 13-42 are canceled. Claim 12 is amended. Claims 43-60 are newly added.
Response to Arguments
Applicant's arguments filed on 11/17/2025 have been fully considered but they are not persuasive. Applicants arguments regarding claims’ rejections under 35 USC 101 on pages 9-12 of the Remarks are not persuasive.
Applicants on page 10 argues:
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Applicants on page 11 argues:
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Applicants on page 12 argues:
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The Examiner respectfully disagrees.
First, the present invention, in the description of the related art, at paragraph [0004] in the specification states the following:
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Therefore, it is clear from the support of the specification that the controller is not a non-generic, hardware-specific sequence governing actual device behavior. Even from the evidence of related art paragraph disclosed by the applicant, this control is well-known, well-understood, and conventional in the art. This is further supported by MPEP 2106.05(d). The elements and combination of elements are no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, this does not favor eligibility.
Second, there is no evidence anywhere in the recitation of the pending claims that this such arrangement provides a technical improvement to the machine because the touch panel simply displays information. The claim 12 recites “control the touch panel to display in a first state…and after the touch panel displays in the first state…automatically control the touch panel to display in a second state…”.
Finally, the claimed hardware elements are shown in the related art, as evidenced by the applicant at paragraph [0004] in the specification. And, the user-interface state transitions are well known and considered mere instructions to apply an exception, MPEP 2106.05(f). See detailed rejection below.
Applicants arguments regarding claims’ rejections under 35 USC 102 and 103 on pages 13-14 of the Remarks are not persuasive. Applicants state on page 14 that:
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The Examiner respectfully disagrees. Sharp teaches the limitations recited in pending claims, including “a box function for saving print data to a storage device”. Starting at paragraph [0045], “…a program for executing a job, a program for receiving a print job and storing the print job in the storage unit 104, and the like are also executed in parallel with the programs”. Sharp at paragraph [0010] discloses that “the present invention includes a motion sensor, has a function of returning from a power saving state to a normal state, can automatically determine whether or not the motion sensor is operating normally, and detect the possibility of abnormality. It is intended to provide an electronic device that can be presented”. Therefore, this also enables a user to prevent unintentional transition to the predetermined screen.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 43, 53-54, and 60 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Newly added claim 43, for example, at lines 10-11, recites “without any user operation”. This does not have a support and a description in the specification as filed. It is unclear where and how the negative limitation is supported in the specification where it is described that the predetermined condition that is automatically satisfied without any user operation. See MPEP 2173.05(i). Newly added claims 53-54 and 60 are rejected for the same reasons.
Claims 56-57 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 56 recites “the screen displayed on the touch panel…includes an object labeled with a name indicating the box function…in response to a user operation on an object labeled with the name indicating the box function that is displayed on the touch panel…”. Nowhere in the Applicant’s specification there is a mention of “label” or “name” of an object. According to the disclosure paragraphs [0028, 0038, 0047, 0053, 0055], said “object” seems to be a person. So, if the object is a person, how can the object labeled with a name indicating the box function be displayed on the touch panel, as recited in the claims?
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 12 and 43-60 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., abstract idea – mental processes) without significantly more. Claim 12 is used as an example.
(1) Are the claims directed to a process, machine, manufacture or composition of matter;
(2A) Prong One: Are the claims directed to a judicially recognized exception, i.e., a law of nature, a natural phenomenon, or an abstract idea;
Prong Two: If the claims are directed to a judicial exception under Prong One, then is the judicial exception integrated into a practical application;
(2B) If the claims are directed to a judicial exception and do not integrate the judicial exception, do the claims provide an inventive concept.
Claim 12. (Currently Amended) A data processing apparatus comprising:
(a) a human detection sensor configured to sense a human;
(b) a touch panel; and
(c) a controller including a processor and a memory, the controller configured to:
(d) in response to detection of a human by the human detection sensor,
control the touch panel to display in a first state in which transition to a predetermined screen related to a box function for saving print data to a storage device is not enabled; and
after the touch panel displays in the first state, in response to satisfaction of a predetermined condition, automatically control the touch panel to display in a second state in which transition to the predetermined screen related to the box function for saving print data to the storage device is enabled. [emphasis added]
With regard to (1), the instant claims recite an apparatus, therefore the answer is "yes".
With regard to (2A), Prong One: Yes. When viewed under the broadest most reasonable interpretation, the instant claims are directed to a Judicial Exception – an abstract idea – mental processes, concepts performed in the human mind, including an observation, evaluation, judgment, opinion. The wherein clause is generically recited because there is no description of how this is accomplished. It can be interpreted as merely looking at the display as one walks up to the apparatus. There is nothing in the claim that requires more than an operation that an appropriate apparatus illustrates when a human simply ‘walks up to it’ or when a sensor simply detects a human in the vicinity of said apparatus .
Claims recites in element (d) “…a transition to a predetermined screen for saving print data to a storage device not enabled; and in response to satisfaction of a predetermined condition,… transition to the predetermined screen related to the box function for saving print data to the storage device is enabled…”. These steps do not require any steps other than a person being detected by said apparatus by a generic sensor. There is no data being received or being processed. Further, (a), (b), and (c) having a detection sensor, touch panel, and a controller are well known in the art – as further strengthen by the Applicant’s own mention of related art at paragraph [0004] in the specification.
With regard to (2A), Prong Two: No. The instant claims do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception of “transition” and “enable” (in response to satisfaction of a condition) based on some predetermined condition, and therefore does not integrate the judicial exception into a practical application.
The use of an apparatus that include a sensor, a touch panel, and a controller to receive “data” at a high level of generality such that said “data” can be used in the operation of the recited judicial exception (the mental step of “receiving”). Supplying “data” (i.e., transition and enable) does not provide for “integration” of the abstract idea into a practical application, as said data do not change the way in which said apparatus operates. There are no specifics on how the data is received in order to transition and control the touch panel. This can be interpreted as “visualization”. This is as similar to evaluation and judgment. A human can walk up to an apparatus containing a detection sensor and a touch panel. This apparatus inherently includes a generic processor/controller. The apparatus simply has a touch panel, like a display, that switches from a first state (i.e., “dark” or “asleep”) to a second state (i.e., “light” or “awake”). Once a use touches the display, it switches to a second state, per se.
Even if this step is by an “apparatus comprising: a human detection sensor configured to sense a human; and a touch panel” that may be, for example, a MFP. Multi-Function Peripheral (MFP) having a copy function or a print function is well known in the field and receiving/transition/enable data/screen/display is also well known. There are no steps to define what it is in the claim and thus interpreting it in a broad manner is expected and fair given the lack of specifics here. Thus, the claim as a whole does not provide for “integration” of the abstract idea into a practical application.
With regard to (2B), the pending claims do not show what is more than a routine in the art presented in the claims, i.e., the additional elements are nothing more than routine and well-known steps. There is no improvement to technology here. There is only a “displaying/transition” and “enabling”, and it has not been shown that the mental process allows the “technology” to do something that it previously was not able to do.
With regard to claims 43-60, similar analysis is applied and therefore does not integrate the judicial exception into a practical application. These claims are similarly rejected for the same reasons discussed in view of steps recited in claim 12 and not repeated herewith.
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 12, 43-50, 52-55 and 58-60 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP6680474 (corresponding numbers JP2017005650 as publication 2017-01-05; JP2015120990A as application 2015-06-16) to Sharp Corp. (hereafter, “Sharp”).
With regard to claim 12 Sharp discloses a data processing apparatus comprising: a human detection sensor configured to sense a human (sensor 116, person 150, paragraph [0041]); a touch panel (touch panel display within operation unit 110, paragraphs [0038-0039 and 0043]); and a controller including a processor and a memory (control unit 102, processor and memory within CPU, paragraphs [0032, 0046-0053]), the controller configured to: in response to detection of a human by the human detection sensor (paragraphs [0041 and 0044]), control the touch panel to display in a first state in which transition to a predetermined screen related to a box function for saving print data to a storage device is not enabled (predetermined condition is set by control unit 102, paragraph [0050], touch screen is turned off, meaning it is not enabled, paragraphs [0050, 0062-0063]); and after the touch panel displays in the first state, in response to satisfaction of a predetermined condition, automatically control the touch panel to display in a second state in which transition to the predetermined screen related to the box function for saving print data to the storage device is enabled (paragraphs [0051-0054, 0069-0071, 0110, 0121]).
With regard to claims 43 and 60, claims 43 and 60 are rejected same as claim 12 and the arguments similar to that presented above for claim 12 are equally applicable to claims 43 and 60.
With regard to claim 44 Sharp discloses wherein the predetermined condition includes a condition related to a that has elapsed since the touch panel displayed (paragraphs [0037-0040, 0054, 0078]).
With regard to claim 45 Sharp discloses wherein a screen including a plurality of objects is displayed when the touch panel displays in response to the detection of the human by the human detection sensor (paragraphs [0038-0039]).
With regard to claim 46 Sharp discloses wherein the screen displayed in response to the detection of the human by the human detection sensor is a home screen (device/apparatus 100 has operation unit 110. This includes job processing status and the like on the screen displayed on the touch panel display. By selecting various keys displayed on the touch panel display, different options are being accessed, one of the being a reset, or certain types of function settings, and the like. This is implied to have a home screen – essentially giving you access to so called main options. Paragraphs [0037-0038], etc. throughout the reference).
With regard to claim 47 Sharp discloses wherein, while the touch panel is controlled to display in the first state in which transition to the predetermined screen related to the box function for saving print data to the storage device is not enabled, even if a transition instruction to transition to the predetermined screen is provided by a user operation, the predetermined screen is not displayed on the touch panel (abnormal value at paragraph [0083], energy saving at paragraph [0085]).
With regard to claim 48 Sharp discloses wherein the data processing apparatus has a print function (paragraphs [0030, 0037, 0043]).
With regard to claim 49 Sharp discloses wherein the data processing apparatus has a copy function (paragraphs [0030, 0043]).
With regard to claim 50 Sharp discloses wherein the human detection sensor is an infrared sensor (paragraphs [0041-0042]).
With regard to claim 52 Sharp discloses wherein the second state in which transition to the predetermined screen related to the box function for saving print data to the storage device is enabled is a state in which transition to the predetermined screen can be made based on selection of an object corresponding to the box function displayed on the touch panel (paragraphs [0031-0032, 0038-0039, 0045, 0050, 0053-0054]).
With regard to claim 53 Sharp discloses a scanner configured to generate image data by reading paper’ a printer configured to print, based on the image data (paragraphs [0002, 0030, 0037-0038, 0043, 0045], scanner functions are available within the apparatus 100, scanner is implied to have ‘read’ paper in the term of art, apparatus is further an electronic device, MFP, with a network compatible printer mode, paragraph [0002]), wherein after the touch panel displays in the first state, in a case where the predetermined condition is automatically satisfied without any user operation, the touch panel is able to transition to the predetermined screen related to the box function for saving print data to the storage device and to another screen related to a print function for printing by the printer, based on image data generated by the scanner (paragraphs [0030, 0037, 0043, 0045]).
With regard to claim 54 Sharp discloses wherein, after the touch panel displays in the first state, in a case where the predetermined condition is automatically satisfied without any user operation, and in a case where a user operation providing a transition instruction to transition to the predetermined screen is received, the controller controls the touch panel to transition to the predetermined screen related to the box function for saving print data to the storage device (the function screen performing the process of storing print data to the storage box, paragraphs [0037-0038, 0045] and “document reading unit 130 includes a CCD (Charge-Coupled Device) for reading an image and a document detection sensor for detecting a document set on the document table or the document automatic feeding device 132, and reads the document… The image data is temporarily stored in the RAM of the control unit 102…”, paragraph [0036]).
With regard to claim 55 Sharp discloses wherein the object corresponding to the box function is displayed on the touch panel regardless of whether the predetermined condition is satisfied (paragraphs [0030, 0037, 0043, 0045]).
With regard to claims 58/59 Sharp discloses wherein the storage device is an internal/external storage device of the data processing apparatus/connected to the data processing apparatus via a network (Fig. 2, storage unit 104, ROM, TAM, HDD, network 190, paragraphs [0032-0034, 0123]).
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.
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.
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.
Claim 51 is rejected under 35 U.S.C. 103 as being unpatentable over JP6680474 (hereafter, “Sharp”) in view of US 2016/0357386 to Choi.
With regard to claim 51, Sharp teaches the data processing apparatus according to claim 12/43 with a human detection sensor. However, Sharp does not expressly teach human detection sensor is an ultrasound type sensor.
Choi teaches ultrasound type sensor at paragraph [0042]. It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify Sharp reference to have ultrasound type sensor of Choi’s reference. The suggestion/motivation for doing so would have been to have various types of information such as video, audio and tactile output on display, as suggested by Choi at paragraphs [0042-0043].
Further, one skilled in the art could have combined the elements as described above by known method with no change in their respective functions, and the combination would have yielded nothing more than predictable results. Therefore, it would have been obvious to combine Choi with Sharp to obtain the invention as specified in claim 51.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEFALI D. GORADIA whose telephone number is (571)272-8958. The examiner can normally be reached Monday-Thursday 8AM-6PM, Friday 8AM-12PM.
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SHEFALI D. GORADIA
Primary Patent Examiner
Art Unit 2676
/SHEFALI D GORADIA/Primary Patent Examiner, Art Unit 2676