DETAILED ACTION
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. As such, “prohibiting means” in claim 9 is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Referring to the specifications as filed, the prohibiting means corresponds to Fig. 3 CPU 12A and corresponding paragraphs ¶37-38 & ¶66-67.
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.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 9 is directed to an apparatus comprising a prohibiting means. When claims depend on a recited property, a fact situation comparable to In re Hyatt is possible, where the claim covers every conceivable structure (i.e., every conceivable apparatus) for achieving the stated property while the specification discloses at most only those known to the inventor. A claim of such breadth reads on subject matter that is not enabled by the specification and as such, does not reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The undue breadth of the claim is not supported by the original description or by an enabling disclosure. Specifically, the claim is directed to every conceivable apparatus, including those not yet known to the inventor. Thus, the scope of the claim is non-enabling. Appropriate action is required.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) limitations that fall under the grouping of abstract idea of “Mental Processes”, e.g. concepts performed in the human mind (such as observation, evaluation and judgement) (step 2A, prong one). The claim limitations merely recite various steps of human activity. Specifically, the claim describes a detecting whether an opening/closing portion of an apparatus is opened and, based on that determination, prohibiting recording of operation sound by a microphone. This amounts to evaluating information. Such observation, evaluation, and decision-making constitutes a mental process because it involves collecting information, analyzing it, and executing a decision based on the result. These are activities that can be performed in the human mind or with pen and paper.
Under step 2A, prong two, this judicial exception is not integrated into a practical application. The additional elements recited in the claims include a processor, microphone, image forming apparatus, and opening/closing portions of device components. These elements are recited generically and perform their conventional functions. The claims do not recite any improvement to microphone technology, signal processing, sensing technology, or printer operation.
Under step 2B, the claims does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because these are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d). The claims do not include an inventive concept that is sufficient to transform the abstract idea into a patent-eligible application. There is no specialized hardware, unconventional configuration, or technical improvement recited that would amount to significantly more than the abstract idea itself.
Regarding claims 2-7, the claims merely add further conditional logic regarding specific device portions (such as a paper feeding device) or specify when recording is permitted, but these limitations likewise recite additional evaluation and decision-making steps and therefore also recite the same abstract idea.
Claim Rejections - 35 USC § 103
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) 1-2, 4-5, and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang (US 20200274979) in view of Doo (US 20110025746).
Regarding claim 1, Chang discloses an information processing apparatus (Fig. 1 MFP 100) comprising:
a processor (Fig. 2 CPU 150) configured to:
prohibit, in a case where an opening/closing portion of a target apparatus that generates an operation sound is opened, recording of the operation sound by a microphone provided inside the target apparatus (¶36 the non-predetermined state indicates a state where the job is not being executed; ¶114 when the prohibition/permission command 573 from the server 300 indicates that the generation of the operation command 572 is prohibited, the apparatus-side generator 101 cannot receive the spoken voice of the user through the microphone 177; ¶121 the MFP 100 transmits a command for controlling on/off switching of the voice processing device 200 (on/off of the microphone 24) to the voice processing device 200 according to the state 61 of the MFP 100 detected by the state detector 141 (e.g. the non-predetermined state)).
Chang fails to specifically teach prohibiting operation inside the target apparatus in a case where an opening/closing portion of a target apparatus.
Doo teaches in ¶69-72 “the ink jet printer 1 is also equipped with a switch 61 that turns ON and OFF in synch with opening and closing of the front cover 15, and a circuit breaker 62 that disables the supply of electric power to the ultraviolet light irradiation devices 51 and 52” and “the ink jet printer 1 is equipped with a stop control device 85 that forcefully stops the irradiation of ultraviolet light by the ultraviolet light irradiation devices 51 and 52 when the front cover 15 is opened”.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified Chang to prohibit recording of operation sound by the microphone when the opening/closing portion of the apparatus is opened, as taught by Doo. Doo teaches detecting when a cover is open and disabling operation of internal components in response to the cover being opened in order to ensure proper operation, safety, and reliable of the apparatus (Doo ¶69-72). Since Chang already teaches controlling on/off operation of the microphone based on the state of the apparatus (Chang ¶121), wherein the state can be non-printing or a job is not being executed (¶36 & ¶114-115), it would have been obvious to use the cover open/closed state taught by Doo as one such state for controlling the microphone, including prohibiting recording when the opening/closing portion is open. The modification would have been a predicable use of prior art elements according to their established functions, namely using a known apparatus state detecting mechanism (cover open detecting) to control operation of a known component (microphone recording), in order to prevent recording during conditions in which the apparatus is not in its normal operational configuration and recording may be unnecessary, unreliable, or undesirable. Such modification involves the application of a known technique (disabling operation of internal components when a cover is open) to a known device (microphone recording system of Chang) for improvement, yielding predictable results.
Regarding claim 2, the combination of Chang and Doo discloses the information processing apparatus according to claim 1, wherein the processor is configured to: permit, in a case where the opening/closing portion is closed, the recording of the operation sound (Chang ¶109 For example, the CPU 20 turns on the microphone 24 according to the command 575 transmitted from the server 300 in step S23; this is when the MFP has the opening/closing portion closed as in Fig. 1).
Regarding claim 4, the combination of Chang and Doo discloses the information processing apparatus according to claim 1, wherein the target apparatus is an image forming apparatus that forms an image on a recording medium (Chang ¶31 The MFP 100 is a printer, a copier, or a multifunction machine having functions of a printer and a copier, and is an example of an image forming apparatus).
Regarding claim 5, the combination of Chang and Doo discloses the information processing apparatus according to claim 4, wherein the opening/closing portion includes at least one of a tray that contains the recording medium or a cover that is opened and closed in a case of replacing a cartridge including a container that contains a coloring material (Doo Fig. 1 front cover 15, which covers print heads and ink cartridges (see ¶42-43). The motivation to combine the references is discussed above in the rejection for claim 1.
Regarding claim(s) 8 (drawn to a CRM):
The rejection/proposed combination of Chang and Doo, explained in the rejection of apparatus claim(s) 1, anticipates/renders obvious the steps of the computer readable medium of claim(s) 8 because these steps occur in the operation of the proposed combination as discussed above. Thus, the arguments similar to that presented above for claim(s) 1 is/are equally applicable to claim(s) 8. See Chang ¶66.
Regarding claim(s) 9 (drawn to an apparatus):
The rejection/proposed combination of Chang and Doo, explained in the rejection of apparatus claim(s) 1, anticipates/renders obvious the steps of the apparatus of claim(s) 9 because these steps occur in the operation of the proposed combination as discussed above. Thus, the arguments similar to that presented above for claim(s) 1 is/are equally applicable to claim(s) 9.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Chang and Doo as applied to claim 2 above, and further in view of Sawada et al (US 20060245019).
Regarding claim 3, the combination of Chang and Doo discloses the information processing apparatus according to claim 2, but fail to teach wherein the processor is configured to: delete, in a case where the opening/closing portion is opened after the recording of the operation sound is started, the operation sound that has been recorded. Specifically, Chang teaches controlling recording of an operation sound by a processor based on a detected device state (¶121 the MFP 100 transmits a command for controlling on/off switching of the voice processing device 200 (on/off of the microphone 24) to the voice processing device 200 according to the state 61 of the MFP 100 detected by the state detector 141). Doo teaches detecting when an opening/closing portion (such as a cover) is opened and controlling device operations in response to that detection (¶69-72 “the ink jet printer 1 is also equipped with a switch 61 that turns ON and OFF in synch with opening and closing of the front cover 15, and a circuit breaker 62 that disables the supply of electric power to the ultraviolet light irradiation devices 51 and 52” and “the ink jet printer 1 is equipped with a stop control device 85 that forcefully stops the irradiation of ultraviolet light by the ultraviolet light irradiation devices 51 and 52 when the front cover 15 is opened).
Sawada teaches in ¶55 the audio data storing unit 205 deletes audio data stored therein, in accordance with the instructions from the operation panel unit 200 and control information stored in the control information storing unit 206.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to modify the system of Chang, in view of Doo’s detection of an open event, to delete previously recorded audio upon detection that the opening/closing portion has been opened after recording has begun, as taught by these references. It would have been a routine predictable design choice to invalidate or delete already captured data when a condition indicating an improper or disallowed state is detected. Such deletion ensure that recordings from disallowed states are not retained, consistent with known audio data management techniques.
Allowable Subject Matter
Claims 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 6, and similarly regarding claim 7, the prior art of record, alone or in combination, does not teach “permit, in a case where an opening/closing portion of a paper feeding device that is externally attached to the image forming apparatus is opened, the recording of the operation sound.”
At best, Doo (US 20110025746) teaches in ¶69-72 “the ink jet printer 1 is also equipped with a switch 61 that turns ON and OFF in synch with opening and closing of the front cover 15, and a circuit breaker 62 that disables the supply of electric power to the ultraviolet light irradiation devices 51 and 52” and “the ink jet printer 1 is equipped with a stop control device 85 that forcefully stops the irradiation of ultraviolet light by the ultraviolet light irradiation devices 51 and 52 when the front cover 15 is opened”.
Conclusion
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/KEVIN KY/ Primary Examiner, Art Unit 2671