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 .
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.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 29 October 2025, 2 February 2026, 23 February 2026, 17 March 2026, and 7 April 2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-10, and 12-20 of copending Application No. 18/320,021 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 and 12-20 of the instant application are in the same scope as claims 1, 4-10, and 12-20 of 18/320,021.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-20 of copending Application No. 18/322,331 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 and 12-20 of the instant application are in the same scope as claims 1 and 4-20 of 18/322,331.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see page 10, filed 2 October 2025, in view of the amendments with respect to the title have been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant's arguments filed 2 October 2025 regarding the double patenting rejections have been fully considered but they are not persuasive.
Regarding claims 1-10 and 12-20, the applicant argued, “…the features of Applicant’s claims in the present application relate to: ‘stop, in a case…the second operation being performed by…based on an agreement between a channel…’…This claim functionality is nowhere disclosed in any of the above three applications…” on pages 10-11.
In response to applicant’s argument, the examiner respectfully disagrees with the above argument.
The “agreement” recited in the instant application is broad enough to encompass the same functionality as the “stop” limitations recited in 18/320,021 (see at least claims 1 and 7) and 18/322,331 (see at least claims 1 and 5). The “stop” limitation in 18/320,113 has been cancelled, and therefore the double patenting rejection is withdrawn.
Applicant’s arguments, see pages 12-13, filed 2 October 2025, in view of the amendments with respect to claims 1-20 have been fully considered and are persuasive. The 112(b) rejections of the claims has been withdrawn.
Applicant’s arguments, see page 13, filed 2 October 2025, in view of the amendments with respect to claim 4 have been fully considered and are persuasive. The claim interpretation of the claims has been withdrawn.
Applicant's arguments filed 2 October 2025 regarding the 102 rejection have been fully considered but they are not persuasive.
Regarding claims 1-10 and 12-20, the applicant argued, “…paragraphs 60 and 62 are limited to the following: (1)…(2)…the P2P mode is already disabled beforehand…Moriya nowhere discloses stopping the operation in the second-mode based on an agreement between the channel used in the second mode during the specific processing and the channel to be used in the first mode to be started by the specific processing…there is no disclosure in Moriya of: an agreement…and based upon this agreement, the operation in the second-mode is stopped…Applicant’s claims are related to performing processing to stop the operation in the second-mode based not on a match between frequency bands – but on a match between individual channels…” on pages 10-11.
In response to applicant’s argument, the examiner respectfully disagrees with the above argument.
In ¶¶60 and 62; figure 11 Moriya clearly teaches stop, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, the second operation being performed by the communication apparatus in the second mode based on an agreement between a channel used by the communication apparatus in the second mode during the specific processing and a channel to be used by the communication apparatus in the first mode to be started by the specific processing (¶¶60 and 62; figure 11, S1105 and S1107: when wireless infrastructure mode is activated with the AP of the 5 GHz band, the P2P mode is disabled).
Moriya ¶60 is directed to figure 11 step S1108 where “CPU 602 performs validity / invalidity determination on a plurality of wireless interfaces in accordance with the second restriction regarding the frequency band of the wireless chipset”. In S1108 the CPU checks if the wireless channel value is in the 2.4GHz of 5GHz frequency band. If the wireless channel value is in the 5GHz frequency band, “the wireless infrastructure mode is activated” and “the P2P mode is disabled”. As the applicant argues the CPU proceeds to S1114 to perform USB validation where the P2P mode is already disabled. The P2P mode is already disabled in S1114 because it was disabled in S1108. ¶60 goes on to state that both the infrastructure mode and P2P mode may be set up for simultaneous operation by “user selection” and/or “independent judgment of the printer”. Therefore, Moriya teaches a printer operating in the 2.4 GHz band with P2P mode enabled that receives a wireless channel value in the 5Ghz band and proceeds to actively disable the P2P mode and enable the 5GHz connection.
The validity/invalidity determination according to the wireless chipset restriction is an agreement that a wireless channel value in the 5GHz band can not be used while P2P mode is enabled. ¶62 additionally recites “there is a first restriction that the same channel in the same band may have to be used for a plurality of communication modes, and a second that the DFS may not function in the P2P mode and the 5 GHz band may not be usable”.
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., “a match between individual channels”) 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).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-10 and 12-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moriya et al. JP 2019/161676 A (hereinafter referred to as “Moriya”). Note: Moriya was cited by the applicant in the IDS received 27 December 2023.
NOTE: A machine translation of Moriya is used for the rejection and is cited and is attached herewith.
As to claim 1, Moriya teaches a communication apparatus configured to perform a first operation in a first mode in which the communication apparatus operates as a child station in a predetermined wireless communication standard, and a second operation in a second mode in which the communication apparatus operates as a parent station in the predetermined wireless communication standard (¶8: one device can perform wireless communication in the two modes simultaneously as a client/slave and as an owner), the communication apparatus comprising:
at least one memory storing instructions (¶51: memory); and
at least one processor that, upon execution of the stored instructions, causes the communication apparatus to (¶51: CPU of the MFP):
cause the communication apparatus to start the first operation in the first mode based on a fact that a specific processing to cause the communication apparatus to operate in the first mode is performed (¶60; figure 11, S1105: wireless infrastructure mode is activated when 5GHz band is indicated as the frequency band of the wireless infrastructure); and
stop, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, the second operation being performed by the communication apparatus in the second mode based on an agreement between a channel used by the communication apparatus in the second mode during the specific processing and a channel to be used by the communication apparatus in the first mode to be started by the specific processing (¶¶60 and 62; figure 11, S1105 and S1107: when wireless infrastructure mode is activated with the AP of the 5 GHz band, the P2P mode is disabled).
As to claim 2, Moriya teaches the communication apparatus according to claim 1, wherein, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, with a disagreement between the channel used by the communication apparatus in the second mode during the specific processing and the channel to be used by the communication apparatus in the first mode to be started by the specific processing, the second operation in the second mode being performed by the communication apparatus is not stopped (¶¶42-81 and 111-155).
As to claim 3, Moriya teaches the communication apparatus according to claim 1, wherein the at least one processor causes the communication apparatus to determine whether, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, the channel used by the communication apparatus in the second mode during the specific processing and the channel to be used by the communication apparatus in the first mode to be started by the specific processing are in agreement with each other,
wherein based on a determination that the channel used by the communication apparatus in the second mode during the specific processing and the channel to be used by the communication apparatus in the first mode to be started by the specific processing are in agreement with each other, the second operation being performed by the communication apparatus in the second mode is stopped, and
wherein based on a determination that the channel used by the communication apparatus in the second mode during the specific processing and the channel to be used by the communication apparatus in the first mode to be started by the specific processing are not in agreement with each other, the second operation being performed by the communication apparatus in the second mode is not stopped (¶¶42-81 and 111-155).
As to claim 4, Moriya teaches the communication apparatus according to claim 1, wherein the at least one processor causes the communication apparatus to:
restart the second operation to be performed by the communication apparatus in the second mode after the second operation being performed by the communication apparatus in the second mode is stopped; and
perform control in a such a manner that a state in which the first operation in the first mode started by the specific processing is being performed by the communication apparatus and a state in which the restarted second operation in the second mode is being performed by the communication apparatus are concurrently maintained (¶¶42-81 and 111-155).
As to claim 5, Moriya teaches the communication apparatus according to claim 4, wherein a channel different from a channel being used in the first mode started by the specified processing is specified as a channel to be used by the communication apparatus in the restarted second mode (¶¶42-81 and 111-155).
As to claim 6, Moriya teaches the communication apparatus according to claim 1, wherein the specific processing is processing of receiving, from a user, selection of an access point from a list of at least one access point discovered by the communication apparatus by search (¶¶82, 132, and 151).
As to claim 7, Moriya teaches the communication apparatus according to claim 1, wherein the specific processing is processing of receiving, from a user, an operation instruction for performing Wi-Fi Protected SetupTM (WPS) or an AirStation One-Touch Secure SystemTM (AOSS) (¶¶82, 132, and 151).
As to claim 8, Moriya teaches the communication apparatus according to claim 1, wherein the specific processing is processing for reestablishing a connection between the communication apparatus to operate in the first mode and an access point, the reestablishing connection to be performed by a connection between the communication apparatus operating in the first mode and the access point being disconnected (¶¶82, 132, and 151).
As to claim 9, Moriya teaches the communication apparatus according to claim 1, wherein the second mode is a mode in which the communication apparatus operates as a software access point (¶¶40-41).
As to claim 10, Moriya teaches the communication apparatus according to claim 1, wherein the second mode is a mode in which the communication apparatus operates as a group owner in a Wi-Fi Direct® standard (¶¶40-41).
As to claim 12, Moriya teaches the communication apparatus according to claim 1, wherein the at least one processor causes the communication apparatus to perform printing processing or a scanning processing (¶¶17 and 21-22).
As to claim 13, Moriya teaches the communication apparatus according to claim 1, wherein a 2.4-GHz frequency band and a 5-GHz frequency band are usable for communication in the first mode, and wherein the 2.4-GHz frequency band and a frequency bandwidth included in the 5-GHz frequency band, the frequency bandwidth in which a channel change is not performed by Dynamic Frequency Selection, are usable for communication in the second mode (¶¶17, 21-22, 42-81, and 111-155).
As to claim 14, Moriya teaches the communication apparatus according to claim 1, wherein a 2.4-GHz frequency band and a 5-GHz frequency band are usable for communication in the first mode, and wherein the 2.4-GHz frequency band is usable in the second mode and the 5-GHz frequency band is unusable for communication in the second mode (¶¶17, 21-22, 42-81, and 111-155).
As to claim 15, Moriya teaches the communication apparatus according to claim 1, wherein in a case where predetermined processing for operating the communication apparatus in the second mode is performed while the communication apparatus is operating in the first mode, a channel different from a channel used by the communication apparatus in the first mode is specified as a channel to be used by the communication apparatus in the second mode after the predetermined processing is performed (¶¶17, 21-22, 42-81, and 111-155).
As to claim 16, Moriya teaches the communication apparatus according to claim 15, wherein, in a case where the predetermined processing is performed while the communication apparatus is operating in the first mode, a channel different from a predetermined channel is specified as a channel to be used by the communication apparatus in the second mode after the predetermined processing is performed, based on an agreement between the predetermined channel set as a channel to be preferentially used by the communication apparatus in the second mode and the channel used by the communication apparatus in the first mode during the predetermined processing (¶¶17, 21-22, 42-81, and 111-155).
As to claim 17, Moriya teaches the communication apparatus according to claim 15, wherein, in a case where the predetermined processing is performed while the communication apparatus is operating in the first mode, a predetermined channel is specified as the channel to be used by the communication apparatus in the second mode after the predetermined processing is performed, based on a disagreement between the predetermined channel set as a channel to be used by the communication apparatus in the second mode and the channel used by the communication apparatus in the first mode during the predetermined processing (¶¶17, 21-22, 42-81, and 111-155).
As to claim 18, Moriya teaches the communication apparatus according to claim 15, wherein the predetermined processing is performed based on a fact that a predetermined operation for operating the communication apparatus in the second mode is performed on the communication apparatus (¶¶17, 21-22, 42-81, and 111-155).
As to claim 19, claim 19 is rejected the same way as claim 1.
As to claim 20, claim 20 is rejected the same way as claim 1.
Conclusion
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 JUSTIN T VAN ROIE whose telephone number is (571)270-0308. The examiner can normally be reached Monday - Friday 8:00am - 4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ian N Moore can be reached at 571-272-3085. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN T VAN ROIE/Primary Examiner, Art Unit 2469
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