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 Amendments
Claims 9-15 are cancelled.
The amendments to claims 1-8 have been accepted and entered.
Claims 1-8 are pending regarding this application.
Response to Arguments
Applicant’s arguments, see Remarks, filed 01/15/2026, with respect to the 101 abstract idea rejection applied to claims 1-5, 7, and 9-15 have been fully considered and are persuasive. The 101 abstract idea rejection applied to claims 1-5, 7, and 9-15 has been withdrawn.
Applicant’s arguments, see Remarks, filed 01/15/2026, with respect to the 112(b) rejection applied to claims 1-8 regarding the recitation of the print data have been fully considered and are persuasive. The 112(b) rejection applied to claims 1-8 regarding the recitation of the print data has been withdrawn.
Applicant’s arguments, see Remarks, filed 01/15/2026, with respect to the 103 Rejection applied to claims 1-8 have been fully considered and are persuasive. The 103 Rejection applied to claims 1-8 has been withdrawn.
Claim Rejections - 35 USC § 112
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 1-8 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.
MPEP 2181(II)(C)(III) states: “A claim may be indefinite when the 3-prong analysis for determining whether the claim limitation should be interpreted under 35 U.S.C. 112(f) is inconclusive because of ambiguous words in the claim. In the current instance, claim 1 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim 1 recites: “An inspection apparatus implemented by at least one dedicated hardware processor executing inspection firmware, the inspection apparatus comprising: … a reception unit configured to perform … a registration unit configured to register … am extraction unit configured to extract … a setting unit configured to automatically incorporate … an inspection unit configured to … inspect …”. Applicant has recited an inspection apparatus implemented by a processor in line 1. The claim then states that the inspection apparatus comprises the plurality of units. Here, a convincing case can be made that claim 1 invokes 112(f) interpretation per MPEP 2181 and that claim 1 does NOT invoke 112(f) interpretation. See the analysis below regarding both of these respective arguments. As a result, it is unclear whether a 112(f) interpretation of claim 1 is appropriate.
Regarding the argument that claim 1 should be interpreted under 112(f), 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.
Claim 1 recites a plurality of units, each of which are interpreted as equivalent to a nonce term (Prong A: Yes). Each of the plurality of units is modified by functional language (Prong B: Yes). While claim 1 recites a processor that implements the inspection apparatus, nowhere in the claim are the plurality of units directly tied to the hardware processor. Even though a processor implements the inspection apparatus, it is not directly stated whether the processor implements every unit that the inspection apparatus comprises. Therefore, the generic placeholder is not modified by sufficient structure (Prong C: Yes). Since the claim passes the three-prong test, it can be interpreted as invoking 112(f).
On the other hand, regarding Prong C, it can be argued that, since claim 1 recites a processor that implements the inspection apparatus, and the inspection apparatus comprises the plurality of units as recited above, the processor inherently implements the plurality of units and acts as sufficient structure for the claimed units (Prong C: No).
As shown above, an argument can be made for both the Yes and No response to Prong C of the three-prong test for determining whether a claim is to be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. As such, the boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claims 2-8 are rejected due to their dependence on rejected claim 1.
For the sake of compact prosecution, the claims below will examined as though they do NOT invoke 112(f).
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter.
The best prior art of record is Saito, Hamidat, Johnson, Kim, Simpson, Nakano (U.S. Publication No. 2020/0104987 A1), Ishikawa et al. (U.S. Publication No. 2023/0297297 A1), hereinafter Ishikawa, and Zagaynov et al. (U.S. 2023/0367983 A1), hereinafter Zagaynov. Prior art applied alone or in combination with fails to anticipate or render obvious claims 1-8.
Claim 1
Regarding claim 1, Saito teaches an inspection apparatus implemented by at least one dedicated hardware processor executing inspection firmware, the inspection apparatus comprising:
a reception unit configured to perform reception to obtain received print data ;
a registration unit configured to register an image included in the received print data as a reference image;
an extraction unit configured to extract, from the received print data, barcode-inspection information including a correct value represented by a barcode, an allowable quality level;
a setting unit configured to automatically incorporate the extracted barcode- inspection information into an inspection-parameter set without user interaction and
an inspection unit configured to, upon reception of a
Hamidat further teaches a scanned image obtained by scanning a print product.
Johnson further teaches print data that include raster-image-processor (RIP) data of a print job.
Kim further teaches an image-area flag in which .
Nakano further teaches deleting the reference image after completion of an associated inspection job unless a re-inspection request is received, and thereby to store at most one reference page per job in memory.
Zagaynov further teaches an image-area flag in which a bit value appended to each pixel indicates whether the pixel belongs to the barcode.
Ishikawa further teaches a when the inspection is negative, to output a defect-ejection signal to a pure accessory of a printing apparatus.
However, neither Saito, nor Hamidat, nor Johnson, nor Simpson, nor Kim, nor Nakano, nor Ishikawa, nor Zagaynov teaches determining an allowable quality level based on the extracted barcode and outputting a barcode-position indicator derived from the bit values of the image- area flag, in combination with the other elements of the claim. Additionally, please note that the insufficient motivations exist to combine the above (8) references to teach the above subject matter.
Claims 2-8 include allowable subject matter by virtue of being dependent upon claim 1.
Conclusion
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 extension fee 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 date of this final action.
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/Kyla Guan-Ping Tiao Allen/
Examiner, Art Unit 2661
/JOHN VILLECCO/Supervisory Patent Examiner, Art Unit 2661