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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 6, 7, 8, 9-13, 14, 15, 16, 17, 18, 19, 20 and 21 of U.S. Patent No. 12309332. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are broader than and fully anticipated by the patented claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 6 and 19 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Matsuoka (US 2017/0227904).
With respect to claim 1, Matsuoka discloses an image inspection system (as discussed at least in paragraph 88) comprising: a hardware processor that controls image formation by an image former based on a read image generated by reading, by a reader, a medium on which a patch is formed (as discussed at least in paragraphs 73 and/or 110-111, for example by image formation after calibration), wherein the hardware processor causes the image former to form, on the medium, a patch corresponding to the medium (as discussed at least in paragraphs 151 and/or 88).
With respect to claim 2, Matsuoka further discloses wherein the hardware processor causes the image former to form, on the medium, any one of the patch to which a base image is added, the patch whose design is changed, and a specific image included in user content as a patch corresponding to the medium (as discussed at least in paragraphs 114-115 and/or 141).
With respect to claim 3, Matsuoka further discloses further comprising: an identifier that acquires information about the medium based on the read image and identifies the medium (as discussed at least in paragraphs 133-134).
With respect to claim 6, Matsuoka further discloses wherein the hardware processor causes the image former to form a patch corresponding to the medium based on a result of reading the medium by the reader (as discussed at least in paragraph 139).
With respect to claim 19, Matsuoka further discloses wherein the hardware processor controls, based on using a specific image included in user content as a patch, formation of the patch on the medium according to validity of the specific image as the patch (as discussed at least in paragraph 151, for example where specific images are used for each type of patch).
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.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka (US 2017/0227904) in view of Tombs et al. (US 2013/0162702).
With respect to claims 4 and 5, Matsuoka discloses the image inspection system according to claims 3 and 1 (as discussed above).
With further respect to claim 4, Matsuoka does not disclose wherein the information about the medium includes at least one piece of information about a type of the medium and information about a characteristic of the medium.
With further respect to claim 4, Tombs et al. teach wherein the information about the medium includes at least one piece of information about a type of the medium and information about a characteristic of the medium (as discussed at least in paragraphs 130, 132 and/or 170).
With further respect to claim 5, Matsuoka does not disclose further comprising: an acquisitor that acquires information about a type of the medium, wherein the hardware processor identifies the medium based on a result acquired by the acquisitor.
With further respect to claim 5, Tombs et al. teach an acquisitor that acquires information about a type of the medium, wherein the hardware processor identifies the medium based on a result acquired by the acquisitor (as discussed at least in paragraph 132).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize the teachings of Tombs et al. in the inspection system of Matsuoka at least because there would have been a reasonable expectation of success in forming a desired image.
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka (US 2017/0227904) in view of Atsushi et al. (JP 2009029017 A).
With respect to claims 12-15, Matsuoka disclose the image inspection system according to claim 1 (as discussed above).
With further respect to claim 12, Matsuoka does not disclose wherein the hardware processor changes a design of the patch based on a characteristic of a contour of the patch based on a relationship between a background including the medium and the patch.
With further respect to claim 13, Matsuoka does not disclose wherein a change in the design includes a change in size of the patch.
With further respect to claims 12 and 13, Atsushi et al. teach changing a design of the patch based on a characteristic of a contour of the patch based on a relationship between a background including the medium and the patch (as discussed at least in paragraphs 2 and/or 75, wherein the size of the patch in association with the size of the paper is considered).
With respect to claim 14, Matsuoka does not disclose wherein the hardware processor changes the number of measurements of the patch or a size of the patch based on a degree of difficulty in reading the patch based on a relationship between a background including the medium and the patch.
With further respect to claim 14, Atsushi et al. teach wherein the hardware processor changes the number of measurements of the patch or a size of the patch based on a degree of difficulty in reading the patch based on a relationship between a background including the medium and the patch (as discussed at least in paragraphs 65-66).
With further respect to claim 15, Matsuoka does not disclose : a first notifier that makes a notification of correction accuracy of correction using the patch based on determination result of the degree of reading difficulty.
With further respect to claim 15, Atsushi et al. teach a first notifier that makes a notification of correction accuracy of correction using the patch based on determination result of the degree of reading difficulty (as discussed at least in paragraphs 11 and/or 45-56).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize the teachings of Atsushi et al. in the image inspection system of Matsuoka at least because there would have been a reasonable expectation of success in adjusting an image and/or avoiding wasteful image formation.
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka (US 2017/0227904) in view of Kumada et al. (US 2007/0133026).
With respect to claims 16-18, Matsuoka disclose the image inspection system according to claim 1 (as discussed above).
With further respect to claim 16, Matsuoka does not disclose a user use history storage that stores the patch in association with a user.
With further respect to claim 16, Kumada et al. teach a user use history storage that stores the patch in association with a user (as discussed at least in paragraphs 57 and/or 185-187, for example the history information of the generated patches in association of a user).
With further respect to claim 17, Matsuoka does not disclose wherein the hardware processor controls formation of the patch on the medium according to a use history of the user.
With further respect to claim 17, Kumada et al. teach wherein the hardware processor controls formation of the patch on the medium according to a use history of the user (as discussed at least in paragraphs 147-148).
With further respect to claim 18, Matsuoka does not disclose a second notifier that makes a notification of formation of the patch according to a use history of the user.
With further respect to claim 18, Kumada et al. teach a second notifier that makes a notification of formation of the patch according to a use history of the user (as discussed at least in paragraphs 168-170, for example where the history triggers notification of patch formation to regenerate profile).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize the teachings of Kumada et al. in the image inspection system of Matsuoka at least because there would have been a reasonable expectation of success in monitoring for abnormalities and/or forming a desired image.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S WONG whose telephone number is (571)272-8457. The examiner can normally be reached Monday-Friday (9-5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Walter L Lindsay Jr. can be reached at (571) 272-1674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH S WONG/Primary Examiner, Art Unit 2852
JSW