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 .
Detailed Office Action
1. Claims 1-14 are pending. Claims 1 and 12-14 are independent.
Obviousness-Type Double Patenting Rejection (ODP)
2. 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.
Obviousness-Type Double Patenting Rejection with Application No. 18419400
3. Claim 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4, 9-17 of copending Application No. 18/419,400 (18419400) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
(* Publication No. US 2024/0256198 A1 is the publication of copending application 18419400, but the publication is not referred to in this rejection here.)
Regarding Claim 1, the preamble is identical to that of copending claim 1;
the first limitation paragraph that starts with “an authentication controller configured to acquire ……” corresponds to the copending 1 first limitation paragraph that starts with “a device identification information acquisition unit configured to acquire ……”; and
the second limitation paragraph that starts with “a printing controller configured to acquire ……” corresponds to the copending claim 1 second limitation paragraph that starts with “a printing controller configured to acquire ……”.
With respect to the first limitation paragraph “an authentication controller configured to acquire ……”, although copending claim 1 does not state that the acquiring “is completed”, it implies that it must be completed. Otherwise, it is not going to cause the image forming device to execute printing for the printing job recited in the last limitation paragraph of the copending claim.
With respect to the limitation, of the first limitation paragraph, “authentication information on a user which is input to a terminal device”, whatever user information input on the device of copending claim 1 is the identification information.
It would have been obvious to one of ordinary skill in the art to provide the server having the arrangement as claimed in claim 1, based on the server having the arrangement as claimed in copending claim 1.
Regarding claim 12, all limitations of lines 1-7 are identical to all limitations of lines 1-8 of the copending claim 15; the claimed server including “an authentication controller configured to acquire ……” and “a printing controller configured to acquire ……” correspond to the copending claim 15 server including “a device identification information acquisition unit configured to acquire ……” and “a printing controller configured to acquire ……”, respectively.
With respect to the first limitation of the server, i.e., “an authentication controller configured to acquire ……”, although copending claim 15 does not state that the acquiring “is completed”, it implies that it must be completed. Otherwise, it is not going to cause the image forming device to execute printing for the printing job recited in the last limitation paragraph of the copending claim.
With respect to the limitation, of the first limitation of the server, “authentication information on a user which is input to a terminal device”, whatever user information input on the device of copending claim 15 is the identification information.
It would have been obvious to one of ordinary skill in the art to provide the printing system of claim 12, based on the printing system of copending claim 15.
Regarding method claim 13, the preamble is identical to that of copending claim 16; the claim steps “acquire ……” and “acquire ……” correspond to the copending claim 16 steps “acquire, ……” and “acquire, ……”, respectively.
In the first limitation step “acquire ……”, although copending claim 16 does not state that the acquiring “is completed”, it implies that it must be completed. Otherwise, it is not going to cause the image forming device to execute printing for the printing job recited in the last limitation step of the copending claim.
With respect to the limitation, of the first limitation step, “authentication information on a user which is input to a terminal device”, whatever user information input on the device of copending claim 16 is the identification information.
It would have been obvious to one of ordinary skill in the art to provide the information processing method of claim 13, based on the information processing method of copending claim 16.
Regarding claim 14, the preamble is identical to that of copending claim 17; the “authentication control step ……” and the “printing control step ……” correspond to the copending claim 17 “a device identification information acquisition step ……” and “a printing control step ……”, respectively.
In the authentication control step, although copending claim 17 does not state that the acquiring “is completed”, it implies that it must be completed. Otherwise, it is not going to cause the image forming device to execute printing for the printing job recited in the last limitation step of the copending claim.
With respect to the limitation, of the first limitation step, “authentication information on a user which is input to a terminal device”, whatever user information input on the device of copending claim 17 is the identification information.
It would have been obvious to one of ordinary skill in the art to provide the non-transitory computer-readable storage medium of claim 14, based on the non-transitory computer-readable storage medium of copending claim 17.
Regarding claims 2/1 and 3/1 (3/1 meaning claim 3 depending claim 1), all the limitations are found in copending claim 2/1, which are understood to include all the limitations of copending claim 1. For “code image” of claims 2/1 and 3/1, see “code image” in copending claim 1, in the first limitation paragraph that starts with “a device identification …...).
Regarding claims 4/3/1, 5/3/1, and 6/3/1, all limitations are found in copending claims 3/2/1, 4/2/1, and 9/2/1, respectively.
Regarding claim 7/1, all limitations are found in copending claim 10/1.
Regarding claim 8/7/1, all limitations are found in copending claim 11/10/1.
Regarding claim 9/1, all limitations correspond to the limitations of copending claim 12/1, which is understood to include all the limitations of copending claim 1.
Specifically, the first limitation paragraph that starts with “a code image ……” is found in copending claim 1, in the first limitation paragraph that starts with “a device identification information acquisition unit ……”;
the second limitation paragraph that starts with “the printing controller transmits the request ……” is found in copending claim 1, in the second limitation that starts with “a printing controller configured ……” (note the second half of that limitation paragraph); and
the third limitation paragraph that starts with “when acquiring a printing stop instruction ……” is claimed in copending claim 12.
Regarding claims 10/1 and 11/1, the limitations are found in copending claims 13/1 and 14/1, respectively.
Obviousness-Type Double Patenting Rejection with Application No. 18612765
4. Claim 1 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 13-16 of copending Application No. 18/612,765 (18419400) (reference application)*. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
* Please refer to Publication No. US 2024/0319936 A1 for copending application 18612765. Publication US 2024/0319936 A1 will be referred to as Pub. ‘936 in the rejection below.
Regarding claim 1, all claim limitations are found in copending claim 1. See Pub. ‘936, the right column of page 22, claim 1, the preamble, the first limitation paragraph that starts with “an authentication controller configured to ……” and the second limitation paragraph that starts with “a printing controller configured to ……”.
It would have been obvious to one of ordinary skill in the art to provide the server having the arrangement having the arrangement of claim 1, based on the sever having the arrangement of copending claim 1.
Regarding claim 11/1, the claim limitation is found in copending claim 13/1. See Pub. ‘936, the right column of page 22, claim 13.
Regarding claim 12, all claim limitations are found in copending claim 14. See Pub. ‘936, the right column of page 23, all lines 1-21 of claim 14 (line 21 is the end of the limitation paragraph that starts with “a printing controller configured to”).
It would have been obvious to one of ordinary skill in the art to provide the printing system of claim 12, based on the printing system of copending claim 14.
Regarding method claim 13, all claim limitations are found in copending claim 15. See Pub. ‘936, the right column of page 23, all lines 1-16 of claim 15 (line 16 is the end of the limitation paragraph that starts with “a printing control step”).
It would have been obvious to one of ordinary skill in the art to provide the information processing method of claim 13, based on the information processing method of copending claim 15.
Regarding method claim 14, all claim limitations are found in copending claim 16. See Pub. ‘936, the right column of page 24, all lines 1-17 of claim 16 (line 17 is the end of the limitation paragraph that starts with “a printing control step”).
It would have been obvious to one of ordinary skill in the art to provide the non-transitory computer-readable storage medium of claim 14, based on the non-transitory computer-readable storage medium of copending claim 16.
Pertinent Prior Art
5. The prior art or art made of record and not relied upon is considered pertinent to applicant's disclosure.
Furuta (US 2024/0045623 A1)
Furuta (US 2024/0256198 A1), referred to in an ODP rejection above
Furuta (US 2025/0306820 A1)
Furuta (US 2024/0045630 A1)
Furuta (US 2024/0045632 A1)
Furuta (US 2024/0319936 A1), referred to in an ODP rejection above
Furuta (US 2024/0248659 A1)
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEUKFAN LEE whose telephone number is (571)272-7407. The examiner can normally be reached M-F: 10 a.m. - 6 p.m.
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/CHEUKFAN LEE/Primary Examiner, Art Unit 2682