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 1-17 are pending. Claims 1 and 15-17 are independent.
Obviousness-Type Double Patent 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.
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3. Claim 1-4, 9 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-6 and 9 of copending Application No. 18/418,480 (18418408) (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.
Claim 1 corresponds to copending claim 3/1, which is understood to include all limitations of copending claim 1.
Specifically,
the preamble of claim 1 is identical to that of copending claim 1;
the first limitation paragraph that starts with “a device identification information acquisition unit ……” and including “a code image, the code image being attached ……” corresponds to a combination of the copending claim 1 first limitation paragraph that starts with “an authentication controller configured to acquire ……” and the copending claim 3 limitations;
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 ……”.
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 3/1.
Regarding claim 2/1, all limitations are found in copending claim 3. Note the second and third limitations of copending claim 3.
Regarding claim 3/2/1, the limitation is found in copending claim 4/3/1.
Regarding claim 4/2/1, the limitation is found in copending claim 5/3/1.
Regarding claim 9/2/1, the limitations are found in copending claim 6/3/1.
Claim 12/1 as a whole corresponds to copending claim 9/1 as a whole. The limitations of claim 12 are found in copending claim 9, which also recites “a code image including identification information on the image forming device is attached to the image forming device” that is also required by claim 1 (of the instant application).
4. Claims 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5 of U.S. Patent No. 18/418,408 (reference) in view of Yamaguchi (US 2017/0366708 A1).
Regarding claims 6/4/2/1, 7/4/2/1, and 8/7 (see further discussion for claims 7 and 8 below), the server in view of copending claim 5/3/1 is discussed for claim 4 above. The copending reference application ‘408 does not disclose any claim or claim chain that includes the claim chain 5/3/1 and the following limitations of claim 6:
the printing controller acquires, as an instruction to refuse the use of the image forming device as the warning target, an instruction to continuously refuse the use or an
instruction to temporarily refuse the use, and also prohibits the user from using the image forming device next and subsequent times when acquiring the instruction to
continuously refuse the use.
Yamaguchi discloses the following:
In para 0167-0168: When the information equipment management server (80a) acquires the use approval/disapproval information from the information equipment management server (80b) (Step S62, Figs. 17 and 23), the information equipment management server (80a) transmits the use approval/disapproval information to the MFP (10) (Step S63) (note that the multifunctional peripheral MFP 10 includes an image forming part). Further, the MFP (10) transfers (transmits) the use approval/disapproval information to the personal identification apparatus 50 (Step S64) which stores the use approval/disapproval information into the memory area of the apparatus (50) (Step S46)
In para 0170: After the use approval/disapproval information is temporarily store din the personal identification apparatus (10) and used for management of the information equipment for management of the information equipment, the use approval/disapproval information is deleted from the personal identification apparatus (50) when the user (U1) exits the room.
The use approval/disapproval information of Yamaguchi being used and then deleted is an instruction acquired by the information equipment management server (80a) as mentioned above, an instruction to continuously refuse the use of the MFP (10) as a warning target or an instruction to temporarily refuse the use of the MFP (10), and the server (80a) also prohibits the user (U1) from using the MFP (10, which has an image forming part) next and subsequent times by deleting the use approval/disapproval information.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed to apply the teaching of Yamaguchi to modify the printing controller of copending claim 5/3/1 by providing the copending claim invention with the features of Yamaguchi in order to control the use of the image forming device.
Further regarding claim 7/4/2/1, the use approval/disapproval information of Yamaguchi discussed above corresponds to the claimed “warning”. The use approval/disapproval information includes information that indicates the information equipment management server (80a) which manages use approval/disapproval information which is management information on approval or disapproval of use of the information equipment including MFP 10 and MFP 10 (Figs. 17 and 23, para 0002, the abstract, and 0167-0170). Thus, the information equipment management server is also a device organization which is an organization managing the MFP (10), which includes an image forming device or part.
Furthermore, regarding claim 8/7, note in para 0031 of Yamaguchi that the information equipment management server (80a) stores therein respective management information (equipment management information) of the plurality of MFPs 10 and manages an operation of each MFP 10 by using the equipment management information (use approval/disapproval information and the like) (see Fig. 17). Thus, all the MPFs 10 (Fig. 17) are controlled as claimed.
The rejection below is formulated for the purposes of rejecting claim 10-11 and 13-17.
5. Claims 10-11 and 13-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7-8 and 13-15 of copending Application No. 18/419,400 in view of Sugimoto (US 2014/0378112 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 10/1, which is understood to include all limitations of claim 1, the limitations of claim 10 is found in copending claim 7/1 (see copending claim 7), which is understood to include all limitations of copending claim 1.
The preamble of claim 1 is identical to that of copending claim 1; the first limitation paragraph and the second limitation paragraph correspond to the first limitation paragraph and the second limitation paragraph of copending claim 1, respectively.
Copending claim 7/1 as a whole differs from claim 10/1 as a whole in that copending claim 7/1 does not recite a code image included in the identification information (which corresponds to “authentication information of the copending claim), the code image being attached to the image forming device and read by the terminal device. However, the claim feature is taught by Sugimoto.
Sugimoto discloses a system in which a mobile terminal (400) reads a two-dimensional bar code (which is a code image) attached to an image forming apparatus (100), the code including identification information (URL, for example,) of the image forming apparatus (see para 0073, Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of claim 10/1, to apply the teaching of Sugimoto to include the identification information in a code image of the invention of copending claim 7/1, where the code image is attached to the image forming device and read by the terminal device, in order to easily obtain the identification information.
Regarding claim 11/10/1, the limitations of claim 11 are found in copending claim 8/7/1.
Regarding claim 13/1, which is understood to include all limitations of claim 1, the limitations of claim 13 is found in copending claim 10/1 (see copending claim 10), which is understood to include all limitations of copending claim 1.
The preamble of claim 1 is identical to that of copending claim 1; the first limitation paragraph and the second limitation paragraph correspond to the first limitation paragraph and the second limitation paragraph of copending claim 1, respectively.
Copending claim 10/1 as a whole differs from claim 13/1 as a whole in that copending claim 10/1 does not recite a code image included in the identification information (which corresponds to “authentication information of the copending claim), the code image being attached to the image forming device and read by the terminal device. However, the claim feature is taught by Sugimoto.
Sugimoto discloses a system in which a mobile terminal (400) reads a two-dimensional bar code (which is a code image) attached to an image forming apparatus (100), the code including identification information (URL, for example,) of the image forming apparatus (see para 0073, Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of claim 13/1, to apply the teaching of Sugimoto to include the identification information in a code image of the invention of copending claim 10/1, where the code image is attached to the image forming device and read by the terminal device, in order to easily obtain the identification information.
Regarding claim 14/1, which is understood to include all limitations of claim 1, the limitations of claim 14 is found in copending claim 11/1 (see copending claim 11), which is understood to include all limitations of copending claim 1.
The preamble of claim 1 is identical to that of copending claim 1; the first limitation paragraph and the second limitation paragraph correspond to the first limitation paragraph and the second limitation paragraph of copending claim 1, respectively.
Copending claim 11/1 as a whole differs from claim 14/1 as a whole in that copending claim 11/1 does not recite a code image included in the identification information (which corresponds to “authentication information of the copending claim), the code image being attached to the image forming device and read by the terminal device. However, the claim feature is taught by Sugimoto.
Sugimoto discloses a system in which a mobile terminal (400) reads a two-dimensional bar code (which is a code image) attached to an image forming apparatus (100), the code including identification information (URL, for example,) of the image forming apparatus (see para 0073, Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of claim 14/1, to apply the teaching of Sugimoto to include the identification information in a code image of the invention of copending claim 11/1, where the code image is attached to the image forming device and read by the terminal device, in order to easily obtain the identification information.
Regarding claim 15, all limitations of lines 1-8 are identical to all limitations of lines 1-7 of the copending claim 12; the claimed server including “a device identification information acquisition unit configured to acquire ……” and “a printing controller configured to acquire ……” correspond to the copending 12 server including “an authentication controller configured to acquire ……” and “a printing controller configured to acquire ……”, respectively.
Copending claim 12 differs from claim 15 in that copending claim 12 does not recite a code image included in the identification information (which corresponds to “authentication information of the copending claim), the code image being attached to the image forming device and read by the terminal device. However, the claim feature is taught by Sugimoto.
Sugimoto discloses a system in which a mobile terminal (400) reads a two-dimensional bar code (which is a code image) attached to an image forming apparatus (100), the code including identification information (URL, for example,) of the image forming apparatus (see para 0073, Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of claim 15, to apply the teaching of Sugimoto to include the identification information in a code image of the invention of copending claim 12, where the code image is attached to the image forming device and read by the terminal device, in order to easily obtain the identification information.
Regarding method claim 16, the preamble is identical to that of copending claim 13; the claim steps “acquire ……” and “acquire ……” correspond to the copending claim 13 steps “acquire, ……” and “acquire, ……”, respectively.
Copending claim 13 differs from claim 16 in that copending claim 13 does not recite a code image included in the identification information (which corresponds to “authentication information of the copending claim), the code image being attached to the image forming device and read by the terminal device. However, the claim feature is taught by Sugimoto.
Sugimoto discloses a system in which a mobile terminal (400) reads a two-dimensional bar code (which is a code image) attached to an image forming apparatus (100), the code including identification information (URL, for example,) of the image forming apparatus (see para 0073, Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of claim 16, to apply the teaching of Sugimoto to include the identification information in a code image of the invention of copending claim 13, where the code image is attached to the image forming device and read by the terminal device, in order to easily obtain the identification information.
Regarding claim 17, the preamble is identical to that of copending claim 14; “advice identification information acquisition step ……” and the “printing control step ……” correspond to the copending claim 14 “an authentication control step ……” and “a printing control step ……”, respectively.
Copending claim 14 differs from claim 17 in that copending claim 14 does not recite a code image included in the identification information (which corresponds to “authentication information of the copending claim), the code image being attached to the image forming device and read by the terminal device. However, the claim feature is taught by Sugimoto.
Sugimoto discloses a system in which a mobile terminal (400) reads a two-dimensional bar code (which is a code image) attached to an image forming apparatus (100), the code including identification information (URL, for example,) of the image forming apparatus (see para 0073, Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of claim 17, to apply the teaching of Sugimoto to include the identification information in a code image of the invention of copending claim 14, where the code image is attached to the image forming device and read by the terminal device, in order to easily obtain the identification information.
6. Claim 5 is not rejected in the ODP rejections addressed above because none of the claims of application 18/418,408 and the prior art of record disclose or teach that the printing controller acquires, from the terminal device, an instruction as to whether to output the warning next time for the image forming device as a warning target,
and determines, in response to the instruction, whether to output the warning next time the user uses the image forming device.
Pertinent Prior Art
7. The prior art or art made of record and not relied upon is considered pertinent to applicant's disclosure.
Furuta (US 2024/0248659 A1)
Furuta (US 2024/0045623 A1)
Furuta (US 2025/0306820 A1):
Furuta (US 2024/0045630 A1)
Furuta (US 2024/0045632 A1)
Furuta (US 2024/0256198 A1)
Conclusion
8. 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