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 .
Claim Status
This office action is in response to the communication(s) filed on 01/31/2024.
Claim(s) 1-18 is/are currently presenting for examination.
Claim(s) 1, and 17-18 is/are independent claim(s).
Claim(s) 1-2, 6, 9, and 11-18 is/are rejected.
Claim(s) 3-5, 7-8, and 10 is/are objected to.
This action has been made NON-FINAL.
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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Examiner would like to state for the record the following regarding claims 1-16, 43-47. (Please note, this is not a rejection)
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
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.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
The limitations in claims 1-16 performed by "detection unit”, “enabling unit”, “establishment unit”, “transmission unit”, “storage unit”, and “decision unit”, (In this application, the recited "unit(s)” have no structural meanings and are considered as generic placeholder).
These limitations use alternative phrasing for claiming a programmed computer performing specialized functions. A specialized function must be supported in the specification by the computer and the algorithm that the computer uses to perform the claimed specialized function. The default rule for § 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph programmed computer claim limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function. The reason that this is the default rule is that disclosure of the step by step procedure for specialized functions establishes clear, definite boundaries and notifies the public of the claim scope. “Claiming a processor to perform a specialized function without disclosing the internal structure of the processor in the form of an algorithm, results in claims that exhibit the ‘overbreadth inherent in open‐ended functional claims’” Halliburton Energy Services v. M‐I LLC, 514 F.3d 1244, 1256 n.7 (Fed. Cir. 2008). Disclosing the algorithm for a specialized function is the quid pro quo for the ability to claim an element in purely functional terms.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations: figure 2, paragraphs 31-32, 85.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
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) 1-2, 6, 9, and 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US_20190050175_A1_Moriya in view of US_20220386398_A1_Sato.
Regarding claim 1, Moriya discloses a communication apparatus comprising: a detection unit configured to detect a state of a wireless communication interface of the communication apparatus (Moriya figure 11, paragraph 93-94, “…the CPU 602 of the MFP 300 determines in step Sll0l whether the current state is the initial activation state. The initial activation flag is preset to a specific value at the time of factory shipment of the MFP 300.”, paragraph 94, “If it is determined in step S1101 that the current state is not the initial activation state, the CPU 602 enables, in step S1112, an IF in accordance with the enabled/disabled setting of the IF saved in the nonvolatile memory…” The IF is corresponding to the claimed “wireless communication interface”, and it is in disabled state); an enabling unit configured to enable the wireless communication interface by executing restriction processing of restricting establishment of connection via the wireless communication interface in a case where the detection unit detects a state in which the wireless communication interface is disabled (Moriya figure 11, steps S1103-S1107, and paragraphs 98-100, and paragraph 101, “…In step S1107, in accordance with the LAN setting values received in step S1105, the CPU 602 activates communication in the wireless infrastructure mode, and performs processing for connecting to the external access point 400. Then, as the wireless infrastructure mode is enabled (activated), the setting is saved in the nonvolatile memory 605”) an establishment unit configured to establish wireless connection to a first another communication apparatus via the enabled wireless communication interface (Moriya figures 7-8, the MFP establishes wireless connection with mobile communication terminal device, paragraph 102); but does not disclose a transmission unit configured to transmit, to the first other communication apparatus, via the wireless connection, connection information usable for connection to a second another communication apparatus different from the first other communication apparatus.
Sato disclose a transmission unit configured to transmit, to the first other communication apparatus, via the wireless connection, connection information usable for connection to a second another communication apparatus different from the first other communication apparatus (Sato figure 4, step T104, “IP Address, MAC Address MA1”. The MFP is corresponding to the claimed “communication apparatus”, the terminal device is corresponding to the claimed “first other communication apparatus”, the AP is corresponding to the claimed “second another communication apparatus”).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the teachings of Sato’s the MFP transmits IP Address and MAC Address to the terminal device in Moriya’s system to establish wireless connection between the MFP and the AP. This method for improving the system of Moriya was within the ordinary ability of one of ordinary skill in the art based on the teachings of Sato. Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Moriya and Sato to obtain the invention as specified in claim 1.
Regarding claim 2, Moriya and Sato disclose the apparatus according to claim 1, and Sato further discloses wherein the restriction processing includes processing of making a setting so that the establishment unit is automatically connected only to the first other communication apparatus (Sato figure 3, steps S24-T30, and paragraphs 47-49).
Regarding claim 6, Moriya and Sato disclose the apparatus according to claim 1, and Moriya further discloses wherein the restriction processing is processing of enabling the wireless communication interface by making a setting not to automatically establish connection by the establishment unit (Moriya figure 17, step S1727, disable P2P mode).
Regarding claim 9, Moriya and Sato disclose the apparatus according to claim 1, and Sato further discloses wherein the enabling unit restricts, via an application programming interface of an operating system, establishment of connection via the wireless communication interface (Sato figures 3-4. The terminal device 10 includes App 42 and OS 40, and a connection is established between the terminal device 10 and MFP 100).
Regarding claim 11, Moriya and Sato disclose the disclose the apparatus according to claim 1, and Sato further discloses further comprising an acquisition unit configured to acquire at least one piece of connection information used to perform connection to another communication apparatus to which the communication apparatus is connected via the wireless communication interface (Sato figure 2 and 4, after the MFP received the read request from the terminal device, the MFP reads the MAC address and other information from the memory, and provides it to the terminal device), wherein the transmission unit transmits, to the first other communication apparatus, the connection information usable to establish connection to the second other communication apparatus among the at least one piece of connection information acquired by the acquisition unit (Sato figure 4 step T104).
Regarding claim 12, Moriya and Sato disclose the apparatus according to claim 1, and Moriya further discloses further comprising a decision unit configured to decide, based on a detection result of the detection unit, whether to attempt to establish the wireless connection (Moriya figure 11, steps S1103-S1109).
Regarding claim 13, Moriya and Sato disclose the apparatus according to claim 12, and Moriya further discloses wherein in a case where the connection is established by the wireless communication interface, the decision unit decides to attempt to establish the wireless connection (Moriya figure 11, steps S1103-S1109, and figures 7-9).
Regarding claim 14, Moriya and Sato disclose the apparatus according to claim 12, and Moriya further discloses wherein the detection unit determines a state of a wired communication interface of the communication apparatus, and in a case where no connection is established by either the wireless communication interface or the wired communication interface, the decision unit decides not to attempt to establish the wireless connection (Moriya figure 11, steps S1103, S1110, S1114, “Enable USB”).
Regarding claim 15, Moriya and Sato disclose the apparatus according to claim 14, and Moriya further discloses wherein in a case where connection is established by the wired communication interface and the wireless communication interface is disabled, the decision unit decides to attempt to establish the wireless connection (Moriya figure 14).
Regarding claim 16, Moriya and Sato disclose the apparatus according to claim 14, wherein in a case where connection is established by the wired communication interface, and the wireless communication interface is enabled but no connection is established, the decision unit decide to attempt to establish the wireless connection (Moriya figure 13).
Regarding claim 17, Moriya and Sato disclose the limitations as set forth in claim 1.
Regarding claim 18, Moriya and Sato disclose the limitations as set forth in claim 1, and a non-transitory computer-readable storage medium storing a program, wherein the program causes a computer of a communication apparatus to function (Moriya paragraph 236).
Allowable Subject Matter
Claims 3-5, 7-8, and 10 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/W.H/Examiner, Art Unit 2471
/MOHAMMAD S ADHAMI/Primary Examiner, Art Unit 2471