DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Response to Arguments
Applicant' s amendment filed on May 13, 2026 is acknowledged. Currently Claims 1, 3-7, 9-14 and 16-20 are pending.
Applicant's arguments with respect independent claims 1, 7 and 14 have been considered but are moot in view of the new ground(s) of rejection. Amended claims 1, 7 and 14 results in a different scope than that of the originally presented Claims 1, 7 and 14 respectively.
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 of this title, 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.
Claims 1, 4-7, 11-12, 14 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Narita et al. US2025/0348250 hereinafter referred to as Narita as in view of Hosomizo et al. US2023/0315348 hereinafter referred to as Hosomizo and Ito US2013/0050728.
As per Claim 1, Narita teaches an information processing apparatus comprising
a display and at least one processor operating to: cause the display to display a print setting screen,
the print setting screen including a list box to enable and disable a pass through function;
receive, in a case where the pass through function is enabled, a first file output from an operating system (OS) of the information processing apparatus, the first file being a first format output by a document generation application; output the first file and information based on print setting
a generation unit configured to generate print data based on the converted second file, the print data being the first format; and output the generated a transmission unit configured to transmit the print data (Narita, Paragraph [0024], “The universal printing program 41 further has a function of transmitting the generated print data to a printer designated as a device for printing, using a communication function of the OS 21”)
Narita does not explicitly teach a display and at least one processor operating to: cause the display to display a print setting screen,
to enable and disable a pass through function;
setting set via the print setting screen
and the information based on print settings set via the print setting screen
Hosomizo teaches a display and at least one processor operating to: cause the display to display a print setting screen, to enable and disable a pass through function; setting set via the print setting screen and the information based on print settings set via the print setting screen (Hosomizo, Paragraph [0034], “In the present embodiment, registration-enable-disable information 46 indicating a setting of whether the pass-through registration is to be performed or not is stored in the memory 12... The supporting program 42, for example, displays a setting screen on which the registration-enable-disable information 46 is set to ON or OFF, and receives a setting related to the registration-enable-disable information 46 via the setting screen”)
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 Hosomizo into Narita because by providing a user interface to the user to use the system of Narita will allow the user to set their preferences such as pass-through registration.
Narita and Hosomizo does not explicitly teach the print setting screen including a list box
Ito teaches the print setting screen including a list box (Ito, Paragraph [0125], “FIG. 11C illustrates an example of the print setting screen, which includes a printer selection list box 1304 that allows a user to select a desired printer that performs printing from a list of printers that the user can use. In the present exemplary embodiment, the user selects a printer that corresponds to the MFP 101. Further, the print setting screen illustrated in FIG. 11C includes a size selection list box 1305, a color selection list box 1306, and a two-sided print selection list box 1307, which enable the user to select a print paper size and a print color mode and perform one-sided/two-sided setting”)
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 Ito into Narita in view of Hosomizo because by providing a component to the print setting screen such as a list box will limit the choices and display the possible choices for the user to choose from.
Therefore it would have been obvious to one of ordinary skill to combine the three references to obtain the invention in Claim 1.
As per Claim 4, Narita in view of Hosomizo and Ito teaches the information processing apparatus according to claim 1, the list box being displayed on the print setting screen(Ito, Paragraph [0125]) in a case where the document generation application is an application configured to output a file of the first format(Narita, Paragraph [0047]- [0048])
The rationale applied to the rejection of claim 1 has been incorporated herein.
As per Claim 5, Narita in view of Hosomizo and Ito teaches the information processing apparatus according to claim 1, wherein the first format is Portable Document Format (PDF). (Narita, Paragraph [0048], “The universal printing program 41 does not activate the supporting program 42 when the PDF pass-through function is enabled in association with the supporting program 42 for the printer 2 and the universal printing program 41 has received a print instruction including PDF data as the image data to be printed)
The rationale applied to the rejection of claim 1 has been incorporated herein.
As per Claim 6, Narita teaches the information processing apparatus according to claim 1, wherein the second format is Extensible Markup Language (XML) Paper Specification (XPS). (Narita, Paragraph [0024], “The universal printing program 41 includes a function of generating intermediate image data based on image data received as data to be printed that has been specified in a print instruction received from an application, based on a user instruction. The intermediate image data may be, for example, data in XPS format. “XPS” is an abbreviation for XML Paper Specification”)
The rationale applied to the rejection of claim 1has been incorporated herein.
As per Claim 7, Claim 7 claims a control method for operating the information processing apparatus as claimed in Claim 1. Therefore the rejection is analogous to that made in Claim 1.
As per Claims 10-12, Claims 10-12 claims the same limitation as Claims 4-6 and are dependent on a similarly rejected independent claim. Therefore the rejections are analogous to that made in Claims 4-6 respectively.
As per Claim 14, Claim 14 claims a non-transitory computer-readable storage medium storing executable instructions, which when executed by one or more processors of an information processing apparatus, (Narita, Paragraph [0005]) cause the information processing apparatus to perform a control method as claimed in Claim 7. Therefore the rejection is analogous to that made in Claim 7.
As per Claims 17-19, Claims 17-19 claims the same limitation as Claims 10-12 and are dependent on a similarly rejected independent claim. Therefore the rejections are analogous to that made in Claims 10-12 respectively.
Claims 3, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Narita et al. US2025/0348250 hereinafter referred to as Narita as in view of Hosomizo et al. US2023/0315348 hereinafter referred to as Hosomizo and Ito US2013/0050728 as applied to Claims 1, 7 and 14 respectively and further in view of Shima US2010/0107065.
As per Claim 3, Narita in view of Hosomizo in view of Ito teaches the information processing apparatus according to claim 1, wherein, in a case where the pass through function is enabled, ( Narita, Paragraph [0047]- [0048])
Narita in view of Hosomizo in view of Ito does not explicitly teach the control unit is configured to control not to accept a setting of a function to be performed on the first file is restricted on the print setting screen.
Shima teaches the control unit is configured to control not to accept a setting of a function to be performed on the first file is restricted on the print setting screen. (Shima, Paragraph [0010], [0029], “the printer driver program may include a UI information for editing function that edits the UI information to be managed for every category. Therefore, the user can customize the user interface for every category of the application program” and “The UI information editing unit 21c has a function of providing a user with a user interface to select a print condition setting item displayed on a print condition setting window, changing a layout of the GUI widget of the selected item, or changing an initial value of the GUI widget, and a function of inputting the information displaying the contents edited by the user via the user interface”, allow customization of the UI which will allow customization to allows restriction of functions)
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 Shima into Narita in view of Hosomizo in view of Ito because by providing a user interface to the user to use the system of Narita will allow the user to interact and customize their experience utilizing the system of Narita.
Therefore it would have been obvious to one of ordinary skill to combine the four references to obtain the invention in Claim 3.
As per Claim 9, Claims 9 claims the same limitation as Claim 3 and is dependent on a similarly rejected independent claim. Therefore the rejection and rationale are analogous to that made in Claims 3.
As per Claim 16, Claims 16 claims the same limitation as Claim 3 and is dependent on a similarly rejected independent claim. Therefore the rejection and rationale are analogous to that made in Claims 3.
Claims 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Narita et al. US2025/0348250 hereinafter referred to as Narita as in view of Hosomizo et al. US2023/0315348 hereinafter referred to as Hosomizo and Ito US2013/0050728 as applied to Claims 7 and 14 respectively and further in view of McLarty US2013/0275383.
As per Claim 13, Narita in view of Hosomizo in view of Ito teaches the control method according to claim 7,
Narita in view of Hosomizo in view of Ito does not explicitly teach wherein a file of the first format is generated based on the file of the second format.
McLarty teaches wherein a file of the first format is generated based on the file of the second format. (McLarty, Paragraph [0022], “the conversion engine 126 may convert an email file 110 to a PDF file 112 in response to a user selection. In some implementations, the conversion engine 126 may execute one or more of the following: determine an original file 110 in first file format native to the user application 122 has been selected through the frontend 130; automatically generate a converted file 112 in a second file format native to the image application 124”)
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 McLarty into Narita in view of Hosomizo in view of Ito because by utilizing file formats that are related to the system and each other will allow the file in the file formats to be utilized in a user-desirable manner for further processing.
Therefore it would have been obvious to one of ordinary skill to combine the four references to obtain the invention in Claim 13.
As per Claim 20, Claim 20 claims the same limitation as Claim 13 and is dependent on a similarly rejected independent claim. Therefore the rejection and rationale are analogous to that made in Claim 13.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MING HON whose telephone number is (571)270-5245. The examiner can normally be reached M-F 9am - 5pm.
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/MING Y HON/Primary Examiner, Art Unit 2666
Prosecution Insights