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.
Specification
The disclosure is objected to because of the following informalities:
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.
Appropriate correction is required.
Claim Interpretations - 35 USC § 112
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.
Claim limitations “a conversion unit”, “a generation unit", “a transmission unit” and “a determination unit” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1-6 has/have been interpreted to cover the corresponding structure described in the specification that achieves 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 limitation: Paragraph [0189], computer used to perform the functions of the units of the embodiments
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 13 and 20 contain the limitation, “wherein a file of the first format is generated based on the file of the second format.” Independent claims 7 and 14 which claims 13 and 20 are dependent from states that “converting a file of a first format output by an application into a file of a second format” The implication is that the file of the first format was generated prior to the existence of the file of the second format. It is unclear to the examiner how “wherein a file of the first format is generated based on the file of the second format” is possible or performed. There may be missing critical steps that are absent in the claims. Appropriate corrections are required.
Claim Rejections - 35 USC § 102
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.
Claims 1, 5-7, 11-12, 14 and 18-19 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Narita et al. US2025/0348250 hereinafter referred to as Narita.
As per Claim 1, Narita teaches an information processing apparatus comprising:
a conversion unit configured to convert a file of a first format output by an application into a file of a second format; (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”)
a generation unit configured to generate print data based on the converted file; and (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”)
a transmission unit configured to transmit the print data generated by the generation unit, (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”)
wherein the transmission unit is configured to transmit the file output by the application without conversion based on a user's instruction to transmit the file output by the application without conversion. (Narita, Paragraph [0047]- [0048], “The supporting program 42 determines whether the PDF pass-through function is to be enabled in the universal printing program 41 based on the capabilities data received from the printer 2 and the advanced print settings received by the user's instruction (A31)” and “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. In this case, the universal printing program 41 does not generate intermediate image data or print data based on the image data to be printed. In other words, the universal printing program 41 transmits the PDF data to the printer 2 without any additional processing. Such a procedure omits conversion of the image data to be printed into intermediate image data, thereby reducing needless processing and deterioration of image quality due to the format conversion of the image to be printed. The PDF pass-through function is an example of a specific mode”)
As per Claim 5, Narita 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)
As per Claim 6, Narita teaches the information processing apparatus according to claim 5, 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”)
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 11-12, Claims 11-12 claims the same limitation as Claims 5-6 and are dependent on a similarly rejected independent claim. Therefore the rejections are analogous to that made in Claims 5-6 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 18-19, Claims 18-19 claims the same limitation as Claims 11-12 and are dependent on a similarly rejected independent claim. Therefore the rejections are analogous to that made in Claims 11-12 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 2-4, 8-10, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Narita et al. US2025/0348250 hereinafter referred to as Narita as applied to Claims 1, 7 and 14 respectively and further in view of Shima US2010/0107065.
As per Claim 2, Narita teaches the information processing apparatus according to claim 1,
Narita does not explicitly teach further comprising a control unit configured to display an object configured to accept the user's instruction on a display unit.
Shima teaches further comprising a control unit configured to display an object configured to accept the user's instruction on a display unit. (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”, allows users customization to display a setting item considered to be an object for the user to interact with)
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 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 two references to obtain the invention in Claim 2.
As per Claim 3, Narita in view of Shima teaches the information processing apparatus according to claim 2, wherein the control unit is configured to control not to accept a setting of a function not to be performed on the file of the first format output by the application based on acceptance of the user's instruction. (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” and(Narita, Paragraph [0047]- [0048])
The rationale applied to the rejection of claim 2 has been incorporated herein.
As per Claim 4, Narita in view of Shima teaches the information processing apparatus according to claim 2, further comprising a determination unit configured to determine whether a file-providing application is an application configured to output a file of a predetermined format, wherein the control unit is configured to, in a case where the file-providing application is determined to be an application configured to output a file of the first format by the determination unit, display the object on the display unit. (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” and(Narita, Paragraph [0024], [0047]- [0048])
The rationale applied to the rejection of claim 2 has been incorporated herein.
As per Claims 8-10, Claims 8-10 claims the same limitation as Claims 2-4 and is dependent on a similarly rejected independent claim. Therefore the rejection and rationale are analogous to that made in Claims 2-4.
As per Claims 15-17, Claims 15-17 claims the same limitation as Claims 2-4 and is dependent on a similarly rejected independent claim. Therefore the rejection and rationale are analogous to that made in Claims 2-4.
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 applied to Claims 7 and 14 respectively and further in view of McLarty US2013/0275383.
As per Claim 13, Narita teaches the control method according to claim 7,
Narita 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 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 two 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
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/MING Y HON/Primary Examiner, Art Unit 2666