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 .
In a RCE and amendments dated 12/23/2025, applicant(s) amended claims 1 – 11 and 18. Claims 1 – 21 are still pending in this application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
Response to Arguments
Applicant’s arguments (filed 12/23/2025), from pages 10 – 17, with respect to claims 1 - 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 - 4, 10 - 12, 17 - 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ukai et al. (U.S PreGrant Publication No. 2015/014015 A1, hereinafter ‘Ukai’) in view of Morita (U.S PreGrant Publication No. 2007/0169104 A1, previously cited in an Office Action dated 09/24/2025, hereinafter ‘Morita’) and further in view of Asai (U.S PreGrant Publication No. 2019/0104230 A1, also previously cited in the Office Action dated 09/24/2025, hereinafter ‘Asai’).
With respect to claim 1, Ukai teaches a control method for an information processing apparatus configured to communicate with another apparatus via a network (e.g., a portable communication terminal 112 configured to communicate with a communication device 111 via network 11, Fig. 3), the method comprising:
executing a first program having a cooperation function of causing the other apparatus and the information processing apparatus to cooperate with each other, the first program storing, inside the information processing apparatus, a second program for the other apparatus (e.g., executing a cooperative application program of causing said communication device 111 and said portable communication terminal 112 to cooperate with each other, the cooperative application is installed within the portable communication terminal 112, and another program for the communication device 111, ¶0006, ¶0063), when the cooperation function is activated by a user operation or an application start-up (e.g., when said cooperative application program is started/launched, Fig. 5, Fig. 16),
(a) determining whether a version of the second program installed on the other apparatus satisfies a predetermined condition (e.g., determine whether a version of the other program is consistent or matching, ¶0007, ¶0041, ¶0083, Fig. 16), and
(b) extracting, in a case where it is determined that the version does not satisfy the predetermined condition, the second program from inside the first program and transmitting the extracted second program from the information processing apparatus to the other apparatus to update the second program on the image forming apparatus (e.g., In a case when it’s determined that the version is not consistent or does not match, then send the cooperative application program (or non-match information) from the portable communication terminal 112 to the communication device in order to update the cooperative application on the communication device, ¶0053, ¶0088, ¶0117, Fig. 16; therefore the communication device acquires the cooperative application program from the portable communication terminal 112 based on a difference between versions that is ‘extracted’ , ¶0039, ¶0053, ¶0063, ¶0080), and
instructing, after completion of the update of the second program, from the information processing apparatus, the other apparatus to execute an operation (e.g., after updating the cooperative application in the communication device, the communication device is ready to perform any operation, Fig. 16, ¶0074, ¶0118 - ¶0120); but fails to teach that
(a) said other apparatus is clearly an image forming apparatus, the image forming apparatus including a reading unit configured to scan a sheet for reading and a printing unit configured to print data on a sheet; and
(b) instructing, after completion of the update of the second program, from the information processing apparatus, the image forming apparatus to execute an image forming processing operation by causing the reading unit to read a document or the printing unit to print data.
However, with respect to above difference (a) and in the same field of endeavor of comparing version between devices and transmitting information and second program, the aforementioned claimed limitations are well-known in the art as evidenced by Morita. In particular, Morita teaches an image forming apparatus including a reading unit configured to scan a sheet for reading and a printing unit configured to print data on a sheet (e.g., a multi-functional apparatus 10 including a copy function to read original document and a printing function to print image data onto a recording paper sheet, ¶0044).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate Morita into Ukai because it would be convenient to have an image forming apparatus instead of the other apparatus of Ukai in order to scan or print document(s).
Ukai, modified by Morita, fails to teach above difference (b). However, Asai teaches instructing, after completion of the update of the second program, from the information processing apparatus, the image forming apparatus to execute an image forming processing operation by causing the reading unit to read a document or the printing unit to print data (Asai: when a firmware is updated at a MFP, a label print process can be executed from a mobile device (e.g., a print button 88 shown in a screen 70 that corresponds to the mobile device), the mobile device execute the print process from the MFP, ¶0035 with ¶0059 and Fig 2).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate Asai into Ukai in view of Morita because it would predictably and advantageously to instruct from a host/mobile in order to make it convenience to the user to select any print data stored in the host/mobile and instruct a desired printer.
With respect to claim 2, Ukai in view of Morita and further in view of Asai teaches the control method for the information processing apparatus according to claim 1, further comprising detecting a state of the other apparatus, wherein the second program is a program that is executed by the other apparatus and has an installation function for causing the second program to be executable on the other apparatus (e.g., the portable communication terminal 112 responds to an inquiry as to a status of the current version of the cooperation application provided, ¶0088, ¶0095, 101), and wherein, when the cooperation function is activated, the detecting detects whether the second program exists in the other apparatus, and in a case where the second program does not exist in the other apparatus, the extracting extracts the second program from inside the first program and the transmitting transmits the extracted second program to the other apparatus (e.g., In a case when the cooperation application program is started or activated, and when it’s determined that the version is not consistent or does not match, then find a difference between both version in order to send non-match information to the communication device in order to update the cooperative application on the communication device, ¶0053, ¶0088, ¶0117, Fig. 16; therefore, the communication device acquires the cooperative application program from the portable communication terminal 112, ¶0039, ¶0053, ¶0063, ¶0080); and Morita teaches the image forming apparatus (e.g., a multi-functional apparatus 10 including a copy function to read original document and a printing function to print image data onto a recording paper sheet, ¶0044).
With respect to claim 3, Ukai in view of Morita and further in view of Asai teaches the control method for the information processing apparatus according to claim 2, wherein while Morita teaches the image forming apparatus (e.g., a multi-functional apparatus 10 including a copy function to read original document and a printing function to print image data onto a recording paper sheet, ¶0044); Ukai teaches wherein, after transmission of the extracted second program to the image forming apparatus, the transmitting transmits information regarding connection between the information processing apparatus and the image forming apparatus to the image forming apparatus (e.g., Upon updating the application program on a basis on an updated program, at least “In connection” is displayed when both devices are cooperating each other, Fig. 4(b) & Fig. 4(c), ¶0067).
With respect to claim 4, Ukai in view of Morita and further in view of Asai teaches the control method for the information processing apparatus according to claim 1, further comprising detecting a state of the image forming apparatus, wherein the second program is a program that is executed by the image forming apparatus and has an installation function for causing the second program to be executable on the image forming apparatus, and wherein, based on when the cooperation function is activated being enabled, the detecting detects whether the second program is required to be updated on the image forming apparatus, and in a case where the second program is required to be updated, the extracting extracts the second program from inside the first program and the transmitting transmits the extracted second program that has been updated (e.g., based on a version of the application, where it’s well known in the art that if a version is different, an update is necessary/needed, ¶0039, ¶0086, ¶0098, Fig. 6).
With respect to claim 10, Ukai in view of Morita and further in view of Asai teaches the control method for the information processing apparatus according to claim 1, wherein Asai further teaches comprising executing an application program that is configured to print data onto a sheet using a printing unit of the image forming apparatus (e.g., executing a program that is configured to print image data onto a label inherently using a “print engine or unit” of the MFP, ¶0030, ¶0033, ¶0046).
With respect to claim 11, this is a system claim corresponding to the control method claim 1. Therefore, this is rejected for the same reasons as the control method claim 1.
With respect to claim 12, Ukai in view of Morita and further in view of Asai teaches the information processing system according to claim 11, wherein the application includes the corresponding application (i.e., from the cooperative application program, retain the difference and transmit to update difference information, ¶0039, ¶0074, Fig. 16).
With respect to claim 17 (in which depend on claim 11), it's rejected for the similar reasons as those described in connection with claim 3.
With respect to claim 18 (in which depend on claim 11), it's rejected for the similar reasons as those described in connection with claim 3. This means that when versions of the applications are different, e.g., when there is a difference between versions, update is needed/required since applications are not matching, then reinstallation/update is required.
With respect to claim 19, Ukai in view of Morita and further in view of Asai teaches the information processing system according to claim 18, wherein, in a case where updating of the corresponding application is required, a display unit of the information processing apparatus displays a screen indicating that updating of the corresponding application of the image forming apparatus is required (e.g., when it’s determined that updating is required (from reference information), then display message or information indicating required time for updating program(s), Fig. 6 & Fig. 9).
With respect to claim 21, Ukai in view of Morita and further in view of Asai teaches the information processing system according to claim 11, wherein Morita teaches the image forming apparatus installs the corresponding application onto a volatile memory (e.g., the program sent by the data processing apparatus to the multifunctional apparatus should be installed on a RAM of said multifunctional apparatus, ¶0051 - ¶0052).
Claims 5 - 9 and 13 - 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ukai, Morita, and Asai in view of Okumura (U.S PreGrant Publication No. 2019/0286811 A1, hereinafter ‘Okumura’).
With respect to claim 5, Ukai in view of Morita and further in view of Asai teaches the control method for the information processing apparatus according to claim 1, but fails to teach further comprising executing an application program that causes the reading unit of the image forming apparatus to scan a document via the information processing apparatus, causes read (scanned) data to be transmitted to the information processing apparatus, and causes the read (scanned) data to be transmitted from the information processing apparatus to a server that communicates with the information processing apparatus.
However, the aforementioned claimed limitations are well-known in the art as evidenced by Okumura. In particular, Okumura teaches further comprising executing an application program that causes the reading unit of the image forming apparatus to scan a document via the information processing apparatus, causes read (scanned) data to be transmitted to the information processing apparatus, and causes the read (scanned) data to be transmitted from the information processing apparatus to a server that communicates with the information processing apparatus (e.g., a scanning application that causes a scanner to scan a document from a PC based on a sequence and selected workflow, cause the scanned document to be transmitted to the PC, and if the selected workflow is including saving scanned document to a cloud server, then it also save (or upload) the scanned document to said cloud server in response to image scanning and “notifying” the user to select at least a saving destination in order to transmit and save the image data to at least a selected cloud server, ¶0022, ¶0031, ¶0038 - ¶0040, ¶0068 - ¶0070, Fig. 2 & Fig. 7A).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the control method of Ukai in view of Morita and further in view of Asai as taught by Okumura since Okumura suggested within ¶0022, ¶0031, ¶0038 - ¶0040, ¶0068 - ¶0070, Fig. 2 & Fig. 7A that such modification would remotely save the scanned document in a cloud server in order to allow other users to access the scanned document; thereby having the scanned document available for everyone.
With respect to claim 6, the integration of Ukai, Morita, Asai and Okumura teaches the control method for the information processing apparatus according to claim 5, further Morita teaches comprising executing an application program (e.g., said scanning application, ¶0021) that causes the read data and login information for use in logging into the server to be transmitted to the server (e.g., a username and a password to be inputted via a login window, ¶0058).
With respect to claim 7, Ukai in view of Morita and further in view of Asai teaches the control method for the information processing apparatus according to claim 1, further comprising executing an application program that enables the reading unit of the image forming apparatus to scan a sheet in response to receipt of an execution notification on the image forming apparatus, based on the extracted second program being transmitted to the image forming apparatus, and causes read data to be transmitted to a server that communicates with the image forming apparatus (Ukai teaches executing an application after receiving and updating the difference from the portable communication terminal, Fig. 16; while Asai teaches updating firmware and then execute a scanning operation (Fig. 2 – item 76) from a mobile phone, Fig. 8, ¶0059), but fails to teach that said application program enables a reading unit of the image forming apparatus to scan a sheet in response to receipt of an execution notification on the image forming apparatus, and causes read data to be transmitted to a server that communicates with the image forming apparatus.
However, in the same field of endeavor of downloading program(s), Okumura teaches: an application program that enables a reading unit of the image forming apparatus to scan a sheet in response to receipt of an execution notification on the image forming apparatus, and causes read data to be transmitted to a server that communicates with the image forming apparatus (e.g., a scanning application that causes a scanner to scan a document from a PC based on a sequence and selected workflow, cause the scanned document to be transmitted to the PC, and if the selected workflow is including saving scanned document to a cloud server, then it also forward (or upload) the scanned document to said cloud server, ¶0022, ¶0031, ¶0038 - ¶0040, ¶0068 - ¶0070, Fig. 2 & Fig. 7A).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the control method of Ukai, Morita and Asai as taught by Okumura since Okumura suggested within ¶0022, ¶0031, ¶0038 - ¶0040, ¶0068 - ¶0070, Fig. 2 & Fig. 7A that such modification would be advantageous to have the application of Okumura instead of application of Asai in order to allow a user to use scanning/reading function while accessing the scanned document; thereby having the scanned document available for everyone.
With respect to claim 8, the integration of Ukai, Morita, Asai and Okumura teaches the control method for the information processing apparatus according to claim 7, wherein Okumura further teaches comprising executing an application program that causes login information for use in logging into to the server and the read data to be transmitted to the server (e.g., an authentication page is displayed in order to allow a user to input ID/password to access the selected cloud server, ¶0058).
With respect to claim 9 (in which depend on claim 1), it's rejected for the similar reasons as those described in connection with claim 5.
With respect to claim 13 (in which depend on claim 11), it's rejected for the similar reasons as those described in connection with claim 7.
With respect to claim 14 (in which depend on claim 13), it's rejected for the similar reasons as those described in connection with claim 8.
With respect to claim 15, Ukai in view of Morita and further in view of Asai teaches the information processing system according to claim 11, but fails to teach wherein, after the information processing apparatus executes the application, in response to receipt on the image forming apparatus of an execution notification for causing the reading unit to scan a sheet, the corresponding application in the image forming apparatus is notified of the execution notification, and wherein the image forming apparatus that has received the execution notification reads a sheet using the reading unit and transmits read data to a server that is able to communicate with the image forming apparatus.
However, Okumura teaches wherein, after the information processing apparatus executes the application, in response to receipt on the image forming apparatus of an execution notification for causing a reading device to scan a sheet, the corresponding application in the image forming apparatus is notified of the execution notification, and wherein the image forming apparatus that has received the execution notification scans a sheet using the reading unit and transmits the read data to a server that is able to communicate with the image forming apparatus (e.g., upon accepting selected workflow and performing scanning, then notifies (display to) the user information to send/transmits/upload the scanned data to any cloud server, ¶0031, ¶0035, ¶0052, Fig. 7A).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the control method of Ukai in view of Morita and further in view of Asai as taught by Okumura since Okumura suggested within ¶0031, ¶0035, ¶0052 and Fig. 7A that such modification would be advantageous to have the application of Okumura instead of application/installer of Brinkhoff in order to allow a user to use scanning/reading function while accessing the scanned document; thereby having the scanned document available for everyone.
With respect to claim 16, the integration of Ukai, Morita, Asai and Okumura teaches the information processing system according to claim 15, wherein the information processing apparatus transmits login information for use in logging into the server to the server when the application is started for a first time (e.g., it’s an account information that is inherently required to be created in order to access the system for the first time if any of the applications haven’t been executed or launched, ¶0058).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ukai, Morita and Asai in view of Tsuboi (U.S PreGrant Publication No. 2020/0387362 A1, hereinafter ‘Tsuboi).
With respect to claim 20, Ukai in view of Morita and further in view of Asai teaches the information processing system according to claim 18, but fails to teach wherein, before updating of the corresponding application, information regarding a free space of a storage of the image forming apparatus is detected, and based on detection that the free space of the image forming apparatus does not exceed a predetermined capacity, a display unit of the information processing apparatus displays a screen indicating that the storage of the image forming apparatus has no enough free space.
However, in the same field of endeavor of installing/updating application(s), Tsuboi teaches wherein, before updating of the corresponding application, information regarding a free space of a storage of the image forming apparatus is detected, and based on detection that the free space of the image forming apparatus does not exceed a predetermined capacity, a display unit of the information processing apparatus displays a screen indicating that the storage of the image forming apparatus has no enough free space (Tsuboi: Before updating any application, determine if there is enough/sufficient space in a HDD of an image forming apparatus, and if there is no enough/sufficient/available space, then display a screen indicating that there is no sufficient (insufficient) space to update the application, ¶0050 with ¶0062).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the control method of Ukai in view of Morita and further in view of Asai as taught by Tsuboi since Tsuboi teaches in ¶0050 with ¶0062 that such modification would determine if the image forming apparatus has enough/sufficient memory (space or capacity) to allow the system to update the application; if not, then inform/notify the user that the application cannot be updated due to insufficient space in order to avoid waste of time trying to force the image forming apparatus; thereby to look for another image forming apparatus or to erase some data in said HDD (memory).
Conclusion
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/JUAN M GUILLERMETY/Primary Examiner, Art Unit 2682