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 .
2. Claims 15-65 are pending in this preliminary amended application.
Priority
3. Acknowledgement is made of applicant’s claim for foreign priority based on application JP 2014-146299 filed on 07/16/2014 under 35 U.S.C 119(a)-(d).
Drawings
4. The drawing has been filed on 02/26/2024 are acceptable for examination purpose.
Information Disclosure Statement
5. The information disclosure statement filed on 02/26/2024, 04/18/2024 is in compliance with the provision of the 37 CFR 1.97 and therefore has been considered.
Double Patenting
6. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
7. Claims 15-65 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9292233 B2, 11949822 B2, 11019229 B2, 10623592 B2, 9996307 B2.
It is clear that all the elements of the instant application independent claims 15, 32 and 49 are to be found in patent (U.S. Patent No. 9292233 B2) claims 1, 5, 9, 14, 19-20 as the application independent claims 15, 32 and 49 fully encompasses the patent claims 1, 5, 9, 14, 19-20. The difference between the instant application independent claims 15, 32 and 49 and the patent (U.S. Patent No. 9292233 B2) claims 1, 5, 9, 14, 19-20 lies in the fact that the patent (U.S. Patent No. 9292233 B2) claim includes many more elements and is thus much more specific. Thus, the invention of claims 1, 5, 9, 14, 19-20 of the patent (U.S. Patent No. 9292233 B2) is in effect a “species” of the “generic” invention of the application independent claims 15, 32 and 49. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application independent claims 15, 32 and 49 are anticipated by claims 1, 5, 9, 14, 19-20 of the patent (U.S. Patent No. 9292233 B2), it is not patentably distinct from claims 1, 5, 9, 14, 19-20 of the patent (U.S. Patent No. 9292233 B2).
Claim Rejections - 35 USC § 102
8. 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.
9. Claims 15, 23-24, 29-32, 49 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jang et al. [hereafter Jang], US Pub 2014/0355063 (cited in IDS).
As to claims 15, 32, 49 [independent], Jang teaches Jang teaches a method to be performed by executing an application [fig. 5, element 504; 0124] in an information processing apparatus [fig. 3, element 20] having a Near Field Communication (NFC) interface [figs. 3a-b & fig. 4, element 210; 0091-0092, 0101-0102] and being capable of establishing communication with a printer by using an NFC method via the NFC interface, the method comprising [figs. 3a-b & fig. 4, element 210; 0091-0092, 0101-0102]:
in a case where data determined not to satisfy a predetermined condition is received by the information processing apparatus using the established communication [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10 and fig. 14a, element 1051a; 0102-0104, 0153-0155, 0165-0167, 0174-0175 Jang teaches that the mobile device 20 corresponding to the information processing apparatus acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103). Then the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier which was acquired as the first data. However, if the wireless communication/connection with the printer 10 is not established due to any reasons including the device(printer) identifier error, then the mobile device displays an error and demands from the user of the mobile device 20 to enter NFC PIN (see para., 0175 & fig. 14a, element 1051a) to establish the wireless communication/connection with the printer 10], providing an error about the data without specifying the printer by using another communication method that is different from the NFC method [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10 and fig. 14a, element 1051a; 0102-0104, 0153-0155, 0165-0167, 0174-0175 Jang teaches that the mobile device 20 corresponding to the information processing apparatus acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103). Then the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier which was acquired as the first data. However, if the wireless communication/connection with the printer 10 is not established due to any reasons including the device(printer) identifier error, then the mobile device displays an error and demands from the user of the mobile device 20 to enter NFC PIN (see para., 0175 & fig. 14a, element 1051a) to establish the wireless communication/connection with the printer 10].
As to claims 23, 40, 57 [dependent from claims 15, 32, 49 respectively], Jang teaches wherein the error is provided on a panel of the information processing apparatus, and wherein the panel is able to receive touch operations from a user of the information processing apparatus [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10 and fig. 14a, element 1051a; 0102-0104, 0153-0155, 0165-0167, 0174-0175 Jang teaches that the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier which was acquired as the first data. However, if the wireless communication/connection with the printer 10 is not established due to any reasons including the device(printer) identifier error, then the mobile device displays an error and demand from the user of the mobile device 20 to enter NFC PIN (see para., 0175 & fig. 14a, element 1051a) to establish the wireless communication/connection with the printer 10].
As to claims 24, 41, 58 [dependent from claims 15, 32, 49 respectively], Jang teaches wherein the data is received from the printer by reading data stored in an NFC tag of the printer via the NFC interface [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10; 0102-0104, 0153-0155 Jang teaches that the mobile device 20 corresponding to the information processing apparatus reads/acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103)].
As to claims 29, 46, 63 [dependent from claims 15, 32, 49 respectively], Jang teaches wherein the predetermined condition is satisfied in a case where data received by the information processing apparatus is proper [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10 and fig. 14a, element 1051a; 0102-0104, 0153-0155, 0165-0167, 0174-0175 Jang teaches that the mobile device 20 corresponding to the information processing apparatus acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103). Then the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier which was acquired as the first data. However, if the wireless communication/connection with the printer 10 is not established due to any reasons including the device(printer) identifier error, then the mobile device displays an error and demand from the user of the mobile device 20 to enter NFC PIN (see para., 0175 & fig. 14a, element 1051a) to establish the wireless communication/connection with the printer 10].
As to claims 30, 47, 64 [dependent from claims 15, 32, 49 respectively], Jang teaches wherein the predetermined condition is satisfied in a case where a format of data received by the information processing apparatus is a predetermined format [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10 and fig. 14a, element 1051a; 0102-0104, 0153-0155, 0165-0167, 0174-0175 Jang teaches that the mobile device 20 corresponding to the information processing apparatus acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103). Then the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier which was acquired as the first data. However, if the wireless communication/connection with the printer 10 is not established due to any reasons including the device(printer) identifier error, then the mobile device 20 displays an error and demand from the user of the mobile device 20 to enter NFC PIN (see para., 0175 & fig. 14a, element 1051a) to establish the wireless communication/connection with the printer 10].
As to claims 31, 48, 65 [dependent from claims 15, 32, 49 respectively], Jang teaches wherein communication by using the another communication method that is different from the NFC method is not established in a case where the error about the data is provided [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10 and fig. 14a, element 1051a; 0102-0104, 0153-0155, 0165-0167, 0174-0175 Jang teaches that the mobile device 20 corresponding to the information processing apparatus acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103). Then the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier which was acquired as the first data. However, if the wireless communication/connection with the printer 10 is not established due to any reasons including the device(printer) identifier error, then the mobile device 20 doesn’t establish connection/communication with the printer 10 through the second communication].
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 16-17, 33 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. [hereafter Jang], US Pub 2014/0355063 (cited in IDS) in view of Kim et al. [hereafter Kim], US Pub 2014/0168687.
As to claims 16, 33, 50 [dependent from claims 15, 32, 49 respectively], Jang doesn’t teach in a case where another data, which is determined to satisfy the predetermined condition, is received by the information processing apparatus using the established communication, specifying and communicating, by using the another communication method, with the printer identified by the another data.
Kim teaches in a case where another data, which is determined to satisfy the predetermined condition, is received by the information processing apparatus using the established communication, specifying and communicating, by using the another communication method, with the printer identified by the another data [0138 Kim teaches that when the user is determined that the mobile device 20 is an authenticated device through NFC communication, the controlling unit 610 activates the wireless communication module 6401 in order to receive contents such as pictures, schedules or documents from the user device 20. The wireless communication module 6401 corresponds to a module which is able to communicate in a wireless manner by, for example, Wi-Fi Direct or Bluetooth communication].
Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate KIm teaching to acquire another data, which is determined to satisfy the predetermined condition, is received by the mobile device using the established communication, specifying and communicating, by using the another communication method to modify Jang’s teaching to determine whether a tagged user’s mobile device is an authenticated device with regard to image forming operations of the printer based on received identification information, and controls execution of one of the operations when requested by the tagged user device and the tagged user device is determined as the authenticated device with regard to the requested image operation. The suggestion/motivation for doing so would have been benefitted to the user to have printer that utilizes for the image forming function to support the NFC function to the NFC devices whose authentication is completed such that misuse of the printer by unauthenticated NFC devices can be prevented in an easy manner.
As to claims 17, 34, 51 [dependent from claims 16, 33, 50 respectively], Jang teaches wherein the another data which is determined to satisfy the predetermined condition includes an address identifying the printer [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10; 0102-0104, 0153-0155 Jang teaches that the mobile device 20 corresponding to the information processing apparatus acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103)].
As to claims 18, 35, 52 [dependent from claims 17, 34, 51 respectively], Jang teaches wherein the address identifying the printer is an Internet Protocol address of the printer [0112-0113, 0173-0174].
As to claims 19, 36, 53 [dependent from claims 16, 33, 50 respectively], Jang teaches wherein the another data which is determined to satisfy the predetermined condition includes an address identifying the printer and connection information for connecting to an access point [fig. 3c, element “access point”; 0031-0033, 0099 Jang teaches that the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier via the access point using the acquired the IP address of the printer 10 connected to the access point].
As to claims 20, 37, 54 [dependent from claims 19, 37, 53 respectively], Jang teaches wherein the communication by using the another communication method that is different from the NFC method is performed by processing that includes (1) a connection between the access point and the information processing apparatus that is established based on the connection information and (2) communication with the printer that is performed by using said another communication method via the connected access point [fig. 3c, element “access point”; 0031-0033, 0099 Jang teaches that the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier via the access point using the acquired the IP address of the printer 10 connected to the access point].
As to claims 21, 38, 55 [dependent from claims 19, 36, 53 respectively], Jang teaches wherein the another communication method is a wireless communication capable of communicating with the access point [fig. 3c, element “access point”; 0031-0033, 0099 Jang teaches that the mobile device 20 establishes the wireless communication/connection with the printer 10 using the device(printer) identifier via the access point using the acquired the IP address of the printer 10 connected to the access point].
As to claims 22, 39, 56 [dependent from claims 21, 38, 55 respectively], Jang teaches wherein the wireless communication connects to a Local Area Network (LAN) [fig. 3c; 0110].
As to claims 25, 42, 59 [dependent from claims 16, 33, 50 respectively], Jang teaches wherein the another data is received from the printer by reading data stored in an NFC tag of the printer via the NFC interface [figs. 4-5, elements 30, 504, 2501 & figs. 8, 10; 0102-0104, 0153-0155 Jang teaches that the mobile device 20 corresponding to the information processing apparatus reads/acquires the data corresponding to the at least one of a first field including an application identifier, a second field including application installation information, a third field including a device identifier, a fourth field including a wireless connection authentication code, and a fifth field including a device model name (see fig. 8 & para., 0103)].
As to claims 26, 43, 60 [dependent from claims 16, 33, 50 respectively], Jang teaches issuing a scan instruction to the specified printer having a scanner by the communication using the another communication method, and receiving scan data from the printer by the communication using the another communication method [fig. 16b; 0203 Jang teaches that the printer 10 scans the document and transmits the scanned document back to the mobile device 20 according to the scan instructions received from the mobile device 20].
As to claims 27, 44, 61 [dependent from claims 16, 33, 50 respectively], Jang teaches sending print data to the printer by the communication using the another communication method [fig. 9; 0150-0151 Jang teaches that the mobile device 20 sends print data to the printer 10 through another NFC communication protocol].
As to claims 28, 45, 62 [dependent from claims 16, 33, 50 respectively], Jang teaches determining whether or not the another data which is received by using the established communication satisfies the predetermined condition before the communication is performed by using the another communication method [fig. 9; 0150-0151 Jang teaches that the mobile device 20 sends print data to the printer 10 through another NFC communication protocol].
Kim also teaches determining whether or not the another data which is received by using the established communication satisfies the predetermined condition before the communication is performed by using the another communication method [0138 Kim teaches that when the user is determined that the mobile device 20 is an authenticated device through NFC communication, the controlling unit 610 activates the wireless communication module 6401 in order to receive contents such as pictures, schedules or documents from the user device 20. The wireless communication module 6401 corresponds to a module which is able to communicate in a wireless manner by, for example, Wi-Fi Direct or Bluetooth communication].
Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate KIm teaching to acquire another data, which is determined to satisfy the predetermined condition, is received by the mobile device using the established communication, specifying and communicating, by using the another communication method to modify Jang’s teaching to determine whether a tagged user’s mobile device is an authenticated device with regard to image forming operations of the printer based on received identification information, and controls execution of one of the operations when requested by the tagged user device and the tagged user device is determined as the authenticated device with regard to the requested image operation. The suggestion/motivation for doing so would have been benefitted to the user to have printer that utilizes for the image forming function to support the NFC function to the NFC devices whose authentication is completed such that misuse of the printer by unauthenticated NFC devices can be prevented in an easy manner.
Conclusion
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/HARIS SABAH/Examiner, Art Unit 2682