DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/25/2026 has been entered.
3. Claims 15, 17-32, 34-49, 51-65 are pending in this amended application.
Double Patenting
4. 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).
5. Claims 15, 17-32, 34-49, 51-65 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent #s. 9292233 B2 (and 10136004 B2, 9996307 B2,10623592 B2, 11019229 B2, 11949822 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).
Allowable Subject Matter
6. Claims 15, 17-32, 34-49, 51-65 are allowed.
REASONS FOR ALLOWANCE
7. The following is an examiner’s statement of reasons for allowance:
The independent claim 15 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “in a case where the data received by the information processing apparatus using the established communication is data which is determined not to satisfy the predetermined condition, providing, by the information processing apparatus, an error without specifying, from reception of the data to provision of the error, the printer by using another communication method that is different from the NFC method, and in a case where the data received by the information processing apparatus using the established communication is another data which is determined to satisfy the predetermined condition, searching, by the information processing apparatus, for the printer by using said another data determined to satisfy the predetermined condition and by using said another communication method, and performing, by the information processing apparatus, communication with the printer found in the search by using said another communication method”, in combination with all other limitations as claimed in independent claim 15.
The independent claim 32 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “in a case where the data received by the information processing apparatus using the established communication is data which is determined not to satisfy the predetermined condition, providing, by the information processing apparatus, an error without specifying, from reception of the data to provision of the error, the printer by using another communication method that is different from the NFC method, and in a case where the data received by the information processing apparatus using the established communication is another data which is determined to satisfy the predetermined condition, searching, by the information processing apparatus, for the printer by using said another data determined to satisfy the predetermined condition and by using said another communication method, and performing, by the information processing apparatus, communication with the printer found in the search by using said another communication method”, in combination with all other limitations as claimed in independent claim 32.
The independent claim 49 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “in a case where the data received by the information processing apparatus using the established communication is data which is determined not to satisfy the predetermined condition, providing, by the information processing apparatus, an error without specifying, from reception of the data to provision of the error, the printer by using another communication method that is different from the NFC method, and in a case where the data received by the information processing apparatus using the established communication is another data which is determined to satisfy the predetermined condition, searching, by the information processing apparatus, for the printer by using said another data determined to satisfy the predetermined condition and by using said another communication method, and performing, by the information processing apparatus, communication with the printer found in the search by using said another communication method”, in combination with all other limitations as claimed in independent claim 49.
Response to Arguments
8. Applicant’s arguments with respect to claims 15, 17-32, 34-49, 51-65 have been considered, and a timely filed electronic Terminal Disclaimer (e.T.D.) 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 conflicting application or patent, is required from an applicant.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARIS SABAH whose telephone number is (571)270-3917. The examiner can normally be reached on Monday/Thursday from 7:00AM to 5:30PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Benny Tieu, can be reached on (571)272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The Examiner’s personal fax number is (571)-270-4917.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/HARIS SABAH/Examiner, Art Unit 2682
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