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 .
Claim status in the amendment received on 5/05/2026:
Claims 1, 2, 4-8, 10-11 have been amended.
New claims 12-14 have been added.
Claims 1-2, 4-8 and 10-14 are pending.
Response to Amendments
Applicant’s amendments have been considered and in response to the amendments:
The previous 112(b) rejections have been withdrawn.
Response to Arguments
Applicant’s arguments have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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 1-2, 4-8 and 10-14 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.
As to claim 1,
The claims recite the phrase “in a case”, in line 14. However, the phrase "in a case" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The claim recites the limitation “the instructions”, in line 9. However, there are multiple antecedent basis for the limitation in the claim.
The claim further recites the limitation “causing a user interface screen including a transfer notification message of the piece of the received FAX data to be displayed in a talk room provided in the chat service being used by the user terminal”.
However, it is not clear what it is that is “to be displayed in a talk room”, the UI screen, the notification message, the received FAX data. Appropriate correction is required. The examiner suggests adding commas to remove ambiguity from the limitation.
There is insufficient antecedent basis for “the transferred FAX data”, in line 14.
There is insufficient antecedent basis for “the user”, in line 14.
As to claims 10 and 11, the claims are also rejected under 112(b) for the same reason, when applicable, of claim 1 above.
As to the claim(s) that are dependent on claim(s) 1, 10 or 11, the dependent claim(s) are also rejected under 112(b) for the same reason of their base claim(s).
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, 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.
Claim(s) 1, 4-6 and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (Pub. No.: US 20230059572 A1) in view of Kato et al. (Pub. No.: US 20160316075 A1).
As to claim 1, Yamamoto teaches an information processing system including a server that provides a chat service (fig. 1, 70), a user terminal that uses the chat service (fig. 1, 50), and a data transfer apparatus capable of communicating with the server (fig. 1, 30), the data transfer apparatus comprising:
one or more memories storing instructions (fig. 3, 32); and
one or more processors executing the instructions to perform: transferring a piece of received FAX(facsimile) data to an external device (paragraphs [0054], [0057], i.e. The image communication apparatus posts/transfers the received facsimile document to the group chat provision server) , and the server comprising:
one or more memories storing instructions (fig. 2, 12); and
one or more processors executing the instructions to perform: causing a user interface screen including a transfer notification message of the piece of the received FAX data to be displayed in a talk room provided in the chat service being used by the user terminal (fig. 9, E1 and W1), user interface screen displayed in the talk room provided in the chat service (fig. 9).
Yamamoto does not explicitly teach user interface for registering an unregistered fax number.
However, in the same field of endeavor (fax data management systems) Kato teaches wherein the user interface screen, in a case where a FAX number of a transmission source of the transferred FAX data is not registered, is configured so that the user can instruct registration of the unregistered FAX number (paragraph [0008], “…manage information including at least the fax number of the received fax data as unregistered address information, a display unit configured to display the unregistered address information and an image corresponding to the received fax data of which the fax number is not registered in the address book data …”), and
wherein the one or more processors of the data transfer apparatus further execute the instructions to perform registering the unregistered FAX number based on instructions from the user via the user interface (paragraph [0008], “…a registration unit configured to register a fax number selected from the unregistered address information in the address book data, the registered fax number being associated with a name of the source of transmission”, and fig. 19).
Based on Yamamoto in view of Kato, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate user interface for registering an unregistered fax number (taught by Kato) with the user interface for receiving fax documents (taught by Yamamoto) in order to allow the user to add new fax numbers so that the contacts of associated fax numbers will be identified in subsequent receptions.
As to claim 4, Yamamoto teaches the one or more processors of the data transfer apparatus further execute the instructions to perform: providing, in a case where the FAX number indicating the source of transmission of the piece of the received FAX data is managed, contents for the server to give the notification indicating that the transfer has been performed in the talk room corresponding to the FAX number (Fig. 9, E1; i.e. message data of E1) for the server (i.e. group chat provision server) to give the notification indicating that the transfer (i.e. file has been posted) has been performed in the talk room corresponding to the FAX number (Yamamoto: Fig. 6; [0067-0068]; [0054]; [0057]).
As to claim 5, Yamamoto teaches wherein in the contents, information identifying the user managed as a target to be mentioned is included (i.e. message data of E1) information (“Mr. A”) identifying the user managed as a target to be mentioned is included (Yamamoto: Fig. 9).
As to claim 6, Yamamoto teaches wherein in a case where the talk room in the chat service and the FAX number on the source of transmission are managed in association with each other, the target to be managed is updated based on instructions from a user mentioned in the notification in the chat service (fig. 10).
As to claim 10, the limitations of the claim are substantially similar to claim 1. Please refer to claim 1 above.
As to claim 11, the limitations of the claim are substantially similar to claim 1. Please refer to claim 1 above.
As to claim 12, Yamamoto teaches wherein the talk room in which the user interface screen is displayed in a case where the FAX number of the transmission source of the transferred FAX data is not registered, is a talk room where the users mentioned are not limited (paragraph [0069]).
As to claim 13, Kato further teaches wherein the user interface screen in a case where the FAX number of the transmission source of the transferred FAX data is not registered includes a button that allows the user to navigate to a sub-screen for configuring settings related to registering the unregistered fax number, wherein when the user presses the button, the sub-screen is displayed within the chat room (figs. 18 and 19). The limitations of claim 13 are rejected in view of the analysis of claim 1 above, and the rationale to combine, as discussed in claim 1, applies here as well.
As to claim 14, Yamamoto teaches user via the user interface screen displayed in the talk room provided in the chat service, registering FAX numbers of sources of transmission of pieces of the received FAX data, specified talk rooms where notifications related to transfer of the pieces of the received FAX data are given, and pieces of user identification information on a user to be mentioned in the notifications, in association with each other (paragraph [0039]).
Yamamoto does not explicitly teach user interface for registering an unregistered fax number.
However, in the same field of endeavor (fax data management systems) Kato teaches wherein the one or more processors of the data transfer apparatus further execute the instructions to perform, based on instructions from the user via the user interface screen, registering FAX numbers of sources of transmission of pieces of the received FAX data, related to transfer of the pieces of the received FAX data are given, and pieces of user identification information on a user, in association with each other (paragraph [0008], “…manage information including at least the fax number of the received fax data as unregistered address information, a display unit configured to display the unregistered address information and an image corresponding to the received fax data of which the fax number is not registered in the address book data …”).
Based on Yamamoto in view of Kato, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate user interface for registering an unregistered fax number (taught by Kato) with the user interface for receiving fax documents (taught by Yamamoto) in order to allow the user to add new fax numbers so that the contacts of associated fax numbers will be identified in subsequent receptions.
Claim(s) 2 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (Pub. No.: US 20230059572 A1) in view of Kato et al. (Pub. No.: US 20160316075 A1) and further in view of Tamura (Pub. No.: US 20160316093 A1).
As to claim 2, Yamamoto in view of Kato does not explicitly teach using fax numbers as file or folder names.
However, in the same field of endeavor (fax data management systems) Tamura teaches FAX numbers on the sources of transmission of the pieces of the received FAX data are used as file names or folder paths of the pieces of the received FAX data in a case where the transfer is performed (paragraph [0062]).
Based on Yamamoto in view of Kato and further in view of Tamura, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate using fax numbers as file or folder names (taught by Tamura) with user interface for registering an unregistered fax number (taught by Kato) with the user interface for receiving fax documents (taught by Yamamoto) in order to allow the user to add new fax numbers so that the contacts of associated fax numbers will be identified in subsequent receptions and in order to provide a recognizable file name to share.
As to claim 7, Yamamoto in view of Kato does not explicitly teach managing source fax numbers as spam according to user instructions.
However, in the same field of endeavor (fax data management systems) Tamura teaches managing the FAX numbers on the sources of transmission of the pieces of the received FAX data as spam addresses based on instructions from the user (paragraph [0074] and fig. 13, i.e. junk fax numbers).
Based on Yamamoto in view of Kato and further in view of Tamura, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate managing source fax numbers as spam according to user instructions (taught by Tamura) with user interface for registering an unregistered fax number (taught by Kato) with the user interface for receiving fax documents (taught by Yamamoto) in order to allow the user to add new fax numbers so that the contacts of associated fax numbers will be identified in subsequent receptions and in order to make sure that fax files that are junk are not sent to the talk room.
As to claim 8, Tamura further teaches wherein in a case where a piece of the received FAX data is data whose source of transmission is a FAX number managed as a spam address, the providing is not performed (paragraph [0090], i.e. If the fax number is listed in the junk fax list then the fax is not printed. Thereby not providing the user with notification that the fax has arrived). The limitations of claim 8 are rejected in view of the analysis of claim 7 above, and the rationale to combine, as discussed in claim 7, applies here as well.
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 ABDULKADER M ALRIYASHI whose telephone number is (313)446-6551. The examiner can normally be reached Monday - Friday, 8AM - 5PM Alt, Friday, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOON HWANG can be reached at (571)272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Abdulkader M Alriyashi/ Primary Examiner, Art Unit 2447 9/29/2026
