Prosecution Insights
Last updated: October 02, 2026
Application No. 18/603,354

COMMUNICATION APPARATUS, METHOD FOR CONTROLLING COMMUNICATION APPARATUS, AND STORAGE MEDIUM

Final Rejection §103§112
Filed
Mar 13, 2024
Priority
Apr 20, 2023 — JP 2023-069399
Examiner
MILIA, MARK R
Art Unit
2681
Tech Center
2600 — Communications
Assignee
Canon Inc.
OA Round
2 (Final)
59%
Grant Probability
Moderate
3-4
OA Rounds
9m
Est. Remaining
81%
With Interview

Examiner Intelligence

Grants 59% of resolved cases
59%
Career Allowance Rate
358 granted / 608 resolved
-3.1% vs TC avg
Strong +22% interview lift
Without
With
+22.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
19 currently pending
Career history
615
Total Applications
across all art units

Statute-Specific Performance

§101
6.4%
-33.6% vs TC avg
§103
61.6%
+21.6% vs TC avg
§102
23.2%
-16.8% vs TC avg
§112
8.4%
-31.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 608 resolved cases

Office Action

§103 §112
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 . Response to Amendment Applicant’s amendment was received on 7/1/26 and has been entered and made of record. Currently, claims 1-5 and 7-20 are pending. Specification Applicant’s amendment to the specification has overcome the objection set forth in the previous Office Action and has therefore been withdrawn. Claim Interpretation Applicant’s amendment to claims 1, 4, 9, and 18 has changed the interpretation of the claims and no longer invokes 35 USC 112(f). Claim Rejections - 35 USC § 112 Applicant’s amendment to claims 1, 4, 9, and 18 has overcome the rejection set forth in the previous Office Action and has therefore been withdrawn. Response to Arguments Applicant’s arguments, see pages 2-4 of the remarks, filed 7/1/26, with respect to the rejection(s) of claim(s) 1, 19, and 20 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claims 1-5, 7, 8, and 13-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Watanabe et al. (US 2021/0037160) in view of Imai (US 2023/0115851). Regarding claims 1, 19, and 20, Watanabe discloses a non-transitory computer readable storage medium storing a program which causes a computer of a communication apparatus capable of operating in a first mode that allows predetermined communication with an external apparatus and operating in a second mode in which the predetermined communication is not executed to execute, a method for controlling a communication apparatus capable of operating in a first mode that allows predetermined communication with an external apparatus and operating in a second mode in which the predetermined communication is not executed, and a communication apparatus capable of operating in a first mode that allows predetermined communication with an external apparatus and operating in a second mode in which the predetermined communication is not executed, comprising: at least one processor configured to control the communication apparatus to: accept from a user an activation operation for activating the communication apparatus (see paras 28 and 59, a user can trigger a connection setting mode by pressing a button); activate the communication apparatus in the first mode or the second mode based on acceptance of the activation operation (see para 22, a connection setting mode is activated after a user presses a button to trigger the connection setting mode, printer 101 then proceeds to connect to an external host terminal 102 via a direct connection, i.e. peer-to-peer manner, or via a wireless LAN access point 103); and automatically execute the predetermined communication without any user operation on the communication apparatus after the activation operation is accepted, based on the activation of the communication apparatus in the first mode, and also configured to not execute the predetermined communication based on the activation of the communication apparatus in the second mode (see paras 41-44, 46, 52-53, 55-56, 97, and 115, after a user triggers the connection setting mode information is automatically exchanged with the host terminal 102 and the printer 101 to establish either a peer-to-peer connection or a connection via an access point) Watanabe does not disclose expressly wherein the external apparatus is at least one of a server that collects log information of the communication apparatus and a server that manages jobs to be executed in the communication apparatus, and wherein the predetermined communication includes at least one of communication for transmitting log information to the server and communication for acquiring a job from the server. Imai discloses wherein the external apparatus is at least one of a server that collects log information of the communication apparatus and a server that manages jobs to be executed in the communication apparatus, and wherein the predetermined communication includes at least one of communication for transmitting log information to the server and communication for acquiring a job from the server (see Figs. 1 and 3 and paras 38 and 71, image forming apparatus 104 can communicate with print server 101 to exchange a print request, apparatus information (identification information) of the own apparatus, operation information (status, counter, log information, etc.), job information (print job, scan job, etc.), and the like). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to combine the external server that collects log information and manages jobs, as described by Imai, with the system of Watanabe. The suggestion/motivation for doing so would have been to offboard processor intensive operations to a server thereby decreasing the need for extra memory in an image forming apparatus, thus saving material and operating costs. Therefore, it would have been obvious to combine Imai with Watanabe to obtain the invention as specified in claims 1, 19, and 20. Regarding claim 2, Watanabe further discloses wherein in a case where the communication apparatus is activated in the first mode and network settings of the communication apparatus allow the predetermined communication to be executed, the predetermined communication is automatically executed based on the activation of the communication apparatus in the first mode, but in a case where the communication apparatus is activated in the first mode and the network settings of the communication apparatus do not allow the predetermined communication to be executed, the predetermined communication is not automatically executed based on the activation of the communication apparatus in the first mode (see paras 85-89, if printer 101 is connected via a wired LAN to an external device than a wireless LAN connection is disabled). Regarding claim 3, Watanabe further discloses wherein the settings that allow the predetermined communication to be executed are settings that allow connection between an external access point located outside the communication apparatus and the communication apparatus (see paras 22, 46-47, and 97, after a user triggers the connection setting mode information is automatically exchanged with the host terminal 102 and the printer 101 to establish a connection via an access point 103). Regarding claim 4, Watanabe further discloses further comprising: display a predetermined confirmation screen based on the activation operation that triggers activation of the communication apparatus in the second mode (see Fig. 5 and paras 28, 59, and 80, operation unit 204 is used to trigger activation and make settings); and control the communication apparatus to operate in the second mode based on the fact that a first operation is performed in a state where the predetermined confirmation screen is displayed, and control the communication apparatus not to operate in the second mode based on the fact that a second operation is performed in a state where the predetermined confirmation screen is displayed (see paras 41-44, 46, 52-53, 55-56, and 97, after a user triggers the connection setting mode information is automatically exchanged with the host terminal 102 and the printer 101 to establish either a peer-to-peer connection or a connection via an access point). Regarding claim 5, Watanabe further discloses wherein the communication apparatus is controlled not to operate in the second mode in a case where the communication apparatus is powered off or in a case where the communication apparatus is activated in the first mode (see paras 22 and 97, after a user triggers the connection setting mode, information is automatically exchanged with the host terminal 102 and the printer 101 to establish either a peer-to-peer connection or a connection via an access point). Regarding claim 7, Watanabe further discloses wherein in a state where the communication apparatus is operating in the second mode, even if an operation for the predetermined communication settings is accepted, the predetermined communication settings are controlled not to be executed, or the operation for the predetermined communication settings is controlled not to be accepted (see para 97, communication via either a peer-to-peer connection or a connection via an access point can be utilized, but not both at the same time). Regarding claim 8, Watanabe further discloses wherein the predetermined communication settings include at least one of communication settings based on the IEEE802.11 series and communication based on a wired LAN (see para 22, communication can be via a wireless LAN or a wired LAN). Regarding claim 13, Watanabe further discloses wherein the first mode is at least one of a mode in which communication with an external apparatus via a network other than the predetermined communication is not executed and a mode in which communication settings based on the IEEE 802.11 series are disabled (see para 87, if printer 101 is connected via a wired LAN to an external device than a wireless LAN connection is disabled). Regarding claim 14, Watanabe further discloses wherein if the activation operation that triggers activation of the communication apparatus in the second mode is accepted, a first setting value set before the activation operation is accepted is saved in the predetermined communication settings, and after the first setting value is saved, the value set in the predetermined communication settings is changed to a second setting value corresponding to a setting for not performing the predetermined communication (see paras 97 and 113-115, an access point can be registered and saved in advance to be used during connection, connection information can be change/updated, such as changing to a peer-to-peer connection instead of an AP connection). Regarding claim 15, Watanabe further discloses wherein if the communication apparatus is activated in the first mode after the first setting value is saved and the operation of the communication apparatus in the second mode is terminated, the value set in the predetermined communication settings is changed to the saved first setting value (see para 97, paras 97 and 113-115, an access point can be registered and saved in advance to be used during connection, connection information can be change/updated, such as changing to a peer-to-peer connection instead of an AP connection). Regarding claim 16, Watanabe further discloses wherein the activation operation that triggers activation of the communication apparatus in the first mode is different from the activation operation that triggers activation of the communication apparatus in the second mode (see para 59, an activation trigger can be from a user pressing a button or from turning on the printer 101). Regarding claim 17, Watanabe further discloses wherein the activation operation that triggers activation of the communication apparatus in the first mode is the same as the activation operation that triggers activation of the communication apparatus in the second mode, whether to activate the communication apparatus in the first mode or the second mode if a user operation for activating the communication apparatus is accepted is controlled based on whether a communication error occurs in the communication apparatus before the user operation for activating the communication apparatus is accepted (see paras 97 and 109-111, a user pressing a button can trigger activation, connection failures can occur). Regarding claim 18, Watanabe further discloses further comprising: a print unit configured to execute printing (see paras 24 ad 30, recording unit 212). Claims 9-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Watanabe and Imai as applied to claim 1 above, and further in view of Regenmorter (US 2008/0127159). Regarding claim 9, Watanabe does not disclose expressly perform communication for updating firmware of the communication apparatus if an operation for updating the firmware of the communication apparatus is performed in a state where the communication apparatus is operating in the second mode; and update the firmware of the communication apparatus based on communication for updating the firmware of the communication apparatus. Regenmorter discloses perform communication for updating firmware of the communication apparatus if an operation for updating the firmware of the communication apparatus is performed in a state where the communication apparatus is operating in the second mode (see paras 31-32, 47-51, and 56, direct wireless communication between an MFP 10 and server 20 can perform updating of printer firmware); and update the firmware of the communication apparatus based on communication for updating the firmware of the communication apparatus (see paras 47-51 and 56, paras 31-32, 47-51, and 56, direct wireless communication between an MFP 10 and server 20 can perform updating of printer firmware). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to combine the firmware update process, as described by Regenmorter, with the system of Watanabe and Imai. The suggestion/motivation for doing so would have been to ensure printer software is up to date and provide for the ability to incorporate new features (Regenmorter para 5). Therefore, it would have been obvious to combine Regenmorter with Watanabe and Imai to obtain the invention as specified in claim 9. Regarding claim 10, Regenmorter further discloses wherein if the operation for updating the firmware of the communication apparatus is performed in a state where the communication apparatus is operating in the first mode, communication is performed to compare a firmware version of the communication apparatus and the latest firmware version, and then, the firmware of the communication apparatus is updated if the firmware version of the communication apparatus is different from the latest firmware version, and if the operation for updating the firmware of the communication apparatus is performed in a state where the communication apparatus is operating in the second mode, the firmware of the communication apparatus is updated without performing communication to compare the firmware version of the communication apparatus and the latest firmware version (see paras 47-51 and 56, paras 31-32, 47-51, and 56, direct wireless communication between a MFP 10 and server 20 can perform updating of printer firmware, version information can be checked to ensure the latest version of the firmware is being installed). Regarding claim 11, Watanabe further discloses if the activation operation that triggers activation of the communication apparatus in the second mode is accepted, a first setting value set before the activation operation is accepted is saved in the predetermined communication standard settings, after the first setting value is saved, the value set in the predetermined communication standard settings is changed to a second setting value corresponding to a setting for not performing the predetermined communication (see paras 113-115, an access point can be registered and saved in advance to be used during connection, connection information can be change/updated, such as changing to a peer-to-peer connection instead of an AP connection), and Regenmorter further discloses, wherein a communication standard used for the predetermined communication and a communication standard used for the communication to update the firmware of the communication apparatus are the same predetermined communication standard (see paras 40-41 and 51, direction access communication is performed between MFP 10 and firmware update server 20), and if the operation for updating the firmware of the communication apparatus is performed in a state where the communication apparatus is operating in the second mode, the saved first setting value is used to perform the communication for updating the firmware of the communication apparatus (see paras 47-51, direct wireless communication between a MFP 10 and server 20 can perform updating of printer firmware, version information can be checked to ensure the latest version of the firmware is being installed). Regarding claim 12, Regenmorter further discloses wherein if the firmware of the communication apparatus is updated by executing the operation for updating the firmware of the communication apparatus in a state where the communication apparatus is operating in the second mode, the communication apparatus is restarted and the communication apparatus is activated in the first mode upon the restart (see paras 60-61, different communication methods can be used for downloading and updating the firmware, such as direct access, email, fax, etc.). 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 MARK R MILIA whose telephone number is (571) 272-7408. The examiner can normally be reached Monday-Friday, 8am-5pm. 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, Akwasi Sarpong can be reached at 571-270-3438. The fax number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MARK R MILIA/ Primary Examiner, Art Unit 2681
Read full office action

Prosecution Timeline

Mar 13, 2024
Application Filed
Mar 03, 2026
Non-Final Rejection mailed — §103, §112
Jul 01, 2026
Response Filed
Sep 21, 2026
Final Rejection mailed — §103, §112 (current)

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Prosecution Projections

3-4
Expected OA Rounds
59%
Grant Probability
81%
With Interview (+22.2%)
3y 4m (~9m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 608 resolved cases by this examiner. Grant probability derived from career allowance rate.

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