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 .
Specification
The disclosure is objected to because of the following informalities: In paragraph 91, reference numerals 921 should be 912 to match Fig. 9B. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an acceptance unit”, “an activation unit”, and “a communication unit” in claim 1, “a display unit” and “a control unit” in claim 4, “a second communication unit” and “an update unit” in claim 9, and “a print unit” in claim 18.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 USC 112(f) or pre-AIA 35 USC 112, sixth paragraph limitation:
Communication unit – paragraph 34, 156
Display unit – paragraph 33, 161
Print unit – paragraph 33, print engine 155
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-18 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.
Claim limitation “an acceptance unit” and “an activation unit” in claim 1, “a display unit” and “a control unit” in claim 4, and “a second communication unit” and “an update unit” in claim 9 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Although there is support for the steps and processing of accepting, activating, displaying, controlling, and updating, there is a lack of support for each of their respective units. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-8 and 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (US 2021/0037160).
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:
an acceptance unit configured 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);
an activation unit configured to 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
a communication unit configured to 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).
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:
a display unit configured to 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
a control unit configured to 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 also configured to 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 6, Watanabe further 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 print jobs to be executed in the communication apparatus (see para 19, the host terminal 102 can be a PC, which is analogous to a server).
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).
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.
Claims 9-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Watanabe as applied to claim 1 above, and further in view of Regenmorter (US 2008/0127159).
Regarding claim 9, Watanabe does not disclose expressly a second communication unit configured to 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 an update unit configured to update the firmware of the communication apparatus based on communication for updating the firmware of the communication apparatus.
Regenmorter discloses a second communication unit configured to 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 a MFP 10 and server 20 can perform updating of printer firmware); and
an update unit configured to 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 a 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.
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 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
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.
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/MARK R MILIA/ Primary Examiner, Art Unit 2681