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 .
Detailed Office Action
1. Claims 1-5 and 7-11 are pending. Claim 1 is independent.
Response to Amendment
2. The amendment filed on July 9, 2026 has overcome the double-patenting rejection of claims 1-20 dated April 10, 2026. However, the amendment has initiated a new grounds of rejection.
An obviousness-type double patenting rejection(s) (non-statutory double-patenting rejection(s)) and a statutory double patenting rejection(s) follow.
Claim Objection
3. Claim 11 is objected to because of the following:
Claim 11, lines 1-3, the language “further comprising” and “wherein” should be amended to read grammatically since the texts on lines 2-3 have been deleted (the same deleted texts exist in amended claim 1, lines 11-12).
Further in claim 11, lines 2-3, since the text “replacing an existing calibration for a selected paper with the set of papers with the new calibration” has been deleted in the amendment July 9, 2026, it is unclear as in whether the term “the paper” in the “wherein the paper ……” clause of line 3 is referring to the basis “a selected paper” of line 11 of claim 1 or to a different “paper” in claim 1.
Non-statutory or Obviousness-Type Double Patenting Rejection
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1, 7, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6/1 of copending Application No. 18/608,040 (reference application, allowed but patent not issued yet). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding amended claim 1 of the instant application, all claim limitations are found in claim 6/1 of the reference application 18/608,040. Specifically, previously, before the amendment filed July 9, 2026, all claims of the instant application and all claims of the reference application were identical, respectively, but now claim 1 of the instant application has been amended in that amendment to include the limitations of claim 6, now canceled, and claim 1 of the reference application has been amended to include the limitations of claim 11, now canceled. Thus, all limitations of claim 1 as amended are included in amended claim 6/1 of the reference application, i.e., in the combination of the limitations of claims 6 and 1 of the reference application.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the method of claim 1 based on the method of claim 6/1 of the reference application.
Regarding claim 7/1, the claim limitation “wherein the first paper includes a spot color adjustment” corresponds to the limitation of claim 6/1 of the reference application (see line 12 of claim 1 of the reference application, i.e., “wherein the paper is associated with a spot color adjustment”).
Claim 11/1 of the instant application and claim 6/1 of the reference application 18/608,040 are virtually identical, noting that the deleted limitation of claim 11 “replacing an existing calibration for a selected paper within the set of papers with the new calibration” already exists in amended base claim 1 (see lines 11-12), which also exists in both claims 6 and 1 of the reference application (see reference application, lines 11-12 of claim 1 and lines 2-3 of claim 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the method of claim 11/1 based on the method of claim 6/1 of the reference application 18/608,040.
6. Claims 2-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6/1 of copending Application No. 18/608,040 (reference application, allowed but patent not issued yet) in view of Chang et al. (US 2023/0071492 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 2/1, the method of claim 6/1 of the reference application 18/608,040 does not include the limitation of claim 2 “wherein updating the set of papers includes replacing the existing calibration for each of the set of papers”. The limitation of claim 2 is taught by Chang et al. (hereinafter referred to as Chang).
Chang discloses a method of managing color printing resources within a printing system, the method comprising, among other steps or features, performing a new calibration using a first paper, and updating a set of papers having the first paper with the new calibration, the set of papers being a set of papers aggregated from a plurality of papers within a paper catalog based on an attribute through a user interface, the first paper being selected from the set of papers and calibrated by an earlier calibration (see para 105+, 0076 and 0078, Chang discloses that "[0105] Thus, the disclosed embodiments work with paper groups within paper catalog 124 to dynamically share these resources to papers within the paper groups. For each primary paper, such as shown in entry 602, with which the print shop has generated calibration data and ICC profiles, the disclosed embodiments dynamically share color printing resources with other papers, such as new entry 618, that have similar attributes or color characteristics to the primary paper, or entry 602. During raster image processing, system 100 will automatically retrieve the calibration data and the ICC profiles required, whether these are from a primary paper itself or, for a member of the paper group, borrowed from the primary paper ……"; also see the additional details in para 106 to 112+; with regard to the claim 2 limitation “wherein the updating the set of papers includes replacing the existing calibration for each of the set of papers”, at para 0076 and 0078+, Chang discloses that "[0076] Step 404 executes by receiving the data, performing a search of a paper catalog 124 using the data for an existing ICC profile that satisfies the customer precision requirement. In particular, at least one search parameter used during the search of the paper catalog depends on a level of the customer precision requirement." and "[0078] Step 406 executes by determining whether paper catalog 124 includes an ICC profile that satisfies the customer precision requirement. When the computing device determines that the paper catalog includes an ICC profile that can be used by the printer requesting the ICC profile to complete the print job at a level that satisfies the customer precision requirement, flowchart 400 proceeds to step 408. Step 408 executes by, responsive to identifying a particular ICC profile that satisfies the customer precision requirement during the search of the paper catalog, transmitting the particular ICC profile to a printing device 104 via a network 106. The printing device is configured to use the particular ICC profile to complete a print job on the paper type according to the customer precision requirement").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the teaching of Chang to include, in the updating of the set of papers of the method of claim 6/1 of the reference application, replacing the existing calibration for each of the set of papers, in order to update the calibration.
Regarding claim 3/1, the method of claim 6/1 of the reference application 18/608,040 does not include the limitations of claim 3 “determining ……”, “selecting ……”, and “updating ……”. The limitations of claim 3 are taught by Chang.
Chang discloses a method of managing color printing resources within a printing system, the method comprising, among other steps or features, performing a new calibration using a first paper, and updating a set of papers having the first paper with the new calibration, the set of papers being a set of papers aggregated from a plurality of papers within a paper catalog based on an attribute through a user interface, the first paper being selected from the set of papers and calibrated by an earlier calibration (see para 105+, 0076 and 0078, Chang discloses that "[0105] Thus, the disclosed embodiments work with paper groups within paper catalog 124 to dynamically share these resources to papers within the paper groups. For each primary paper, such as shown in entry 602, with which the print shop has generated calibration data and ICC profiles, the disclosed embodiments dynamically share color printing resources with other papers, such as new entry 618, that have similar attributes or color characteristics to the primary paper, or entry 602. During raster image processing, system 100 will automatically retrieve the calibration data and the ICC profiles required, whether these are from a primary paper itself or, for a member of the paper group, borrowed from the primary paper ……"; also see the additional details in para 106 to 112+).
With regard to the claim 3 limitations “determining ……”, “selecting ……”, and “updating ……”, Chang further discloses
determining the first paper is not available for the new calibration (see Fig. 4, steps 406 and 410, and para 0084, Chang discloses that "flowchart 400 proceeds to step 410. Step 410 executes by determining that the paper catalog lacks the ICC profile, transmitting an indication that no existing ICC profile is available to satisfy the customer precision requirement to the printing device via the network. Providing an indication may alert that a new ICC profile may need to be created to complete the print job.");
selecting a second paper of the set of papers for the new calibration (see para
0085, Chang discloses that [0085] In some examples, flowchart 400 may further involve
receiving additional data indicating a second customer precision requirement. In
particular, the second customer precision requirement is different from the original
customer precision requirement"); and
updating the set of papers having the first paper and the second paper with the
new calibration (see para 0085, Chang discloses that "[0085] In some examples, flowchart 400 may further involve receiving additional data indicating a second customer precision requirement. In particular, the second customer precision requirement is different from the original customer precision requirement. The customer may adjust the precision expectation in response to learning that an existing ICC profile is not available for the printing device to use to complete the print job according to the original precision expectation. As such, responsive to receiving the additional data, the computing device may perform a second search of the paper catalog using the additional data for an existing ICC profile that satisfies the second customer precision requirement. In some instances, the computing device may transmit the given ICC profile to the printing device via the network responsive to identifying a given ICC profile that satisfies the second customer precision requirement during the second search of the paper catalog. The printing device may be configured to use the given ICC profile to complete the print job on the paper type according to the second customer precision requirement ……”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Chang to include in the method of claim 6/1 of the reference application the steps/features claimed in claim 3 in order to provide flexibility in a case the first paper is not available for the new calibration.
Regarding claim 5/1, the method of claim 6/1 of the reference application 18/608,040 does not include the limitations of claim 5 “determining ……”, and “updating ……”. The limitations of claim 5 are taught by Chang.
Chang discloses a method of managing color printing resources within a printing system, the method comprising, among other steps or features, performing a new calibration using a first paper, and updating a set of papers having the first paper with the new calibration, the set of papers being a set of papers aggregated from a plurality of papers within a paper catalog based on an attribute through a user interface, the first paper being selected from the set of papers and calibrated by an earlier calibration (see para 105+, 0076 and 0078, Chang discloses that "[0105] Thus, the disclosed embodiments work with paper groups within paper catalog 124 to dynamically share these resources to papers within the paper groups. For each primary paper, such as shown in entry 602, with which the print shop has generated calibration data and ICC profiles, the disclosed embodiments dynamically share color printing resources with other papers, such as new entry 618, that have similar attributes or color characteristics to the primary paper, or entry 602. During raster image processing, system 100 will automatically retrieve the calibration data and the ICC profiles required, whether these are from a primary paper itself or, for a member of the paper group, borrowed from the primary paper ……"; also see the additional details in para 106 to 112+).
With regard to the claim 5 limitations “determining ……”, “selecting ……”, and “updating ……”, Chang further discloses
determining that a new calibration failed; and updating a status for an ICC profile associated with a selected paper of the set of papers that the ICC profile is invalid (see para 0032+, Chang discloses that "[0032] In other cases, the computing device may fail to identify an existing ICC profile that can be used by the printing device model for the paper type and satisfy the customer precision requirement. In such a situation, the computing device may transmit an indication to the printing device (or corresponding computing device) that indicates the paper catalog does not include an existing ICC profile for that printing device model that can complete the printing device job at a precision level that satisfies the customer precision requirement ").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Chang to include in the method of claim 6/1 of the reference application the steps/features claimed in claim 5 in order to determine that a new calibration failed and in such a case, provide update information on the status for the ICC profile associated with the selected paper.
7. Claims 8-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6/1 of copending Application No. 18/608,040 (reference application, allowed but patent not issued yet) in view of Chang et al. (US 2023/0071492 A1) and Fukusawa (US 2018/0352117 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 8/7/1, claim 7/1 is discussed above. The method of claim 6/1 of the reference application 18/608,040 does not include the limitations of claim 8 “preventing updating a selected paper of the set of papers with the new calibration if the selected paper does not have the spot color adjustment”.
Note “spot color adjustment” and related limitations thereof in claim 6/1 of the reference application (see the last 9 lines of claim 1 of the reference application).
Regarding the claim 8 limitation “spot color adjustment” of the first paper, see Chang, para 0068-0069, etc. (Chang discloses that [0068] For each halftone, the print shop, or printing system 100, capture the desired per-colorant behavior over all shades of that colorant. Behavior, in this instance, relates to color measurement. The record of these colorant behaviors, and information that allows printing device 104 to be adjusted back to such behaviors, are kept in the calibration data. Colorant behaviors may vary linearly or with a curve. The calibration data relates to characteristics of each ink under the selected halftone, which is reliably repeatable ……”).
The teachings of Chang merely lack in explicitly disclosing the aspect relating to “the spot color adjustment”.
However, Fukasawa discloses an analogous invention relating to profile adjustment method and profile adjustment system. More specifically, in Fukasawa, i.e., in Fig. 9, para. 0097, etc., discloses that "[0097] When the profile adjustment process illustrated in FIG. 6 starts, the host device 100 executes the profile and parameter setting process illustrated in FIG. 7-9 (S102). When the profile and parameter setting process starts, the host device 100 displays a UI screen 800 illustrated in FIG. 8 or 9 on the display device 115 (S202 of FIG. 7). The UI screen 800 illustrated in FIG. 8 includes an adjustment target profile selection region 805, a combination designation region 810, a target acceptance region 840, a button 841 of "designate from image", an addition button 842, a deletion button 843, an adjustment range designation field 850, an intent designation field 880, an adjustment execution button 870, a history load
button 881, and a history save button 882. The combination designation region 810 includes input profile selection fields 811 and 812, a spot color selection field 813, an output profile selection field 815, an adjustment data selection field 816, an adjustment target color space selection region 830, and a detailed setting button 860. On the UI screen 800 illustrated in FIG. 9, the combination designation region 810 illustrated in FIG. 8 is changed into the combination designation region 820. The combination designation region 820 includes output profile selection fields 821, 822, and 823, an input profile selection field 825, an adjustment data selection field 826, the adjustment target color space selection region 830, and the detailed setting button 860. The combination designation region 820 illustrated in FIG. 9 includes a plurality of fields (822
and 823) for selecting the second input profile 612."
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of claim 6/1 of the reference application to include the limitation(s) discussed and also taught by Chang and Fukasawa, with aspect(s) relating to spot color adjustment, as the cited prior arts and the claimed invention claim 6/1 of the reference application are at least considered to be analogous arts if not also in the same field of endeavor relating to printing arts. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the claimed invention of claim 6/1 of the reference application by the teachings of Chang and Fukasawa, and to incorporate the limitation(s) discussed and also taught by Fukasawa, thereby "provides a technology for improving convenience of work for adjusting a
profile when a plurality of kinds of color conversion are executed" (see Fukasawa, i.e. para. 0008 and etc.).
Further regarding the claim 8 limitations “further comprising preventing updating a selected paper of the set of papers with the new calibration if the selected paper does not have the spot color adjustment, see Chang, para. 0068. Chang discloses that "[0068] For each halftone, the print shop, or printing system 100, capture the desired per-colorant behavior over all shades of that colorant. Behavior, in this instance, relates to color measurement. The record of these colorant behaviors, and information that allows printing device 104 to be adjusted back to such behaviors, are kept in the calibration data. Colorant behaviors may vary linearly or with a curve. The calibration data relates to characteristics of each ink under the selected halftone, which is reliably repeatable. also, in Fukasawa, i.e. in Fig. 8, para. 0097 disclose the spot color selection field 813 and etc.).
Regarding the claim 9 limitation “further comprising deleting the existing calibration for a selected paper within the set of papers; and deleting a spot color adjustment associated with the existing calibration for the selected paper”, which are not included in claim 6/1 of the reference application, see Fukasawa, i.e., para. 0097. Fukasawa discloses that "[0097] When the profile adjustment process illustrated in FIG. 6 starts, the host device 100 executes the profile and parameter setting process illustrated in FIG. 7 (S102). When the profile and parameter setting process starts, the host device 100 displays a UI screen 800 illustrated in FIG. 8 or 9 on the display device 115 (S202 of FIG. 7). The UI screen 800 illustrated in FIG. 8 includes an adjustment target profile selection region 805, a combination designation region 810, a target acceptance region 840, a button 841 of "designate from image", an addition button 842, a deletion button 843, an adjustment range designation field 850, an intent designation field 880, an adjustment execution button 870, a history load button 881, and a history save button 882. The combination designation region 810 includes input profile selection fields 811 and 812, a spot color selection field 813, an output profile selection field 815, an adjustment data selection field 816, an adjustment target color space selection region 830, and a detailed setting button 860. On the UI screen 800 illustrated in FIG.
9, the combination designation region 810 illustrated in FIG. 8 is changed into the combination designation region 820. The combination designation region 820 includes output profile selection fields 821, 822, and 823, an input profile selection field 825, an adjustment data selection field 826, the adjustment target color space selection region 830, and the detailed setting button 860. The combination designation region 820 illustrated in FIG. 9 includes a plurality of fields (822 and 823) for selecting the second input profile 612.").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Fukasawa and the claim 6/1 invention of the reference application to provide the method claimed in claim 9.
Regarding the claim 10 limitations “further comprising determining that the new calibration failed; and updating a status for a spot color adjustment associated with a selected paper of the set of papers that the spot color adjustment is invalid”, which are not included in claim 6/1 of the reference application, see Chang, i.e., para. 0032. Chang discloses that "[0032] In other cases, the computing device may fail to identify an existing ICC profile that can be used by the printing device model for the paper type and satisfy the customer precision requirement. In such a situation, the computing
device may transmit an indication to the printing device (or corresponding computing device) that indicates the paper catalog does not include an existing ICC profile for that printing device model that can complete the printing device job at a precision level that satisfies the customer precision requirement..."; and further in Fukasawa, i.e., para. 0110 and etc., Fukasawa disclose that "[0110] When the combination designation region 810 illustrated in FIG. 8 is displayed, the host device 100 accepts an operation of selecting a component in the input profile 610 and the spot color 645 stored in the storage device 114 by accepting an operation on any of the selection fields 811, 812, and 813 by the input device ").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of the claimed invention of claim 6/1 of the reference application, Chang, and Fukasawa to provide the method of claim 10.
8. Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6/1 of copending Application No. 18/608,040 (reference application, allowed but patent not issued yet) in view of Morales (US 2022/0094816 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 4/1, the method of claim 6/1 of the reference application 18/608,040 does not include the limitation of claim 4 “deleting the existing calibration for a selected paper of the set of papers, wherein the selected paper is within the paper catalog”. However, the limitations of claim 4 are taught by Morales.
Morales discloses an analogous invention relating to systems and methods that manage information relating to paper media to enhance the quality of printing by printers. The systems and methods efficiently maintain color management profiles for different papers and ensure that the most appropriate (e.g., optimal) color
management profile is employed for color conversion on a specific paper. In particular,
embodiments may employ dynamic management of data stored in paper catalogs of
printing systems. As such, a paper catalog of a printer can effectively associate a paper with a color management profile that provides the best possible color reproduction on that paper (see Morales, the abstract). More specifically, in para 0053+, Morales discloses that "[0053] The modification to the paper catalog 10 may include adding a new record 12, 14 for a new measured paper or a new standard paper to the paper catalog 10. The modification to the paper catalog 10 may include deleting a record 12, 14 from the paper catalog 10. The modification to the paper catalog 10 may include converting a measured paper to a standard paper by removing the respective color management profile 12a from the corresponding record 12. The modification to the paper catalog 10 may include converting a standard paper to a measured paper by adding a color management profile to the corresponding record 14."
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of claim 6/1 of the reference application 18/608,040 to include the features discussed and taught by Morales, with the aspect(s) discussed above, as the cited prior art and the claimed invention of the reference application are at least considered to be analogous (arts) if not also in the same field of endeavor relating to printing art. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of claim 6/1 of the reference application by the teachings of Morales, and to incorporate the features discussed and taught by Morales, thereby "to enhance the quality of printing by printers" (see Morales, para 0001+).
9. 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.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEUKFAN LEE whose telephone number is (571)272-7407. The examiner can normally be reached M-F: 10 a.m. - 6 p.m.
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/CHEUKFAN LEE/Primary Examiner, Art Unit 2682
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