Prosecution Insights
Last updated: April 19, 2026
Application No. 18/614,867

IMAGE FORMING APPARATUS, PROCESSING METHOD, NON-TRANSITORY COMPUTER-READABLE STORAGE MEDIUM STORING PROGRAM, AND SERVER

Non-Final OA §103
Filed
Mar 25, 2024
Examiner
GADALLA, HANY S
Art Unit
2493
Tech Center
2400 — Computer Networks
Assignee
Seiko Epson Corporation
OA Round
1 (Non-Final)
73%
Grant Probability
Favorable
1-2
OA Rounds
2y 10m
To Grant
99%
With Interview

Examiner Intelligence

Grants 73% — above average
73%
Career Allow Rate
128 granted / 175 resolved
+15.1% vs TC avg
Strong +38% interview lift
Without
With
+38.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
19 currently pending
Career history
194
Total Applications
across all art units

Statute-Specific Performance

§101
9.0%
-31.0% vs TC avg
§103
52.8%
+12.8% vs TC avg
§102
14.3%
-25.7% vs TC avg
§112
17.4%
-22.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 175 resolved cases

Office Action

§103
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 ACTION The present office action is responsive to communications received on 03/25/2024. Status of Claims Claims 1-14 are pending. Information Disclosure Statement The information disclosure statement (IDS) submitted on 03/25/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. 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: “communication unit” in claims 1-2, 6-7, 10 and 12-13 the corresponding structure is limited to the description recited in applicant specifications ¶22. 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 § 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claim(s) 1, 3-6, 8 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US 20080158597 A1) hereinafter referred to as Hashimoto in view of Ohara (US 20070234059 A1) hereinafter referred to as Ohara. With respect to claim 1, Hashimoto discloses: An image forming apparatus comprising: a communication unit configured to communicate with a first server that periodically updates a server certificate (Hashimoto ¶135 discloses printer [image forming apparatus] performing the same steps as Hashimoto Fig. 7 to periodically obtain an updated session certificate(s) for the current session from a “Session Management Device [first server]”). and a second server that manages registration information in which an IP address and host name information are associated with each other; (Hashimoto ¶140 “Upon reception of the printer-candidate extraction instruction, the printer selection unit 203 of the server device 2 [second server] compares installation environment information (IP address and subnetmask) stored in the registered-printer [registered hostname information] storage area 223 with the installation environment information (IP address and subnetmask) of the client terminal device 3”. The registered information is illustrated in Hashimoto Fig. 15. Additionally, applicant describes the hostname refers to the name of the image forming apparatus, which is the printer as mapped in this instance, as can be understood from Applicant’s drawings Fig. 2 step S130). and a processor, wherein the processor acquires the server certificate, (Hashimoto Fig. 7 explains the same steps that apply to the printer [image forming apparatus] to obtain the certificate which is equivalent to steps 1003-1004 transmits the host name information and the IP address of the image forming apparatus to the second server via the communication unit, (Hashimoto ¶140 disclose transmitting the printer name, IP address, and subnetmask to the second server as illustrated in Hashimoto Fig. 15). and when receiving a communication request packet from a terminal apparatus that acquires the IP address based on the registration information, performs HTTPS communication with the terminal apparatus using the server certificate. (Hashimoto Fig. 14 illustrates in step 4203 registering the printer in second server which uses the first server certificate in the process as understood from prior paragraphs which is used when receiving print communication from “client terminal device” wherein communication is encrypted (Fig. 12 step 4001 and 4009), ie. Interpreted as “HTTPS”) Hashimoto does not explicitly disclose: server certificate created based on the host name information from the first server via the communication unit, However, Ohara in an analogous art discloses: and a processor, wherein the processor acquires the server certificate created based on the host name information from the first server via the communication unit, (Ohara ¶50 “receiving certificate issue request data that request to issue an electronic certificate from one of the MFPs 10 [image forming apparatus], the management device 30 [server] generates an electronic certificate regarding a public key [host name information] received from the MFP 10, and issues (sends) the generated electronic certificate to the MFP 10 as a requesting source.”) Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hashimoto wherein a processor, wherein the processor acquires the server certificate created based on the host name information from the first server via the communication unit as disclosed by Ohara to generate a certificate specific to the apparatus (see Ohara ¶50). Independent claims 11-13 recite slight change in language but essentially the same matter and therefore rejected based on the same rationale as independent claim 1. With respect to claim 3, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, wherein the host name information includes identification information on the image forming apparatus and a domain name common to a plurality of image forming apparatuses. (Hashimoto ¶52 “the printer management area 121 includes: a printer identifier column 131 [identification information] for storing a printer identifier which identifies a printer; an installation environment information [domain name common to a plurality of image forming apparatuses] column 132 formed, for example, of an IP address column 133 and a subnetmask column 134 for information on environment in which the printer is installed; and an installation location column 135.”). With respect to claim 4, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, wherein the processor performs HTTPS communication with the terminal apparatus by transmitting a response packet including the server certificate to the terminal apparatus. (Ohara ¶53, Fig. 3, “PCs 50 [terminal(s)] evaluates the electronic certificate (server certificate) transmitted by the MFP 10 [apparatus] in the SSL communication [HTTPS] in a widely known manner.” In other words, the apparatus transmits the generated certificate to the terminal over secure communication) With respect to claim 5, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, wherein the processor updates the server certificate at a predetermined timing. (Ohara ¶99 “the valid period information included in the electronic certificate is set such that the electronic certificate will be expired a predetermined period (for example, one year) after the current date and hour.”). With respect to claim 6, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, wherein the processor transmits a request packet regarding whether the server certificate is updated to the first server via the communication unit at a timing when the image forming apparatus is started and the IP address of the image forming apparatus is acquired. (Ohara ¶99 discloses MFP apparatus obtaining updated certificate is interpreted as new device request comprising acquired device IP address and domain name. Additionally, Hashimoto ¶108 discloses the devices reset IP address upon turn off and then turn on). With respect to claim 8, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, wherein when the server certificate is updated, the processor downloads the updated server certificate from the first server to a memory. (As understood from Hashimoto ¶135 the printer performs the same steps for obtaining the certificate and registration as the client terminal therefore in Hashimoto Fig. 7 step 1004 the printer receives and stores the updated server certificate of the session). With respect to claim 10, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, wherein the processor acquires the IP address acquired from a DHCP server when the image forming apparatus is started, and transmits the host name information and the acquired IP address to the second server via the communication unit. (Hashimoto ¶108 teaches that when a terminal is reset or printer installation location is changed, interpreted as having been restarted in a different location, the devices receive a different IP address from the DHCP. Either way the device send their current data as part of the registration. Hashimoto ¶107 explicitly recites “When the IP address assigned to the communication terminal, and the installation environment information and the installation location of the secure printer 4 are changed, the address registration processing of FIG. 9 needs to be performed again.”). Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto in view of Ohara as applied to claims 1, 3-6, 8 and 10-13 above, and further in view of Rantapuska et al. (US 20160028831 A1) hereinafter referred to as Rantapuska. With respect to claim 2, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, Hashimoto in view of Ohara do not explicitly disclose: wherein the processor acquires a wildcard certificate as the server certificate from the first server via the communication unit. However, Rantapuska in an analogous art discloses: wherein the processor acquires a wildcard certificate as the server certificate from the first server via the communication unit. (Rantapuska ¶37 discloses devices receiving “wildcard certificate” from server). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hashimoto and Ohara wherein the processor acquires a wildcard certificate as the server certificate from the first server via the communication unit as disclosed by Rantapuska to allow for subdomain access (see Rantapuska ¶37). Claim(s) 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto in view of Ohara as applied to claims 1, 3-6, 8 and 10-13 above, and further in view of Kakutani (US 20190394051 A1) hereinafter referred to as Kakutani. With respect to claim 7, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, Hashimoto in view of Ohara do not explicitly disclose: wherein the processor transmits a request packet regarding whether the server certificate is updated to the first server via the communication unit at a timing set by a user. However, Kakutani in an analogous art discloses: wherein the processor transmits a request packet regarding whether the server certificate is updated to the first server via the communication unit at a timing set by a user. (Kakutani ¶54 teaches “user can set the updating period of the certificate” which means the system checks with the server for updated certificate based on a timing set by a user). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hashimoto and Ohara wherein the processor transmits a request packet regarding whether the server certificate is updated to the first server via the communication unit at a timing set by a user as disclosed by Kakutani to give user control over timing when a periodic certificate update would be needed (see Kakutani ¶54). With respect to claim 9, Hashimoto in view of Ohara disclose: The image forming apparatus according to claim 1, Hashimoto in view of Ohara do not explicitly disclose: wherein when the server certificate is updated, the processor downloads the updated server certificate from the first server and restart the image forming apparatus. However, Kakutani in an analogous art discloses: wherein when the server certificate is updated, the processor downloads the updated server certificate from the first server and restart the image forming apparatus. (Kakutani ¶83 “In S1907, the key-pair-and-certificate acquisition control unit 305 determines whether reboot is necessary in order to reflect the setting of the certificate that is newly acquired [from the server] after the certificate has been updated. In this embodiment, for each usage of the certificate, it is determined whether reboot [restart] is necessary. If it is determined that reboot is necessary, in S1907, the key-pair-and-certificate acquisition control unit 305 instructs the device control unit 310 to reboot the multifunction peripheral 100 [image forming apparatus] through the communication control unit 303.”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hashimoto and Ohara wherein when the server certificate is updated, the processor downloads the updated server certificate from the first server and restart the image forming apparatus as disclosed by Kakutani to determine if reboot is necessary and ensure a clean boot with the new certificate (see Kakutani ¶83). Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto in view of Ohara as applied to claims 1, 3-6, 8 and 10-13 above, and further in view of Grover et al. (US 20230412594 A1) hereinafter referred to as Grover. With respect to claim 14, Hashimoto in view of Ohara disclose: The server according to claim 13, Hashimoto in view of Ohara do not explicitly disclose: wherein the server processor stores time information related to a timing at which the IP address and the host name information are transmitted from the image forming apparatus, and determines whether to delete the registered registration information based on the stored time information. However, Grover in an analogous art discloses: wherein the server processor stores time information related to a timing at which the IP address and the host name information are transmitted from the image forming apparatus, and determines whether to delete the registered registration information based on the stored time information. (Grover ¶47 and 49 teach a DHCP message comprising an identification data watermark interpreted as hostname and IP address exchanged wherein ¶49 teaches “If the IP Address expires [stored timing]/is reclaimed in step 422, the DHCP server 120 sends a remove [delete] IP address message in step 424 [registered information]. The message of step 422 may be generated locally in the DHCP server 120 (e.g., where the IP address expires). The DHCP server 120 sends a remove IP address message to the firewall 122/router(s) 123 in step 424. The firewall 122/router(s) 123 removes the IP address from the routing tables in step 426.”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hashimoto and Ohara wherein the server processor stores time information related to a timing at which the IP address and the host name information are transmitted from the image forming apparatus, and determines whether to delete the registered registration information based on the stored time information as disclosed by Grover to prevent malicious attacks requesting old IP addresses which are dynamically changing (see Grover ¶2 and 47). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANY S GADALLA whose telephone number is (571)272-2322. The examiner can normally be reached Mon to Fri 8:00AM - 4:00PM. 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, Carl Colin can be reached on (571) 272-3862. The fax phone 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. /HANY S. GADALLA/Primary Examiner, Art Unit 2493
Read full office action

Prosecution Timeline

Mar 25, 2024
Application Filed
Sep 19, 2025
Non-Final Rejection — §103
Dec 22, 2025
Response Filed
Dec 22, 2025
Response after Non-Final Action

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
73%
Grant Probability
99%
With Interview (+38.4%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 175 resolved cases by this examiner. Grant probability derived from career allow rate.

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