DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This office action is responsive to Applicant’s Arguments/Remarks Made in an Amendment received on 06/04/2026.
Claim Interpretation
3. It is noted that the claims have been amended to recite specific hardware to perform the claimed operations. Thus, the present claimed arrangement is not interpreted under 35 USC 112(f).
Status of Claims
4. Claims 1-14 are pending in this application.
Claims 1-9 and 11-14 are currently amended.
Response to Arguments
5. Regarding Applicant’s Argument (pages 7-9):
Applicant’s arguments with respect to claims 1-14, have been fully considered and are not persuasive.
Applicant argues that Yoshida stores setting information only as a job history or on a per-application/per-job basis and does not store setting contents in units of functions. This argument is not persuasive. Yoshida expressly identifies print, copy, facsimile, and e-mail as functions executable by respective applications. (Yoshida: ¶ [0025]). Yoshida further states that the first registration unit registers setting data in association with the application that executes. (Yoshida: ¶ [0008]). Thus, Yoshida’s per-application storage is per-function storage because the applications correspond to the disclosed functions. The claim does not require a different form of separation, a particular memory allocation, or a database structure beyond storage for each function separately from the job.
Applicant’s added language regarding a job being a combination of settings does not distinguish from Yoshida. Yoshida’s disclosed example job is configured by a combination of settings; e.g., copy count, color, one-sided printing, and 4-in-1 processing (Yoshida: ¶¶ [0062-0063]). Likewise, the fact that registration occurs when a job completes does not mean that Yoshida stores only a single undivided job record. Yoshida registers the setting data in association with the executing application (Yoshida: ¶¶ [0008; 0069-0073]).
Applicant further argues that Nakanishi, Inoue, and Shigetomi do not cure the asserted deficiency of Yoshida. The argument is not persuasive because Yoshida itself discloses the amended function/application-associated storage limitations. The secondary references are relied upon for the particular additional limitations identified in the rejections: Nakanishi for user-controlled organization and incompatibility/unavailable-option display control; Inoue for recency-based display placement; and Shigetomi for a communicating terminal that stores and displays function-setting information.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
8. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
9. Claims 1, 2, 4, 8 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida (US 2018/0191920 A1).
Regarding Claim 1:
Yoshida discloses an information processing device (Yoshida: Fig. 1 ‘MFP 100’; ¶¶ [0025-0027]), comprising:
one or more storages (Yoshida: Fig. 1 ‘HDD 14’) that store setting contents of one or more functions included in a job (Yoshida discloses that “specific functions executable by applications include printing, copying, facsimile transmission, and an e-mail transmission”; (Yoshida: ¶ [0025]). Yoshida further discloses HDD 14 for storing document data and setting data associated with each application in table format (Yoshida: Fig. 1; ¶ [0028]; Figs. 12A-12E); and
one or more controllers (Yoshida: Fig. 1 ‘CPU 10’) that store the setting contents, in the one or more storages, in units of functions, (Yoshida discloses Fig. 1 CPU 10 and a first registration unit that automatically registers first setting data per application upon execution of that application. (Yoshida: Figs. 8-10; ¶¶ [0008; 0026; 0069-0073]; An application in Yoshida is the software implementation of a respective print, copy, facsimile, or e-mail function. Thus, the setting data is maintained in association with the respective function/application.),
wherein:
the job is defined as a combination of the setting contents of the one or more functions (Yoshida’s example job includes settings such as number of copies, color copy, one-sided printing, and 4-in-1 processing. (Yoshida, ¶¶ [0062-0063]). These settings collectively define the processing performed for the job. Thus, Yoshida’s job is a combination of settings for the function or functions used to perform that job.), and
the setting contents are stored for each function separately from the job (The added recitation that the setting contents are stored for each function separately from the job is met because Yoshida stores setting data in association with the executing application, not merely as an undifferentiated job-history record. (Yoshida, ¶¶ [0008; 0028; 0069-0073], Figs. 12A-12E). The subsequently displayed recall buttons are also associated with the respective applications. (Yoshida: ¶¶ [0038-0042; 0055-0057]). The fact that the setting data originates when a job is completed does not negate storage in association with the application/function.
Accordingly, Yoshida discloses the limitations of claim 1.
Regarding Claim 2:
Yoshida further discloses the information processing device according to claim 1, wherein the one or more controllers further store the setting contents, in the one or more storages, in units of jobs (Yoshida discloses that when a job is completed, job completion processing registers setting data associated with that executed job in HDD 14. “when the copy application 402 completes job execution” and at that time the recall portal 401 stores “setting data 1018” associated with that job into HDD 14 (Yoshida: ¶¶ [0069-0073]; Fig. 8 and Fig. 10 flowchart and Fig. 12D (setting data 1018); Therefore, Yoshida stores setting contents in units of jobs.).
Accordingly, Yoshida discloses the limitations of claim 2.
Regarding Claim 4:
Yoshida further discloses the information processing device according to claim 1, further comprising:
a display that displays the setting contents stored in the one or more storages in units of functions (Yoshida discloses a display unit 21 (Fig. 2) and a recall portal screen 300 (Fig. 3) with a fixed setting area 301, and a recall setting area 302, displaying buttons 308-310 for automatically registered settings associated with respective applications, which reads on the claimed ‘storages in units of functions’ (Yoshida: Fig. 3; [0038-0042])); and
a touch panel that accepts (Yoshida also discloses input unit 22, including a touch panel, that receives a user selection of a displayed button (Yoshida: Fig. 1; ¶ [0035])), or operation buttons that accept, operation input to select one or more of the setting contents among the setting contents displayed on the display in units of functions (Yoshida discloses that when the user presses the button, the corresponding setting data is recalled, the relevant application is selected, and the setting data is set. (Yoshida: ¶¶ [0055-0057]). Yoshida’s touch panel therefore meets the amended touch-panel/operation-button limitation.).
wherein the one or more controllers execute a new job including the one or more functions of the selected one or more setting contents (Yoshida discloses ‘Example of a New Job’ wherein the job setting recalls a setting of 3 copies, color copy, one-sided printing and 4 in 1 processing for execution of the corresponding job (¶¶ [0062-0063]; Figs. 6-12E)).
Accordingly, Yoshida discloses the limitations of claim 4.
Regarding Claim 8:
Yoshida further discloses the information processing device according to claim 1, wherein, in a cases that the job is executed, the setting contents of the one or more functions included in the job are automatically stored in the one or more storages in units of functions (Yoshida explicitly teaches “a first registration unit configured to, when executing any one of the plurality of applications, automatically register first setting data set for the any one of the plurality of applications in a storage unit in association with the application” (¶ [0008]). This is an automatic registration triggered by job execution, in association with the executing application (function) (Yoshida: ¶¶ [0069-0073]; Figs. 8-10 flowcharts)).
Accordingly, Yoshida discloses the limitations of claim 8.
Regarding Claim 14: (drawn to a method)
The proposed rejection of device claim 1, over Yoshida is similarly cited to reject the steps of the method of claim 14 because these steps occur in the operation of the device as discussed above. Thus, the arguments similar to that presented above for claim 1 are equally applicable to claim 14.
Claim Rejections - 35 USC § 103
10. 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.
11. 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.
12. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
13. 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.
14. Claims 3, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US 2018/0191920 A1) in view of Nakanishi (US 8,189,209).
Regarding Claim 3:
Yoshida discloses the information processing device according to claim 2
Yoshida teaches two distinct registration modes: automatic first registration per application during execution (first registration unit) and manual second registration “according to a registration instruction from a user” (‘second registration unit’ (Yoshida ¶¶[0007-0008; 0025; 0057-0061]; Figs. 7A-7B; ‘fixed setting registration screens 501, 508’). Yoshida does not teach letting the user choose between function level vs. job level storage units),
but does not expressly disclose wherein the one or more controllers determine whether the setting contents are to be stored in the one or more storages as units of functions or jobs based on an operation input by a user.
Nakanishi discloses wherein the one or more controllers determine whether the setting contents are to be stored in the one or more storages as units of functions or jobs based on an operation input by a user (Nakanishi discloses an image forming apparatus with a setting section and a setting display section that present various function setting screens, where the user actively configures combinations of function (e.g., cover sheet vs. combined printing) (Col. 3, line 63- Col. 4, line 27; Figs. 4-7). Nakanishi relies on user input to define which function’s setting is primary and which is subordinate when resolving incompatibilities (Col. 4, line 33 – Col. 6, line 24).
Yoshida in view of Nakanishi are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to extend Yoshida’s existing user instructed registration (Yoshida: ‘second registration unit’; ¶[0008]) so that user input also determines whether registration occurs as a per function templates (application level) or as full job presets, in view of Nakanishi’s teaching of user driven control of which function’s settings govern in a combination. The suggestion/motivation for doing so is to give users flexible control over how settings are organized and reused. Therefore, it would have been obvious to combine Yoshida with Nakanishi to obtain the invention as specified in claim 3.
Regarding Claim 5:
Yoshida further discloses the information processing device according to claim 1, further comprising:
a display that displays the setting contents stored in the one or more storages in units of functions (Yoshida discloses a display unit 21 (Fig. 2) and a recall portal screen 300 (Fig. 3) with a fixed setting area 301, and a recall setting area 302, displaying buttons 308-310 for automatically registered settings associated with particular applications which reads on the claimed ‘in units of functions’ (Yoshida: [0038-0042])); and
a touch panel that accepts, or operation buttons that accept, operation input to select one or more of the setting contents among the setting contents displayed on the display in units of functions (Yoshida discloses input unit 22 (Fig. 1 such as a touch panel; [0035]) wherein when a button displayed is pressed, data is recalled according to the button and the relevant application and setting data is set (¶¶ [0055-0057])).
Yoshida does not expressly disclose wherein, in a case that one or more of the setting contents displayed on the display in units of functions are selected, the one or more controllers hide the setting contents related to the one or more functions of the selected one or more setting contents, on the display.
Nakanishi discloses wherein, in a case that one or more of the setting contents displayed on the display in units of functions are selected, the one or more controllers hide the setting contents related to the one or more functions of the selected one or more setting contents, on the display (Nakanishi discloses a determination section that determines whether a combination of options for first and second functions is incompatible, and a change section that changes the display form (e.g., grays out) of options of the first function when incompatibility is detected (Nakanishi: Col. 2, line 61 – Col. 3, line 13; Col. 5, lines 5-25; Figs. 4-7; grayed out options are effectively hidden from selection. In the context of a selectable user interface, suppressing an option from selection by graying it out or otherwise changing its display form is a form of hiding/suppressing the option from available user selection.).
Yoshida in view of Nakanishi are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Nakanishi’s incompatible option display control into Yoshida’s recall portal UI, such that upon selection of a stored function setting, related function setting options are removed or suppressed from the display.
The suggestion/motivation for doing so is to reduce confusion and prevent redundant selections. Therefore, it would have been obvious to combine Yoshida with Nakanishi to obtain the invention as specified in claim 5.
Regarding Claim 6:
Yoshida further discloses the information processing device according to claim 1, further comprising:
a display that displays the setting contents stored in the one or more storages in units of functions (Yoshida discloses a display unit 21 (Fig. 2) and a recall portal screen 300 (Fig. 3) with a fixed setting area 301, and a recall setting area 302, displaying buttons 308-310 for automatically registered settings associated with particular applications which reads on the claimed ‘in units of functions’ (Yoshida: [0038-0042])); and
a touch panel that accepts, or operation buttons that accept, operation input to select one or more of the setting contents among the setting contents displayed on the display in units of functions (Yoshida discloses input unit 22 (Fig. 1 such as a touch panel; [0035]) wherein when a button displayed is pressed, data is recalled according to the button and the relevant application and setting data is set (¶¶ [0055-0057])),
Yoshida does not expressly disclose wherein the one or more controllers hide the setting contents related to the one or more functions not executable or prohibited from being executed, on the display.
Nakanishi discloses wherein the one or more controllers hide the setting contents related to the one or more functions not executable or prohibited from being executed, on the display (Nakanishi teaches an incompatible option display section that shows options that are incompatible (non-executable) in a changed display form to indicate that they cannot be selected (Nakanishi: Col. 2, line 61 – Col. 3, line 13; Col. 5, lines 5-25)).
Yoshida in view of Nakanishi are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to hide the setting contents related to the one or more functions not executable or prohibited from being executed, on the display.
The suggestion/motivation for doing so is to avoid user error and invalid configurations by hiding or disabling non-executable options. Therefore, it would have been obvious to combine Yoshida with Nakanishi to obtain the invention as specified in claim 6.
Regarding Claim 7:
Yoshida further discloses the information processing device according to claim 1, further comprising:
a display that displays the setting contents stored in the one or more storages in units of functions (Yoshida discloses a display unit 21 (Fig. 2) and a recall portal screen 300 (Fig. 3) with a fixed setting area 301, and a recall setting area 302, displaying buttons 308-310 for automatically registered settings associated with particular applications which reads on the claimed ‘in units of functions’ (Yoshida: [0038-0042])); and
a touch panel that accepts, or operation buttons that accept, operation input to select one or more of the setting contents among the setting contents displayed on the display in units of functions (Yoshida discloses input unit 22 (Fig. 1 such as a touch panel; [0035]) wherein when a button displayed is pressed, data is recalled according to the button and the relevant application and setting data is set (¶¶ [0055-0057])),
Yoshida does not expressly disclose wherein, in a case that one or more of the setting contents displayed on the display in units of functions are selected, the one or more controllers hide the setting contents that cannot be combined with the selected one or more setting contents, on the display.
Nakanishi discloses wherein, in a case that one or more of the setting contents displayed on the display in units of functions are selected, the one or more controllers hide the setting contents that cannot be combined with the selected one or more setting contents, on the display (Nakanishi directly teaches combination based incompatibility: the determination sections checks combinations of first function and second function options, and when a combination is incompatible, the change section alters the display of the responsible option, and the “incompatible option display section” presents that option on the second function screen for correction (Nakanishi: Col. 3, line 52 – Col. 4, line 5; Col. 5, lines 5-35; Figs. 4-7).
Yoshida in view of Nakanishi are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose wherein, in a case that one or more of the setting contents displayed on the display in units of functions are selected, the one or more controllers hide the setting contents that cannot be combined with the selected one or more setting contents, on the display.
The suggestion/motivation for doing so is to avoid user error and invalid configurations by hiding or disabling non-executable options. Therefore, it would have been obvious to combine Yoshida with Nakanishi to obtain the invention as specified in claim 7.
15. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US 2018/0191920 A1) in view of Inoue (US 10,545,709 B2).
Regarding Claim 11:
Yoshida further discloses the information processing device according to claim 1, further comprising:
a display that displays the setting contents stored in the one or more storages in units of functions Yoshida discloses a display unit 21 (Fig. 2) and a recall portal screen 300 (Fig. 3) with a fixed setting area 301, and a recall setting area 302, displaying buttons 308-310 for automatically registered settings associated with particular applications which reads on the claimed ‘in units of functions’ (Yoshida: [0038-0042])),
Yoshida does not expressly disclose wherein the one or more controllers cause setting contents more recently stored in the one or more storages to be displayed closer to a predetermined position on the display.
Inoue discloses wherein the one or more controllers cause setting contents more recently stored in the one or more storages to be displayed closer to a predetermined position on the display (Inoue discloses an image processing apparatus that stores setting histories of jobs and displays an “integrated history 509” on the home screen (Figs. 5A-5H). The histories are displayed “in reverse chronological order of an execution date and time of the jobs,” i.e., the most recent history appears at the top of the list (the predetermined position) (Fig. 12 step S1208)).
Yoshida in view of Inoue are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose Inoue’s reverse chronological ordering to Yoshida’s display of stored settings so that the most recently stored setting contents appear closest to a fixed anchor position (top of list).
The suggestion/motivation for doing so is to improve quick access to frequently used recent configurations. Therefore, it would have been obvious to combine Yoshida with Inoue to obtain the invention as specified in claim 11.
16. Claim 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US 2018/0191920 A1) in view of Shigetomi (US 9,203,985 B2).
Regarding Claim 12:
Yoshida discloses an information processing system comprising:
an information processing device (Yoshida: Fig. 1 ‘MFP 100’; ¶¶ [0025-0027]) that executes a job; and
(Yoshida discloses an information processing device that executes jobs and stores function/application-associated setting data, including the amended relationship between function settings and the job; (Yoshida, ¶¶ [0008; 0025-0028; 00620063; 0069-0073]).
Yoshida does not expressly disclose
Shigetomi discloses Shigetomi Fig. 1 discloses a mobile terminal device 9 capable of communicating with multifunction machines 1a-1c. Shigetomi Fig. 7 discloses first function setting item information F1 associating setting item information J1-J7 and setting content information K1-K7. The MFP transmits second function setting information (portions of F1) to the mobile terminal device and the mobile terminal device stores and displays that information (Shigetomi: Col. 3, line 39 – Col. 4, line 32; Col. 13, lines 1-24; Figs. 11-16)).
Yoshida in view of Shigetomi are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose
Therefore, it would have been obvious to combine Yoshida with Shigetomi to obtain the invention as specified in claim 12.
Regarding Claim 13:
The proposed combination of Yoshida in view of Shigetomi further discloses the information processing system according to claim 12, wherein, the terminal device displays the setting contents stored in units of functions,
Yoshida discloses a display unit 21 (Fig. 2) and a recall portal screen 300 (Fig. 3) with a fixed setting area 301, and a recall setting area 302, displaying buttons 308-310 for automatically registered settings associated with particular applications which reads on the claimed ‘in units of functions’ (Yoshida: [0038-0042]).
Shigetomi teaches that the terminal stores and displays function-setting information received from the multifunction machine. (Shigetomi, col. 3, l. 39-col. 4, l. 32; col. 13, ll. 1-24; Figs. 7 and 11-16).
and accepts operation input to select one or more of the setting contents among the setting contents displayed in units of functions, and
Yoshida discloses input unit 22 (Fig. 1 such as a touch panel; [0035]) wherein when a button displayed is pressed, data is recalled according to the button and the relevant application and setting data is set (¶¶ [0055-0057]).
the information processing device executes a new job including one or more functions of the one or more setting contents selected at the terminal device.
Yoshida discloses ‘Example of a New Job’ wherein the job setting is a setting of 3 copies, color copy, one-sided printing and 4 in 1 (¶¶0062-0063]; Figs. 6-12E).
Shigetomi Fig. 1 discloses a mobile terminal device 9 capable of communicating with multifunction machines 1a-1c. Shigetomi Fig. 7 discloses first function setting item information F1 associating setting item information J1-J7 and setting content information K1-K7. The mMFP transmits second function setting information (portions of F1) to the mobile terminal device and the mobile terminal device stores and displays that information (Shigetomi: Col. 3, line 39 – Col. 4, line 32; Col. 13, lines 1-24; Figs. 11-16).
Yoshida in view of Shigetomi are combinable because they are from the same field of endeavor of image processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose a terminal device that is connected to the information processing device to be able to communicate information therewith. The suggestion/motivation for doing so is to improve flexibility and user convenience by using a mobile device to control the print job in the printer. Therefore, it would have been obvious to combine Yoshida with Shigetomi to obtain the invention as specified in claim 13.
Allowable Subject Matter
17. Claims 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
18. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 9:
None of the prior art cited disclose or suggest the information processing device according to claim 8, wherein, in a case that a portion of the setting contents of the one or more functions included in the job is already stored in the one or more storages, the portion of the setting contents is not newly stored in the one or more storages in units of functions, other setting contents other than the portion of the setting contents among the setting contents of the one or more functions included in the job are automatically stored in the one or more storages in units of functions, and the portion of the setting contents is associated with the other setting contents in the one or more storages.
Regarding Claim 10:
None of the prior art cited disclose or suggest the information processing device according to claim 9, further comprising: a display that displays the setting contents stored in the one or more storages in units of functions, wherein the one or more controllers cause the display to display the associated setting contents at positions close to each other.
Conclusion
THIS ACTION IS MADE FINAL. 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.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL R MCLEAN whose telephone number is (571)270-1679. The examiner can normally be reached Monday-Thursday, 6AM - 4PM, PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Akwasi M Sarpong can be reached at 571.270.3438. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEIL R MCLEAN/ Primary Examiner, Art Unit 2681
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