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. Claims 1-3, 5-7, 9-16, 18-20, 22-27 are pending in this amended application.
Double Patenting
3. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
4. Claims 1-3, 5-7, 9-16, 18-20, 22-27 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,520,533 B2 (&/or claims 1-20 of U.S. Patent No. 11,989,462).
It is clear that all the elements of instant application independent claims 1, 14, 27 are to be found in patent (U.S. Patent No. 11,520,533 B2) claims 1, 10, 14 as the instant application independent claims 1, 14, 27 fully encompasses the patent claim 1, 10, 14. The difference between the instant application independent claims 1, 14, 27 and the patent (U.S. Patent No. 11,520,533 B2) claims 1, 10, 14 lies in the fact that the patent (U.S. Patent No. 11,520,533 B2) claim includes many more elements and is thus much more specific. Thus, the invention of claims 1, 10, 14 of the patent (U.S. Patent No. 11,520,533 B2) is in effect a “species” of the “generic” invention of the instant application independent claims 1, 14, 27. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant application independent claims 1, 14, 27 are anticipated by claims 1, 10, 14 of the patent (U.S. Patent No. 11,520,533 B2), it is not patentably distinct from claims 1, 10, 14 of the patent (U.S. Patent No. 11,520,533 B2).
The dependent claims 2-3, 5-7, 9-13, 15-16, 18-20, 22-26 of the instant application obviously claim the same subject matter as found in the claims 2-9, 11-13, 15-20 of the parent patent’ 533 and therefore would be rejected based on the claims 2-9, 11-13, 15-20 of the parent patent’ 533.
Allowable Subject Matter
5. Claims 1-3, 5-7, 9-16, 18-20, 22-27 are allowed.
REASONS FOR ALLOWANCE
6. The following is an examiner’s statement of reasons for allowance:
The independent claim 1 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “obtaining capability information regarding a print setting value not being able to be set via a print setting screen of a standard driver installed in the information processing apparatus, the print setting screen being able to receive print settings corresponding to information obtained using communication complying with an Internet Printing Protocol; and causing a display of the information processing apparatus to display an item, the print setting value being able to be set by a user via the item, and the print setting value being not able to be set via the print setting screen of the standard driver”, in combination with all other limitations as claimed in independent claim 1.
The independent claim 14 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “obtaining capability information regarding a print setting value not being able to be set via a print setting screen of a standard driver installed in the information processing apparatus, the print setting screen being able to receive print settings corresponding to information obtained using communication complying with an Internet Printing Protocol; and causing a display of the information processing apparatus to display an item, the print setting value being able to be set by a user via the item, and the print setting value being not able to be set via the print setting screen of the standard driver”, in combination with all other limitations as claimed in independent claim 14.
The independent claim 27 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “obtaining capability information regarding a print setting value not being able to be set via a print setting screen of a standard driver installed in the information processing apparatus, the print setting screen being able to receive print settings corresponding to information obtained using communication complying with an Internet Printing Protocol; and causing a display of the information processing apparatus to display an item, the print setting value being able to be set by a user via the item, and the print setting value being not able to be set via the print setting screen of the standard driver”, in combination with all other limitations as claimed in independent claim 27.
Response to Arguments
7. Applicant’s arguments with respect to claims 1-3, 5-7, 9-16, 18-20, 22-27 filed on 07/06/2026 have been considered, and a timely filed electronic Terminal Disclaimer (eTD) in compliance with 37 CFR 1.321(c) or 1.321(d), may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent, is required from an applicant.
Conclusion
8. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARIS SABAH whose telephone number is (571)270-3917. The examiner can normally be reached on Monday/Friday from 9:00AM to 5:30PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Benny Tieu, can be reached on (571)272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The Examiner’s personal fax number is (571)270-4917.
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/HARIS SABAH/Examiner, Art Unit 2682
Prosecution Insights