CTNF 18/637,708 CTNF 89043 DETAILED ACTION 07-03-aia AIA 15-10-aia 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 1-7 are pending and presented for examination. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 3. 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 4. Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The representative claim 1 recites: A device diagnosis system comprising: an image forming apparatus to be diagnosed; a portable terminal device that collects an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus; and an abnormal noise decision device including a processor, and configured to, when the processor executes a computer program: (a) identify a decision criterion corresponding to the sound collecting position, and (b) decide whether the operating sound contains an abnormal noise, on a basis of acoustic data of the operating sound collected, in accordance with the decision criterion identified. The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”. Under step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: process, machine, manufacture, or composition of matter. The above claims are considered to be in a statutory category (process). Under Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitation that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and/or mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion. Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception. This judicial exception is not integrated into a practical application because the additional limitations in the claim are only: an image forming apparatus to be diagnosed; a portable terminal device that collects an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus; and an abnormal noise decision device including a processor, and configured to, when the processor executes a computer program. The limitations “ an image forming apparatus to be diagnosed;… and an abnormal noise decision device including a processor, and configured to, when the processor executes a computer program ” are recited at a high level of generality (i.e., as a computer structures performing a generic computer function of processing information) such that they amount no more than mere instructions to apply the exception using a generic computer components. The limitation “ a portable terminal device that collects an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus ” is recited at a high level of generality (i.e., gathering or collecting data using portable terminal device) such that they amount no more than mere instructions to apply the exception using a generic portable terminal device. Finally, under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea. Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as noted above, the additional elements are recited at a high level of generality (i.e., as gathering or collecting data using generic portable terminal device, and a computer structures performing a generic computer function of processing information). Further, the additional elements are conventional in the art, as evidenced by the art of record (see, Hiroshi et al. JP 6992478 B2 (hereinafter, Hiroshi), ([0002], [0043]-[0044]), and Okamoto et al. US 2017/0201633 (hereinafter, Okamoto), (Figs. 1-3). Therefore, claim 1 is directed to an abstract idea without significantly more. The claim is not patent eligible. Dependent claims 3 and 5, add further details of the identified abstract idea. The claims are not patent eligible. Dependent claim 2, recites the limitations “a storage device, wherein the storage device contains decision criteria data indicating a plurality of decision criteria respectively corresponding to the plurality of sound collecting positions relative to the image forming apparatus, and the abnormal noise decision device identifies the decision criterion corresponding to the sound collecting position, by looking up the decision criteria data ”. The claim recites additional elements of “ a storage device”, However, this limitation is recited at a high level of generality (i.e., as a computer structure performing a generic computer function of storing information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Hiroshi, ([0043]), and Okamoto (Figs. 1-3). Therefore, claim 2 is directed to an abstract idea without significantly more. The claim is not patent eligible. Dependent claim 4, recites additional element of “wherein the image forming apparatus executes a specific operation, when the portable terminal device is located by a user at the sound collecting position selected, and the portable terminal device collects the operating sound of the image forming apparatus executing the specific operation, when the portable terminal device is located by a user at the sound collecting position selected”. However, these limitation are recited at a high level of generality (i.e., gathering or collecting data using a portable terminal device) such that they amount no more than mere instructions to apply the exception using a generic portable terminal device. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Hiroshi, ([0043]-[0046]), and Okamoto (Figs. 1-3). Therefore, claim 4 is directed to an abstract idea without significantly more. The claim is not patent eligible. Dependent claim 6, recites the additional elements of “one of a range sensor and a communication interface; a display device; and a measurement controller that decides, when the operating sound is collected, whether the portable terminal device is located within a predetermined distance, corresponding to a maximum distance through which the operating sound can be collected, using one of the range sensor and the communication interface, and causes the display device to display a message urging a user to locate the portable terminal device within the predetermined distance from the image forming apparatus, when the portable terminal device is not located within the predetermined distance”. The claim recites additional elements of “ a measurement controller that decides, when the operating sound is collected, whether the portable terminal device is located within a predetermined distance, corresponding to a maximum distance through which the operating sound can be collected, using one of the range sensor.” However, these limitations are recited at a high level of generality (i.e., gathering or collecting data using portable terminal device) such that they amount no more than mere instructions to apply the exception using a generic portable terminal device. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Hiroshi, ([0043]-[0046]), and Okamoto (Figs. 1-3). Further, the limitations “causes the display device to display a message urging a user to locate the portable terminal device within the predetermined distance from the image forming apparatus, when the portable terminal device is not located within the predetermined distance”, are recited at a high level of generality (i.e., as a computer structure performing a generic computer function of displaying information) such that they amounts no more than mere instructions to apply the exception using a generic computer components. Further, the additional elements are conventional in the art, as evidenced by the art of record (see, Hiroshi, ([0043]-[0046]), and Okamoto (Figs. 1-3, 17-19). Therefore, claim 6 is directed to an abstract idea without significantly more. The claim is not patent eligible. Independent claim 7, the claim is rejected with the same rationale as in claim 1. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 5. In the event the determination of the status of the application as subject to AlA 35 U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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. 07-20-aia AIA 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 of this title, 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. 07-21-aia AIA 6. Claim s 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hiroshi et al. JP 6992478 B2 (hereinafter, Hiroshi), in view of Okamoto et al. US 2017/0201633 (hereinafter, Okamoto) . 7. Regarding claim 1, Hiroshi discloses a device diagnosis system comprising: an image forming apparatus to be diagnosed ([0001]-[0002]: image forming equipment such as MFPs (Multi-Function Peripherals)) ; a portable terminal device ([0116]: the mobile terminal 120) that collects an operating sound of the image forming apparatus, at a sound collecting position ([0043], [0046]: The mobile terminal 120 may be, for example, a smartphone or a tablet device, and has… a measurement unit 126 are connected to this system CPU 121…The measurement unit 126 consists of a microphone for measuring sound, a sound source control element….[0055]: The mobile terminal 120 starts measurement upon receiving the synchronization information and synchronizes the start of measurement with the start of operation of the MFP 100) ; and an abnormal noise decision device ([0116]: control device 140) including a processor, and configured to, when the processor executes a computer program: (a) identify a decision criterion corresponding to the sound collecting position ([0009], [0046], [0116]) , and (b) decide whether the operating sound contains an abnormal noise, on a basis of acoustic data of the operating sound collected, in accordance with the decision criterion identified ([0009], [0116]: the mobile terminal 120 transmits the associated measurement data and the operating status of the operating means to the control device 140 at the center. The control device 140 at the center is connected to a database of sound data that serves as a criterion for identifying various failure causes, and it is possible to extract sound data for each failure cause from these databases by searching, etc. On the center's management device 140 side, data for candidate failure causes is extracted from the database based on various information such as measurement data, image formation operation mode, MFP 100 information, and operating parts transmitted from the mobile terminal 120. Based on the time change in the operating state of the operating parts, the sound data, which is the measurement data, is compared with the extracted candidate data in a synchronized manner. By comparing the difference between the measurement data and the sound data in the database, the location of the abnormal noise is narrowed down on the time axis and the failure cause is determined from the database. The measurement data transmitted from the mobile terminal 120 is then linked to the time of abnormal noise detection and the failure cause). Hiroshi does not disclose: collects an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus. However, Okamoto discloses: collects an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus ([0044], [0099], [0104], Figs. 17-19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use collects an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at different location of an image forming apparatus (Okamoto, [0099]). 8. Regarding claim 2, Hiroshi in view of John disclose the device diagnosis system according to claim 1, as disclosed above. Hiroshi further discloses a storage device, wherein the storage device contains decision criteria data indicating a plurality of decision criteria corresponding to the sound collecting [position] relative to the image forming apparatus, and the abnormal noise decision device identifies the decision criterion corresponding to the sound collecting position, by looking up the decision criteria data ([0009], [0116]). Hiroshi does not disclose: a plurality of decision criteria respectively corresponding to the plurality of sound collecting positions relative to the image forming apparatus. However, Okamoto discloses: a plurality of decision criteria respectively corresponding to the plurality of sound collecting positions relative to the image forming apparatus ([0044], [0099], [0104], Figs. 17-19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use a plurality of decision criteria respectively corresponding to the plurality of sound collecting positions relative to the image forming apparatus as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at different location of an image forming apparatus (Okamoto, [0099]). 9. Regarding claim 3, Hiroshi in view of John disclose the device diagnosis system according to claim 2, as disclosed above. Hiroshi further discloses wherein the plurality of decision criteria are specified with respect to a direction from the image forming apparatus to the sound collecting [position] ([0009], [0116]). Hiroshi does not disclose: wherein the plurality of decision criteria are specified with respect to a direction from the image forming apparatus to the respective sound collecting positions, and a distance from the image forming apparatus to the respective sound collecting positions. However, Okamoto discloses: wherein the plurality of decision criteria are specified with respect to a direction from the image forming apparatus to the respective sound collecting positions, and a distance from the image forming apparatus to the respective sound collecting positions ([0044], [0099], [0104], Figs. 17-19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use wherein the plurality of decision criteria are specified with respect to a direction from the image forming apparatus to the respective sound collecting positions, and a distance from the image forming apparatus to the respective sound collecting positions as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at different location of an image forming apparatus (Okamoto, [0099]). 10. Regarding claim 4, Hiroshi in view of John disclose the device diagnosis system according to claim 1, as disclosed above. Hiroshi further discloses wherein the image forming apparatus executes a specific operation, when the portable terminal device is located by a user at the sound collecting position, and the portable terminal device collects the operating sound of the image forming apparatus executing the specific operation, when the portable terminal device is located by a user at the sound collecting position ([0009], [0051], [0055], [0107]). Hiroshi does not disclose: wherein the image forming apparatus executes a specific operation, when the portable terminal device is located by a user at the sound collecting position selected, and the portable terminal device collects the operating sound of the image forming apparatus executing the specific operation, when the portable terminal device is located by a user at the sound collecting position selected. However, Okamoto discloses: wherein the image forming apparatus executes a specific operation, when the portable terminal device is located by a user at the sound collecting position selected ([0044], [0099], [0104], Figs. 17-19); and the portable terminal device collects the operating sound of the image forming apparatus executing the specific operation, when the portable terminal device is located by a user at the sound collecting position selected ([0044], [0099], [0104], Figs. 17-19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use wherein the image forming apparatus executes a specific operation, when the portable terminal device is located by a user at the sound collecting position selected, and the portable terminal device collects the operating sound of the image forming apparatus executing the specific operation, when the portable terminal device is located by a user at the sound collecting position selected as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at different location of an image forming apparatus (Okamoto, [0099]). 11. Regarding claim 5, Hiroshi in view of John disclose the device diagnosis system according to claim 4, as disclosed above. Hiroshi does not disclose: wherein the portable terminal device guides the user such that the portable terminal device is located by the user at the sound collecting position selected. However, Okamoto discloses: wherein the portable terminal device guides the user such that the portable terminal device is located by the user at the sound collecting position selected (Fig. 19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use wherein the portable terminal device guides the user such that the portable terminal device is located by the user at the sound collecting position selected as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at specific location of an image forming apparatus (Okamoto, [0099], Fig. 19). 12. Regarding claim 6, Hiroshi in view of John disclose the device diagnosis system according to claim 1, as disclosed above. Hiroshi further discloses one of a sensor, a communication interface; a display device ([0043], [0046]) ; and a measurement controller that decides, when the operating sound is collected ([0043], [0046], [0055]-[0056]). Hiroshi does not disclose: one of a range sensor and, whether the portable terminal device is located within a predetermined distance, corresponding to a maximum distance through which the operating sound can be collected, using one of the range sensor and the communication interface, and causes the display device to display a message urging a user to locate the portable terminal device within the predetermined distance from the image forming apparatus, when the portable terminal device is not located within the predetermined distance. However, Okamoto discloses: one of a range sensor and, whether the portable terminal device is located within a predetermined distance, corresponding to a maximum distance through which the operating sound can be collected, using one of the range sensor and the communication interface, and causes the display device to display a message urging a user to locate the portable terminal device within the predetermined distance from the image forming apparatus, when the portable terminal device is not located within the predetermined distance ([0044], [0099], [0104]-[0110], Figs. 17-19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use one of a range sensor and, whether the portable terminal device is located within a predetermined distance, corresponding to a maximum distance through which the operating sound can be collected, using one of the range sensor and the communication interface, and causes the display device to display a message urging a user to locate the portable terminal device within the predetermined distance from the image forming apparatus, when the portable terminal device is not located within the predetermined distance as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at specific location of an image forming apparatus (Okamoto, [0099], Fig. 19). 13. Regarding claim 7, Hiroshi discloses a device diagnosis method for an image forming apparatus, to be performed using a portable terminal device, the device diagnosis ([0001]-[0002], [0116]) ; method comprising: a sound collecting process including collecting, with the portable terminal device, an operating sound of the image forming apparatus, at a sound collecting position ([0043], [0046]: The mobile terminal 120 may be, for example, a smartphone or a tablet device, and has… a measurement unit 126 are connected to this system CPU 121…The measurement unit 126 consists of a microphone for measuring sound, a sound source control element….[0055]: The mobile terminal 120 starts measurement upon receiving the synchronization information and synchronizes the start of measurement with the start of operation of the MFP 100) ; and and a decision process including (a) identifying a decision criterion corresponding to the sound collecting position ([0009], [0046], [0116]) , and (b) deciding whether the operating sound contains an abnormal noise, on a basis of acoustic data of the operating sound collected, in accordance with the decision criterion identified ([0009], [0116]: the mobile terminal 120 transmits the associated measurement data and the operating status of the operating means to the control device 140 at the center. The control device 140 at the center is connected to a database of sound data that serves as a criterion for identifying various failure causes, and it is possible to extract sound data for each failure cause from these databases by searching, etc. On the center's management device 140 side, data for candidate failure causes is extracted from the database based on various information such as measurement data, image formation operation mode, MFP 100 information, and operating parts transmitted from the mobile terminal 120. Based on the time change in the operating state of the operating parts, the sound data, which is the measurement data, is compared with the extracted candidate data in a synchronized manner. By comparing the difference between the measurement data and the sound data in the database, the location of the abnormal noise is narrowed down on the time axis and the failure cause is determined from the database. The measurement data transmitted from the mobile terminal 120 is then linked to the time of abnormal noise detection and the failure cause). Hiroshi does not disclose: collecting, with the portable terminal device, an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus. However, Okamoto discloses: collecting, with the portable terminal device, an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus ([0044], [0099], [0104], Figs. 17-19). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Hiroshi to use collecting, with the portable terminal device, an operating sound of the image forming apparatus, at a sound collecting position selected from a plurality of predetermined sound collecting positions relative to the image forming apparatus as taught by Okamoto. The motivation for doing so would have been in order to detect abnormal sound at different location of an image forming apparatus (Okamoto, [0099]). Conclusion 14. Examiner has cited particular columns and line numbers, and/or paragraphs, and/or pages in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. 15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EYOB HAGOS whose telephone number is (571)272-3508. The examiner can normally be reached on 8:30-5:30PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Shelby Turner can be reached on 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Eyob Hagos/ Primary Examiner, Art Unit 2857 Application/Control Number: 18/637,708 Page 2 Art Unit: 2857 Application/Control Number: 18/637,708 Page 3 Art Unit: 2857 Application/Control Number: 18/637,708 Page 4 Art Unit: 2857 Application/Control Number: 18/637,708 Page 5 Art Unit: 2857 Application/Control Number: 18/637,708 Page 6 Art Unit: 2857 Application/Control Number: 18/637,708 Page 7 Art Unit: 2857 Application/Control Number: 18/637,708 Page 8 Art Unit: 2857 Application/Control Number: 18/637,708 Page 9 Art Unit: 2857 Application/Control Number: 18/637,708 Page 10 Art Unit: 2857 Application/Control Number: 18/637,708 Page 11 Art Unit: 2857 Application/Control Number: 18/637,708 Page 12 Art Unit: 2857 Application/Control Number: 18/637,708 Page 13 Art Unit: 2857 Application/Control Number: 18/637,708 Page 14 Art Unit: 2857 Application/Control Number: 18/637,708 Page 15 Art Unit: 2857 Application/Control Number: 18/637,708 Page 16 Art Unit: 2857 Application/Control Number: 18/637,708 Page 17 Art Unit: 2857 Application/Control Number: 18/637,708 Page 18 Art Unit: 2857 Application/Control Number: 18/637,708 Page 19 Art Unit: 2857
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