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
1. This action is responsive to the application filed on April 19, 2024.
2. Claims 1-20 have been examined.
Claim Rejections - 35 USC 101
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is within at least one of the four categories of patent eligible subject matter.
Prong 1, Step 2A: under its broadest reasonable interpretation, “configured to store an application program provided with a probational period” and “configured to stop a first-time automatic startup of the application program provided with the probational period during a startup of the information processing device” cover performance of the limitation in the mind but for the recitation of a generic processing device. Thus these claim limitations fall within the "Mental Processes" grouping of abstract ideas under Prong 1 Step 2A.
Prong 2, Step 2A: the judicial exception is not integrated into a practical application. Additional elements (a storage, a processor) are recited at high level of generality. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea according to MPEP 2106.05(g).
Prong 2, Step 2B: the additional elements, considering them both individually and in combination, are not sufficient to amount to significantly more than the judicial exception itself. As discussed above, elements that are mere use of generic computer elements to implement the abstract idea, and the processes are insignificant extra-solution activity which are recognized as well-understood, routine, conventional activity, according to MPEP 2106.05(d). Accordingly, the claim does not appear to be patent eligible under 35 USC 101.
Claim 2: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 3: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 4: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 5 is within at least one of the four categories of patent eligible subject matter.
Prong 1, Step 2A: under its broadest reasonable interpretation, “configured to store an application program provided with a probational period” and “configured to stop a first-time automatic startup of the application program provided with the probational period during a startup of the image forming device” cover performance of the limitation in the mind but for the recitation of a generic processing device. Thus these claim limitations fall within the "Mental Processes" grouping of abstract ideas under Prong 1 Step 2A.
Prong 2, Step 2A: the judicial exception is not integrated into a practical application. Additional elements (a printer, a storage, a controller, a processor) are recited at high level of generality. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea according to MPEP 2106.05(g).
Prong 2, Step 2B: the additional elements, considering them both individually and in combination, are not sufficient to amount to significantly more than the judicial exception itself. As discussed above, elements that are mere use of generic computer elements to implement the abstract idea, and the processes are insignificant extra-solution activity which are recognized as well-understood, routine, conventional activity, according to MPEP 2106.05(d). Accordingly, the claim does not appear to be patent eligible under 35 USC 101.
Claim 6: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 7: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 8: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 9: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 10: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 11 is within at least one of the four categories of patent eligible subject matter.
Prong 1, Step 2A: under its broadest reasonable interpretation, “receiving a startup request of an application; determining if a startup method of the application is an automatic startup; in response to the startup method being automatic startup, determine if a first-time startup of the application has occurred; and in response to the first-time startup having occurred, determine if the application” cover performance of the limitation in the mind but for the recitation of a generic processing device. Thus these claim limitations fall within the "Mental Processes" grouping of abstract ideas under Prong 1 Step 2A.
Prong 2, Step 2A: the judicial exception is not integrated into a practical application. Additional elements (an image forming device) are recited at high level of generality. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea according to MPEP 2106.05(g).
Prong 2, Step 2B: the additional elements, considering them both individually and in combination, are not sufficient to amount to significantly more than the judicial exception itself. As discussed above, elements that are mere use of generic computer elements to implement the abstract idea, and the processes are insignificant extra-solution activity which are recognized as well-understood, routine, conventional activity, according to MPEP 2106.05(d). Accordingly, the claim does not appear to be patent eligible under 35 USC 101.
Claim 12: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 13: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 14: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 15: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 16: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 17: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 18: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 19: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim 20: as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim Rejections – 35 USC §102
5. 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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0241343 to Schroder et al. (hereafter “Schroder”).
Claim 1.
Schroder discloses an information processing device comprising:
a storage configured to store an application program provided with a probational period (0008, 0048-0050, 0055, 0058, programs with tryout/ trial/ grace periods); and
a processor configured to stop a first-time automatic startup of the application program provided with the probational period during a startup of the information processing device
0056, stop a first-time automatic startup at the first factory test so that the licensing does not expire by the time the system is delivered to the customer;
0058, 0059, 0061, stop a first-time automatic startup by setting “Licensing enabled: No”;
FIG.3, Licensing permitted: No.
Claim 2.
Schroder discloses the device according to claim 1, wherein the storage is configured to store management information including information indicating if a first-time startup of the application program has been performed, and wherein the processor is configured to stop an automatic startup of the application program if the first-time startup of the application program is not performed according to the management information (0039, 0049, 0050).
Claim 3.
Schroder discloses the device according to claim 2, wherein the management information includes information indicating a startup method of the application program, the startup method being at least one of an automatic startup that occurs during the startup of the information processing device or a manual startup that occurs in response to a user operation, and wherein, when the information processing device is started up, the processor is configured to update the startup method in the management information of the application program to be the manual startup if the first-time startup has not been performed
FIG.3, stop an automatic startup of the application program with “Licensing Permiited: No;
FIG.3, manual startup and set date/time to start licensing.
7. Claims 11-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0322015 to Chacon et al. (hereafter “Chacon”).
MPEP 2111.04.II. CONTINGENT LIMITATIONS
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.
For this reason, claim 11 has been treated as:
A method of operating an image forming device, the method comprising:
receiving a startup request of an application;
determining if a startup method of the application is an automatic startup;
the startup method being manual startup holds true, and the startup method being automatic startup holds false.
Claim 11.
Chacon discloses a method of operating an image forming device, the method comprising:
receiving a startup request of an application (FIG.6, block 605 and related text);
determining if a startup method of the application is an automatic startup (holds false), and the startup method being manual startup holds true (FIG.3, block 610, block 620, and related text).
Claim 12 (the startup method being automatic startup still holds false).
Claim 13 (the startup method being automatic startup still holds false).
Claim 15.
Chacon discloses the method of claim 11, wherein the startup request is provided by a user, and the startup method is a manual startup (0119, 0121, 0122).
Claim Rejections – 35 USC §103
9. 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 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 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.
10. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chacon in view of US 9,003,541 to Patidar (hereafter “Patidar”).
Claim 14.
Chadon does not disclose the method of claim 11, wherein in response to the startup method of the application being set to manual startup, suppressing startup of the application.
However, Patidar in response to the startup method of the application being set to manual startup, suppressing startup of the application (FIG.2B, block 124/NO, block 128 and related text, refraining from launching of the software application).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Patidar’s teaching into Chadon‘s teaching. One would have been motivated to do so to verify a software license token associated with the user attempts to execute the application as suggested by Patidar (col.8, last paragraph).
11. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Chacon in view of US 2016/0234396 to Yasukawa (hereafter “Yasukawa”).
Claim 18.
Chacon does not disclose the method claim 11, further comprising, prior to receiving the startup request, installing firmware bundled with the application, and turning on a packing mode indicating the image forming apparatus is in a state for normal startup.
However, Yasukawa discloses prior to receiving the startup request, installing firmware bundled with the application, and turning on a packing mode indicating the image forming apparatus is in a state for normal startup (0053, 0055, 0057, 0069, 0115).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Yasukawa’s teaching into Chadon‘s teaching. One would have been motivated to do so to execute normal tasks/jobs as suggested by Yasukawa (0053).
12. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Chacon in view of US 2012/0311596 to Imai et al. (hereafter “Imai”), and further in view of US 2020/0280650 to Kato (hereafter “Kato”).
Claim 20.
Chacon discloses the method of claim 11, further comprising storing management information of the application including a startup method (FIG.3, block 610/Yes, block 610/No, and related text).
Chacon does not disclose an indication of if a first-time startup has occurred, and a presence of the trial period.
However, Imail dicloses an indication of if a first-time startup has occurred (0201, 0206).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Imai’s teaching into Chacon‘s teaching. One would have been motivated to do so to perform the setting process as suggested by Imai (0201).
Chacon and Imai do not disclose a presence of the trial period.
However, Kato discloses a presence of the trial period (0081, 0082).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Kato’s teaching into Chacon and Imai‘s teaching. One would have been motivated to do so to control activation of an application as suggested by Kato (0081).
Allowable Subject Matter
13. After search and analysis, Examiner concluded that the claimed invention has been recited in such a manner that dependent claim 4 is not taught by any prior reference found through search.
The primary reason for allowance of the claims in this case, is the inclusion of the limitations “The device according to claim 3, further comprising a system memory configured to store a data file for installing the application program along with firmware, wherein the processor is configured to install the application program in the storage based on the data file stored together with the firmware in the system memory.\,” which are not found in the prior art of record.
Incorporating intervening claims 2, 3 and claim 4 into claim 1 would put claim 1 in condition for allowance.
14. After search and analysis, Examiner concluded that the claimed invention has been recited in such a manner that dependent claim 16 is not taught by any prior reference found through search.
The primary reason for allowance of the claims in this case, is the inclusion of the limitations “The method of claim 15, further comprising: in response to the startup method being set to manual startup, determining if the startup is a first-time startup; and in response to the startup being the first-time startup, and the application includes the trial period, issuing a trial license,” which are not found in the prior art of record.
Incorporating intervening claim 15 and claim 16 into claim 11, resolving the U.S.C. 101 issue, and removing the contingent limitations would put claim 11 in condition for allowance.
Claim 17 depends on claim 16 and is also allowable.
15. After search and analysis, Examiner concluded that the claimed invention has been recited in such a manner that dependent claim 19 is not taught by any prior reference found through search.
The primary reason for allowance of the claims in this case, is the inclusion of the limitations “The method of claim 18, wherein the startup request comprises: receiving the startup request from a user to start the image forming apparatus in response to an unpacking flag being set to on, determining if a built-in application to be installed is stored on the image forming apparatus; in response to the built-in application to be installed being stored on the image forming apparatus, installing the application; checking a startup mode of the application; and restarting the image forming apparatus,” which are not found in the prior art of record.
Incorporating intervening claim 18 and claim 19 into claim 11, resolving the U.S.C. 101 issue, and removing the contingent limitations would put claim 11 in condition for allowance.
16. A proposal to remove the contingent limitations:
Claim 11.
A method of operating an image forming device, the method comprising:
receiving a startup request of an application;
determining a startup method of the application is a manual startup.
Conclusion
17. Any inquiry concerning this communication should be directed to examiner Thuy (Twee) Dao, whose telephone/fax numbers are (571) 272 8570 and (571) 273 8570, respectively. Examiner can normally be reached from Monday to Friday, 5:30am - 2:00pm ET.
If attempts to reach Examiner by telephone are unsuccessful, Examiner’s supervisor, Hyung (Sam) Sough, can be reached at (571) 272 6799.
The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
Any inquiry of a general nature of relating to the status of this application or proceeding should be directed to the TC 2100 Group receptionist whose telephone number is (571) 272 2100.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Thuy Dao/Primary Examiner, Art Unit 2192
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