DETAILED ACTION
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 .
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-18 of U.S. Patent No. 11740842. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same subject matter. See table below.
Current application Claims
Patent 11740842
1. A method for a system including (a) a first cloud print server system having a first cloud print service and
(b) a printer on which information has been registered in the first cloud print service,
the method comprising:
receiving, by the first cloud print server system, print data from a second cloud print server system that
(i) has a second cloud print service in which information about the first cloud print service has been registered and
(ii) sends the received print data to the printer;
sending, by the first cloud print server system,
print data that is based on the print data received from the second cloud print server system, to the printer on which information has been registered in the first cloud print service;
receiving, by the first cloud print server system, print data from a client terminal not via the second cloud print server system; and
sending, by the first cloud print server system, print data that is based on the print data received from the client terminal, to the printer on which information has been registered in the first cloud print service.
2. The method according to claim 1, wherein the printer to which the received print data is to be sent by the second cloud print server system is a printer on which information has been registered in the second cloud print service.
3. The method according to claim 1, wherein the first cloud print service the information on which is registered in the second cloud print service is registered as a printer.
4. The method according to claim 1, wherein the first cloud print server system designates a printer name when the information about the first cloud print service is registered in the second cloud print service.
5. The method according to claim 1, wherein the first cloud print server system designates a printer name as information for identifying the first cloud print service when the information about the first cloud print service is registered in the second cloud print service.
6. The method according to claim 1, wherein the print data received in the first receiving and the print data received in the second receiving, are stored in one or a plurality of storage areas.
7. A computer-readable storage medium storing a program for causing a computer to execute a method for a system including
(a) a first cloud print server system having a first cloud print service and
(b) a printer on which information has been registered in the first cloud print service, the method comprising:
receiving, by the first cloud print server system, print data from a second cloud print server system that
(i) has a second cloud print service in which information about the first cloud print service has been registered and
(ii) sends the received print data to the printer;
sending, by the first cloud print server system,
print data that is based on the print data received from the second cloud print server system, to the printer on which information has been registered in the first cloud print service;
receiving, by the first cloud print server system, print data from a client terminal not via the second cloud print server system; and
sending, by the first cloud print server system, print data that is based on the print data received from the client terminal, to the printer on which information has been registered in the first cloud print service.
8. The computer-readable storage medium according to claim 7, wherein the printer to which the received print data is to be sent by the second cloud print server system is a printer on which information has been registered in the second cloud print service.
9. The computer-readable storage medium according to claim 7, wherein the first cloud print service the information on which is registered in the second cloud print service is registered as a printer.
10. The computer-readable storage medium according to claim 7, wherein the first cloud print server system designates a printer name when the information about the first cloud print service is registered in the second cloud print service.
11. The computer-readable storage medium according to claim 7, wherein the first cloud print server system designates a printer name as information for identifying the first cloud print service when the information about the first cloud print service is registered in the second cloud print service.
12. The computer-readable storage medium according to claim 7, wherein the print data received in the first receiving and the print data received in the second receiving, are stored in one or a plurality of storage areas.
13. A method for a system including (a) a first cloud print server system having a first cloud print service and
(b) a printer whose information has been registered in the first cloud print service,
the method comprising:
receiving, by the first cloud print server system, print data from a second cloud print server system that
(i) has a second cloud print service in which information of the first cloud print service has been registered and
(ii) sends received print data to a printer;
sending, by the first cloud print server system,
print data that is based on the received print data to the printer whose information has been registered in the first cloud print service;
receiving, by the first cloud print server system, print data from a client terminal not via the second cloud print server system; and
sending, by the first cloud print server system, print data that is based on the print data received from the client terminal to the printer whose information has been registered in the first cloud print service.
14. The method according to claim 13, wherein the printer to which the received print data is to be sent by the second cloud print service is a printer whose information has been registered in the second cloud print service.
15. The method according to claim 13, wherein the first cloud print service, the information of which is registered in the second cloud print service, is registered as a printer.
16. The method according to claim 13, wherein the first cloud print server system designates a printer name when the information of the first cloud print service is registered in the second cloud print service.
17. The method according to claim 13, wherein the first cloud print server system designates a printer name as information for identifying the first cloud print service when the information of the first cloud print service is registered in the second cloud print service.
18. The method according to claim 13, wherein the print data received by the are
stored in one or a plurality of storage areas.
13. A method for a system including
(a) a first cloud print server system having a first cloud print service and
(b) a printer whose information has been registered in the first cloud print service,
the method comprising:
receiving, by the first cloud print server system, print data from a second cloud print server system that
(i) has a second cloud print service in which information of the first cloud print service has been registered and
(ii) sends received print data to a printer;
sending, by the first cloud print server system,
print data that is based on the received print data to the printer whose information has been registered in the first cloud print service;
receiving, by the first cloud print server system, print data from a client terminal not via the second cloud print server system; and
sending, by the first cloud print server system, print data that is based on the print data received from the client terminal to the printer whose information has been registered in the first cloud print service.
14. The method according to claim 13,
wherein the printer to which the received print data is to be sent by the second cloud print service is a printer whose information has been registered in the second cloud print service.
15. The method according to claim 13,
wherein the first cloud print service, the information of which is registered in the second cloud print service, is registered as a printer.
16. The method according to claim 13,
wherein the first cloud print server system designates a printer name when the information of the first cloud print service is registered in the second cloud print service.
17. The method according to claim 13,
wherein the first cloud print server system designates a printer name as information for identifying the first cloud print service when the information of the first cloud print service is registered in the second cloud print service.
18. The method according to claim 13,
wherein the print data received by the are
stored in one or a plurality of storage areas.
Claim Rejections - 35 USC § 101
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.
Claims 7-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to “a computer-readable storage medium”. However, the claims do not define a computer readable medium that contains instructions to be a Non-transitory functional descriptive material and is thus non-statutory for that reason (i.e., “When functional descriptive material is recorded on some non-transitory computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized”). Moreover, a “program” is neither a process (“action”), nor machine, nor manufacture, nor composition of matter (i.e., tangible “thing”) and therefore non-statutory.
Such claimed “ computer readable medium that contains instructions ...” can be a transitory medium such as signal, wave etc. that does not define any structural and functional interrelationships between the computer program and other claimed elements of a computer, which permit the computer program’ s functionality to be realized. As such, “program”/software, not claimed as embodied/encoded in computer-readable medium and is not statutory because the “program”/software is not capable of causing functional change in the computer.
The Examiner suggests amending the claim to include “Non-transitory computer readable”, while at the same time excluding the intangible media such as signals, carrier waves, etc...
In the published specification in paragraph [0161] is mentioned that “executes computer executable instructions recorded on a storage medium (e.g., non-transitory computer-readable storage medium) to perform the functions of one or more of the above-described embodiment(s) of the present invention” it mentions an example could be non-transitory computer-readable storage medium but does not confirm that it can be only that therefore 101 rejection is done.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Katsuma (US 2020/0177746 A1): as illustrated in FIG. 16, the MFP 1 first transmits the information of the capability and state of the MFP 1 to the cloud system 3 (step S501). In the cloud system 3, the management unit 330 (i.e., the DB management unit 337) receives and records the transmitted information of the capability and state of the MFP 1 in the apparatus information DB 360.
Numakami (US 2018/0263069 A1): in paragraph [0032] and figures 6 and 10, shows a state of setting of cloud setting parameter information to a device, such as an OCF device, is retained, and the state of setting of cloud setting parameter information is determined, so that a provisioning status of the device is updated in such a way as to match an actual cloud setting state. This enables preventing a mobile device from re-performing setting of cloud setting parameter information to an OCF device, thus simplifying processing concerning initial setting to the OCF device.
Choi (US 2015/0355873 A1): shows cloud print method using automatic response system figures 19-22.
She et al. (US 2018/0032297 A1) shows in paragraphs [0036]-[0038] first client terminal shares the cloud-printer-information with the second client terminal. The second client terminal receives the cloud-printer-information. The second client terminal, via the second cloud print account, sends to the cloud server a request to link the cloud printer. The cloud server receives, from the second client terminal, the request to link the cloud printer, and links the second cloud print account to the cloud printer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRIANA CRUZ whose telephone number is (571)270-3246. The examiner can normally be reached 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRIANA CRUZ/ Primary Examiner, Art Unit 2681