Prosecution Insights
Last updated: May 29, 2026
Application No. 18/644,038

IMAGE FORMING APPARATUS AND IMAGE FORMING METHOD

Non-Final OA §103
Filed
Apr 23, 2024
Priority
Jul 06, 2023 — JP 2023-111470
Examiner
WALLACE, JOHN R
Art Unit
2682
Tech Center
2600 — Communications
Assignee
Toshiba TEC Kabushiki Kaisha
OA Round
1 (Non-Final)
77%
Grant Probability
Favorable
1-2
OA Rounds
7m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
290 granted / 375 resolved
+15.3% vs TC avg
Strong +25% interview lift
Without
With
+24.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
11 currently pending
Career history
393
Total Applications
across all art units

Statute-Specific Performance

§101
1.1%
-38.9% vs TC avg
§103
92.4%
+52.4% vs TC avg
§102
4.0%
-36.0% vs TC avg
§112
2.2%
-37.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 375 resolved cases

Office Action

§103
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 . Election/Restrictions Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 April 2026. Claim Objections Applicant is advised that should claim 12 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim Rejections - 35 USC § 103 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. Claim(s) 1-8 and 11-18 rejected under 35 U.S.C. 103 as being unpatentable over Noguchi (U.S.P.G Pub. No. 2016/0219164) in view of Crampton (U.S.P.G. Pub. No. 2020/0210121). Regarding claim 1, Noguchi (U.S.P.G Pub. No. 2016/0219164) discloses: An image forming apparatus comprising: a controller (see for example, paragraphs [0044], [0055]) configured to: acquire an image of a document (paragraphs [0036]-[0037], image file of document); identify a mark region containing a predetermined mark in the acquired image of the document (paragraph [0037], mark detected on document region); decide, based on the identified mark region, a variable region containing a variable object that is variable based on an input (paragraphs [0060]-[0061], [0073], [0076], merge printing with variable merge data based on mark in desired place to embed merge data); decide a fixed region indicating a format of the document and containing a fixed object that is not variable (Figures 3A-3D, paragraph [0068], [0076], the merge areas are entered into the rest of the document form; the form is static/fixed while the merge data is dynamic); and generate document data based on the decided variable region and the decided fixed region (paragraphs [0076], [0078], the documents are now mutually different as they include different merge data) Even assuming arguendo that Noguchi does not explicitly disclose: decide a fixed region indicating a format of the document and containing a fixed object that is not variable Crampton (U.S.P.G. Pub. No. 2020/0210121) discloses: decide a variable region containing a variable object that is variable based on an input (paragraphs [0009]-[0010], variable objects of the document are identified) decide a fixed region indicating a format of the document and containing a fixed object that is not variable (paragraphs [0009]-[0010], static objects of the document are identified) generate document data based on the decided variable region and the decided fixed region (paragraphs [0009]-[0011], the document is produced with the static and variable data) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Crampton with the system of Noguchi such that the system would have been able to decide a fixed region indicating a format of the document and containing a fixed object that is not variable as described in Crampton. The suggestion/motivation would have been in order to implement a system in which “computing intensive operations that may otherwise be used to produce raster images for the reoccurring static may be reduced” (paragraph [0010] of the Crampton reference). Regarding claim 2, Noguchi additionally discloses: wherein the controller is configured to decide the fixed region to be a region other than the mark region in the image of the document (Figures 3A-3D, paragraph [0060]-[0061], [0068], [0073], [0076], [0076], the merge areas are entered into the rest of the document form; the form is static/fixed while the merge data is dynamic – this corresponds to areas the user did not mark for merge data); Regarding claim 3, Noguchi additionally discloses: wherein the predetermined mark is a line, and wherein the controller is configured to determine that a region surrounded by the line is the mark region (see, for example, Figure 3C, Figure 8A, paragraphs [0060]-[0061], [0073], [0076], merge printing with variable merge data based on line circling area in desired place to embed merge data); Regarding claim 4, Noguchi additionally discloses: wherein the controller is configured to determine that the fixed region is a region that is not surrounded by the line(Figures 3A-3D, paragraph [0060]-[0061], [0068], [0073], [0076], [0076], the merge areas are entered into the rest of the document form; the form is static/fixed while the merge data is dynamic – this corresponds to areas the user did not draw a line around for merge data); Regarding claim 5, Noguchi additionally discloses: wherein the controller is configured to identify the mark region in response to a determination that the line has a predetermined color (paragraph [0074], [0124], line is made using a red felt-tip pen; the data to be merged is switched according to the color of the marks) Regarding claim 6, Noguchi additionally discloses: wherein the predetermined mark has a predetermined shape (paragraph [0075], the mark made can include a diagonal shape or a frame shape) Regarding claim 7, Noguchi additionally discloses: wherein the predetermined mark has a predetermined color (paragraph [0074], [0124], line is made using a red felt-tip pen; the data to be merged is switched according to the color of the marks) Regarding claim 8, Noguchi additionally discloses: wherein the variable object includes a character string (see, for example, Figures 3B, 8B showing character strings merge data; see also paragraph [0132] regarding character string data) Regarding claim 11, the combination of Noguchi and Crampton disclose the apparatus of the parent claim (claim 1) Crampton additionally discloses: further comprising a communication circuit configured to transmit the document data generated by the controller to an external apparatus (paragraphs [0011]-[0012], raster data produced via VDP is communicated to a digital printing press) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Crampton with the system of Noguchi such that the system would have been configured to transmit the document data generated by the controller to an external apparatus as described in Crampton. The suggestion/motivation would have been in order to implement a system capable of “reducing the load on memory and computing resources” (paragraph [0012] of the Crampton reference) by offloading printing processing to a separate apparatus. Regarding claim 12, Noguchi additionally discloses: further comprising a scanner configured to scan the document and generate the image of the document (paragraphs [0113]-[0114], the image is scanned and generated) Regarding claim 13, Noguchi additionally discloses: further comprising a scanner configured to scan the document and generate the image of the document (paragraphs [0113]-[0114], the image is scanned and generated) Regarding claim 14, the structural elements of apparatus claim 1 generally perform all of the steps of method claim 14. Thus, claim 14 is rejected for the same reasons discussed in the rejection of claim 1. However, the Examiner notes that claim 14 recites “deciding a fixed region indicating a format of the document, the fixed region being a region of the image of the document other than the mark region”; this feature is similarly disclosed by Figures 3A-3D, paragraph [0068], [0076] of Noguchi, noting that the merge areas are entered into the rest of the document form; the form is static/fixed while the merge data is dynamic and is analogous to the “decide a fixed region…” feature of claim 1. Further, Crampton discloses the feature in paragraphs [0009]-[0010], noting that the static objects of the document are identified. Regarding claim 15, Noguchi additionally discloses: forming an output image on a sheet based on the generated document data (paragraph [0042], the image generated is printed) Regarding claim 16, Noguchi additionally discloses: wherein the output image is a first output image and the sheet is a first sheet, further comprising: subsequent to forming the first output image on the first sheet, updating the variable object; and forming a second output image on a second sheet based on the updated variable object (paragraph [0042], merge printing involves printing a first image on a first sheet with one set of variable data, and then printing a second image on a second sheet with a different set of variable data, and so on) Regarding claim 17, the structural elements of apparatus claim 3 perform all the additional steps of method claim 17. Thus, claim 17 is rejected for analogous reasons discussed in the rejection of claim 3. See the rejection of claim 14 as well. Regarding claim 18, Noguchi additionally discloses: wherein the predetermined mark has a predetermined color (paragraph [0074], [0124], line is made using a red felt-tip pen; the data to be merged is switched according to the color of the marks) Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Noguchi in view of Noguchi in view of Crampton, in further view of Walker et al. (U.S. Patent No. 7,315,979). Regarding claim 9, the combination of Noguchi and Crampton disclose the apparatus of the parent claim (claim 1). The combination of Noguchi and Crampton does not explicitly disclose: wherein the variable object includes at least one of a figure or an image code. Walker et al. (U.S. Patent No. 7,315,979) discloses: wherein the variable object includes at least one of a figure or an image code (column 2, lines 16-20, variable data can include image data or bar code data) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Walker et al. with the combination of Noguchi and Crampton such that the variable object includes at least one of a figure or an image code as described in Walker et al. The suggestion/motivation would have been in order to implement capable of “providing an extremely high-speed variable data printing operation” (column 2, lines 29-30 of the Walker reference). Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Noguchi in view of Crampton, in further view of Kawara (U.S.P.G. Pub. No. 2009/0116064). Regarding claim 10, the combination of Noguchi and Crampton disclose the apparatus of the parent claim (claim 1). The combination of Noguchi and Crampton does not explicitly disclose: wherein the fixed object includes a character string describing the variable object. Kawara (U.S.P.G. Pub. No. 2009/0116064) discloses: wherein the fixed object includes a character string describing the variable object (see for example Figure 22, paragraphs [0095]-[0096], as shown, the fixed data describes the field data – for example, “To” describes that the variable field data relates to an address, whereas “Total Sum” indicates that the variable field will be a sum cost; see also paragraph [0009]) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Kawara with the combination of Noguchi and Crampton such that the system would have been configured to have the fixed object includes a character string describing the variable object as described in Kawara. The suggestion/motivation would have been in order to implement a system capable of allowing for “printing of the entire document…and printing of only variable pages in a simplified manner” (paragraph [0017] of the Kawara reference). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R WALLACE whose telephone number is (571)270-1577. The examiner can normally be reached Monday-Friday from 8:30-5 PM. 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, Benny Tieu can be reached at 571-272-7490. 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. /JOHN R WALLACE/ Primary Examiner, Art Unit 2682
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Prosecution Timeline

Apr 23, 2024
Application Filed
May 06, 2026
Non-Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
77%
Grant Probability
99%
With Interview (+24.9%)
2y 8m (~7m remaining)
Median Time to Grant
Low
PTA Risk
Based on 375 resolved cases by this examiner. Grant probability derived from career allowance rate.

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