Prosecution Insights
Last updated: April 19, 2026
Application No. 18/652,605

APPARATUS, METHOD, AND COMPUTER READABLE STORAGE MEDIUM

Non-Final OA §101§103
Filed
May 01, 2024
Examiner
AYAD, MARIA S
Art Unit
2172
Tech Center
2100 — Computer Architecture & Software
Assignee
Canon Kabushiki Kaisha
OA Round
1 (Non-Final)
33%
Grant Probability
At Risk
1-2
OA Rounds
3y 10m
To Grant
50%
With Interview

Examiner Intelligence

Grants only 33% of cases
33%
Career Allow Rate
53 granted / 159 resolved
-21.7% vs TC avg
Strong +17% interview lift
Without
With
+17.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 10m
Avg Prosecution
36 currently pending
Career history
195
Total Applications
across all art units

Statute-Specific Performance

§101
11.9%
-28.1% vs TC avg
§103
54.2%
+14.2% vs TC avg
§102
12.4%
-27.6% vs TC avg
§112
14.1%
-25.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 159 resolved cases

Office Action

§101 §103
DETAILED ACTION This action is responsive to the application filed on 5/1/2024. Claims 1-19 are pending in this application. Claims 1, 8, and 14 are independent claims. 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 . Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statement (IDS) submitted on 5/1/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Specification The disclosure is objected to because of the following informalities: Replace all occurrences (including the Title) of computer readable with computer-readable. Appropriate correction is required. Claim Objections Claims 1-7 and 9 are objected to because of the following informalities: Replace all occurrences in claims 1-7 of computer readable with computer-readable. Claim 1, line 2, replace comprising:: with comprising: Claim 9, line 1, replace the control unit further configured with the control unit is further configured Appropriate correction is required. 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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Independent claim 1 recites “a computer-readable storage medium” which is not defined anywhere in the specification. The claim thus does not fall within at least one of the four categories of patent eligible subject matter because the BRI of a computer-readable storage medium can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se. See MPEP 2106.03 (II). Neither of claims 2-7 incorporates any additional limitation to resolve this issue. Examiner respectfully suggests adding the word “non-transitory” in order to overcome the rejection. Examiner Comments 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 (i.e., changing from AIA to pre-AIA ) 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. 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. Claims 1-3, 8-10, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over ISHIMOTO, US PGPUB 2009/0248849 Al (hereinafter as Ishimoto) in view of Yasuda, US PGPUB 2021/0240424 Al (hereinafter as Yasuda). Regarding independent claim 1, Ishimoto teaches a computer readable storage medium storing a computer-executable program of instructions for causing a computer to perform a method [see e.g. [0012]] comprising: acquiring an icon image of a first printer based on identification information acquired from the first printer [note in [0065] the request and response by each device 12 including a device name, an IP address, and image icon data; note that device 12 can be a printer as shown in fig. 1; note from figs. 1 and 6 that the response request transmitting unit 66 is part of computer 10]; acquiring an icon image of a second printer based on identification information for the second printer acquired from the second printer [again, note in [0065] the request and response by each device 12 including a device name, an IP address, and image icon data; note that device 12 can be a printer as shown in fig. 1; note from figs. 1 and 6 that the response request transmitting unit 66 is part of computer 10]; and controlling a display unit to display the acquired icon images of the first and the second printers [note from [0072] the display of the icon images on display device 62 of computer 10]. Ishimoto does not explicitly teach that the identification information for the second printer is acquired from a server. Yasuda teaches acquiring identification information for a printer from a server (denoted hereinafter as a second printer with no loss of generality) [note in [0072] the acquisition of printer information for any one of network printers from cloud print service; see also [0052]] as opposed to other acquisitions for local printers that do not need communication with the server (from which one of them is denoted hereinafter as a first printer) [see [0071]]. It would have been obvious to one of ordinary skill in the art having the teachings of the Ishimoto and Yasuda before the effective filing date of the claimed invention to apply Yasuda’s acquisition of identification information for a printer from a server to the instructions taught by Ishimoto. The motivation for this obvious combination of teachings would be to enable aggregating printer information corresponding to devices that are connected through a cloud/network administered by a cloud service as well as those locally connected, as suggested by Yasuda [see e.g. [0072] and [0100]]. Independent claims 8 and 14 are rejected analogous to the rejection of independent claim 1 above. Regarding independent claim 8, Ishimoto also teaches an apparatus [see e.g. computer 10 shown in figs. 5 and 6] comprising: at least one processor; and a memory coupled to the at least one processor, the memory having instructions that, when executed by the processor, perform operations [see e.g. [0047]] as those of claim 1 [See the rejection of claim 1 above; Examiner further notes that the acquisition unit and control unit are clearly software modules since there are operations performed by executing instructions]. Regarding independent claim 14, Ishimoto also teaches a method [see e.g. [0087] and fig. 11] comprising operations as those of claim 1 [See the rejection of claim 1 above; Examiner further notes that the acquisition unit and control unit are clearly software modules since there are operations performed by executing instructions]. Regarding claims 2, 9, and 15, the rejection of claims 1, 8, and 14 are respectively incorporated. Yasuda further teaches controlling a display unit to display a print setting screen for setting print settings to be transmitted to the first printer without interposing the server [note in [0081] the display of print settings and transmitting them to the printer identified; note the case of a local printer (a first printer) where there is no need to use the server system for communication regarding performing printing as per [0058]]. Again, it would have been obvious to one of ordinary skill in the art having the teachings of the Ishimoto and Yasuda before the effective filing date of the claimed invention to apply Yasuda’s teaching to Ishimoto’s display unit and framework. See the rejection of claim 1 for motivations to combine. Regarding claims 3, 10, and 16, the rejection of claims 2, 9, and 15 are respectively incorporated. Yasuda further teaches controlling the display unit to display a print setting screen for setting print settings to be transmitted to the second printer via the server [note in [0081] the display of print settings and transmitting them to the print queue of the printer identified on the cloud print service; note the case of a printer registered in the cloud print service (a second printer)]. See the rejection of claim 1 for motivations to combine. Claims 4-7, 11-13, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ishimoto in view of Yasuda, as applied to claim 2 (for claims 4-7), claim 9 (for claims 11-13), and claim 15 (for claims 17-19) above, and further in view of Kanno, US Patents No. 11,275,539 B2 (hereinafter as Kanno). Regarding claims 4, 11, and 17, the rejection of claims 2, 9, and 15 are respectively incorporated. The previously combined art does not explicitly teach that the print settings are provided to an operating system of an/the apparatus. Kanno teaches providing print settings to an operating system of an apparatus [note in col. 6, lines 25-27 that the OS received print data instructions; note in col. 6, line 37 that print data can be related to a print setting]. It would have been obvious to one of ordinary skill in the art having the teachings of the previously combined art and Kanno before the effective filing date of the claimed invention to apply Kanno’s teaching of providing print settings to an operating system of an apparatus to the handling of the print setting screen taught by Yasuda. The motivation for this obvious combination of teachings would be to enable handling print instructions through any computing device. Regarding claims 5, 12, and 18, the rejection of claims 4, 11, and 17 are respectively incorporated. Kanno further teaches that the print settings are used to generate print data by a printer driver provided by a vendor of the operating system [note in col. 6, lines 30-33 the conversion of data output by an application (which can be print settings) into data having a format that can be interpreted by the printer device and in col. 6, lines 37-42 that the driver can be a general-purpose printer driver conforming to standards defined by a certain operating system such as Mopria; Examiner notes the example of OS-specific drivers in [0002] of the specification of the instant application]. It would have been obvious to one of ordinary skill in the art having the teachings of the previously combined art and Kanno before the effective filing date of the claimed invention to apply Kanno’s teaching of using print settings to generate print data by a printer driver provided by a vendor of the operating system to the handling of the print setting screen taught by Yasuda. The motivation for this obvious combination of teachings would be to enable using a generic driver to convert print instructions to a format that can be interpreted by the printer device, as suggested by Kanno [col. 6, lines 30-33 and lines 37-42]. Regarding claims 6, 13, and 19, the rejection of claims 5, 12, and 18 are respectively incorporated. Kanno further teaches that the print data includes print settings defined by a predetermined protocol, and is transmitted to the first printer in conformance with the predetermined protocol [note in col. 3, lines 31-34 the use of the predetermined Internet Printing protocol to control the printer to perform printing; note in col. 14, lines 58-49 that the print data is in a format defined by the predetermined protocol; again, note in col. 6, line 37 that print data can be related to a print setting]. It would have been obvious to one of ordinary skill in the art having the teachings of the previously combined art and Kanno before the effective filing date of the claimed invention to further specify that the print data includes print settings defined by a predetermined protocol, and is transmitted to the first printer in conformance with the predetermined protocol, as per the teachings of Kanno. The motivation for this obvious combination of teachings would be to enable utilizing additional standardized protocols to correctly communicate specific configurations of vendor-specific printer devices and associated settings, thereby enabling full use of printer capabilities, as suggested by Kanno [see col. 16, lines 53-56]. Regarding claim 7, the rejection of claim 6 is incorporated. Kanno further teaches that the predetermined protocol is Internet Printing Protocol [again note in col. 3, lines 31-34 the use of the predetermined Internet Printing protocol to control the printer to perform printing; note in col. 14, lines 58-49 that the print data is in a format defined by the predetermined protocol]. Refer to the rejection of claim 6 for motivations to combine. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Examiner notes from the cited art: NAKAYAMA et al., US PGPUB 2011/0216361 A1, which teaches the use of local and network printers [see front figure]. Morita, US PGPUB 2021/0165620 A1, which teaches the display of local and network printers [see fig. 5]. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA S AYAD whose telephone number is (571)272-2743. The examiner can normally be reached Monday-Friday, 7:30 am - 4:30 pm. Alt, Friday, EST. 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, Adam Queler can be reached at (571) 272-4140. 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. /MARIA S AYAD/Primary Examiner, Art Unit 2172
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Prosecution Timeline

May 01, 2024
Application Filed
Jan 23, 2026
Non-Final Rejection — §101, §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
33%
Grant Probability
50%
With Interview (+17.1%)
3y 10m
Median Time to Grant
Low
PTA Risk
Based on 159 resolved cases by this examiner. Grant probability derived from career allow rate.

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