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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Species I, drawn to the first embodiment (the first embodiment of invention), disclosed in paragraphs 0022-0090 of Applicant’s Specification
II. Species II, drawn to the second embodiment (the second embodiment of invention), disclosed in paragraphs 0091-0109
III. Species III, drawn to the third embodiment (the third embodiment of invention), disclosed in paragraphs 0110-0122
IV. Species IV, drawn to the fourth embodiment (the fourth embodiment of invention), disclosed in paragraphs 0123-0137
V. Species V, drawn to the fifth embodiment (the fifth embodiment of invention), disclosed in paragraphs 0138-0150
Applicant's election with traverse of Species I (claims 1-9) in the reply filed on 5/11/2026 is acknowledged. The traversal is on the ground(s) that rejoinder of any non-generic claims may be added at a later date.
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/11/2026.
DETAILED ACTION
Claims 1-17 are pending in this application [5/14/2024].
Claims 10-17 have been withdrawn from consideration [5/11/2026].
Drawings
The drawings received on 5/14/2024 are accepted for examination purposes.
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 5/14/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claim 5 is objected to because of the following informalities: Claim 5, line 2 which depends on dependent Claim 3, recites ‘the confirmation screen is configured…’, however Claim 3 does not recite ‘a confirmation screen’. Claim 4 does recite ‘representing a confirmation screen’ in line 6. Examiner treats claim 5 as dependent on claim 4. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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) 1-3 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Jazayeri et al. (US-8,854,669) in view of Kawai (US-2017/0063646).
As to Claim 1, Jazayeri teaches ‘A non-transitory computer-readable recording medium storing computer-readable instructions for a first server, wherein the first server is configured to provide a first service, and the first server comprises a processor [Fig 1 (112, 114, 116), col 4, line 65-col 5, line 15 – remote application server (i.e., first server) executes a web application], wherein the computer-readable instructions, when executed by the processor, cause the first server to: receive user identification information for identifying a user from a terminal device; receive, from the terminal device, a service request that requests the first service [col 8, lines 29-62 – a user of the device may use a browser to enter a username/password (i.e., user identification information) combination to establish a user account with a print service having access into the application of remote application server managed by cloud print service (i.e., second server)]; in a case where the user identification information and the service request are received from the terminal device, send a sending request including the user identification information to a second server different from the first server, the sending request being a signal that requests sending of registration information stored in the second server in association with the user identification information; and in a case where the sending request is sent to the second server and first registration information is received from the second server, store the first registration information as information for providing the first service to the user in a memory in association with the user identification information, wherein in a case where the sending request is sent to the second server but no registration information is received from the second server, no registration information is stored in the memory [col 8, line 29- col 9, lines 8-43 – when a user enters username/password information to receiving access with print service and access into application of remote application server, cloud print service may determine whether a user already has a user account with a separate and possibly related service or service provider, and in such cases determining the user already may have a secure user account established in connection therewith and leverage or access to existing user accounts avoiding a need to create a new user account]’.
Jazayeri does not disclose expressly ‘a service subscription request that requests a subscription’.
Kawai teaches ‘a service subscription request that requests a subscription [par 0048-0049, 0055-0056 – a user creating an account for a service with a fixed price within a prescribed period of time over a term of agreement]’.
Jazayeri and Kawai are analogous art because they are from the same field of endeavor, namely digital image data printing systems. Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to include creating accounts for service agreements including fixed-rates, as taught by Kawai. The motivation for doing so would have been to managing a status of service agreements while reducing economic burdens on the user. Therefore, it would have been obvious to combine Kawai with Jazayeri to obtain the invention as specified in claim 1.
As to Claim 2, Jazayeri in view of Kawai teaches ‘wherein the computer-readable instructions, when executed by the processor, further cause the first server to: in the case where the sending request is sent to the second server but no registration information is received from the second server, send input screen data to the terminal device, the input screen data representing an input screen for inputting registration information; in a case where second registration information is inputted by the user on the input screen displayed at the terminal device, receive the second registration information from the terminal device; and in a case where the second registration information is received from the terminal device, store the second registration information as information for providing the first service to the user in the memory in association with the user identification information [Jazayeri: col 8, line 29- col 9, lines 8-43 – cloud print service may determine whether a user already has a user account with a separate and possibly related service or service provider, and in other cases registering/creating a new user account; Kawai: Fig 13, par 0056-0059 – PC receiving registration page information from information management server to display a registration page to a user to create a user account by inputting an account name, password, address, full name, and payment information]’.
Jazayeri and Kawai are analogous art because they are from the same field of endeavor, namely digital image data printing systems. Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to include creating accounts for service agreements including fixed-rates, as taught by Kawai. The motivation for doing so would have been to managing a status of service agreements while reducing economic burdens on the user. Therefore, it would have been obvious to combine Kawai with Jazayeri to obtain the invention as specified in claim 2.
As to Claim 3, Jazayeri in view of Kawai teaches ‘wherein the computer-readable instructions, when executed by the processor, further cause the first server to: in a case where the user identification information and the service subscription request are received from the terminal device and history information in which the user identification information and third registration information are associated with each other is in the memory, store the third registration information as information for providing the first service to the user in the memory in association with the user identification information, wherein the history information was used when the user subscribed to the first service in the past, wherein in a case where the user identification information and the service subscription request are received from the terminal device and the history information is not in the memory, the sending request is sent to the second server, and in the case where the user identification information and the service subscription request are received from the terminal device and the history information is in the memory, the sending request is not sent to the second server [Jazayeri: col 8, line 29- col 9, lines 8-43 – cloud print service may determine whether a user already has a user account (i.e. past history) with a separate and possibly related service or service provider, and in such cases determining the user already may have a secure user account established in connection therewith and leverage or access existing user accounts by associating new application service (i.e. third registration information), and in other cases registering/creating a new user account; Kawai: Fig 13, par 0056-0059 – PC receiving registration page information from information management server to display a registration page to a user to create a user account by inputting an account name, password, address, full name, and payment information]’.
Jazayeri and Kawai are analogous art because they are from the same field of endeavor, namely digital image data printing systems. Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to include creating accounts for service agreements including fixed-rates, as taught by Kawai. The motivation for doing so would have been to managing a status of service agreements while reducing economic burdens on the user. Therefore, it would have been obvious to combine Kawai with Jazayeri to obtain the invention as specified in claim 3.
As to Claim 6, Jazayeri teaches ‘wherein the second server is configured to provide a second service different from the first service, and the first registration information is stored in the second server as information for the second server to provide the second service to the user [Fig 1 (102, 114), col 4, line 65-col 5, line 15, col 8, line 63-col 9, line 7 – cloud print server for registering users, maintaining user accounts, and maintaining security of users’ accounts and application server for performing web application]’.
As to Claim 7, Kawai in the proposed combination teaches ‘wherein the registration information includes at least one of address information and payment information [Fig 13, par 0056-0059 – PC receiving registration page information from information management server to display a registration page to a user to create a user account by inputting an account name, password, address, full name, and payment information]’.
Jazayeri and Kawai are analogous art because they are from the same field of endeavor, namely digital image data printing systems. Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to include creating accounts for service agreements including fixed-rates, as taught by Kawai. The motivation for doing so would have been to managing a status of service agreements while reducing economic burdens on the user. Therefore, it would have been obvious to combine Kawai with Jazayeri to obtain the invention as specified in claim 7.
Allowable Subject Matter
Claim 4 (and claim 5 based on dependency) is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Jazayeri in view of Kawai and further in view of the prior art searched and/or cited does not teach nor suggest the combination of limitations including “when executed by the processor, further cause the first server to: in the case where the sending request is sent to the second server and the first registration information is received from the second server, send confirmation screen data to the terminal device, the confirmation screen data representing a confirmation screen including the first registration information, wherein in a case where first information corresponding to storage of the first registration information in the memory is received from the terminal device after the confirmation screen data has been sent to the terminal device, the second registration information is stored in the memory in association with the user identification information” as recited in dependent claim 4.
Claims 8-16 are allowed.
Claims 8-9 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claims 10-16, directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104. Independent claim 17, directed to the invention(s) not belonging to elected Species I has NOT been rejoined.
Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement for withdrawn dependent claims 10-16 are rejoined for depending on allowable independent claim 8. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
The following is an examiner’s statement of reasons for allowance of claims 8-16: Jazayeri in view of Kawai and further in view of the prior art searched and/or cited does not teach nor suggest the combination of limitations including “A non-transitory computer-readable recording medium storing computer-readable instructions for a first server, wherein the first server is configured to provide a first service, the first server comprises a processor and a first memory, wherein the computer-readable instructions, when executed by the processor, cause the first server to: receive, from a first external device, user related information for providing a second service different from the first service to a user; receive, from a second external device, a service subscription request that requests a subscription to the first service; in a case where the user related information is received from the first external device, the service subscription request is received from the second external device, and first registration information is in a second memory in association with the user related information as information for providing the second service to the user, acquire the first registration information from the second memory, wherein in a case where the user related information is received from the first external device, the service subscription request is received from the second external device, and no registration information is in the second memory in association with the user related information as information for providing the second service to the user, registration information is not acquired; and in a case where the first registration information is acquired from the second memory, store the first registration information as information for providing the first service to the user in the memory in association with the user related information” as recited in independent claim 8.
Dependent claims 9-16 are allowed for being dependent on allowable independent claim 8. Therefore, claims 8-16 are allowed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record
a. US Patent No. 8,854,669
b. US Publication No. 2017/0063646
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
c. JP Publication No. 2015-158937A
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/MIYA J CATO/Primary Examiner, Art Unit 2681
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