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 .
Response to filed Amendments
Applicant’s Amendments/Remarks filed on 06/11/2026 have been received and made of record. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/02/2026 has been entered.
Claims 1, 8, and 14 have been amended.
Claims 1-15 remained pending.
Outstanding USC 112 rejection has been withdrawn based at least on the provided amendments/remarks filed on 06/11/2026.
Please refer to the action below.
Examiner Notes
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. However, the claimed subject matter, not the specification, is the measure of the invention.
Response to Remarks/Arguments
Applicants’ arguments of 06/11/2026 regarding the prior arts of record of Tonegawa et al. (US 2019/0141201) in view of Fry et al. (US 7,120,593), corresponding to pages 7-8 of the remarks, have been considered, however, they are moot in light of the new ground of rejection. Furthermore, the arguments of Ishibashi in view Fry on pages 8-9, have been considered, however, they are moot in light of the new ground of rejection.
Secondly, the arguments of pages 8-9 citing “Regarding Ishibashi, the Examiner has alleged that Ishibashi teaches scan-upload with multiple destinations and file parameters. See Office Action, pages 25-26. However, Ishibashi does not teach a menu to receive a selection of which destination is to receive a file having a smaller size. Ishibashi's system allows users to select destinations and file parameters but does not provide the claimed mechanism for selecting which destination should receive a smaller file after the destinations have been input. The combination of Ishibashi and Fry similarly fails to teach or suggest the claimed features. As discussed above, Fry's sequential transmission of low-resolution then high- resolution files to the same service provider does not cure the deficiencies of Ishibashi. There is no teaching or suggestion in the cited references of a menu that, after receiving destination inputs, allows a user to select which destination should receive a smaller file, followed by transmission of different files to different destinations based on that selection. Accordingly, Applicant respectfully requests withdrawal of the rejections under 35 U.S.C. § 103”, have as well been considered, however, they are moot in light of the new ground of rejection.
Claim Interpretations - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims limitations of “a scan unit”, “a storage unit”, and a communication unit” of (claims 1, and 8) have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “to” coupled with functional language “output”, “store”, or “transmit” (claims 1, and 8) without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-13 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification, referenced by the PGPUB, for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
• “a control unit” – Specification [48]-[49]– It appears that the corresponding structure is processor 10a.
• “image processing units” – Specification [49]– It appears that the corresponding structures are processors 20a1-20a3.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 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.
Claims 1-15 is/are rejected under 35 U.S.C. 103 as obvious over Ishibashi et al. (US 2016/0255223, previously cited), in view of Xiong et al. (CN 109981702, A1).
Regarding claim 1, Ishibashi teaches an image forming apparatus (Ishibashi teaches at least in para. 0039 and Fig. 2A an MFP 10 serving as the image forming apparatus) comprising:
a scan unit to output digital image data of a scanned document (the MFP 10 of further para. 0039 and Fig. 2A comprises a scanner 12 comprising said scan unit to output digital image data of a scanned document);
a user interface unit to receive an input of a first destination and a second destination (at least an operation interface 24 further configured for at least receiving further in at least Figs 11-13, a scan upload input instruction illustrated at least in Fig. 13A and para. 0164-0168, and 0171-0173 is of a coordinated first destination and a second destination); and
to display a menu after receiving the input of the first destination and the second destination, the menu to receive a selection of
a processor (image processor 11 or 12 of further para. 0039 and Fig. 2A) to:
generate a first file having a first size based on the digital image data, and generate a second file having a second size based on the digital image data, the second size being smaller than the first size (the at least scan upload plurality instruction inputs of at least Fig. 13A and 5A and that of further Figs. 6-7 are configured for generating at least first PDF files having a first parameter resolution setting of at least Fig. 6 and generate further in at least Fig. 6 one or more files based on the digital image data and parameter setting, a case exists where the setting parameter of Fig. 7 generates second generated file which may in a case be smaller than the middle/high resolution setting file parameter of Fig. 6 and para. 0084-0086);
a storage unit
a communication unit to transmit the first file to the first destination and the second file to the second destination
However, Ishibashi is silent regarding the above lined-out items such as specifically citing said menu to receive specifically a selection of which of the first destination and the second destination is to receive a file having a smaller size, to store the first file and the second file; and transmit said first file to the first destination and said second file to the second destination specifically based on the selection received via the menu.
Xiong teaches in at least Figs. 1 and the Abstract a client computing device/server configured to upload stored user files of several sizes in an inherent storage means to selected destinations effectively makes use of the local storage space resources and bandwidth idle time, greatly reduces the cost of the file; Xiong further teaches in the disclosure the device comprising an output destination selection means configured based on a judging result to receive a selection of which of the first destination 52 and the second destination 53 is to receive a file having a smaller size such as “file client server judges whether the received size of the file uploaded by the user is less than the preset first threshold value; if the judging result is less than the file size of the preset first threshold, sending the file to the cloud server for file storage; if the judging result is the file size is greater than or equal to the preset first threshold, the file is stored to the storage server cluster…… the file client server 51, for judging whether the received file size uploaded by the user is less than the preset first threshold value. when the judging result is the file size is smaller than the first threshold value, sending the file to the cloud server 52 for file storage. when the judging result is that the file size is greater than or equal to the first threshold, storing the file to the local storage server cluster 53” further illustrating a communication means of Fig. 5 and the disclosure configured to transmit the small first files to the first cloud server destination 52 and transmit second larger files to the second server destination 53 based on the implied judging result and/or selection means. It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Ishibashi in view of Xiong to include wherein said menu to receive specifically a selection of which of the first destination and the second destination is to receive a file having a smaller size, to store the first file and the second file; and transmit said first file to the first destination and said second file to the second destination specifically based on the selection received via the menu, as discussed above, as Ishibashi in view of Xiong are in the same field of endeavor of uploading and transmitting files to selected destinations, Xiong’s combination of files selecting means for transmission according to the file sizes and the selecting destinations to receive either a file having a smaller size, the larger files further complements the scanned files transmitting schemes of Ishibashi in the sense that the transmitting files architecture of Ishibashi when combined with the combination of files selecting means for transmission according to the file sizes and the destination devices types architecture of Xiong further advantageously cause the system of Ishibashi when combined to seamlessly send uploaded large files to specific destinations and send the larger files to tother specific destinations which as disclosed by Xiong “effectively makes use of the local storage space resources and bandwidth idle time” by sending specifically smaller files to certain destination and larger files to destinations capable of handling larger files which transmission schemes ultimately speed up processing and increased throughput according to further known methods to yield predictable results since known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art as said combination is thus the adaptation of an old idea or invention using newer technology that is either commonly available and understood in the art thereby a variation on already known art (See MPEP 2143, KSR Exemplary Rationale F).
Regarding claim 2 (according to claim 1), Ishibashi further teaches wherein the user interface unit is further to receive an input to generate the second file having the smaller second size (a case exists where the command of Figs 6-7 may comprise an instruction input to generate the second file with a low/medium resolution having the smaller second size than a file with a high resolution).
Regarding claim 3 (according to claim 1), Ishibashi further teaches wherein the size of the first file and the size of the second file is determined based on a parameter of the respective file, the parameter including a file type, a resolution, an image quality, a compression density, a compression factor, or a color scheme (Ishibashi further transmitted upload image files of at least Fig. 12-13 further comprises received image parameters of at least Figs. 6-7 and para. 0084 comprising size of the first file and the size of the second file determined based on a parameter of the respective file, the parameter including a file type, a resolution, an image quality, a compression density, a compression factor, or a color scheme).
Regarding claim 4 (according to claim 3), Ishibashi further teaches wherein the user interface unit is further to receive an input of at least one parameter for each of the first file and the second file (data shown further in at least Figs. 12-13 and 6-7 and para. 0084 further include received input of at least one parameter for each of the first file and the second file).
Regarding claim 5 (according to claim 1), Ishibashi further teaches wherein each of the first destination and the second destination comprises an email server, a network storage device, a cloud-based storage device, or a portable storage device (destination data of further Figs. 12-13 and para. 0084 further comprises a first destination and the second destination comprises an email server, a network storage device, a cloud-based storage device, or a portable storage device).
Regarding claim 6 (according to claim 1), Ishibashi further teaches wherein the processor is further to generate a third file for a third destination based on the digital image data, the third file having a third size different from the first size and the second size (embodiments of further Figs. 5A, and 6-7 and para. 0084 further comprises at least selected file destinations including storage, cloud, and FTP which may include as implied in a case generate third file for one of the three destination based on the digital image data, the third file may have obviously a third size different from the first size and the second size).
Regarding claim 7 (according to claim 1), Ishibashi further teaches wherein the processor is to generate a preprocessed file using the digital image data, and wherein each of the first file and the second file is generated using the preprocessed file (para. 0084-0086 and Fig. 6 and 12A further discloses at least preprocessing of the image data including at least changing of the format, resolution of the data generate inherently said preprocessed file using the digital image data, and wherein each of the first file and the second file is generated in a case using the preprocessed file).
Regarding claim 8, Ishibashi teaches an image forming apparatus (Ishibashi teaches at least in para. 0039 and Fig. 2A an MFP 10 serving as the image forming apparatus) comprising:
a scan unit to output digital image data of a scanned document (the MFP 10 of further para. 0039 and Fig. 2A comprises a scanner 12 comprising said scan unit to output digital image data of a scanned document);
a user interface unit to receive an input including a plurality of destinations for the scanned document (at least an operation interface 24 further configured for at least receiving further in at least Figs 11-13 at least one or more plurality of scan upload instruction inputs of at least Fig. 13A and 5A including said plurality of destinations for the scanned document); and
to display a menu after receiving the input including the plurality of destinations, the menu to receive a selection of
a processor to generate a first file and a second file based on the scanned document, the second file having at least one parameter setting different from the first file (system is further adapted in at least Fig. 7 to generate and upload at least a second PDF file based on the digital image data and a first parameter resolution setting of at least Fig. 6 and to generate further in at least Fig. 6 one or more files based on the digital image data and a parameter setting, a case exists where the setting parameter of Fig. 7 may be in a case be smaller than the middle/high resolution setting parameter of Fig. 6 and para. 0084-0086);
a storage unit
a communication unit to transmit the first file to a first destination of the plurality of destinations and the second file to a second destination of the plurality of destinations
However, Ishibashi is silent regarding the above lined-out items such as specifically citing the said menu to receive a selection of which of the plurality of destinations is to receive specifically a file having a smaller size, to store the first file and the second file; and transmit said first file to a first destination of the plurality of destinations and the second file to a second destination of the plurality of destinations based on the selection received via the menu.
Xiong teaches in at least Figs. 1 and the Abstract a client computing device/server configured to upload stored user files of several sizes in an inherent storage means to selected destinations effectively makes use of the local storage space resources and bandwidth idle time, greatly reduces the cost of the file; Xiong further teaches in the disclosure the device comprising an output destination selection means configured based on a judging result to receive a selection of which of the first destination 52 and the second destination 53 is to receive a file having a smaller size such as “file client server judges whether the received size of the file uploaded by the user is less than the preset first threshold value; if the judging result is less than the file size of the preset first threshold, sending the file to the cloud server for file storage; if the judging result is the file size is greater than or equal to the preset first threshold, the file is stored to the storage server cluster…… the file client server 51, for judging whether the received file size uploaded by the user is less than the preset first threshold value. when the judging result is the file size is smaller than the first threshold value, sending the file to the cloud server 52 for file storage. when the judging result is that the file size is greater than or equal to the first threshold, storing the file to the local storage server cluster 53” further illustrating a communication means of Fig. 5 and the disclosure configured to transmit the small first files to the first cloud server destination 52 and transmit second larger files to the second server destination 53 based on the implied judging result and/or selection means. It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Ishibashi in view of Xiong to include wherein said menu to receive specifically a selection of which of the first destination and the second destination is to receive a file having a smaller size, to store the first file and the second file; and transmit said first file to a first destination of the plurality of destinations and the second file to a second destination of the plurality of destinations based on the selection received via the menu, as discussed above, as Ishibashi in view of Xiong are in the same field of endeavor of uploading and transmitting files to selected destinations, Xiong’s combination of files selecting means for transmission according to the file sizes and the selecting destinations to receive either a file having a smaller size, the larger files further complements the scanned files transmitting schemes of Ishibashi in the sense that the transmitting files architecture of Ishibashi when combined with the combination of files selecting means for transmission according to the file sizes and the destination devices types architecture of Xiong further advantageously cause the system of Ishibashi when combined to seamlessly send uploaded large files to specific destinations and send the larger files to tother specific destinations which as disclosed by Xiong “effectively makes use of the local storage space resources and bandwidth idle time” by sending specifically smaller files to certain destination and larger files to destinations capable of handling larger files which transmission schemes ultimately speed up processing and increased throughput according to further known methods to yield predictable results since known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art as said combination is thus the adaptation of an old idea or invention using newer technology that is either commonly available and understood in the art thereby a variation on already known art (See MPEP 2143, KSR Exemplary Rationale F).
Regarding claim 9 (according to claim 8), Ishibashi further teaches wherein the parameters of each of the first file and the second file include a file type, a resolution, an image quality, a compression density, a compression factor, or a color scheme (the scan upload file commands of further Figs. 5-7 comprises said settings parameters of each of the first file and the second file include one of a cited file type, a cited resolution, or a preset color scheme).
Regarding claim 10 (according to claim 9), Ishibashi further teaches wherein the processor is to: generate the first file based on the digital image data and a first parameter setting, and generate the second file based on the digital image data and a second parameter setting, wherein the second file has a smaller file size than the first file (the system is further adapted in at least Fig. 7 to generate and upload at least a second PDF file based on the digital image data and a first parameter resolution setting, and to generate further in at least Fig. 6 one or more files based on the digital image data and a parameter setting of Fig. 6, a case exists where the setting parameter of Fig. 7 may be in a case obviously smaller than the middle/high resolution setting parameter of Fig. 6).
Regarding claim 11 (according to claim 8), Ishibashi further teaches wherein each of the plurality of destinations comprises an email server, a network storage device, a cloud-based storage device, or a portable storage device (destination data of further Figs. 12-13 and para. 0084 further comprises a first destination and the second destination comprises an email server, a network storage device, a cloud-based storage device, or a portable storage device).
Regarding claim 12 (according to claim 8), Ishibashi further teaches wherein the user interface unit is further to receive a selection to create files having different parameters (Figs. 5-7, and 12A further teaches said received selection to create files having different parameters).
Regarding claim 13 (according to claim 12), Ishibashi further teaches wherein the processor is to generate a plurality of files respectively for the plurality of destinations and each of the plurality of files has a different set of parameters than the other files (received input parameters selection of further Figs. 5-7, and 12A by the processor further result understoodly in a plurality of files respectively for the plurality of destinations of Fig. 13A and 5A and each of the plurality of files such as shown in at least Fig. 7 having different set of parameters than the other files).
Regarding claim 14, Ishibashi teaches in at least para 0196 a non-transitory machine-readable storage medium encoded with instructions executable by a processor, the non-transitory machine-readable storage medium comprising:
instructions to output digital image data of a scanned document (instructions of at least Figs. 6-7);
instructions to receive an input of a first destination and a second destination for the scanned document (communication destinations of further Figs. 6-7 and 13A);
instructions to generate a first file having a first size based on the digital image data (file setting parameters of at least Fig. 6 having in a case a first middle/high setting size based on the predetermined digital image data);
instructions to display a menu after receiving the input of the first destination and the second destination, the menu to receive a selection of
instructions to generate a second file having a second size, the second size being smaller than the first size, based on the digital image data (Figs. 7 and 11-12 further teaches a configuration to generate a file with a low resolution as the second file being in a case smaller than the first size of medium or large resolution, based on the digital image data);
instructions to generate a first file having a first size based on the digital image data (Figs. 7 and 11-12 further teaches likewise a configuration to generate a first file with a medium or high resolution as the first being in a case of medium or large resolution, based on the digital image data);
instructions to transmit the first file to the first destination and the second file to the second destination
However, Ishibashi is silent regarding the above lined-out items such as specifically citing the menu to receive a selection of which of the first destination and the second destination is to receive a file having a smaller size, to store the first file and the second file; and transmit the first file to the first destination and the second file to the second destination based on the selection received via the menu.
Xiong teaches in at least Figs. 1 and the Abstract a client computing device/server configured to upload stored user files of several sizes in an inherent storage means to selected destinations based on implied instructions effectively makes use of the local storage space resources and bandwidth idle time, greatly reduces the cost of the file; Xiong further teaches in the disclosure the device comprising an output destination selection means configured based on a judging result to receive a selection of which of the first destination 52 and the second destination 53 is to receive a file having a smaller size such as “file client server judges whether the received size of the file uploaded by the user is less than the preset first threshold value; if the judging result is less than the file size of the preset first threshold, sending the file to the cloud server for file storage; if the judging result is the file size is greater than or equal to the preset first threshold, the file is stored to the storage server cluster…… the file client server 51, for judging whether the received file size uploaded by the user is less than the preset first threshold value. when the judging result is the file size is smaller than the first threshold value, sending the file to the cloud server 52 for file storage. when the judging result is that the file size is greater than or equal to the first threshold, storing the file to the local storage server cluster 53” further illustrating a communication means of Fig. 5 and the disclosure configured to transmit the small first files to the first cloud server destination 52 and transmit second larger files to the second server destination 53 based on the implied judging result and/or selection means. It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Ishibashi in view of Xiong to include wherein said menu to receive specifically a selection of which of the first destination and the second destination is to receive a file having a smaller size, to store the first file and the second file; and transmit said first file to the first destination and said second file to the second destination specifically based on the selection received via the menu, as discussed above, as Ishibashi in view of Xiong are in the same field of endeavor of uploading and transmitting files to selected destinations, Xiong’s combination of files selecting means for transmission according to the file sizes and the selecting destinations to receive either a file having a smaller size, the larger files further complements the scanned files transmitting schemes of Ishibashi in the sense that the transmitting files architecture of Ishibashi when combined with the combination of files selecting means for transmission according to the file sizes and the destination devices types architecture of Xiong further advantageously cause the system of Ishibashi when combined to seamlessly send uploaded large files to specific destinations and send the larger files to tother specific destinations which as disclosed by Xiong “effectively makes use of the local storage space resources and bandwidth idle time” by sending specifically smaller files to certain destination and larger files to destinations capable of handling larger files which transmission schemes ultimately speed up processing and increased throughput according to further known methods to yield predictable results since known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art as said combination is thus the adaptation of an old idea or invention using newer technology that is either commonly available and understood in the art thereby a variation on already known art (See MPEP 2143, KSR Exemplary Rationale F).
Regarding claim 15 (according to claim 14), Ishibashi further teaches wherein the size of the first file and the size of the second file is determined based on a parameter of the respective file, the parameter including a file type, a resolution, an image quality, a compression density, a compression factor, or a color scheme (the system teaches a low-resolution setting size of at least Fig. 7 is set for a file and in Fig. 6 setting size of the first file determined based on a parameter of the respective file, said parameter including a file type, a resolution, or a preset color scheme).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELLUS AUGUSTIN whose telephone number is (571)270-3384. The examiner can normally be reached 9 AM- 5 PM.
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/MARCELLUS J AUGUSTIN/Primary Examiner, Art Unit 2682 07/29/2026
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