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 .
Claim Interpretation
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.
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. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “output unit” in claim 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing 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 for the 35 U.S.C. 112(f) or pre- AIA 35 U.S.C. 112, sixth paragraph limitation:
output unit – paragraph 93, wherein the output unit is part of a printer unit, which is structure, paragraph 26
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 this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 8, 10, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sueshige (US 2012/0224207).
Regarding Claim 1, Sueshige teaches a printing apparatus that performs printing and is communicably connected to an information processing apparatus (Paragraph 40), which processes information,
the printing apparatus comprising:
at least one processor (Element 113, wherein there is a controller); and
a memory coupled to the processor storing instructions that, when executed by the processor (Paragraph 135, wherein there is memory with a program), cause the processor to function as:
a registering section that registers a plurality of print settings, which have different output conditions including printing conditions when performing the printing with the printing apparatus (Paragraph 69, wherein the print settings are registered in the print server. The server can be a part of the printer, paragraph 10);
a transmitting unit that transmits at least one print setting of the plurality of print settings to the information processing apparatus (Paragraph 83, wherein the client acquires the print settings, which are sent from the server);
a determining section that, prior to transmission of the print setting performed by the transmitting unit, determines a priority order with respect to the plurality of print settings, which have been registered in the registering section (Paragraph 78, wherein the print settings are set based on priority); and
a control unit that exchanges an order of the plurality of print settings to be transmitted into the priority order when the transmitting unit transmits the plurality of print settings (Paragraphs 78 and 81, wherein the print settings are arranged accordingly).
Regarding Claim 2, Sueshige further teaches wherein the transmitting unit transmits the plurality of print settings whose order has been exchanged into the priority order by the control unit (Paragraph 83, wherein the settings are displayed based on the acquired information and therefore transmitted).
Regarding Claim 3, Sueshige further teaches wherein in the information processing apparatus, the plurality of print settings are displayed in the exchanged priority order, and one print setting from among the plurality of print settings is capable of being selected (Paragraph 83, wherein the settings are displayed based on the acquired information), and
the printing apparatus comprises an output unit configured to perform an output based on the print setting selected by the information processing apparatus (Paragraph 44, wherein the printer can print).
Regarding Claim 4, Sueshige further teaches wherein the information processing apparatus includes an operating system (OS) (Paragraph 7, wherein there is an OS),
the printing apparatus is communicably connected to a plurality of the information processing apparatuses (Paragraph 10, wherein there can be multiple computers),
the instructions, when executed by the processor, cause the processor to function as an identifying unit that identifies the OS for each the information processing apparatus (Paragraph 7 and 49, wherein there is identification of the driver, which corresponds to the OS), and
the transmitting unit transmits the plurality of print settings whose order has been exchanged into the priority order by the control unit according to the OS identified by the identifying unit (Paragraph 83, wherein the client acquires the print settings, which are sent from the server).
Regarding Claim 5, Sueshige further teaches wherein the transmitting unit transmits the print setting in response to a request to transmit the print setting from the information processing apparatus (Paragraph 83, wherein the client acquires the print settings, which are sent from the server).
Regarding Claim 8, Sueshige further teaches wherein the instructions, when executed by the processor, cause the processor to function as a switching section that switches presence/absence of execution of determining the priority order performed by the determining section (Paragraphs 78 and 80, wherein the settings can be arranged based on the priority based on each setting).
Regarding Claim 10, the limitations are similar to those treated in and are met by the references as discussed in claim 1 above.
Regarding Claim 11, the limitations are similar to those treated in and are met by the references as discussed in claim 1 above.
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) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sueshige (US 2012/0224207) in view of Takei (US 2012/0236361).
Regarding Claim 6, Sueshige does not teach wherein the determining section determines the priority order based on one of the following determining conditions: a descending order of a use frequency of the print setting in the printing apparatus, a descending order of a registration date and time of the print setting registered in the registering section, and a descending order of a last use date and time of the print setting in the printing apparatus.
Takei does teach wherein the determining section determines the priority order based on one of the following determining conditions: a descending order of a use frequency of the print setting in the printing apparatus, a descending order of a registration date and time of the print setting registered in the registering section, and a descending order of a last use date and time of the print setting in the printing apparatus (Paragraph 42, wherein the settings can be arranged based on frequency of use).
Sueshige and Takei are combinable because they both teach priority order of print settings.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Sueshige with the teachings of Takei for the purpose of improving user-friendliness for utilizing print settings (Takei: Paragraph 7).
Regarding Claim 7, Takei further teaches wherein the instructions, when executed by the processor, cause the processor to function as a changing section that changes the determining condition (Paragraph 42, wherein the log would be updated and therefore the favorite settings would be changed).
Sueshige and Takei are combinable because they both teach priority order of print settings.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Sueshige with the teachings of Takei for the purpose of improving user-friendliness for utilizing print settings (Takei: Paragraph 7).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sueshige (US 2012/0224207) in view of official notice.
Regarding Claim 9, Sueshige does not teach wherein the output conditions include post-processing conditions when performing post-processing after the printing.
Official notice is taken that it would have been obvious to one of ordinary skill in the art to have a printer have post-processing functions. These functions include known functions of stapling, binding, folding, etc. These functions allow for further processing of print jobs.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to modify the teachings of Sueshige with the teachings of post-processing for the purpose of including additional functions for the user which enhances ability for the user to produce requested print jobs.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional cited prior art of A-F, I, and J all relate to determining order of print settings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS PACHOL whose telephone number is (571)270-3433. The examiner can normally be reached M-Th: 8-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, George Eng can be reached at 571-272-7495. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS PACHOL/ Primary Examiner, Art Unit 2699
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