CTNF 18/757,508 CTNF 84866 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 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 (i.e., a descriptive title that distinguishes the invention and is not a generic or general description). The new title should take into account any amendments to the claims to best indicate the claimed invention. Information Disclosure Statement The information disclosure statement (IDS) submitted on 6/28/24 follows the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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. Claim 18 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because according to MPEP 2106.03: Non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations. Therefore, the claimed “program” without a non-transitory computer-readable medium constitutes non-statutory subject matter. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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: “a communicator” in claims 1 and 17. 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: [0051] The communicator 312 performs communication with the mobile terminal apparatus 5. The communicator 312 includes at least one selected from the group consisting of a wireless LAN communicator 312a, an NFC communicator 312b, and a USB communicator 312c. The wireless LAN communicator 312a performs wireless communication of a wireless LAN communication method with the mobile terminal apparatus 5. [0057] The communicator 510 performs communication with the image processing apparatus 3. The communicator 510 includes at least one selected from the group consisting of a wireless LAN communicator 510a, an NFC communicator 510b, and an USB communicator 510c. 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 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim (s) 1, 2 ,4, 9, 11, 17 and 18 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Asai (US 2022/0174169) . Regarding claim 1, Asai teaches a mobile terminal apparatus (mobile device 3; ¶¶ 0026-0031, Fig. 3) comprising: a communicator configured to communicate with an image processing apparatus configured to perform image processing (communication I/Fs 14 and 34; ¶ 0031, Fig. 3); a controller configured to execute a plurality of applications comprising a first application related to the image processing and a second application not related to the image processing (controller 30 executes print function and fax function, ¶ 0035 and ¶ 0082); and a display configured to display an image corresponding to an application being executed out of the plurality of applications (user I/F 33; ¶ 0030, Fig. 3), wherein the first application comprises an operation application used for operation of the image processing (print function to perform printing; ¶ 0041), and in a communication state in which communication connection between the communicator and the image processing apparatus is established (mobile device 3 connected with selected device; ¶ 0089, Fig. 11 S201), the controller restricts display of an image corresponding to the second application (mobile device may hide or gray out restricted fax function; ¶ 0090, Fig. 11 S205). Regarding claim 2, Asai teaches the mobile terminal apparatus according to claim 1, wherein the image processing comprises printing, the first application further comprises an application that handles image data as a printing target of the image processing apparatus (printing; ¶ 0041), and the controller is configured to, in the communication state, restrict the display of the image corresponding to the second application without restricting display of an image corresponding to the first application (restrict fax function only; ¶ 0090, Fig. 11 S205). Regarding claim 4, Asai teaches the mobile terminal apparatus according to claim 1, wherein the display is configured to display a home screen in which a plurality of icon image objects corresponding to the plurality of applications are arranged and user-selectable (Fig. 9A), and the controller is configured to, in the communication state, cause an icon image object of the plurality of icon image objects corresponding to the first application to be selectable on the home screen, and cause an icon image object of the plurality of icon image objects corresponding to the second application to not be selectable on the home screen (¶ 0090, Fig. 9B). Regarding claim 9, Asai teaches the mobile terminal apparatus according to claim 1, wherein the controller is configured to, when the communication connection is established, automatically activate the operation application (¶ 0089) or prompt a user to perform an activation operation of the operation application. Regarding claim 11, Asai teaches the mobile terminal apparatus according to claim 1, wherein the controller is configured to, after the communication connection is established, start the restriction, in response to reception of a predetermined operation from a user (¶ 0090). Regarding claim 17, Asai teaches an image processing apparatus comprising (MFP 5; ¶¶ 0022-0024, Fig. 1): a communicator configured to communicate with a mobile terminal apparatus configured to execute a plurality of applications comprising a first application related to image processing and a second application not related to the image processing (MFP communicates with mobile device 3 and has printing function and fax function; ¶¶ 0022-0024); an image processor configured to execute the image processing, based on a user operation on the mobile terminal apparatus (MFP 5 executes functions instructed from mobile terminal; ¶¶ 0022-0024 and ¶ 0035); and a controller configured to control the communicator to transmit, to the mobile terminal apparatus, information for restricting display of an image corresponding to the second application for the mobile terminal apparatus (MFP sends restriction information to mobile device 3; ¶ 0089), in a communication state in which communication connection with the mobile terminal apparatus is established by the communicator (MFP connected with mobile device; ¶ 0089, Fig. 11 S201). Claim 18 recites a program causing a mobile terminal apparatus to execute (¶ 0112) similarly to the apparatus of claim 1. Thus, arguments similar to that presented above for claim 1 are equally applicable to claim 18. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT YIP whose telephone number is (571)270-5244. The examiner can normally be reached 9:00-5:00 PM PST. 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, Akwasi M. Sarpong can be reached at (571) 270-3438. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KENT YIP/Primary Examiner, Art Unit 2681 Application/Control Number: 18/757,508 Page 2 Art Unit: 2681 Application/Control Number: 18/757,508 Page 3 Art Unit: 2681 Application/Control Number: 18/757,508 Page 4 Art Unit: 2681 Application/Control Number: 18/757,508 Page 5 Art Unit: 2681 Application/Control Number: 18/757,508 Page 6 Art Unit: 2681 Application/Control Number: 18/757,508 Page 8 Art Unit: 2681 Application/Control Number: 18/757,508 Page 9 Art Unit: 2681 Application/Control Number: 18/757,508 Page 10 Art Unit: 2681
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