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 .
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 7/20/24 follows the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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: “an authenticator” and “an acquirer” in claim 1.
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 of the patent publication US 2025/0039320 shows that the following appears to be the corresponding structure described in the specification of the patent publication for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
[0054] The controller 100 controls the entire image forming apparatus 10. The controller 100 reads and executes various programs stored in the storage devices (including the storage 110 and the ROM 120) so as to realize various functions. The controller 100 may be realized by, for example, one or more control devices/computing devices (e.g., a Central Processing Unit (CPU) or a System on a Chip (SoC)). Alternatively, the controller 100 may be configured by a control circuit.
[0064] Main software configurations of the apparatuses of the system 1 will be described with reference to FIG. 3. FIG. 3 is a diagram illustrating main software configurations of the image forming apparatus 10, the terminal device 20, and the server apparatus 30. Note that the software configurations illustrated in FIG. 3 are main configurations required for this embodiment, and other configurations are omitted. For example, in a case of the image forming apparatus 10, configurations that provide functions required for the image forming apparatus 10, such as an image processor and a power controller, may be further included.
[0065] The controller 100 of the image forming apparatus 10 functions as the following configurations by executing programs (applications) stored in the storage 110 or the ROM 120.
[0075] A user authenticator 1030 executes user authentication...
[0076] An image acquirer 1040 acquires an image…
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-5, 11, 12 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The following limitations were previously recited and it’s unclear if they are new limitations or claim antecedent basis from their parent claim.
Such claim limitation(s) is/are: “a setting of the transmission destination” in claim 2, “a restriction” and “a transmission destination” in claims 3 and 4, “a transmission destination” in claim 5, and “a setting of a transmission destination” in claim 11, “a transmission destination” in claims 12 and 14.
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) 1-7, 9, 11-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirokawa (US 2017/0078498).
Regarding claim 1, Hirokawa teaches an image forming apparatus (MFP 100; ¶¶ 0026-0041, Figs. 1 and ), comprising:
one or more memories that store user information including destination information, associated with one or more users (registration information registered in the authentication information manager 110; ¶ 0032);
an authenticator that authenticates a login of any one of the one or more users with reference to the user information (user authentication unit 102 authenticates a user; ¶ 0032);
an acquirer that acquires the destination information associated with the logged-in user from the user information (destination configuration unit 106; ¶ 0036); and
one or more controllers that are capable of executing a transmission process with the acquired destination information as a transmission destination when the destination information associated with the logged-in user is acquired from the user information (destination set automatically to login user; ¶¶ 0046-0048, Fig. 3A 54), wherein the one or more controllers execute the transmission process by accepting a setting of the transmission destination from the logged-in user, even when the destination information associated with the logged-in user is not acquired from the user information (if “condition of setting automatically” 56 not met e.g. “if destination other than login is included” 56 is checked and not included while “all destinations are modifiable” 58 is checked; ¶¶ 0047-0051, Fig. 6A and 6B).
Regarding claim 2, Hirokawa teaches the image forming apparatus according to claim 1, wherein when the acquirer does not acquire the destination information (“condition of setting automatically” 56 not met), the one or more controllers set a restriction on a setting of the transmission destination in comparison with a case where the destination information is acquired (“only destination set automatically is unmodifiable” 56 is selected; ¶ 0058, Fig. 7A).
Regarding claim 3, Hirokawa teaches the image forming apparatus according to claim 2, wherein the one or more controllers set a restriction to prohibit an acceptance of an input of the transmission destination in the setting of a transmission destination (“all destinations are unmodifiable” 58 is selected; ¶ 0054, Fig. 7A).
Regarding claim 4, Hirokawa teaches the image forming apparatus according to claim 3, wherein the one or more controllers set a restriction to only allow a specific transmission destination to be set on the setting of a transmission destination (conditions for automatically setting the destination 56; ¶ 0042, Fig. 3A).
Regarding claim 5, Hirokawa teaches the image forming apparatus according to claim 4, wherein the one or more memories further store information on a transmission destination as an address book, and the specific transmission destination is stored in the address book (destination information management unit 112; ¶ 0036).
Regarding claim 6, Hirokawa teaches the image forming apparatus according to claim 2, wherein as the restriction of a transmission destination, a restriction to only allow a transmission destination including a specific character string to be set is set transmission destination to be set on the setting of a transmission destination (“if destination other than optional address is included” selected as the condition for automatically setting the destination 56; ¶ 0042, Fig. 3A).
Regarding claim 7, Hirokawa teaches the image forming apparatus according to claim 6, wherein the specific character string represents a domain name or a folder path (“if destination other than optional address is included” selected as the condition for automatically setting the destination 56; ¶ 0042, Fig. 3A).
Regarding claim 9, Hirokawa teaches the image forming apparatus according to claim 1, wherein the one or more controllers perform a confirmation request at a time of execution of the transmission process when the transmission destination is set, and execute the transmission process when a response indicating permission for the confirmation request is received (job configuration screen 70; ¶ 0047 and ¶ 0053, Fig. 6B).
Regarding claim 11, Hirokawa teaches the image forming apparatus according to claim 1, wherein the one or more controllers determine whether to accept a setting of a transmission destination from the logged-in user, based on a setting as to whether the transmission destination is changeable (conditions for modifying destination 58; ¶ 0042 and ¶¶ 0049-0050, when the destination, Fig. 3A), information associated with the logged-in user is not acquired from the user information (“condition of setting automatically” 56 not met).
Regarding claim 12, Hirokawa teaches the image forming apparatus according to claim 11, wherein the one or more controllers accept the setting of a transmission destination from the user when the setting indicates that the transmission destination is changeable (“all destination are modifiable” in the field 58 is selected; ¶ 0053, Fig. 6A).
Regarding claim 13, Hirokawa teaches the image forming apparatus according to claim 11, wherein the acquirer acquires, as the destination information, information indicating a default transmission destination when the transmission function is executed (“destination of login user” 54 selected; ¶ 0053, Fig. 6A), and the one or more controllers accept, when the set default transmission destination is cancellable, the transmission destination set by the user, thereby executing the transmission process (“all destination are modifiable” in the field 58 is selected; ¶ 0053, Fig. 6A).
Claim 15 is a method claim that corresponds to the apparatus of claim 1 thus, arguments similar to that presented above for claim 1 are equally applicable to claim 15.
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) 8, 10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hirokawa as applied to claim 1 above, and further in view of Marunouchi (US 2011/0261397).
Regarding claim 8, Hirokawa teaches the image forming apparatus according to claim 1, and when the destination information is not acquired due to an error of communication with the management server, no restriction is set on the setting of a transmission destination (“all destination are modifiable” in the field 58 is selected; ¶ 0053, Fig. 6A), but does not explicitly teach wherein the acquirer acquires the destination information from a management server.
However, Marunouchi teaches wherein the acquirer acquires the destination information from a management server (user selects the address book (YES in ACT 94) and the address book is stored in the mail server 4 or the like; ¶ 0045 and ¶ 0115, Fig. 11).
Hirokawa and Marunouchi are in the same field of endeavor of an image forming apparatus that manages image transmission. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the image forming apparatus of Hirokawa to acquire destination information from a management server as taught by Marunouchi. The combination improves the image forming apparatus by providing a simple means for a user to obtain destination information.
Regarding claim 10, Hirokawa teaches the image forming apparatus according to claim 1, but does not explicitly teach wherein the one or more controllers store content of the execution of the transmission process as a log when the transmission destination is set.
However, Marunouchi teaches wherein the one or more controllers store content of the execution of the transmission process as a log when the transmission destination is set (history information; ¶ 0110, Fig. 10).
Hirokawa and Marunouchi are in the same field of endeavor of an image forming apparatus that manages image transmission. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the image forming apparatus of Hirokawa to include a log as taught by Marunouchi. The combination improves the image forming apparatus by providing a simple means for a user to obtain destination information.
Regarding claim 14, Hirokawa teaches the image forming apparatus according to claim 11, and the transmission destination is changeable (“all destination are modifiable” in the field 58 is selected; ¶ 0053, Fig. 6A), but does not explicitly teach wherein the one or more memories further store, as a history, destination information when the transmission process is executed, and the one or more controllers set the destination information stored in the one or more memories as a transmission destination when the destination information is not acquired by the acquirer.
However, Marunouchi teaches wherein the one or more memories further store, as a history, destination information when the transmission process is executed (history information; ¶ 0110, Fig. 10), and the one or more controllers set the destination information stored in the one or more memories as a transmission destination when the destination information is not acquired by the acquirer (email addresses list-displayed from the transmission history can be designated as transmission destination; ¶ 0116, Fig. 11 ACT96 and ACT97).
The motivation applied in claim 10 is incorporated herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takamiya (US 2014/0380430) teaches an image forming apparatus having a function to perform transmission to a destination registered in a transmission setting.
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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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/KENT YIP/Primary Examiner, Art Unit 2681
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