DETAILED ACTION
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.
Election/Restrictions
Applicant's election with traverse of Species I in the reply filed on 6/29/26 is acknowledged. The traversal is on the grounds that the various embodiments are closely related and do not require significantly separate fields of search. This is not found persuasive because each of the different species recite the mutually exclusive characteristics of such species. For instance, the terminal authentication cannot be performed using only AOA authentication (as in the first embodiment) and performed using OAO and AOA authentication (as in the second embodiment). The job code cannot be pushed to the terminal (as in the third embodiment) and received by the terminal reading a QR code (as in the fourth embodiment). Due to their mutually exclusive characteristics, the species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4, 8-10 and 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/29/26.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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 limitations use 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 limitations are:
a first transmission unit,
a reception unit,
a second transmission unit,
a printing unit of claim 1,
a display control unit of claim 7,
an authentication unit of claim 11, and
a display control unit of claim 15.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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 1-3, 5-7, 11 and 15-19 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 pre-AIA the applicant regards as the invention.
The claim limitations “a first transmission unit”, “a reception unit”, “a second transmission unit”, “a printing unit”, “a display control unit”, “an authentication unit”, and “a display control unit” listed above invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The Applicant's specification does not provide an association between the structure and the function. Therefore, claims 1-3, 5-7, 11 and 15-19 are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 5 recites the limitation "the other cloud service" in 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 additionally recites “wherein the first terminal includes a display control unit” and “the second terminal includes a display control unit”. It is unclear whether the first recitation of “a display control unit” is the same or different from the second recitation of “a display control unit”.
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.
Claims 1-3, 5-7, 11 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi US Publication 2022/0317952 (hereafter “Takagi”) and Park et al. US Publication 2015/0092233 (hereafter “Park”).
Referring to claims 1 and 20, Takagi discloses a system comprising a printing apparatus, a first terminal, and a second terminal, wherein
the first terminal includes a first transmission unit configured to transmit a printing job for causing the printing apparatus to execute printing (paragraph 79, In step S601, the client terminal 101 transmits the information input to the screen 520 to the CPS 103, thereby registering a job based on the information in the CPS 103),
the second terminal includes
a reception unit configured to receive inputting of predetermined information generated based on the transmission of the printing job by the first terminal (paragraph 85, In step S609, the image forming apparatus 122 receives an input of a job code corresponding to a desired print job from a user. The job code input here includes, for example, the job code notified from the CPS 103 in step S608), and
a second transmission unit configured to transmit, based on the reception of inputting of the predetermined information, a request for causing the printing apparatus to execute printing based on the printing job transmitted by the first terminal (paragraph 86, In step S610, the image forming apparatus 122 transmits the job code (in other words, information to identify the job) received in step S609 to the CPS 123, and requests the CPS 123 to transmit a print job), and
the printing apparatus includes a printing unit configured to execute, based on the transmission of the request, printing based on the printing job transmitted by the first terminal (paragraph 88, In step S615, the image forming apparatus 122 receives a print job from the CPS 123 and executes the print job).
While Takagi discloses that the printing apparatus receives input of predetermined information, Takagi does not disclose expressly a second terminal distinct from the printing apparatus that receives input of predetermined information.
Park discloses the second terminal includes
a reception unit configured to receive inputting of predetermined information generated based on the transmission of the printing job by the first terminal (paragraph 665, The mobile device 400 may transmit request information about the request to perform the print job from the user to the cloud server 300, in operation S3425. In other words, the cloud server 300 may receive the request information. The request information received from the mobile device 400 to the cloud server 300 may include a phone number and ID information of the print job for identifying the print job selected by the user), and
a second transmission unit configured to transmit, based on the reception of inputting of the predetermined information, a request for causing the printing apparatus to execute printing based on the printing job transmitted by the first terminal (paragraph 669, The management server 200 may instruct the print job to be performed in operation S3445, according to a result of allowing. Since the cloud server 300 included in the cloud printing service providing system 500 is a public cloud server, the print job may be registered in the management server 200. If the print job is allowed, the print job corresponding to the ID information of the print job may be transmitted to the image forming apparatus connected to the management server 200, and then instructed to be performed).
Before the effective filing date of the claimed invention, it would have obvious to a person of ordinary skill in the art to receive input of predetermined information from a terminal device rather than a user interface of the printing apparatus. The motivation for doing so would have been to incorporate the interface of a smart phone to benefit from its greater processing ability and to reduce the cost of the printing apparatus. Therefore, it would have been obvious to combine Park with Takagi to obtain the invention as specified in claims 1 and 20.
Referring to claim 2, Takagi discloses wherein
the printing job is transmitted from the first terminal to a predetermined cloud service (paragraph 79, In step S601, the client terminal 101 transmits the information input to the screen 520 to the CPS 103, thereby registering a job based on the information in the CPS 103), and
the printing apparatus executes printing based on the printing job transmitted by the first terminal when the printing job transmitted by the first terminal is transmitted to the printing apparatus through the predetermined cloud service (paragraph 88, In step S613, the job management unit 302 of the CPS 103 transmits a print job corresponding to the job code received from the CPS 123 to the CPS 123. In step S614, the job management unit 302 of the CPS 123 receives the print job from the CPS 103 and transmits the print job to the image forming apparatus 122. In step S615, the image forming apparatus 122 receives a print job from the CPS 123 and executes the print job).
Referring to claim 3, Takagi discloses wherein
the predetermined information is generated by the predetermined cloud service (paragraph 81, In step S603, the job management unit 302 of the CPS 123 receives a request to issue a job code from the CPS 103 and issues the job code) (paragraph 30, As a specific example, at least one of the CPSs 103, 113 may serve concurrently as the CPS 123. As another example, the CPS 123 may concurrently serve as at least one of the CPSs 103 and 113.), and
the predetermined information generated by the predetermined cloud service is transmitted to at least one of the first terminal and the second terminal (paragraph 84, In step S608, the job management unit 302 of the CPS 103 notifies the user of the job code issued by the CPS 123. The processing in step S608 may be realized, for example, by mail notification to the mail address associated with the user authenticated in step S402. As another example, the user may be notified of the job code by presenting a screen on which the job code is displayed via the client terminal 101).
Referring to claim 5, Takagi discloses wherein
the request is transmitted to another cloud service different from the predetermined cloud service (paragraph 86, In step S610, the image forming apparatus 122 transmits the job code (in other words, information to identify the job) received in step S609 to the CPS 123, and requests the CPS 123 to transmit a print job),
the request is transmitted from the other cloud service to the predetermined cloud service based on the transmission of the request to the other cloud service (paragraph 86, In step S611, the job management unit 302 of the CPS 123 transmits the job code transmitted from the image forming apparatus 122 in step S610 and the job execution permission information corresponding to the job code to the CPS 103),
the printing job is transmitted to the other cloud service based on the transmission of the request from the other cloud service to the predetermined cloud service (paragraph 88, In step S613, the job management unit 302 of the CPS 103 transmits a print job corresponding to the job code received from the CPS 123 to the CPS 123), and
the printing job transmitted to the other cloud service is transmitted to the printing apparatus (paragraph 88, In step S614, the job management unit 302 of the CPS 123 receives the print job from the CPS 103 and transmits the print job to the image forming apparatus 122).
Referring to claim 6, Takagi discloses wherein
the request transmitted from the other cloud service to the predetermined cloud service (paragraph 86, In step S611, the job management unit 302 of the CPS 123 transmits the job code transmitted from the image forming apparatus 122 in step S610 and the job execution permission information corresponding to the job code to the CPS 103), and
the printing job is transmitted to the other cloud service (paragraph 88, In step S613, the job management unit 302 of the CPS 103 transmits a print job corresponding to the job code received from the CPS 123 to the CPS 123).
Takagi does not disclose expressly wherein identification information of the printing apparatus is included in the request transmitted from the other cloud service to the predetermined cloud service
Park discloses wherein identification information of the printing apparatus is included in the request transmitted from the other cloud service to the predetermined cloud service (paragraph 665, If the image forming apparatus is selected by the user, the request information may further include ID information of the image forming apparatus for identifying the selected image forming apparatus).
Before the effective filing date of the claimed invention, it would have obvious to a person of ordinary skill in the art to include identification information of the printing apparatus in the request. The motivation for doing so would have been to inform the server of which printing device to send the print job to improve the efficiency of the data routing. Therefore, it would have been obvious to combine Park with Takagi to obtain the invention as specified in claim 6.
Referring to claim 7, Takagi discloses wherein
the first terminal includes a display control unit configured to display the predetermined information based on the transmission of the printing job by the first terminal (paragraph 84, In step S608, the job management unit 302 of the CPS 103 notifies the user of the job code issued by the CPS 123. The processing in step S608 may be realized, for example, by mail notification to the mail address associated with the user authenticated in step S402. As another example, the user may be notified of the job code by presenting a screen on which the job code is displayed via the client terminal 101), and
the second terminal includes an input for receiving inputting of the predetermined information from a user, and
the second terminal receives inputting of the predetermined information when the predetermined information displayed by the first terminal is input to the input by the user (paragraph 85, In step S609, the image forming apparatus 122 receives an input of a job code corresponding to a desired print job from a user. The job code input here includes, for example, the job code notified from the CPS 103 in step S608).
While Takagi discloses receiving inputting of the predetermined information from a user, Takagi does not disclose expressly the second terminal includes a display control unit.
Park discloses the second terminal includes a display control unit configured to display an input screen for receiving inputting of the predetermined information from a user, and
the second terminal receives inputting of the predetermined information when the predetermined information displayed by the first terminal is input to the input screen by the user (paragraph 1005, When the cloud server 6600 transmits the generated PIN code to the device 6700, the user of the device 6700 checks and inputs the PIN code, and selects "Authenticate" 7320).
Before the effective filing date of the claimed invention, it would have obvious to a person of ordinary skill in the art to receive input of the predetermined information from a display screen. The motivation for doing so would have been to provide a convenient manner in which the user can enter information. Therefore, it would have been obvious to combine Park with Takagi to obtain the invention as specified in claim 7.
Referring to claim 11, Takagi discloses wherein
the second terminal further includes an authentication unit configured to execute processing for executing authentication based on predetermined account information that corresponds to a user of the second terminal and is obtained by the second terminal through inputting to the second terminal by the user, and
the request for causing the printing apparatus to execute printing based on the printing job transmitted by the first terminal is transmitted based on success of the authentication based on the account information and based on the reception of inputting of the predetermined information (paragraph 85, As a specific example, the image forming apparatus 122 may authenticate the user by accepting an input related to authentication from the user, and may accept a designation of a desired print job from the list of jobs associated with the user).
Referring to claim 15, Takagi discloses receiving inputting of the predetermined information from a user, Takagi does not disclose expressly the second terminal includes a display control unit.
Park discloses wherein
the second terminal further includes a display control unit configured to display a specific button corresponding to a function to transmit the request on a screen displayed by a predetermined application included in the second terminal, and
the request is transmitted after the specific button is operated (paragraph 1005, When the cloud server 6600 transmits the generated PIN code to the device 6700, the user of the device 6700 checks and inputs the PIN code, and selects "Authenticate" 7320).
Before the effective filing date of the claimed invention, it would have obvious to a person of ordinary skill in the art to receive input of the predetermined information from a display screen. The motivation for doing so would have been to provide a convenient manner in which the user can enter information. Therefore, it would have been obvious to combine Park with Takagi to obtain the invention as specified in claim 15.
Referring to claim 16, Park discloses further comprising a control unit configured to control whether to display the specific button based on information related to the printing apparatus and registered in the predetermined application (paragraph 1002, The device 6700 may download and install an application from an address shown in the service subscription invitation message 7220, and transmit a service subscription request to the cloud server 6600 through the application [the application is related to the printing apparatus because it allows printing on the printing apparatus]).
Referring to claim 17, Park discloses wherein inputting of the predetermined information is received after the predetermined button is operated (paragraph 1005, When the cloud server 6600 transmits the generated PIN code to the device 6700, the user of the device 6700 checks and inputs the PIN code, and selects "Authenticate" 7320).
Referring to claim 18, Park discloses wherein the predetermined application also displays a button for causing the printing apparatus to print a picture or a document stored in the second terminal (paragraph 520, The second individual 23 may selects a content ("Image001.JPG") transmitted from the first individual 21 from the list 1904 and click a print icon 1905 to print the content ("Image001.JPG")).
Referring to claim 19, Takagi discloses wherein the request transmitted from the second terminal includes the input predetermined information (paragraph 86, In step S610, the image forming apparatus 122 transmits the job code (in other words, information to identify the job) received in step S609 to the CPS 123, and requests the CPS 123 to transmit a print job).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER K HUNTSINGER whose telephone number is (571)272-7435. The examiner can normally be reached Monday - Friday 8:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benny Q Tieu can be reached at 571-272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER K HUNTSINGER/Primary Examiner, Art Unit 2682
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