DETAILED ACTION
Notice of AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice of Corrective Office Action
2. The present Office Action supersedes and replaces any prior Office Action issued in the application. Accordingly, applicant should respond to the rejections set forth in the present Office Action.
Double Patenting
3. Claims 1, 8, and 9 are rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claims 15, 9, and 1 respectively of U.S. Patent No. 12,105,997.
Claims 1, 8, and 9 are rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claims 15, 9, and 1 respectively of Patent No. 12,105,997. Although the claims at issue are not identical, they are not patentably distinct from each other because the referenced application and the instant application are claiming similar subject matter.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim Rejections - 35 USC § 103
4. 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 of this title, 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.
5. Claims 1-4, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US Pub: 2019/0339915) and in further view of Jazayeri et al (US Patent: 8477350) and Armstrong et al (US Pub: 2015/0286451).
Regarding claim 1, Saito et al teaches: A non-transitory computer-readable storage medium storing an application program, which causes an information processing apparatus to perform a control method [p0009], the control method comprising: causing a display of the information processing apparatus to display a print setting screen that displays a setting item not settable via another print setting screen provided by an operating system (OS) of the information processing apparatus [p0007-p0009, p0046, p0047 (Secure print password input was not settable through V4 printer. A pop-up UI is displayed for user to enter password]; and transmitting, to the server system, a print setting set via the print setting screen [p0046], wherein the application program is an application program installed on the information processing apparatus by causing the information processing apparatus to acquire identification information on the printing apparatus [p0048, p0050], acquire identification information on an application program corresponding to the identification information on the printing apparatus [p0049, p0050], and acquire an application program corresponding to the identification information on the application program [p0045, p0050, p0051].
Saito et al does not specify print data transmitted from the server. In the same field of endeavor, Jazayeri et al teaches: the information processing apparatus being configured to communicate with a server system that transmits, to a printing apparatus, print data received from the information processing apparatus [fig. 2].
Saito et al in view of Jazayeri et al does not specify print capability setting. In the same field of endeavor, Armstrong et al teaches: a printer extension app that generates and displays a print setting UI based on printer specific capabilities, and return user selected settings as PrintTicket data [p0032-p0035, p0045, p0046, p0077, p0078]. Therefore, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of all let user select printer specific setting through correct extension application and send settings to cloud print server for a predictable result.
Regarding claim 2, the rationale applied to the rejection of claim 1 has been incorporated herein. Saito et al further teaches: The non-transitory computer-readable storage medium according to claim 1, wherein the identification information on the application program corresponding to the identification information on the printing apparatus is identification information on an application program identified based on the identification information on the printing apparatus [p0048-p0050].
Regarding claim 3, the rationale applied to the rejection of claim 1 has been incorporated herein. Saito et al further teaches: The non-transitory computer-readable storage medium according to claim 1, wherein the application program corresponding to the identification information on the application program is an application program identified based on the identification information on the application program [p0045, p0050, p0051].
Regarding claim 4, the rationale applied to the rejection of claim 1 has been incorporated herein. Saito et al and Jazayeri further teach: The non-transitory computer-readable storage medium according to claim 1, wherein the identification information on the printing apparatus is information for identifying a model of the printing apparatus or information for identifying a type of the printing apparatus [Saito: p0048, p0054; Jazayeri: col 11: lines 35-38].
Regarding claim 6, the rationale applied to the rejection of claim 1 has been incorporated herein. Saito and Armstrong further teach: The non-transitory computer-readable storage medium according to claim 1, wherein the print setting screen is displayed when a predetermined operation is performed on the another print setting screen [Saito: p0046, Armstrong: p0038].
Claims 8 and 9 have been analyzed and rejected with regard to claim 1.
6. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US Pub: 2019/0339915), Jazayeri et al (US Patent: 8477350), and Armstrong et al (US Pub: 2015/0286451); and in further view of Suzuki (WO Pub: 2020004159).
Regarding claim 5, the rationale applied to the rejection of claim 1 has been incorporated herein. Although not explicitly expressed, displayed setting being predetermined protocol would have been inherent feature of Satio et al in view of Armstrong’s teaching. In the same field of endeavor, Suzuki teaches: The non-transitory computer-readable storage medium according to claim 1, wherein a setting item to be displayed on the another print setting screen is a setting item defined by a predetermined protocol [page 2: p04, p05; page 9: p03]. Therefore, the combined teaching of all would have made it obvious to display setting item as defined by predetermined protocol for proper correspondence.
7. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US Pub: 2019/0339915), Jazayeri et al (US Patent: 8477350), and Armstrong et al (US Pub: 2015/0286451); and in further view of Tao et al (US Pub: 2009/0196668) and Fujii et al (US Pub: 2010/0308525).
Regarding claim 7, the rationale applied to the rejection of claim 1 has been incorporated herein. Armstrong teaches printer specific additional settings and print capability data [p0005, p0029]. In the same field of endeavor, Tao et al and Fujii et al teach: The non-transitory computer-readable storage medium according to claim 1, wherein the setting item not settable via the another print setting screen provided by the OS of the information processing apparatus is at least one of a setting item for image processing for changing density, a setting item for image processing for changing tint, a setting item related to a function of adding a stamp, a setting item for setting a punching position, a setting item for setting a stapling position, a setting item related to a function of binding sheets without a needle, a setting item related to poster printing, and a setting item related to saddle stitch bookbinding [Tao: p0006, p0007, p0033 Fujii: p005]. Therefore, given Saito’s limited OS print UI for a printer extension app to supply additional print setting and Tao et al and Fujii et al supplying advanced setting items such as density, stapling and punching position, and book binding, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of all to include those finishing setting in Saito’s extension UI to expose printer functions not available in standard OS print screen per design choice.
Contact
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAN ZHANG whose telephone number is (571)270-3751. The examiner can normally be reached on Mon-Fri 9:00-5:00.
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/Fan Zhang/
Patent Examiner, Art Unit 2682
Prosecution Insights