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 . 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 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.
Status of the application
This Office Action is in response to Applicant's Application filed on 08/21/2024. Claims 1-20 are pending for this examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/03/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Double Patenting
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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 7,721,069. Although the conflicting claims are not identical, they are not patentably distinct from each other because the current claims can and would be anticipated by the claims in the Patent. Specifically with regard to claim 1 in the instant application and the patent:
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12073206. Although the claims at issue are not identical, they are not patentably distinct from each other. Comparison of the two claims are shown below:
Claim
Examining Claims (18/811,040)
Claim
Existing Patent (12,073,206)
1
A method for updating an imaging device, the method comprising:
1
A method for updating an imaging device, the method comprising:
receiving, by the imaging device, update information from a memory of a first supply item installed in the imaging device, the update information comprising a compatibility update filter indicating which generations of supply item are compatible with the imaging device,
receiving, by the imaging device, update information from a memory of a supply item connected to the imaging device, the update information comprising a compatibility update filter indicating which generations of supply item are compatible with the imaging device,and
updating, based on the compatibility update filter of the update information, a compatibility filter of the imaging device, the compatibility filter of the imaging device configured to control which generations of supply item are classified as compatible with the imaging device.
updating a compatibility filter of the imaging device based on the update information, the compatibility filter configured to control which generations of supply item are classified as compatible with the imaging device,
wherein the compatibility filter is a mask and wherein firmware of the imaging device is configured to use a bitwise AND of the compatibility filter with a generation identifier from a supply item to determine if the supply item is compatible.
Claims 2 – 8 are rejected for being dependent on a base claim.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Watt (Publication No.: US 2021/0117176).
As per claim 1, Watt teaches,
A method for updating an imaging device, the method comprising:
receiving, by the imaging device, update information from a memory of a first supply item installed in the imaging device, the update information comprising a compatibility update filter indicating which generations of supply item are compatible with the imaging device, (Watt recites in [0035] starting at line 7, “The computing device 102 may further refer to a more specialized computing device such as a gaming consoles, a cloud computing node, a printer, a scanner, or other device that makes use of firmware.” This shows a printer or imaging device. Watt recites in [0013] "In particular, as will be discussed in further detail below, the firmware update system can generate one or more migration structures for respective portions (e.g., metadata blocks) of a metadata structure that includes metadata corresponding to functional elements of an associated version of firmware . ... The firmware update system can generate migration structures (e.g., arrays) associated with multiple versions of firmware and compare attributes associated with the different versions of firmware to facilitate an update of the metadata structure (or generation of a new metadata structure) to be compatible with an updated version of the firmware on a computing device." Here "metadata structure" is the compatibility update filter. Metadata structure gets updated.)
updating, based on the compatibility update filter of the update information, a compatibility filter of the imaging device, the compatibility filter of the imaging device configured to control which generations of supply item are classified as compatible with the imaging device. (Watt recites in [0013] "The firmware update system can generate migration structures (e.g., arrays) associated with multiple versions of firmware and compare attributes associated with the different versions of firmware to facilitate an update of the metadata structure (or generation of a new metadata structure) to be compatible with an updated version of the firmware on a computing device." Here the compatibility filter or the metadata structure
gets updated.)
As per claim 3, Watt teaches,
wherein the update information further comprises an update version value, wherein updating the compatibility filter of the imaging device based on the update information comprises:
when the update version value indicates a newer version than the version value of the compatibility filter of the imaging device, updating the compatibility filter of the imaging device to match the compatibility update filter of the update information. (Watt Fig. 3 Box 314 shows structure 316a and 316b. Here
316b shows a newer revision value.)
As per claim 4, Watt teaches,
wherein updating the compatibility filter of the imaging device based on the update information further comprises:
when the update version value does not indicate a newer version than the version value of the compatibility filter of the imaging device, retaining the compatibility filter of the imaging device unchanged. (Watt Fig. 3B step 326 shows in case of Major and minor match, data is copied from the previous version to the new version. That means the filter remains unchanged.)
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 2 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Watt as applied to claim 1 in view of Fichtner et al. (hereinafter Fichtner, Patent No.: US 6,360,362).
As per claim 2, Watt teaches firmware update of devices. Watt does not explicitly
mention, "the method further comprising: receiving a generation value of a second supply item connected to the imaging device, the generation value indicating a generation to which the second supply item belongs, and determining whether the second supply item is compatible with the imaging device, by comparing the generation value of the second supply item with the updated compatibility filter of the imaging device." However, in analogous art of firmware update or compatibility of software packages, Fichtner teaches,
the method further comprising: receiving a generation value of a second supply item connected to the imaging device, the generation value indicating a generation to which the second supply item belongs, and determining whether the second supply item is compatible with the imaging device, by comparing the generation value of the second supply item with the updated compatibility filter of the imaging device. (Fichtner Fig. 6 step 140 shows “fetch H/W version number”. This is equivalent to a generation value. Step 152 shows firmware upgrade when the version number stored is the same as the version number of the camera.)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Watt by incorporating the teaching "the method further comprising: receiving a generation value of a second supply item connected to the imaging device, the generation value indicating a generation to which the second supply item belongs, and determining whether the second supply item is compatible with the imaging device, by comparing the generation value of the second supply item with the updated compatibility filter of the imaging device." Of Fichtner. The modification would have been obvious because one of the ordinary skills
of the art would have implemented the function of checking compatibility of two connected devices.
Claims 5 and 6 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Watt as applied to claim 1 in view of Stremlau et al. (hereinafter Stremlau, Pub. No.: US 2022/0188419).
As per claim 5, Watt teaches firmware update of devices. Watt does not explicitly teach, “wherein the update information is included in a signed certificate.” However, in analogous art of firmware upgrade, Stremlau teaches,
wherein the update information is included in a signed certificate. (Stremlau Fig. 3 step 314 shows generating a digital certificate, that includes a second digital signature signing the firmware update data.)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Watt by incorporating the teaching "wherein the update information is included in a signed certificate. " of Stremlau. The modification would have been obvious because one of the ordinary skills of the art would have implemented the function of using a signed certificate to authenticate the update for the device.
As per claim 6, Stremlau teaches,
the method further comprising: verifying the signed certificate, wherein the step of verifying occurs before reading the update information from the signed certificate. (Stremlau Fig. 3 step 320 shows "apply first firmware update .. responsive to validating second and third digital signatures ... ",)
Claim 7 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Watt as applied to claim 1 in view of Schubert et al. (hereinafter Schubert, Pub. No.: US 2011/0302347).
As per claim 7, Watt teaches firmware update of devices. Watt does not explicitly teach “wherein the compatibility filter is a mask.”. However, in analogous art of firmware update Schubert teaches,
wherein the compatibility filter is a mask. (Schubert Fig. 10 step 108 shows use of bitmask to determine if the device is included in a device class.)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Watt by incorporating the teaching "wherein the compatibility filter is a mask" of
Schubert. The modification would have been obvious because one of the ordinary skills
of the art would have implemented the function using a compatibility mask to ensure that two devices are compatible with each other.
Claim Rejections - 35 USC § 102
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.
Claims 9, 11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harada (Publication No.: US 2011/0035739).
As per claim 9, Harada teaches,
A method for updating an imaging device, the method comprising:
receiving, by the imaging device, update information from a memory of a first supply item connected to the imaging device, and updating a function status variable of the imaging device based on the update information wherein the function status variable is configured to control the status of one or more functions, (Harada recites in [0109] starting at line bottom line “Meanwhile, when the firmware update request is made via the external-storage medium, it is necessary to provide programs for different architectures to enable communications between the user and the external storage medium. Each of the update programs at least includes a
function (to cause the main CPU 11 or the sub CPU 21) to read firmware update data from the external storage medium (the USB memory 102 or the SD card 103) via the input/output unit 22.”)
wherein a function of the one or more functions is an authentication function,
configured to determine the authenticity of a supply item when connected to the imaging device. (Harada recites in [0111] starting at line 1, “To improve the security, each of the update programs may also include a function to verify the firmware
update data and a function to perform an authentication process between the external storage medium and the printer.”)
As per claim 11, Harada teaches,
wherein the one or more functions are stored on the imaging device. (Harada recites in [0111] starting at line 1, “To improve the security, each of the update programs may also include a function to verify the firmware update data and a function to perform an authentication process between the external storage medium and the printer.” The function is included in the update program which gets loaded to the imaging device.)
As per claim 13, this is a system claim that substantially parallels the limitations of the method claim 9. It would have been obvious to one of ordinary skill in the art before the time of the effective filing date of the invention to implement the prescribed method steps as a system.
Claim 10 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Harada as applied to claims 9 in view of Bush et al. (hereinafter Bush, Patent No.: US 10,419,641).
As per claim 10, Harada teaches software update of imaging devices. Harada does not explicitly teach, “the method further comprising: determining whether a second supply item connected to the imaging device is authentic, by performing a function indicated as enabled by the updated function status variable.” However, in analogous art of software/firmware update, Bush teaches,
the method further comprising: determining whether a second supply item connected to the imaging device is authentic, by performing a function indicated as enabled by the updated function status variable. (Bush recites in column 4 starting at line 25, “Also, it is preferred that requests of quanta from the imaging device to the supply item take place in a secure fashion. That the supply item and imaging device must trust one another, a mutual authentication occurs first between the devices. Additional security consists of authenticating the supply item to the imaging device in predetermined time periods.”)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Harada by incorporating the teaching “the method further comprising: determining whether a second supply item connected to the imaging device is authentic, by performing a function indicated as enabled by the updated function status variable.” of Bush. The modification would have been obvious because one of the ordinary skills of the art would have implemented the function of using an authentication method to authenticate the software.
Claims 12, 16 and 17 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Harada as applied to claims 9 and 13 in view of Stremlau et al. (hereinafter Stremlau, Pub. No.: US 2022/0188419).
As per claim 12, Harada teaches software update of imaging devices. Harada does not explicitly teach, “wherein the update information is included in a signed certificate.” However, in analogous art of software/firmware update, Stremlau teaches,
wherein the update information is included in a signed certificate. (Stremlau Fig. 3 step 314 shows generating a digital certificate, that includes a second digital signature signing the firmware update data.)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Harada by incorporating the teaching “wherein the update information is included in a signed certificate.” of Stremlau. The modification would have been obvious because one of the ordinary skills of the art would have implemented the function of using a signed certificate to authenticate the software.
As per claim 16, Stremlau teaches,
wherein the update information is included in a signed certificate. (Stremlau Fig. 3 step 314 shows generating a digital certificate, that includes a second digital signature signing the firmware update data.)
As per claim 17, Stremlau teaches,
wherein the imaging device is further configured to verify the signed certificate before reading the update information from the signed certificate. (Stremlau Fig. 3 step 318 shows validating the digital signatures. Step 320 occurs after step 318. In step 320 "apply first firmware update data", which means that update data is read after validation of the digital signature.)
Claims 14 and 15 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Harada as applied to claims 9 and 13 in view of Hirose (Pub. No.: US 2019/0187972).
As per claim 14, Harada teaches software update of imaging devices. Harada does not explicitly teach, “wherein the imaging device memory further stores a version value of the firmware variable, and the update information further comprises an update version value, and updating the firmware variable of the imaging device based on the update information comprises: when the update version value indicates a newer version than the version value of the firmware variable, updating the firmware variable to match the update value.” However, in analogous art of software/firmware update, Hirose teaches,
wherein the imaging device memory further stores a version value of the firmware variable, and the update information further comprises an update version value, and updating the firmware variable of the imaging device based on the update information comprises:
when the update version value indicates a newer version than the version value of the firmware variable, updating the firmware variable to match the update value. (Hirose Fig. 6 S16 – S22)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Harada by incorporating the teaching “wherein the imaging device memory further stores a version value of the firmware variable, and the update information further comprises an update version value, and updating the firmware variable of the imaging device based on the update information comprises: when the update version value indicates a newer version than the version value of the firmware variable, updating the firmware variable to match the update value.” of Hirose. The modification would have been obvious because one of the ordinary skills of the art would have implemented the function of installing a newer version of firmware when available.
As per claim 15, Hirose teaches,
wherein updating the firmware variable of the imaging device based on the update information further comprises:
when the update version value does not indicate a newer version than the version value of the firmware variable, retaining the firmware variable unchanged. (Hirose Fig. 6 S16 and END)
Claim 18 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Harada as applied to claim 13 in view of Schubert et al. (hereinafter Schubert, Pub. No.: US 2011/0302347).
As per claim 18, Harada teaches software update of imaging devices. Harada does not explicitly teach “wherein the compatibility filter is a mask.” However, in analogous art of software/firmware update Schubert teaches,
wherein the compatibility filter is a mask. (Schubert Fig. 10 shows use of bitmask to determine if the device is included in a device class.)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Harada by incorporating the teaching “wherein the compatibility filter is a mask.” of Schubert. The modification would have been obvious because one of the ordinary skills of the art would have implemented the function of installing a newer version of firmware by filtering the firmware version using a filtering mask.
Claim 20 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Harada as applied to claim 13 in view of Wagener et al. (hereinafter Wagener, Pub. No.: US 2021/0146694).
As per claim 20, Harada teaches software update of imaging devices. Harada does not explicitly teach “An imaging system comprising the imaging device of claim 13 and a supply item the supply item comprising a memory, the memory storing update information, the update information comprising an update value, and the supply item being configured to send the update information to an imaging device.” However, in analogous art of software/firmware update Wagener teaches,
An imaging system comprising the imaging device of claim 13 and a supply item the supply item comprising a memory, the memory storing update information, the update information comprising an update value, and the supply item being configured to send the update information to an imaging device. (Wagener recites in [0085] bottom line “Aspect 22. A print supply for a card personalization machine, the print supply comprising: a supply roll used in a printing process of the card personalization machine; and a supply tag attached to the supply roll, the supply tag including a rewritable memory storage that stores first supply tag data and a digital signature, wherein the rewritable memory storage is programmable
to store a new digital signature and an updated authorized entity code, and wherein the updated authorized entity code matches the print supply to the card personalization machine and the new digital signature secures the second supply tag data including the
updated authorized entity code.”)
Therefore, it would have been obvious to a person of the ordinary skill in the art before
the effective filling date of the invention to modify the above teaching of firmware update
of Harada by incorporating the teaching “An imaging system comprising the imaging device of claim 13 and a supply item the supply item comprising a memory, the memory storing update information, the update information comprising an update value, and the supply item being configured to send the update information to an imaging device.” of Wagener. The modification would have been obvious because one of the ordinary skills of the art would have implemented the function of keeping some identification information in memory of the supply item so that the imaging device can check compatibility between the two devices.
Allowable Subject Matter
Claims 8 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if written in independent form including all of the limitations of the base claim and any intervening claims.
References of Note
Examiner has cited particular columns, line numbers, references, or figures in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses to fully consider the reference in entirety, as potentially teaching all or part of the claimed invention. See MPEP §§ 2141.02 and 2123.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOSSAIN MORSHED whose telephone number is (571)272-3335. The examiner can normally be reached on Monday – Friday12:00 PM – 9 PM Eastern Time. The email address for the examiner is hossain.morshed@uspto.gov.
Examiner interviews are available via telephone or 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, Wei Mui can be reached on (571)272-3708.
/HOSSAIN M MORSHED/Primary Examiner, Art Unit 2191
June 13, 2026
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