Part III DETAILED ACTION
1. The present application is being examined under the pre-AIA first to invent provisions.
This application has been examined. Claims 1-10 are pending in this application.
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.
2. Claims 1-10 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 limitations recited in the independent claims “selecting a second function; in a case where the first device, which is selected in the first device selection operation and whose information is stored in the storage, has the second function, controlling the display to display, as a candidate of a second device to execute the second function, information indicative of the first device; and in a case where the first device does not have the second function, controlling the display not to display, as the candidate of the second device, the information indicative of the first device” is vague and indefinite. Examiner asserts that boundaries of the claim are unclear or have one or more than one reasonable interpretation. It is not clear what the “information indicative of the first device” represents. Clarification or correction is required. The claims appear to be narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document.
Double Patenting
A nonstatutory obviousness-type 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); and 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 a nonstatutory double patenting
ground provided the conflicting application or patent either is shown to be commonly owned with
this application, or claims an invention made as a result of activities undertaken within the scope of a
joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A
terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
2. Claims 1-10 of the instant application are unpatentable under the judicially created doctrine of
"obviousness-type" double patenting with respect to claims 1-17 of the parent U.S. Patent
No. 10,375,257. The scope of claims 1-9 define an obvious variation of the invention claimed in
U.S. Patent No. 10,375,257. The assignee of all applications is the same.
Current application
Claim 1 recites a non-transitory computer-readable storage medium storing a set of device control
program instructions installed on and executed by a processor of a terminal device, the terminal
device including the processor,
an operating unit, a storage, and a display,
the set of device control program instructions, when executed by the processor, causing
the terminal device (or processing apparatus) to perform:
receiving, from the operating unit, a first function selection operation for selecting a first function;
receiving, from the operating unit, a first device selection operation for selecting a first
device to execute the first function;
storing, in the storage, information of the first device selected in the first device selection
operation; after storing, in the storage, the information of the first device selected in the first device selection operation, receiving, from the operating unit, a second function selection operation for selecting a second function;
in a case where the first device, which is selected in the first device selection operation
and whose information is stored in the storage, has the second function, controlling the display to display, as a candidate of a second device to execute the second function, information indicative of the first device; and in a case where the first device does not have the second function, controlling the display
not to display, as the candidate of the second device, the information indicative of the first device.
Patent No. 10,375,257
Claim 1 recites a non-transitory computer-readable storage medium storing a set of program instructions installed on and executed by a computer of a data processing apparatus
for controlling a device capable of performing a first function and a second function, the data processing apparatus including a communication interface, an input interface, a storage, and a display, the set of program instructions, when executed, causing the data processing apparatus to perform:
receiving a first selection of the first function through the input interface; searching for at least one device communicable through the communication interface; receiving, through the input interface, a selection of a first device for executing the first function among the at least one device identified in the searching; determining whether the first device is able to execute the second function which is different from the first function selected in the first selection; storing identification data of the selected first device in the storage; after storing the identification data of the first device, receiving a second selection of the second function between the first function and the second function through the input interface; in a case where the selected first device is determined to be capable of executing the second function, which is different from the first function selected by the first selection, and the second selection of the second function is received, displaying, in a manner indicating that the first device executes the second function, the stored identification data of the first device on the display; and in a case where the selected first device is determined to be incapable of executing the second function, which is different from the first function selected by the first selection, and the second selection of the second function is received, avoiding displaying, in the manner indicating that the first device executes the second function, the stored identification data of the first device on the display; and
claim 6 further recites performing: in a case where the identification data of the first device is determined to be stored in the storage, searching for the at least one device or a second device, different from the at least one device, communicable through the communication interface, and in a case where a selection of the second device is received, storing the identification data of the second device in addition to the identification data of the first device.
Limitations of claim 1 of the instant application are anticipated as by the limitations of claims 1 and 5
of ‘257. Clearly features of claim 1 of the current application are narrow in scope of features of claims
1 and 5 of ‘257. Therefore, It would have been obvious to one of ordinary skill in the art at the time of
the invention to combine the features of claims 1 and 5 of ‘257 to create terminal device as claim 1 of
the present application, in order to create a system capable to receive multiple candidates devices
capable to process different functions, making the data processing more versatile having more
selectable options.
Claims 1-17 of ‘257, cover the scope and limitations of claims 2-10 of the current application, Clearly
claims 2-10 of the current application are clear variation of claims 1-17 of ‘257.
3. Any inquiry concerning this communication or earlier communications from the examiner should
be directed to Gabriel I. Garcia whose telephone number is (571) 272-7434. The Examiner can
normally be reached Monday-Thursday from 7:30 AM-6:00 PM. The fax phone number for this group
is (571) 273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
Benny Tieu can be reached on (571) 272-7490. The fax phone number for the organization where
this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application
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through Private PAIR only. For more information about the PAIR system, see http://pair-
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Any inquiry of a general nature or relating to the status of this application should be directed to the
Group receptionist whose telephone number is (571) 272-2600.
/Gabriel I Garcia/
Primary Examiner, Art Unit 2682
September 14, 2026
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