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 .
Response to Arguments
Applicant's arguments filed 12/31/25 have been fully considered but they are not persuasive. In regards to applicant’s argument that the nonstatutory double patenting is invalid, the examiner respectfully disagrees. The arguments appear to be based on the aspects of setting the default medium and the displaying of the medium selection screen with the default medium. The patent 12,112,078 claim 1 has similar limitations to that of claim 2 of the instant application. As indicated, the only difference being the recitation of a default print medium being shown when making a medium selection, as well as setting the default print medium as claimed by the instant application. The patent application makes reference to a default print medium in claim 6. Claim 6 explicitly states that a default print medium is used and can be displayed. This would imply that it had to have been set in order to display a default print medium. The default print medium, as indicated by claim 6, would be displayed in the selection screen. As indicated, the double patenting rejection is a non-statutory double patenting, meaning that although similar, the claims are obvious variants of each other. It would have been obvious to one of ordinary skill in the art to have a default print medium, as indicated by claim 6 of the patent. Furthermore, setting of the default print medium would have to be done in order for it to be displayed. This setting of the default print medium would have been obviously added to the print function information, as that is information pertaining to properties of the printer with respect to the print medium. Therefore, one of ordinary skill in the art would have been able to interpret the patent application, as being similar to the instant application, wherein it is obvious to add the additional details as it relates to the default print medium based on the disclosure of the patent application. Therefore, the double patenting still applies.
It is noted that the 112(b) rejection is withdrawn in view of the amendments overcoming the 112(f) interpretation. It is also noted that the objection to the title is withdrawn in view of the amendments.
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.
Claims 2-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,112,078. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is just an obvious variant of the patent. Setting a default medium is a known option when dealing with printing functions. A default medium is dependent on the printer itself, or more commonly the driver of the printer. This can correspond to the software function information. The default medium would have been obviously included in the print function information in order to be displayed as further indicated by claim 6.
Instant Application: 18/826,019
US Patent: 12,112,078
2. A non-transitory computer-readable storage medium storing an application program executable by a computer of an information processing apparatus and supporting print data generation software usable for a plurality of printing apparatuses of vendors, an operating system of the information processing apparatus performing control so that medium information newly added to print function information is displayed preferentially, the application program causing the computer to:
acquire medium information from a printing apparatus;
add the acquired medium information to print function information so that medium information existing in the print function information is displayed prior to the acquired medium information;
set, as default medium information in the print function information to which the acquired medium information is added, the default medium information set as a default in the medium information existing in the print function information; and
cause the information processing apparatus to display, based on the print function information, a medium selecting screen on which the default medium information is set as the default medium information when the medium selecting screen is displayed
7. A non-transitory computer-readable storage medium storing an application program executable by a computer of an information processing apparatus and supporting print data generation software usable for a plurality of printing apparatuses of vendors, an operating system of the information processing apparatus performing control so that medium information newly added to the print function information is displayed preferentially, the application program causing the computer to:
acquire medium information from a printing apparatus; and
add the acquired medium information to print function information so that medium information existing in the print function information is displayed prior to the acquired medium information; and
cause the information processing apparatus to display, based on the print function information, a medium selecting screen so that the medium information existing in the print function information is displayed prior to the added medium information.
The dependent claims of the instant application 3-6 are mere copies of claims 8-11 of the patent. The additional independent claim 10 of the instant application would correspond to claim 1 of the patent. Claim 9 is an obvious variant of independent claim 2 of the instant application. The dependent claims of 7 and 8 of the instant application are applying obvious protocols to be able to allow for communication between the devices.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS PACHOL whose telephone number is (571)270-3433. The examiner can normally be reached M-Th: 8-4.
Examiner interviews are available via telephone, in-person, and 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, George Eng can be reached at 571-272-7495. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS PACHOL/Primary Examiner, Art Unit 2699