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 .
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.
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.
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 claim 19 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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because a “storage medium” is recited. However, a “storage medium” can possibly be either a transitory medium or a non-transitory medium. It is not clear as to which one of the two media the claim is referring to according to the definition set forth in paragraph [0138] of the specification as filed; therefore there is a reasonable speculation as to this “storage medium” being a transitory medium. Examiner suggests amending claim 20 to "A non-transitory storage medium...".
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.
Claim(s) 1-7, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oishi (US 2013/0163038).
(1) regarding claims 1, 19, and 20:
Oishi ‘038 discloses a control method for an information processing apparatus including a predetermined application program (Fig. 1), the control method comprising:
obtaining predetermined information for registering a communication apparatus from the communication apparatus (paragraph [0040]-[0043], where information about desired printers to be registered is obtained);
registering the communication apparatus, which is a transmission source of the predetermined information, to the predetermined application program by associating the communication apparatus with information relating to an access point to which the information processing apparatus was connected when the predetermined information was obtained (paragraph [0040]-[0043], and [0053], where the printer gets registered to the relay device);
selecting, as a transmission destination of a job, a communication apparatus from among a plurality of the communication apparatuses registered to the predetermined application program (paragraph [0044]-[0046], where the printing destination is selected); and
transmitting the job to the communication apparatus selected as the transmission destination of the job (paragraph [0045], where the print job is transmitted to the destination), wherein
in a case where the information processing apparatus is connecting with a predetermined access point at a predetermined timing for selecting the transmission destination of the job, the communication apparatus associated with the information relating to the predetermined access point and registered to the predetermined application program is automatically selected by the predetermined application program as the transmission destination of the job on a basis of the information processing apparatus being connecting with the predetermined access point at the predetermined timing (paragraph [0120], where a default printer is selected when the UI interface is first shown (predetermined timing)).
(2) regarding claim 2:
Oishi ‘038 further discloses wherein the predetermined timing is when the predetermined application program is started up (paragraph [0120], where a default printer is selected when the UI interface is first shown (predetermined timing)).
(3) regarding claim 3:
Oishi ‘038 further discloses wherein in a case where the communication apparatus selected as the transmission destination of the job at the predetermined timing is not associated with the predetermined access point and registered via the predetermined application program, the communication apparatus associated with the information relating to the predetermined access point and registered to the predetermined application program is automatically selected by the predetermined application program as the transmission destination of the job (paragraph [0120], where the default printer is selected).
(4) regarding claim 4:
Oishi ‘038 further discloses wherein in a case where the communication apparatus selected as the transmission destination of the job at the predetermined timing does not exist, the communication apparatus associated with the information relating to the predetermined access point and registered to the predetermined application program is automatically selected by the predetermined application program as the transmission destination of the job (paragraph [0112]-[0113], and [0120], where the default printer gets chosen).
(5) regarding claim 5:
Oishi ‘038 further discloses wherein a case where the communication apparatus selected as the transmission destination of the job at the predetermined timing does not exist includes a case where the communication apparatus registered to the predetermined application program does not exist (paragraph [0112]-[0113], where the device has been deleted).
(6) regarding claim 6:
Oishi ‘038 further discloses wherein in a case where a plurality of the communication apparatuses associated with the information relating to the predetermined access point and registered to the predetermined application program exist, from among the plurality of communication apparatuses associated with the information relating to the predetermined access point and registered to the predetermined application program, the communication apparatus last used is automatically selected by the predetermined application program as the transmission destination of the job (paragraph [0101]).
(7) regarding claim 7:
Oishi ‘038 further discloses wherein in a case where a plurality of the communication apparatuses associated with the information relating to the predetermined access point and registered to the predetermined application program exist, from among the plurality of communication apparatuses associated with the information relating to the predetermined access point and registered to the predetermined application program and the plurality of communication apparatuses with which the information processing apparatus can communicate, the communication apparatus last used is automatically selected by the predetermined application program as the transmission destination of the job (paragraph [0101]).
(8) regarding claim 17:
Oishi ‘038 further discloses wherein the predetermined information is capability information of the communication apparatus (paragraph [0049]).
(9) regarding claim 18:
Oishi ‘038 further discloses wherein the job is a print job (paragraph [0040]) or a scan job.
Allowable Subject Matter
Claims 8-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
A. Claim 8 discloses the unique and distinct limitations of “executing search processing to search for the communication apparatus on a network of the predetermined access point in a case where the communication apparatus associated with the information relating to the predetermined access point and registered to the predetermined application program is not included in one or more of the communication apparatuses registered to the predetermined application program at the predetermined timing, wherein the communication apparatus detected via the search processing is associated with the information relating to the predetermined access point and registered to the predetermined application program”, either alone or in combination, the applied prior art does not teach the claimed subject matter. Claims 9-15 depend on claim 8, either directly or indirectly, therefore a similar analysis applies.
B. Claim 16 discloses the unique and distinct limitations of “attempting to communicate with the communication apparatus operating in a direct communication mode for communicating while not going through an external apparatus forming a network in a case where the information processing apparatus is not connecting with any access point at the predetermined timing, wherein in a case where communication with the communication apparatus operating in the direct communication mode is successful, the communication apparatus operating in the direct communication mode is selected as the transmission destination of the job”, either alone or in combination, the applied prior art does not teach the claimed subject matter. Claims 9-15 depend on claim 8, either directly or indirectly, therefore a similar analysis applies.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LENNIN R RODRIGUEZ whose telephone number is (571)270-1678. The examiner can normally be reached Monday-Thursday 9:00am-7:00pm.
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/LENNIN R RODRIGUEZGONZALEZ/ Primary Examiner, Art Unit 2683
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