CTNF 18/828,946 CTNF 87833 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-06 This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: Acquisition unit in claim 1. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof: Acquisition unit – CPU 206, see Specification, paragraph [0039] If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-7 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. Regarding claims 1-7, claim 1 recites “plurality of makers of the image forming apparatus”. It is unclear whether or not this limitation is intended to mean that a plurality of makers together make one image forming apparatus as the plain meaning would read from the use of the definite article “the” but appearing to not map clearly to the specification or if this intends to refer to a plurality of makers of a variety of image forming apparatuses as paragraph [0004] of the specification would seem to imply. As such, the scope of claim 1 is unclear and claim 1 is therefore rejected as indefinite for failing to particularly point out and distinctly claim the subject matter regarding as the invention. Claims 2 and 3 recite similar subject matter and are therefore similarly rejected. Claims 4-7 are rejected as dependent upon claim 3 and therefore containing the same defect. In the interest of compact prosecution, a best effort to interpret claims 1-3, 6, and 7 in their current form will be made for the purposes of prior art rejection. Regarding claims 4-5, claim 4 recites that “the second information is included in the first information, in an invalidated state”. However, claim 3, from which claim 4 depends, requires “performing capabilities utilization processing for enabling the reading unit to use the first capabilities with which the first information acquired by said acquiring is concerned and the second capabilities with which the second information acquired by said acquiring is concerned”. It is unclear in what sense the information is “invalidated” if it is also simultaneously both obtained and used in capabilities processing”. The specification also offers no definition of what such an “invalidation” is. As such, the scope of claim 4 is unclear and claim 4 is therefore rejected as indefinite for failing to particularly point out and distinctly claim the subject matter regarding as the invention. Claim 5 contains similar language, referring to “the second information is in a state invalidated” and is therefore similarly rejected under 35 U.S.C. 112(b). Claim 6 recites the limitation "the markup language" in lines 1-2 of the claim. There is insufficient antecedent basis for this limitation in the claim. Consequently, claim 6 is rejected under 35 U.S.C. 112(b). The Examiner notes that claim 6 could be intended to depend on claim 5, which does introduce a “markup language”. In the interest of compact prosecution, a best effort to interpret claim 6 in its current form will be made for the purposes of prior art rejection. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over (“Internet Printing Protocol/1.1: Model and Semantics”, copy attached, see PTO-892) in view of Neubrand (U.S. Patent. No. 8,913,285) . Regarding claim 1, Sweet et al. (“Internet Printing Protocol/1.1: Model and Semantics”, copy attached, see PTO-892) discloses: An information processing apparatus that is communicably connected to an image forming apparatus including a reading unit configured to read an image and processes information transmitted and received to and from the image forming apparatus (see, for example, page 13 showing end user at browser operating at client), wherein the image forming apparatus stores, in advance, first information concerning first capabilities which are commonly set by a plurality of makers of the image forming apparatus and can be standardly executed by the reading unit (pages 22, 145-146, the image forming apparatus stores a variety of attributes related specific capabilities regarding standard capabilities of document formats supported, color/not-color, and supported charset), and second information concerning second capabilities which are uniquely set by a predetermined maker of the image forming apparatus and can be executed by the reading unit (page 151, the printer also stores attributes related to manufacturer specific information regarding features/firmware/upgrades) the information processing apparatus comprising: an acquisition unit configured to be capable of acquiring the first information and the second information from the image forming apparatus by using a common protocol commonly set by the plurality of makers of the image forming apparatus (pages 61-64, the client can use a get-printer- attributes request to obtain relevant capabilities from the printer; the printer then responds to the client with the printer attributes); and a processing unit configured to perform capabilities utilization processing for enabling the reading unit to use the first capabilities with which the first information acquired by the acquisition unit is concerned and the second capabilities with which the second information acquired by the acquisition unit is concerned (pages 59-60, the client can use the create-job operation in order to use the capabilities of the device to perform a job) Even assuming arguendo that Sweet does not disclose: an image forming apparatus including a reading unit configured to read an image and a processing unit configured to perform capabilities utilization processing for enabling the reading unit to use the first capabilities with which the first information acquired by the acquisition unit is concerned and the second capabilities with which the second information acquired by the acquisition unit is concerned Neubrand (U.S. Patent. No. 8,913,285) discloses: an image forming apparatus including a reading unit configured to read an image (column 6, lines 6, lines 1-10, 27-39); and wherein the image forming apparatus stores, in advance, first information concerning first capabilities which are commonly set by a plurality of makers of the image forming apparatus and can be standardly executed by the reading unit, and second information concerning second capabilities which are uniquely set by a predetermined maker of the image forming apparatus and can be executed by the reading unit (column 11, lines 31-54, specific codes are provided which determine generic controls and specific controls from particular ) a processing unit configured to perform capabilities utilization processing for enabling the reading unit to use the first capabilities with which the first information acquired by the acquisition unit is concerned and the second capabilities with which the second information acquired by the acquisition unit is concerned (column 11, lines 31-54, and column 12, lines 1-25, the interface provides options for control related to the generic and specific functions) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Neubrand with the system of Sweet such that the system would have been configured to perform capabilities utilization processing for enabling the reading unit to use the first capabilities with which the first information acquired by the acquisition unit is concerned and the second capabilities with which the second information acquired by the acquisition unit is concerned as described in Neubrand. The suggestion/motivation would have been in order to implement a system capable of “eliminat[ing] the confusion that would result from different manufacturers giving different names to the same standard control” within an interface (column 11, lines 52-54 of the Neubrand reference). Regarding claim 2, the structural elements of apparatus claim 1 perform all of the steps of method claim 2. Thus, claim 2 is rejected for the same reasons discussed in the rejection of claim 1. Regarding claim 3, arguments analogous to claim 1 are applicable. The computer readable medium is inherently taught by Sweet as evidenced by the IPP client, IPP server, and Print Device running the described functions (see pages 12-14 of Sweet) . 07-21-aia AIA Claim (s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sweet in view of Neubrand, in further view of Pevzner (“Sane-airscan: the future of Linux driverless scanning”, copy attached, see PTO-892) . Regarding claim 6, the combination of Sweet in view of Neubrand discloses the medium of the parent claim (claim 3). The combination of Sweet in view of Neubrand does not explicitly disclose: wherein the markup language is XML Pevzner (“Sane-airscan: the future of Linux driverless scanning”) discloses: wherein the markup language is XML (see page 6, regarding the use of eSCL (part of AirPrint standard) which is a XML based protocol) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Pevzner with the combination of Sweet and Neubrand such that the markup language used would have been XML as described in Pevzner. The suggestion/motivation would have been in order to implement a system capable of interfacing with “every Apple Device, which is good motivation for hardware vendors to support it” given the market incentive from large number of consumers having Apple devices (page 6 of the Pevzner reference). Regarding claim 7, the combination of Sweet in view of Neubrand discloses the medium of the parent claim (claim 3). The combination of Sweet in view of Neubrand does not explicitly disclose: wherein the common protocol is eSCL protocol. Pevzner discloses: wherein the common protocol is eSCL protocol (see page 6, regarding the use of eSCL (part of AirPrint standard) which is a XML based protocol) Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Pevzner with the combination of Sweet and Neubrand such that the common protocol was eSCL protocol. as described in Pevzner. The suggestion/motivation would have been in order to implement a system capable of interfacing with “every Apple Device, which is good motivation for hardware vendors to support it” given the market incentive from large number of consumers having Apple devices (page 6 of the Pevzner reference). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R WALLACE whose telephone number is (571)270-1577. The examiner can normally be reached Monday-Friday from 8:30-5 PM. 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, Benny Tieu can be reached at 571-272-7490. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN R WALLACE/ Primary Examiner, Art Unit 2682 Application/Control Number: 18/828,946 Page 2 Art Unit: 2682 Application/Control Number: 18/828,946 Page 3 Art Unit: 2682 Application/Control Number: 18/828,946 Page 4 Art Unit: 2682 Application/Control Number: 18/828,946 Page 5 Art Unit: 2682 Application/Control Number: 18/828,946 Page 6 Art Unit: 2682 Application/Control Number: 18/828,946 Page 7 Art Unit: 2682 Application/Control Number: 18/828,946 Page 8 Art Unit: 2682 Application/Control Number: 18/828,946 Page 9 Art Unit: 2682 Application/Control Number: 18/828,946 Page 10 Art Unit: 2682
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