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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-10 in the reply filed on 08/04/26 is acknowledged.
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 this application 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.
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: “reception unit,” “generation unit,” “storage unit,” and “receiver unit” in claims 1-10.
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.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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
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.
Claim limitation “reception unit,” “generation unit,” “storage unit,” and “receiver unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Claim(s) 1-10 contain(s) the limitation “reception unit,” “generation unit,” “storage unit,” and “receiver unit” however, the specification does not mention the term “reception unit,” “generation unit,” “storage unit,” and “receiver unit”. Although there is support for the steps and processes of receiving, generating, and storing, there is a lack of support for each of their respective units. Therefore, one cannot determine the further features of the units besides what is described in the claims. As a result of a 112(f) identification in regards to the units, there needs to be more information to identify what the units comprise of and actions they perform. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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(s) 1, 2, 4-7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US 2021/0141577) in view of Haik (US 2020/0133182).
Regarding Claim 1, Ito teaches an information processing apparatus connectable to at least a printer and an inspector that performs inspection of a printed material printed with the printer (Paragraph 18), the information processing apparatus comprising:
a reception unit that receives a job setting for received print data (Paragraph 22, wherein the job is processed to be printed. This would involve settings for the print data);
a transmitter unit that transmits the image data (Paragraph 81, wherein the data is transmitted),
wherein in response to the reception unit receiving a predetermined job setting, the generation unit assigns pixel information indicating exclusion from the inspection by the inspector to a pixel in an image area provided in the job setting (Paragraphs 76, 83 and 84, wherein pixel data can be designated as exclusion).
Ito does not teach a generation unit that generates image data in which pixel information is added to the print data.
Haik teaches a generation unit that generates image data in which pixel information is added to the print data (Paragraph 58, wherein registration marks can be added).
Ito and Haik are combinable because they both deal with inspecting images.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the teachings of Ito with the teachings of Haik for the purpose of improving accuracy in comparison of images (Haik: Paragraph 58).
Regarding Claim 2, Ito further teaches wherein the generation unit provides the pixel information by analyzing a PDL command for the print data (Paragraph 34, wherein the data can be PDL).
Regarding Claim 4, Haik further teaches wherein the job setting is a setting to provide the print data with a predetermined image (Paragraph 58, wherein the job is printed based on the inclusion of the registration marks).
Ito and Haik are combinable because they both deal with inspecting images.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the teachings of Ito with the teachings of Haik for the purpose of improving accuracy in comparison of images (Haik: Paragraph 58).
Regarding Claim 5, Ito further teaches a storage unit that stores the job setting and information regarding an area in which the predetermined image is to be provided, the job setting and the information being stored in association with each other (Paragraph 345, wherein all print data is stored. This would mean the marks of Haik would be stored as well).
Regarding Claim 6, Haik further teaches wherein the predetermined image is a control bar (Paragraph 58, wherein there can be a color bar).
Ito and Haik are combinable because they both deal with inspecting images.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the teachings of Ito with the teachings of Haik for the purpose of improving accuracy in comparison of images (Haik: Paragraph 58).
Regarding Claim 7, Haik further teaches wherein the predetermined image is a register mark (Paragraph 58, wherein there can be a registration mark).
Regarding Claim 9, Ito further teaches a receiver unit that receives a print job including the print data and the job setting (Paragraph 22, wherein the print job is received accordingly),
wherein the reception unit receives the job setting included in the print job (Paragraph 22, wherein the print job is received accordingly, which would include the settings to properly print the job).
Claim(s) 3, 8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US 2021/0141577) in view of Haik (US 2020/0133182) further in view of official notice.
Regarding Claim 3, Ito in view of Haik does not teach wherein the generation unit generates the image data by embedding the pixel information in an RIP image generated by performing RIP processing on the print data.
Official notice is taken that it would have been obvious to one of ordinary skill in the art to have a RIP process to process the print data. This is a known element of processing print data, rasterization, for printing. This allows for the image data to be converted to a format that is suitable for printing. Without this process, the print data may not be printed properly.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to modify the teachings of Ito in view of Haik with the teachings of a RIP to allow for proper printing of print data.
Regarding Claim 8, Ito in view of Haik does not teach wherein the predetermined image is a patch for a front/back side registration adjustment function.
Official notice is taken that it would have been obvious to one of ordinary skill in the art to have a patch to determine font/back side orientation. This patch is used to ensure that the proper information is printed on the front and back side in the correct placement. This is a known patch. Haik already teaches registration marks, which serve as another form of aligning image data.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to modify the teachings of Ito in view of Haik with the teachings of a patch for front/back side registration to ensure proper alignment and printing of image data.
Regarding Claim 10, Ito in view of Haik does not teach wherein the reception unit has an operation unit, and
wherein the reception unit receives the job setting through operation of the operation unit.
Official notice is taken that it would have been obvious to one of ordinary skill in the art to have a display and interface that allows for a user to input print settings. This allows for a user to select how they want the job printed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to modify the teachings of Ito in view of Haik with the teachings of an input display for print settings to ensure proper printing of a document according to the user.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional cited prior art of A, C, and E all relate to image inspection.
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
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