DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Oath/Declaration
2. The receipt of Oath/Declaration is acknowledged.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 09/27/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Applicant has provided an explanation of relevance of cited document JP 2010-
117979 on page 2 of the specification.
Applicant has also cited Shibata (US 2020/0117401), Kaneko (US 2012/0182572), and Kim (US 2015/0022851), which the examiner cited in the Non-Final Rejection of Parent Application 17/081,865, and Ogawa (US 2020/0106903) which the examiner cited in the Notice of Allowance for Parent Application 17/081,865.
Applicant has also cited Shimotsu (US 10,841,455) which the examiner cited in the Non-Final Rejection of Parent Application 18/212,424.
Drawings
4. The drawing(s) filed on 09/27/2024 are accepted by the Examiner.
Status of Claims
5. Claims 1-11 are pending in this application.
Claim Objections
6. Claims 10 and 11 are objected to because of the following informalities:
Claim 10, line 9, please change ***the control path comprises*** to ***the control method comprises***.
Claim 11, line 9, please change ***the control path comprises*** to ***the control method comprises***.
This appears to be a cut/paste issue. If not, the examiner respectfully requests a brief explanation.
Appropriate correction is required.
Claim Interpretation
7. 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.
8. 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.
9. 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:
“an image former” in claims 1, 3, and 9.
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 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.
Double Patenting
10. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
11. Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of US Patent No. 12,143,551 (hereinafter ‘551).
Although the claims at issue are not identical, they are not patentably distinct from each other:
Regarding Claim 1:
Current Application
Claim 1:
An image forming apparatus, comprising:
a controller; and an image former,
wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path,
the image former is configured to form an image, and
the controller performs control to transmit usage information of the image forming apparatus or state information of the image forming apparatus to the external device via a first communication path selected by the controller; and
[AltContent: arrow][AltContent: arrow][AltContent: textbox (transmit the usage information of the image forming apparatus or the state information of the image forming apparatus to the external device via a second communication path )]
[AltContent: textbox (if a problem occurs in the first communication path,)]
[AltContent: textbox (the second communication path being selected by the controller and being different from the first communication path.)]
‘551
Claim 1:
An image forming apparatus, comprising: a controller; and an image former,
wherein the controller is configured to: select one of a plurality of communication methods and communicate with an external device via the selected communication method;
control the image former to form an image;
controller performs to control to transmit usage information of the image forming apparatus or state information of the image forming apparatus to the external device via a first communication method selected by the controller; and
[AltContent: textbox (when a problem occurs in the first communication method:)]
[AltContent: arrow][AltContent: textbox (select a second communication method different from the first communication method, and)]
[AltContent: textbox (transmit the usage information of the image forming apparatus or the state information of the image forming apparatus to the external device via the second communication method.)]
Current Application
Claim 9:
An image forming apparatus, comprising:
a controller; and an image former,
wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path,
the image former is configured to form an image, and
the controller performs control to
transmit an error content of the image forming apparatus or error log data of the image forming apparatus to the external device via a first communication path selected by the controller; and
[AltContent: arrow][AltContent: arrow][AltContent: textbox (transmit the error content of the image forming apparatus or the error log data of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path,)]
[AltContent: textbox (the second communication path being selected by the controller and being different from the first communication path.)]
‘551
Claim 9:
An image forming apparatus, comprising:
a controller; and an image former,
wherein the controller is configured to: select one of a plurality of communication methods and communicate with an external device via the selected communication method;
control the image former to form an image;
the controller performs control to
transmit an error content of the image forming apparatus or error log data of the image forming apparatus to the external device via a first communication method selected by the controller; and
[AltContent: textbox (when a problem occurs in the first communication method:)]
[AltContent: textbox (select a second communication method different from the first communication method, and)]
[AltContent: arrow]
[AltContent: textbox (transmit the error content of the image forming apparatus or the error log data of the image forming apparatus to the external device via the second communication method if a problem occurs in the first communication method, )]
[AltContent: arrow]
[AltContent: textbox (the second communication method being selected by the controller
and being different from the first communication method.)]
Regarding Claim 10:
Current Application
Claim 10:
A control method for an image forming apparatus, the image forming apparatus including: a controller; and an image former,
wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path,
the image former is configured to form an image, and the control path comprises:
transmitting usage information of the image forming apparatus or state information of the image forming apparatus to the external device via a first communication path selected by the controller; and
[AltContent: arrow][AltContent: arrow]
[AltContent: textbox (transmitting the usage information of the image forming apparatus or the state information of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path,)]
[AltContent: textbox (the second communication path being selected by the controller and being different from the first communication path.)]
‘551
Claim 10:
A control method for an image forming apparatus, the control method comprising:
selecting one of a plurality of communication methods and communicating with an external device via the selected communication method;
controlling an image former of the image forming apparatus to form an image;
transmitting usage information of the image forming apparatus or state information of the image forming apparatus to the external device via a first communication method selected by the controller; and
[AltContent: textbox (when a problem occurs in the first communication method:)]
[AltContent: textbox (selecting a second communication method different from the first communication method, and)]
[AltContent: textbox (transmitting the usage information of the image forming apparatus or the state information of the image forming apparatus to the external device via the second communication method.)]
[AltContent: arrow]
Regarding Claim 11:
Current Application
Claim 11:
A control method for an image forming apparatus, the image forming apparatus including: a controller; and an image former,
wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path,
the image former is configured to form an image, and the control path comprises:
transmitting an error content of the image forming apparatus or error log data of the image forming apparatus to the external device via a first communication path selected by the controller; and
[AltContent: textbox (transmitting the error content of the image forming apparatus or the error log data of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path,)]
[AltContent: textbox (the second communication path being selected by the controller and being different from the first communication path.)]
‘551
Claim 11:
A control method for an image forming apparatus, the control method comprising:
selecting one of a plurality of communication methods and communicating with an external device via the selected communication method;
controlling an image former to form an image; the control method comprises:
transmitting an error content of the image forming apparatus or error log data of the image forming apparatus to the external device via a first communication method selected by the controller; and
[AltContent: textbox (when a problem occurs in the first communication method:)]
[AltContent: textbox (selecting a second communication method different from the first communication method, and )]
[AltContent: textbox (transmitting the error content of the image forming apparatus or the error log data of the image forming apparatus to the external device via the second communication method.)]
12. Claim 2 of the current application corresponds to claim 2 of US 12,143,551.
13. Claim 3 of the current application corresponds to claim 3 of US 12,143,551.
14. Claim 4 of the current application corresponds to claim 4 of US 12,143,551.
15. Claim 5 of the current application corresponds to claim 5 of US 12,143,551.
16. Claim 6 of the current application corresponds to claim 6 of US 12,143,551.
17. Claim 7 of the current application corresponds to claim 7 of US 12,143,551.
18. Claim 8 of the current application corresponds to claim 8 of US 12,143,551.
Allowable Subject Matter
19. Claims 1-11 would be allowable if rewritten or amended to overcome the rejection(s) under nonstatutory double patenting, set forth in this Office action.
20. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1:
The prior art of record fails to disclose or make obvious nor suggests in the claimed combinations an image forming apparatus, comprising: a controller; and an image former, wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path, the image former is configured to form an image, and the controller performs control to transmit usage information of the image forming apparatus or state information of the image forming apparatus to the external device via a first communication path selected by the controller; and transmit the usage information of the image forming apparatus or the state information of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path, the second communication path being selected by the controller and being different from the first communication path.
Regarding Claim 9:
The prior art of record fails to disclose or make obvious nor suggests in the claimed combinations an image forming apparatus, comprising: a controller; and an image former, wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path, the image former is configured to form an image, and the controller performs control to transmit an error content of the image forming apparatus or error log data of the image forming apparatus to the external device via a first communication path selected by the controller; and transmit the error content of the image forming apparatus or the error log data of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path, the second communication path being selected by the controller and being different from the first communication path.
Regarding Claim 10:
The prior art of record fails to disclose or make obvious nor suggests in the claimed combinations a control method for an image forming apparatus, the image forming apparatus including: a controller; and an image former, wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path, the image former is configured to form an image, and the control path comprises: transmitting usage information of the image forming apparatus or state information of the image forming apparatus to the external device via a first communication path selected by the controller; and transmitting the usage information of the image forming apparatus or the state information of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path, the second communication path being selected by the controller and being different from the first communication path.
Regarding Claim 11:
The prior art of record fails to disclose or make obvious nor suggests in the claimed combinations a control method for an image forming apparatus, the image forming apparatus including: a controller; and an image former, wherein the controller is configured to select one of a plurality of communication paths and communicate with an external device via the selected communication path, the image former is configured to form an image, and the control path comprises: transmitting an error content of the image forming apparatus or error log data of the image forming apparatus to the external device via a first communication path selected by the controller; and transmitting the error content of the image forming apparatus or the error log data of the image forming apparatus to the external device via a second communication path if a problem occurs in the first communication path, the second communication path being selected by the controller and being different from the first communication path.
21. Claims 2-8 depend from allowable claim 1 and, by virtue of their dependency, are also indicated as allowable subject matter.
22. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wada (US 2012/0036570) discloses an image forming apparatus to communicate with a service provision system via a firewall may include an identification unit, a determination unit, and a communication unit. The identification unit identifies, out of services provided by the service provision system, a service which provides a substitute function corresponding to a function of the image forming apparatus limited by a failure. The determination unit determines, out of a plurality of communication methods to be used for communication with the service provision system via the firewall, a communication method to be used to perform data communication with the service identified by the identification unit. The communication unit performs data communication with the service identified by the identification unit by using the communication method determined by the determination unit.
Conclusion
23. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL R MCLEAN whose telephone number is (571)270-1679. The examiner can normally be reached Monday-Thursday, 6AM - 4PM, PST.
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, Akwasi M Sarpong can be reached at 571.270.3438. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEIL R MCLEAN/Primary Examiner, Art Unit 2681
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