DETAILED ACTION
Notice of 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 .
Double Patenting
2. Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over combined claims 1 and 4 of U.S. Patent No: 11,429,323.
Instant Application
7. An information processing apparatus capable of communicating with a server system having a cloud print service, the information processing apparatus comprising:
a receiving unit configured to receive identification information of an image forming apparatus registered in the cloud print service;
a generating unit configured to generate a print queue of the image forming apparatus corresponding to the received identification information;
and an acquiring unit configured to acquire a print setting application that is identified based on the received identification information of the image forming apparatus
and provides a print setting screen for setting a print setting transmitted to the server system, wherein upon receiving an instruction for opening the print setting screen with the generated print queue selected, the print setting screen is provided by the print setting application.
Referenced Patent: 11,429,323
1. An information processing apparatus, connectable to a server system including a first print queue for managing a print job to be transmitted to an image forming apparatus, the information processing apparatus comprising:
an obtaining unit configured to obtain information identifying one or more available print queues, including the first print queue, in the server system;
a generation unit configured to generate, in the information processing apparatus, a second print queue for managing a print job to be transmitted to the first print queue, based on a user selection of the first print queue from among the one or more available print queues identified based on the obtained information;
and a download unit configured to download a print setting application for setting print setting values to be included in the print job, based on information related to the first print queue
4. The information processing apparats according to claim 1, further comprising: an installation unit configured to install the downloaded print setting application; an activation unit configured to activate the installed print setting application in response to a user selecting an object for performing detailed print setting while the generated second print queue is selected; and a second generation unit configured to generate the print job to be transmitted to the first print queue, wherein the print job includes the print setting values set by the activated print setting application.
Claim 7 was rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of US Patent NO. 11,429,323. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming similar subject matter as example indicated in the table above.
3. Claims 1, 7, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, 1, 12 of U.S. Patent No: 12,131,081 respectively.
Instant Application
7. An information processing apparatus capable of communicating with a server system having a cloud print service, the information processing apparatus comprising:
a receiving unit configured to receive identification information of an image forming apparatus registered in the cloud print service;
a generating unit configured to generate a print queue of the image forming apparatus corresponding to the received identification information;
and an acquiring unit configured to acquire a print setting application that is identified based on the received identification information of the image forming apparatus
and provides a print setting screen for setting a print setting transmitted to the server system, wherein upon receiving an instruction for opening the print setting screen with the generated print queue selected, the print setting screen is provided by the print setting application.
Referenced Patent: 12,131,081
1. An information processing apparatus, connectable to a first server system storing information of a plurality of printers, the information processing apparatus comprising: a controller configured to:
receive the information of the plurality of printers from the first server system;
generate a print queue corresponding to a printer selected by a user from a plurality of printers displayed based on the information of the plurality of printers received from the first server system, wherein the print queue of the printer selected by the user is generated after the user selects the printer selected by the user;
download a print setting application specified based on information of the print setting application from a second server system that distributes one or more applications without receiving a user instruction for downloading the print setting application, wherein the information of the print setting application corresponds to the printer selected by the user, wherein the second server system is different from the first server system;
cause a display to display a print setting screen provided by the print setting application based on a predetermined user instruction received via another print setting screen provided by the operating system in a situation where the generated print queue is selected via said another print setting screen and the print setting application is stored in the information processing apparatus; and transmit print setting values set via the print setting screen to the first server system.
Claims 1, 7, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, 1, and 12 of US Patent NO. 12,131,081 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming similar subject matter as example indicated in the table above.
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.
Claim Rejections - 35 USC § 103
4. 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 of this title, 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.
5. Claims 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over Minagawa (US Pub: 2015/0124282) and in further view of Barnard et al (US Patent: 2003/0005097), JP548’ (JP Pub: 2017097548) and JP690’ (JP Pub: 2017111690).
Regarding claim 1 (Currently Amended), Minagawa teaches: A control method for controlling an information processing apparatus capable of communicating with a server system having a cloud print service [p0002], the control method comprising: receiving identification information of an image forming apparatus registered in the cloud print service [p0107].
Minagawa does not specified generated queue corresponding to printer ID. In the same field of endeavor, Barnard et al teaches: generating a print queue of the image forming apparatus corresponding to the received identification information [p0051]. Therefore, generating a print queue corresponding to a printer would have been well practiced in the art for compatibility.
Minagawa in view of Barnard et al does not specify print setting application based on printer ID. In the same field of endeavor, JP548’ teaches: and acquiring a print setting application that is identified based on the received identification information of the image forming apparatus [page 11: p03-p05]; and provides a print setting screen for setting a print setting to be transmitted to the server system [page 11: p06]. And JP690’ teaches: wherein upon receiving an instruction for opening the print setting screen with the generated print queue selected, the print setting screen is provided by the print setting application [page 4: p04; page 5: p01, p06]. Therefore, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of all to acquire and display print setting associated with print queue based on printer/driver identification for consistency.
Regarding claim 2 (Original), the rationale applied to the rejection of claim 1 has been incorporated herein. JP548’ further teaches: The control method according to claim 1, wherein the identification information of the image forming apparatus is model information of the image forming apparatus [page 11: p03-p05].
Regarding claim 3 (Original), the rationale applied to the rejection of claim 1 has been incorporated herein. Minagawa further teaches: The control method according to claim 1, further comprising: transmitting the print setting set by means of the print setting screen to the server system via the Internet [p0112].
Regarding claim 4 (Original), the rationale applied to the rejection of claim 1 has been incorporated herein. JP548’ and JP690’ further teach: The control method according to claim 1, wherein the print setting application is installed into the information processing apparatus after being acquired by the information processing apparatus, and, upon receiving the instruction for opening the print setting screen with the print queue selected on the information processing apparatus in which the print setting application is installed, the print setting application causes the information processing apparatus to display the print setting screen [JP548’: page 17: p02; page 11: p06; JP690’: page 5: p06].
Regarding claim 5 (Original), the rationale applied to the rejection of claim 1 has been incorporated herein. JP548’ and JP690’ further teach: The control method according to claim 1, wherein the print setting application is installed into the information processing apparatus after being acquired by the information processing apparatus, and, upon receiving the instruction for opening the print setting screen with the print queue selected on the information processing apparatus in which the print setting application is installed, the print setting application is activated by the information processing apparatus and causes the information processing apparatus to display the print setting screen [JP548’: page 17: p02; page 11: p06; JP690’: page 4: p04; page 5: p01, p06].
Regarding claim 6 (Original), the rationale applied to the rejection of claim 1 has been incorporated herein. Minagawa further teaches: The control method according to claim 1, wherein the cloud print service stores a print job including the print setting into a print queue of a registered printing apparatus and transmits the stored print job to the printing apparatus via the Internet [p0118, p0121, p0125, p0126].
Claims 7-12 have been analyzed and rejected with regard to claims 1-6 respectively.
Claims 13-17 have been analyzed and rejected with regard to claims 1, 2, and 4-6 respectively and in accordance with JP548‘s further teaching on an application to be run on an information processing apparatus [page 11: p06].
Claims 18-22 have been analyzed and rejected with regard to claims 13-17 respectively and in accordance with further teaching on: A non-transitory computer-readable storage medium storing an application to be run on an information processing apparatus [claim 14].
Contact
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAN ZHANG whose telephone number is (571)270-3751. The examiner can normally be reached on Mon-Fri 9:00-5:00.
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 on 571-272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Fan Zhang/
Patent Examiner, Art Unit 2682
Prosecution Insights