CTNF 18/909,261 CTNF 83290 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-fti AIA The present application is being examined under the pre-AIA first to invent provisions. Double Patenting 08-33 AIA 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. 08-34 Claims 2-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 6-21 of U.S. Patent No. 12,149,664 . Although the claims at issue are not identical, they are not patentably distinct from each other as will be shown below: 18/909261 12,149,664 2. A scanning apparatus comprising: at least one processor, wherein the at least one processor is configured to function as: 1. A scanning apparatus comprising: at least one processor, wherein the at least one processor is configured to function as: a display unit configured to display, based on a first user operation to the scanning apparatus that is executing a display function, a predetermined display screen for first scanning, wherein the first scanning includes scanning an original set to the scanning apparatus, generating an image data by the scanning and uploading the image data to a Web service for data sharing; and a display unit configured to display, based on a first user operation to the scanning apparatus that is executing a display function, a predetermined display screen for first scanning, wherein the first scanning includes scanning an original set to the scanning apparatus, generating image data by the scanning and uploading the image data to an upload destination that is a Web service for data sharing; and a performing unit configured to, if the first scanning is requested to the scanning apparatus based on a second user operation to the scanning apparatus after the predetermined display screen is displayed, perform the first scanning, a performing unit configured to, if the first scanning is requested to the scanning apparatus based on a second user operation to the scanning apparatus after the predetermined display screen is displayed, perform the first scanning, wherein the predetermined display screen includes a selecting screen for selecting a upload destination and the image data generated by the first scanning is uploaded to the upload destination selected on the selecting screen, wherein, if a second scanning that is different from the first scanning is requested to the scanning apparatus in a state where the predetermined display screen is displayed by the display unit, the requested second scanning is not performed, at least during displaying the predetermined display screen before the first scanning is executed, by executing a control based on a fact that the first user operation is executed, wherein, if second scanning that is different from the first scanning is requested to the scanning apparatus in a state where the predetermined display screen is displayed by the display unit, the requested second scanning is not performed, at least during displaying the predetermined display screen, by executing a control based on a fact that the first user operation is executed, In combination with claim 17: 17. The scanning apparatus according to claim 1, wherein the predetermined display screen includes a screen for selecting the upload destination. wherein the second scanning includes scanning an original set to the scanning apparatus and generating an image data by the scanning and the second scanning is requested without the second user operation. wherein the second scanning includes scanning an original set to the scanning apparatus and generating image data by the scanning and the second scanning is requested without the second user operation. Claims 3-18 on the current application correspond to claims 2-4, 6-16, and 18-19 respectively of US 12,149,664 , 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. 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, Abderrahim Merouan can be reached at 571-270-5254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. 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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. /LENNIN R RODRIGUEZGONZALEZ/Primary Examiner, Art Unit 2683 Application/Control Number: 18/909,261 Page 2 Art Unit: 2683 Application/Control Number: 18/909,261 Page 3 Art Unit: 2683 Application/Control Number: 18/909,261 Page 4 Art Unit: 2683 Application/Control Number: 18/909,261 Page 5 Art Unit: 2683 Application/Control Number: 18/909,261 Page 6 Art Unit: 2683 Application/Control Number: 18/909,261 Page 7 Art Unit: 2683 Application/Control Number: 18/909,261 Page 8 Art Unit: 2683 Application/Control Number: 18/909,261 Page 9 Art Unit: 2683 Application/Control Number: 18/909,261 Page 10 Art Unit: 2683 Application/Control Number: 18/909,261 Page 11 Art Unit: 2683
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