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 .
Claims 1 – 10 are pending in this application.
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.
Double Patenting
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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).
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Claims 1, 3 – 6 and 8 - 10 of instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3, 6, 7, 9 and 13 - 15 (Patent No. 11,966,654 B2) in view of Kitagata (PreGrant Publication No. 2013/0077125 A1, hereinafter ‘Kitagata’).
Although the claims at issue are not identical, they are not patentably distinct from each other because: The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
It is clear that all the elements of the parent claim 1 and 9 is to be found in instant claim (e.g., as the parent claims 1 and 6 (where fully claims 1 and 9 encompasses the instant claims 1 and 6).
The difference between the instant application claim 16 and the patent claim 1 lies in the fact that the instant claim 1 or 6 include an additional element (e.g., registering printing systems and the involvement of unique token, etc.) and is thus much more specific. Thus, the invention of instant claim 1 or 6 is in effect a “species” of the “generic” invention of the parent application claims 1 or 9.
It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since parent application claim 1 is anticipated by claim 16 of the instant, it is not patentably distinct from claim 16 the instant claims.
Below is a side-by-side comparison (bolded where significant different, and underlined where limitation is mentioned somewhere):
Instant Application 18/915,166
Patent No. 11,327,698
Claim 1
A server comprising:
a memory;
a processor in communication with the memory, the processor configured to:
register a plurality of printing systems with a printing service executed by the processor, each of the plurality of printing systems being assigned a unique token in response to being registered with the printing service;
store printing configuration rules and the unique tokens for interfacing with the plurality of printing system in the memory;
receive, from a client device, a print request including a print job and the unique token for a selected one of the plurality of printing systems, the unique token providing the processor with authority to send the print job to the selected one of the plurality of printing systems;
identify the selected one of the printing systems based on the token; and
send the print job to the selected one of the plurality of printing systems to initiate the print job at the selected one of the plurality of printing systems, print instructions for the print job being generated according to the printing configuration rules.
Claim 1
A server comprising:
a memory configured to store printing configuration rules for interfacing with a printing system; a communications interface;
a processor interconnected with the memory and the communications interface, the processor configured to:
generate a print system network identifier mapped to the printing system, the print system network identifier configured for identifying print parameters for print jobs by appending the print system network identifier to include a print parameter variable;
receive, via the communications interface, a print request, the print request generated based on the print system network identifier and including one or more print parameters for a print job; and
send a print instruction to the printing system to initiate the print job at the printing system according to the one or more print parameters, the print instruction generated according to the printing configuration rules.
Claim 2
The server of claim 1, wherein the unique token is included in a network identifier for each of the plurality printing systems.
No claim related to unique token, but it can be added with Kitagata (further details below).
Claim 3
The server of claim 2, wherein the processor is configured to:
resolve the network identifier associated the selected one of the plurality of printing system; and
extract, from the network identifier, the unique token and the print job.
Claim 3
The server of claim 4, wherein, to receive the print request, the processor is configured to:
receive a request to resolve the print job network identifier; and
extract, from the print job network identifier, the print system network identifier and the one or more print parameters for the print job.
Claim 4
The server of claim 2, wherein the processor is configured to:
receive, from a requesting device, a request for the network identifier of the selected one of the plurality of printing systems; and
responsive to the request, provide, to the requesting device, the network identifier.
Claim 6
The server of claim 1, wherein the processor is further configured to:
receive, from a requesting device, a network identifier request for the printing system; and
responsive to the network identifier request, provide, to the requesting device, the print system network identifier.
Claim 5
The server of claim 4, wherein the processor is configured to:
receive a subsequent request for the network identifier for the selected one of the plurality printing systems;
generate a new network identifier including a new unique identifier mapped to the system; and
responsive to the subsequent request, provide the new network identifier.
Claim 7
The server of claim 6, wherein the processor is further configured to:
receive a subsequent network identifier request for the printing system;
generate a new print system network identifier mapped to the printing system, the new print system network identifier configured for identifying print parameters for print jobs; and
responsive to the subsequent network identifier request, provide the new print system network identifier.
Claim 6
A method comprising:
registering, at a server, a plurality of printing systems with a printing service executed by the processor, each of the plurality of printing systems being assigned a unique token in response to being registered with the printing service;
storing printing configuration rules and the unique token for interfacing with each of the plurality of printing systems in memory;
receiving, by the server, a print request from a client device, the print request including a print job and the unique token for a selected one of the plurality of printing systems, the unique token providing the processor with authority to send the print job to the selected one of the plurality of printing systems;
identifying, by the server, the selected one of the printing systems based on the token;
and sending, by the server, the print job to the selected one of the plurality of printing systems to initiate the print job at the selected one of the plurality of printing systems, print instructions for the print job being generated according to the printing configuration rules.
Claim 9
A method comprising:
storing printing configuration rules for interfacing with a printing system;
generating a print system network identifier configured to map to the printing system, the print system network identifier configured for identifying print parameters for print jobs by appending the print system network identifier to include a print parameter variable;
receiving a print request, the print request generated based on the print system network identifier and including one or more print parameters for a print job; and
sending a print instruction to the printing system to initiate the print job at the printing system according to the one or more print parameters, the print instruction generated according to the printing configuration rules.
Claim 7
The method of claim 6,
wherein the unique token is included in a network identifier for each of the plurality printing systems.
No claim related to unique token, but it can be added with Kitagata (further details below).
Claim 8
The method of claim 7, wherein receiving the print request comprises:
receiving a request to resolve the network identifier associated the selected one of the plurality of printing system; and
extracting, from the network identifier, the unique token and the print job.
Claim 13
13. (Original) The method of claim 12, wherein receiving the print request comprises:
receiving a request to resolve the print job network identifier; and
extracting, from the print job network identifier, the print system network identifier and the one or more print parameters for the print job.
Claim 9
The method of claim 7, further comprising:
receiving, from a requesting device, a request for the network identifier of the selected one of the plurality of printing systems; and
responsive to the request, providing, to the requesting device, the network identifier.
Claim 14
The method of claim 9, further comprising:
receiving, from a requesting device, a network identifier request for the printing system; and
responsive to the network identifier request, providing, to the requesting device, the print system network identifier.
Claim 10
The method of claim 9, further comprising:
receiving a subsequent request for the network identifier for the selected one of the plurality printing systems;
generating a new network identifier including a new unique identifier mapped to the system; and
responsive to the subsequent request, providing the new network identifier.
Claim 15
The method of claim 14, further comprising:
receiving a subsequent network identifier request for the printing system;
generating a new print system network identifier mapped to the printing system, the new print system network identifier configured for identifying print parameters for print jobs; and
responsive to the subsequent network identifier request, providing the new print system network identifier.
Claim 1 of the Patent No. 11,327,698 does not disclose “register a plurality of printing systems with a printing service executed by the processor, each of the plurality of printing systems being assigned a unique token in response to being registered with the printing service; store printing configuration rules and the unique tokens for interfacing with the plurality of printing system in the memory; receive, from a client device, a print request including a print job and the unique token for a selected one of the plurality of printing systems, the unique token providing the processor with authority to send the print job to the selected one of the plurality of printing systems; identify the selected one of the printing systems based on the token”.
However, the aforementioned limitations can be found in Kitagata. In particular, Kitagata teaches register a plurality of printing systems with a printing service executed by the processor, each of the plurality of printing systems being assigned a unique token in response to being registered with the printing service (e.g., register printers with printing service executed by a CPU 202, each of the printers being assigned with authentication token in response to being registered with the printing service, ¶0041, ¶0044, ¶0054, ¶0064, ¶0100, ¶0118); store printing configuration rules and the unique tokens for interfacing with the plurality of printing system in the memory (e.g., storing print settings and authentication tokens for interfacing with registered printers in the Web application 305, ¶0073 - ¶0074, ¶0080); receive, from a client device, a print request including a print job and the unique token for a selected one of the plurality of printing systems, the unique token providing the processor with authority to send the print job to the selected one of the plurality of printing systems (e.g., obtain, from a user apparatus/client computer 106 (or web browser 306), a print instruction including a job and authentication token (e.g., user information, ¶0088) for a selected printer, the authentication token is required to authenticate and transmits said job to the selected printer, ¶0042, ¶0056, ¶0131, ¶0134); identify the selected one of the printing systems based on the token (e.g., specifies the selected printer based on the authentication token (user information), ¶0047, ¶0126).
Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention was made to combine claim 1 of Patent No. 11,327,698 with the additional feature of Kitagata since Kitagata suggested within ¶0041 - ¶0047 and ¶00126 - ¶0134 that such modification of registering printers with authentication tokens would enhance/strengthen security for the printers in order to verify users’ identify when users use a cloud service.
Claim Objections
Claim 1 (line 13) is objected to because of the following informalities: The limitation “the token” should be changed to “the unique token”. Appropriate correction is required.
Claim 6 (lines 11 - 12) is objected to because of the following informalities: The limitation “the token” should be changed to “the unique token”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 - 4 and 6 - 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitagata (U.S PreGrant Publication No. 2013/0077125 A1, hereinafter ‘Kitagata’).
With respect to claim 1, Kitagata teaches a server (e.g., a device 201 or server, ¶0036, Fig. 2) comprising: a memory (e.g., RAM/ROM, ¶0038, Fig. 2); a processor (e.g., a CPU 202, Fig. 2) in communication with the memory (Fig. 2), the processor configured to: register a plurality of printing systems with a printing service executed by the processor, each of the plurality of printing systems being assigned a unique token in response to being registered with the printing service (e.g., register printers with printing service executed by the CPU 202, each of the printers being assigned with authentication token in response to being registered with the printing service, ¶0041, ¶0044, ¶0054, ¶0064, ¶0100, ¶0118); store printing configuration rules and the unique tokens for interfacing with the plurality of printing system in the memory (e.g., storing print settings and authentication tokens for interfacing with registered printers in the Web application 305, ¶0073 - ¶0074, ¶0080); receive, from a client device, a print request including a print job and the unique token for a selected one of the plurality of printing systems, the unique token providing the processor with authority to send the print job to the selected one of the plurality of printing systems (e.g., obtain, from a user apparatus/client computer 106 (or web browser 306), a print instruction including a job and authentication token (e.g., user information, ¶0088) for a selected printer, the authentication token is required to authenticate and transmits said job to the selected printer, ¶0042, ¶0056, ¶0131, ¶0134); identify the selected one of the printing systems based on the token (e.g., specifies the selected printer based on the authentication token (user information), ¶0047, ¶0126); and send the print job to the selected one of the plurality of printing systems to initiate the print job at the selected one of the plurality of printing systems, print instructions for the print job being generated according to the printing configuration rules (e.g., transmits said job to the selected printer to perform said job at the selected printer, print commands for the job being generated according to the print settings, ¶0113, ¶0131, ¶0134 - ¶0135, Figs. 11A – 11C).
With respect to claim 2, Kitagata teaches the server of claim 1, wherein the unique token is included in a network identifier for each of the plurality printing systems (e.g., said user information contains several identifiers for each of the printers, ¶0065, Figs. 8A – 8C).
With respect to claim 3, Kitagata teaches the server of claim 2, wherein the processor is configured to: resolve the network identifier associated the selected one of the plurality of printing system; and extract, from the network identifier, the unique token and the print job (e.g. in order to authenticate and use a selected printer, user information (e.g., authentication token) is determined, ¶0048, ¶0058).
With respect to claim 4, Kitagata teaches the server of claim 2, wherein the processor is configured to: receive, from a requesting device, a request for the network identifier of the selected one of the plurality of printing systems; and responsive to the request, provide, to the requesting device, the network identifier (e.g., it corresponds to user apparatus/client computer 106 that transmits request to the server and the server responds by displaying identifiers to the client computer 106, ¶0062 - ¶0072).
With respect to claim 6, this is a method claim corresponding to the apparatus claim 1. Therefore, this is rejected for the same reasons as the apparatus claim 1.
With respect to claims 7 - 9, these are method claims corresponding to the apparatus claims 2 – 4, respectively. Therefore, these are rejected for the same reasons as the apparatus claims 2 – 4, respectively.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kitagata in view of Stone et al. (U.S PreGrant Publication No. 2012/0188583 A1, hereinafter ‘Stone’).
With respect to claim 5, Kitagata teaches the server of claim 4, but fails to teach wherein the processor is configured to: receive a subsequent request for the network identifier for the selected one of the plurality printing systems; generate a new network identifier including a new unique identifier mapped to the system; and responsive to the subsequent request, provide the new network identifier.
However, in the same field of endeavor of network(s), printers, servers and transmitting/receiving print job, the mentioned claimed limitations are well-known in the art as evidenced by Stone. In particular, Stone teaches wherein the processor is configured to: receive a subsequent request for the network identifier for the selected one of the plurality printing systems; generate a new network identifier including a new unique identifier mapped to the system; and responsive to the subsequent request, provide the new network identifier (e.g., Printer(s) for sending a request for identification and a CPU of a server which receive the request responds to printer(s), abstract, ¶0024, ¶0032 - ¶0035, ¶0039, Fig. 4A/4B).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the server of Kitagata as taught by Stone since Stone suggested within abstract, ¶0024, ¶0032 - ¶0035, ¶0039 and Figs. 4A/4B that such modification would allow access in a single direction in order to strengthen security requirements.
With respect to claim 10, this is a method claim corresponding to the apparatus claim 5. Therefore, this is rejected for the same reasons as the apparatus claim 5.
Conclusion
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/JUAN M GUILLERMETY/ Primary Examiner, Art Unit 2682
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