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 .
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 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.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,118,418 in view of Ferlitsch et al. (US 2008/0080003).
(1) regarding claim 1:
US 12,118,418 claim 1 discloses a system comprising (a system comprising):
a printhead (column 3, lines 52-54, although not explicitly claimed, “a printer” will contain a printhead); and
a processor in communication with the printhead (a server in communication with the printer), the processor configured to:
classify, via one or more classifiers, received print data into an assigned class based on at least one of an image to be printed via the printhead using to the print data or keywords included in the print data (classify the image to obtain a format (assigned class) associated with the printable image);
communicate with the printhead to print the image on the media according to the print data (communicate with the printer to print the printable image according to the print data);
US 12,118,418 claim 1 fails to specifically disclose determine, based on the assigned class, a type of media associated with the print data;
output a signal indicative the type of media corresponding to the assigned class.
However, Ferlitsch ‘003 teaches determine, based on the assigned class, a type of media associated with the print data (paragraph [0038], where according to the paper requirements a type of paper is determined);
output a signal indicative the type of media corresponding to the assigned class (paragraph [0038]-[0039], where a signal indicating the type of paper will be outputted).
Having a system of Ferlitsch ‘003 reference and then given the well-established teaching of US 12,118,418, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of US 12,118,418 to include the limitations as taught by Ferlitsch ‘003 because by doing so, the system will obtain precise instructions as to what type of paper to use, thus improving the system performance and saving resources.
(2) claim 2 is completely included in claim 1 of US 12,118,418.
(3) claims 3-7 correspond to claims 2-6 of US 12,118,418, therefore a similar analysis applies.
(4) claims 8-10 correspond to all limitations of claim 7 of US 12,118,418, therefore a similar analysis applies.
(5) claim 11 corresponds to claim 8 of US 12,118,418, therefore a similar analysis applies.
(6) with respect to claims 12-19, although not explicitly claimed in US 12,118,418, a method having the same limitations as the system will be directed to similar subject matter, not patentably distinct from claims 1-11, therefore a similar analysis as presented above applies.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-19 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19 of copending Application No. 18/915,239 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferlitsch et al. (US 2008/0080003).
(1) regarding claims 1 and 12:
Ferlitsch ‘003 discloses system (Fig. 1) comprising:
a printhead (paragraph [0003], where an inkjet printer is described, ink jet printers always contain a printhead); and
a processor in communication with the printhead (1203a in Fig. 12 and paragraph [0025]), the processor configured to:
classify, via one or more classifiers, received print data into an assigned class based on at least one of an image to be printed via the printhead using to the print data or keywords included in the print data (paragraph [0052], where the analyzer 112 classifies the data to obtain the type of format associated with it);
determine, based on the assigned class, a type of media associated with the print data (paragraph [0038], where according to the paper requirements a type of paper is determined);
communicate with the printhead to print the image on the media according to the print data (paragraph [0038], where the type of paper is selected based on the print data); and
output a signal indicative the type of media corresponding to the assigned class (paragraph [0038]-[0039], where a signal indicating the type of paper will be outputted).
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.
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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.
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/LENNIN R RODRIGUEZGONZALEZ/ Primary Examiner, Art Unit 2683
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