DETAILED ACTION
This Action is a response to the filing received 30 October 2024. Claims 1-17 are pending for examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 30 October 2024 is being considered by the examiner.
Claim Interpretation
With respect to claims 12-16, Examiner is interpreting “An information processing system comprising an information processing apparatus and a terminal device different from the information processing apparatus” to explicitly include at least one hardware element. In particular, an apparatus1 is generally understood to refer to physical equipment, machinery or an instrument or appliance. Further, the Specification describes the image forming apparatus as a multifunction peripheral and the terminal device as a mobile terminal including at least a communication function, a web browser function and a camera function (Spec. at ¶35). The image forming apparatus is further described as a hardware device communicating over a network with a wired connection (id. at ¶36) including various hardware elements (id. at ¶¶48-61). Examiner is interpreting the recitation in claims 10-11 of an information processing apparatus and the recitation in claims 1-9 and 17 of a terminal device in the same way.
Claim Interpretation Under 35 U.S.C. § 112(f)
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 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.
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: setting unit in claims 1 and 10-12.
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.
The Specification describes that the setting unit is “configured to allow performing a setting as to whether to individually perform automatic updating with respect to each piece of application software which runs in the information processing apparatus” (Spec. at ¶6). Further, an application overall setting unit is described in the Specification as assuming the role of system setting which is performed when the MFP utility 624 runs in the mobile terminal 102 (id. at ¶122). These descriptions do not provide specific structure; however, with respect to the application overall setting unit 901, the Specification describes this as being configured within MFP utility 624 (id. at ¶121), which is described as having a software configuration (id. at ¶119). Examiner is accordingly interpreted the setting unit to comprise software, software instructions and/or software code, alone and/or embodied within a computer-readable medium or one or more of the information processing apparatus and the terminal device.
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.
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, 4-6, 10-12 and 15-17 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Han, Xiaofeng, U.S. 2019/0373130 A1 (“Han”).
Regarding claim 1, Han teaches: A terminal device connectable to an information processing apparatus (Han, e.g., FIG. 1, setting PC 6 connected to MFP 1 over network 8), the terminal device comprising:
at least one memory storing instructions; at least one processor that, upon execution of the stored instructions is configured to (Han, e.g., ¶198, “the function of each of the setting PC 6, the processing reservation screen control unit 601, the setting unit 602, and the setting information transmission unit 603 is implemented by the CPU 32 executing a program stored in the ROM 33 or the like …”) operate as:
a setting unit configured to set, for each respective application software running on the information apparatus that the terminal device is connected to, whether to individually perform automatic updating for the respective piece of application software (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …” See also, e.g., ¶188, “setting PC 6 includes a processing reservation screen control unit 601, a setting unit 602, and a setting information transmission unit 603 …” See also, e.g., ¶197, “The setting unit 602 performs various settings according to the input received on the supported application list screen. Specifically, the setting unit 602 sets the processing selected by the user in the processing reservation column as processing to reserve for the corresponding application …”).
Regarding claim 4, the rejection of claim 1 is incorporated, and Han further teaches: wherein the terminal device acquires, via network, at least one piece of application software from a device different from the terminal device (Han, e.g., ¶174, “application transmission unit 325 transmits the application stored in the application storage unit 324 to the MFP 1 …” Examiner’s note: the application server is a different server than the setting PC).
Regarding claim 5, the rejection of claim 1 is incorporated, and Han further teaches: wherein, in the terminal device, the setting as to whether to perform automatic updating includes a setting for individually performing automatic updating or a setting for not performing automatic updating with respect to each piece of application software which runs in the information processing apparatus (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …”).
Regarding claim 6, the rejection of claim 1 is incorporated, and Han further teaches: wherein, in the terminal device, the setting as to whether to perform automatic updating includes, in a mixed manner, a setting for performing automatic updating or a setting for not performing automatic updating (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …”).
Regarding claim 10, Han teaches: An information processing apparatus comprising: a setting unit configured to allow performing a setting as to whether to individually perform automatic updating with respect to each piece of application software which runs in the information processing apparatus (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …” See also, e.g., ¶94, “application market application 205 provides functions of … a setting UI unit 213, and an application processing execution unit 220 … includes a setting unit 214, an application processing information acquisition unit 215, an application processing control unit 216 …” See also, e.g., ¶¶102-105).
Regarding claim 11, the rejection of claim 10 is incorporated, and Han further teaches: wherein the information processing apparatus comprises a setting unit configured to allow performing a setting as to whether to individually perform automatic updating based on information received from outside of the information processing apparatus (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …” See also, e.g., ¶188, “setting PC 6 includes a processing reservation screen control unit 601, a setting unit 602, and a setting information transmission unit 603 …” See also, e.g., ¶197, “The setting unit 602 performs various settings according to the input received on the supported application list screen. Specifically, the setting unit 602 sets the processing selected by the user in the processing reservation column as processing to reserve for the corresponding application …”).
Regarding claim 12, Han teaches: An information processing system comprising an information processing apparatus and a terminal device different from the information processing apparatus (Han, e.g., FIG. 1, setting PC 6 connected to MFP 1 over network 8), wherein the terminal device comprises
a setting unit configured to allow performing a setting as to whether to individually perform automatic updating with respect to each piece of application software which runs in the information processing apparatus (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …” See also, e.g., ¶188, “setting PC 6 includes a processing reservation screen control unit 601, a setting unit 602, and a setting information transmission unit 603 …” See also, e.g., ¶197, “The setting unit 602 performs various settings according to the input received on the supported application list screen. Specifically, the setting unit 602 sets the processing selected by the user in the processing reservation column as processing to reserve for the corresponding application …”).
Claim 15 is rejected for the additional reasons given in the rejections of claim 4 above.
Regarding claim 16, the rejection of claim 13 is incorporated, and Han further teaches: an application distribution server, wherein the terminal device acquires the each piece of application software or the initial value from the application distribution server (Han, e.g., ¶174, “application transmission unit 325 transmits the application stored in the application storage unit 324 to the MFP 1 …”).
Regarding claim 17, Han teaches: A method of, in a terminal device connectable to an information processing apparatus (Han, e.g., FIG. 1, setting PC 6 connected to MFP 1 over network 8),
performing a setting as to whether to perform automatic updating of each piece of application software which runs in the information processing apparatus, the method comprising: performing a setting as to whether to individually perform automatic updating with respect to each piece of application software which runs in the information processing apparatus (Han, e.g., ¶107, “For each application, the user can decide whether automatic updating can be performed or not and selects ‘prohibit’ for applications for which automatic updating should be prohibited …” See also, e.g., ¶188, “setting PC 6 includes a processing reservation screen control unit 601, a setting unit 602, and a setting information transmission unit 603 …” See also, e.g., ¶197, “The setting unit 602 performs various settings according to the input received on the supported application list screen. Specifically, the setting unit 602 sets the processing selected by the user in the processing reservation column as processing to reserve for the corresponding application …”); and
transmitting a result of the setting as to whether to perform automatic updating to the information processing apparatus (Han, e.g., FIG. 13, wherein a result of the setting is transmitted to the display).
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 2-3, 8-9 and 13-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Han in view of Kawaura, Toshinori, U.S. 2024/0126534 A1 (“Kawaura”).
Regarding claim 2, the rejection of claim 1 is incorporated, but Han does not more particularly teach that the terminal device includes an initial value of the setting as to whether to perform automatic updating. However, Kawaura does teach: wherein the terminal device includes an initial value of the setting as to whether to perform automatic updating (Kawaura, e.g., ¶36, “in the case where the printer 110 does not include the display device 114, no setting screen for performing the setting relating to the automatic update function is displayed in the initial installation process. Specifically, the state where the setting relating to the automatic update function has not been performed continues also after the completion of the initial installation process, until the setting command relating to the automatic update function is transmitted from the external apparatus and the setting relating to the automatic update function is performed”) for the purpose of providing one or more settings for managing the automatic updates of particular information processing apparatus software (Kawaura, e.g., ¶¶30-38).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system and method for information processing apparatus software installation and update settings management as taught by Han to provide that the terminal device includes an initial value of the setting as to whether to perform automatic updating because the disclosure of Kawaura shows that it was known to those of ordinary skill in the pertinent art to improve a system and method for settings management on an information processing apparatus to provide that the terminal device includes an initial value of the setting as to whether to perform automatic updating for the purpose of providing one or more settings for managing the automatic updates of particular information processing apparatus software (Kawaura, Id.).
Regarding claim 3, the rejection of claim 2 is incorporated, but Han does not more particularly teach that the terminal device acquires the initial value from a device different from the terminal device. However, Kawaura does teach: wherein the terminal device acquires the initial value from a device different from the terminal device (Kawaura, e.g., ¶36, “in the case where the printer 110 does not include the display device 114, no setting screen for performing the setting relating to the automatic update function is displayed in the initial installation process. Specifically, the state where the setting relating to the automatic update function has not been performed continues also after the completion of the initial installation process, until the setting command relating to the automatic update function is transmitted from the external apparatus and the setting relating to the automatic update function is performed”) for the purpose of providing one or more settings for managing the automatic updates of particular information processing apparatus software (Kawaura, e.g., ¶¶30-38).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system and method for information processing apparatus software installation and update settings management as taught by Han to provide that the terminal device includes an initial value of the setting as to whether to perform automatic updating because the disclosure of Kawaura shows that it was known to those of ordinary skill in the pertinent art to improve a system and method for settings management on an information processing apparatus to provide that the terminal device includes an initial value of the setting as to whether to perform automatic updating for the purpose of providing one or more settings for managing the automatic updates of particular information processing apparatus software (Kawaura, Id.).
Claims 13-14 are rejected for the additional reasons given in the rejections of claims 2-3 above.
Regarding claim 8, the rejection of claim 2 is incorporated, and Han further teaches: wherein, in the terminal device, in a case where the setting of the automatic updating regarding a piece of application software set by the setting unit is changed to perform automatic update, the update for the piece of application software will occur after updating other application software that has been initially set to update (Han, e.g., ¶223, “In step S38, the application processing execution unit 220 (setting unit 214) instructs the monitoring module 222 to set automatic application processing. In response to this instruction, the monitoring module 222 notifies the main unit 10 of the processing time in step S39. Upon receiving the processing time from the monitoring module 222 through the web server 301, the SCS 312 of the main unit 10 stores the received processing time in the storage unit of the main unit 10 and starts the clock in step S40.” Examiner’s note: for applications which settings are changed to automatic application processing, a timer is set after which further installations of updates will occur, i.e., after updating other application software that has been initially set to update).
Regarding claim 9, the rejection of claim 2 is incorporated, and Han further teaches: wherein, in the terminal device, the setting as to whether to perform automatic updating includes, in the each piece of application software in which an initial value of the setting as to whether to perform automatic updating is a setting for not performing automatic updating and the setting as to whether to perform automatic updating has been changed to a setting for performing automatic updating, updating the each piece of application software in which the setting as to whether to perform automatic updating has been changed to a setting for performing automatic updating in advance in time series in preference to the each piece of application software in which the setting as to whether to perform automatic updating has been changed to a setting for performing automatic updating later (Han, e.g., ¶223, “In step S38, the application processing execution unit 220 (setting unit 214) instructs the monitoring module 222 to set automatic application processing. In response to this instruction, the monitoring module 222 notifies the main unit 10 of the processing time in step S39. Upon receiving the processing time from the monitoring module 222 through the web server 301, the SCS 312 of the main unit 10 stores the received processing time in the storage unit of the main unit 10 and starts the clock in step S40.” Examiner’s note: for applications which settings are changed to automatic application processing, a timer is set after which further installations of updates will occur, i.e., after updating other application software that has been initially set to update based on the settings of the timer values).
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Han in view of Hu et al., U.S. 2012/0030658 A1 (“Hu”).
Regarding claim 7, the rejection of claim 1 is incorporated, but Han does not more particularly teach that in the terminal device the setting to perform automatic updating includes component use frequency such that automatic updating is performed when respective software has a higher use frequency than other software having a lower use frequency. However, Hu does teach: wherein, in the terminal device, the setting to perform automatic updating includes frequency of use component such that automatic updating is performed when respective ones of each piece of application software have a higher frequency of use than others of each piece of application software that have a lower frequency of use (Hu, e.g., ¶81, “automatic deployment unit 51 at software developer device side selectively and automatically deploys a software update 53 newly developed for the software 18 at software developer side to a portion of user devices that are closely related to function involved in that software update based on the execution information of test cases and software usage analysis result.” See also, e.g., ¶82, “portion of user devices that are closely related to function involved in the new software update 53 may be those that frequently use that function …” See also, e.g., ¶84, “automatic deployment setting unit 52 determines an automatic deployment setting for the new software update 53 based on the execution information of test cases and software usage analysis result acquired from that portion of user devices …”) for the purpose of identifying the criticality of a software update as pertains to each of a plurality of users of an application for which the update applies and prioritizing deployment of the update to those users (Hu, e.g., ¶¶77-87).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system and method for information processing apparatus software installation and update management as taught by Han to provide that in the terminal device the setting to perform automatic updating includes component use frequency such that automatic updating is performed when respective software has a higher use frequency than other software having a lower use frequency because the disclosure of Hu shows that it was known to those of ordinary skill in the pertinent art to improve a system and method for software development and automated deployment management to provide that in the terminal device the setting to perform automatic updating includes component use frequency such that automatic updating is performed when respective software has a higher use frequency than other software having a lower use frequency for the purpose of identifying the criticality of a software update as pertains to each of a plurality of users of an application for which the update applies and prioritizing deployment of the update to those users (Hu, Id.).
Conclusion
Examiner has identified particular references contained in the prior art of record within the body of this action for the convenience of Applicant. Although the citations made are representative of the teachings in the art and are applied to the specific limitations within the enumerated claims, the teaching of the cited art as a whole is not limited to the cited passages. Other passages and figures may apply. Applicant, in preparing the response, should consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art and/or disclosed by Examiner.
Examiner respectfully requests that, in response to this Office Action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line number(s) in the specification and/or drawing figure(s). This will assist Examiner in prosecuting the application.
When responding to this Office Action, Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections. See 37 C.F.R. 1.111(c).
Examiner interviews are available via telephone and video conferencing using a USPTO-supplied web-based collaboration tool. Applicant is encouraged to submit an Automated Interview Request (AIR) which may be done via https://www.uspto.gov/patent/uspto-automated-interview-request-air-form, or may contact Examiner directly via the methods below.
Any inquiry concerning this communication or earlier communication from Examiner should be directed to Andrew M. Lyons, whose telephone number is (571) 270-3529, and whose fax number is (571) 270-4529. The examiner can normally be reached Monday to Friday from 10:00 AM to 6:00 PM ET. If attempts to reach Examiner by telephone are unsuccessful, Examiner’s supervisor, Wei Mui, can be reached at (571) 272-3708. Information regarding the status of an application may be obtained from the Patent Center system. For more information about the Patent Center system, see https://www.uspto.gov/patents/apply/patent-center. 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.
/Andrew M. Lyons/Primary Examiner, Art Unit 2191
1 “apparatus,” Merriam-Webster Dictionary, last retrieved from https://www.merriam-webster.com/dictionary/apparatus on 29 September 2026.
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