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 .
Priority
Receipt is acknowledged that application claims priority to foreign application with application number JP2023-193499 dated 14 November 2023. Copies of certified papers required by 37 CFR 1.55 have been received. Priority is acknowledged under 35 USC 119(e) and 37 CFR 1.78.
Information Disclosure Statement
The IDS dated 31 October 2024 has been considered and placed in the application file.
Examiner’s Note
This application is directed to subject matter that is taught by many applications. While US Patent Publication 2022 0150374 A1, (Ohara) and Japanese Patent Publication 2010 029074 A, (Tanaka) were used to map and reject the claims, the Examiner strongly suggests applicants review US Patent Publication 2013 0293917 A1 to Safonov et al., Japanese Patent JP 6074968 B2, Korean Patent Publication 2005 0034200 (Song) and US Patent Publication 2013 0021652 A2(Yoon), before proposing amendments to save prosecution time and effort.
Specification - Title
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.
The following title is suggested: Simplified ID scanner.
Claim Interpretation
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), 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):
(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.
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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
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), 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:
“an obtainment unit configured to” in claim 1;
“a generation unit configured to” in claim 1; and
“a notification unit configured to” in claim 2
“a setting unit configured to” in claim 7
“a display control unit being configured to” in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. All of the claims are method claims (13), apparatus/machine claims (1-12) or manufacture claim (14) under (Step 1), but under Step 2A all of these claims recite abstract ideas and specifically mental processes—concepts performed in the human mind including observation, evaluation, judgement and opinion which are generally described as a human visually observing a label to judge the locations and dimensions of empty regions in order to insert content into these empty regions; furthermore these mental processes are more particularly:
Recited in claims 1 and 13-14 as:
… cropping processing on two scanned images…
generate a combined image… by integrating the two cropped images.
It is noted that the above analysis is according to the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019 and MPEP 2106.04(a)(2)(III).
Consider also that “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea” as per MPEP 2106.04(a)(2)(III)(B). See also footnotes 14 and 15 of the Federal Register Notice. As detailed above, the steps of cropping, combining, etc. may be practically performed in the human mind with the use of a physical aid such as a pen and paper (marking the label on the package with a pen).
Under Step 2B, this judicial exception is not integrated into a practical application because each of claims 1-14 do not recite additional elements that integrate the exception into a practical application. The only additional elements are recited at a high level of generality and merely equate to “apply it” or otherwise merely uses a generic computer as a tool to perform an abstract which are not indicative of integration into a practical application as per MPEP 2106.05(f). See also MPEP 2106.04(a)(2)(III) with respect to Mental Processes: “Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer”. See also MPEP 2106.04(a)(2)(III)(C)(3) Using a computer as tool to perform a mental process and MPEP 2106.04(a)(2)(III)(D) as well as the case law cited therein.
In other words, the additional elements and/or are recited at a high level of generality that does not amount to significantly more and/ such that they could practically be performed in the human mind.
For all of the above reasons, taken alone or in combination, claims 1-14 recite a non-statutory mental process.
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 is incorrect, any correction of the statutory basis 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-7 and 9-14 (all claims except 5 and 8) are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by US Patent Publication 2022 0150374 A1, (Ohara). References are listed in the Notice of Cited References when they were first cited. If a reference is not identifiable (e.g., due to a typo), it can be identified by searching for the quoted text.
[AltContent: textbox (Ohara Fig. 2, showing scanned ID cards.)]
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Claim 1
Regarding Claim 1, Ohara discloses an image formation apparatus ("the image processing device," paragraph [0014]), comprising:
an obtainment unit configured to obtain two cropped images by performing cropping processing on two scanned images corresponding to two original surfaces ("An image reading device according to the present invention includes a reading unit configured to read image data from both sides of an image presenting medium," paragraph [0015]) that are obtained by scanning a specific original ("a scanner capable of simultaneously reading both sides reads an ID card," paragraph [0032]); and
a generation unit configured to generate a combined image ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]), which is obtained by integrating the two cropped images obtained by the obtainment unit ("The decision unit 512 decides a relationship for the plurality of pieces of image data on the basis of the determination results of the determination unit 510. Herein, the term "relationship" means the front and back of the ID card or the page order," paragraph [0052] where deciding a relationship is integrating).
Claim 2
Regarding Claim 2, Ohara discloses the image formation apparatus according to claim 1, further comprising: a notification unit configured to notify of a warning message in a case where the scanned image or the cropped image does not satisfy a predetermined condition ("Specifically, the display control unit 518 performs a display for prompting the user to confirm face image detection results, or a display for prompting the user to select whether the image data is on the front side or the back side," paragraph [0056] where prompting to confirm is a warning message).
Claim 3
Regarding Claim 3, Ohara discloses the image formation apparatus according to claim 2, wherein in a case where no cropped image is obtained from the single scanned image by the obtainment unit, the notification unit notifies of the warning message indicating that no specific original is placed on a platen glass ("if the number of valid data on the front and back surfaces does not match (step S144 / No), for example, a warning message is displayed (step S150)," page 18 paragraph 3).
Claim 4
Regarding Claim 4, Ohara discloses the image formation apparatus according to claim 2, wherein in a case where two or more cropped images are obtained from the single scanned image by the obtainment unit, the notification unit notifies of the warning message indicating that two or more specific originals are placed on a platen glass ("In a case in which the determination unit 510 determines that a face image is included in both of the two pieces of image data, or in a case in which the determination unit 510 determines that a face image is not included in either of the two pieces of image data, the display control unit 518 performs a display for prompting a user to perform an operation," paragraph [0056]).
Claim 6
Regarding Claim 6, Ohara discloses the image formation apparatus according to claim 1, wherein the generation unit identifies the two cropped images and generates the combined image ("An image reading device according to the present invention includes a reading unit configured to read image data from both sides of an image presenting medium," paragraph [0015]), which is obtained by integrating and arraying the identified two cropped images according to a layout method applied in a case where the combined image, which is obtained by integrating the two cropped images, is generated ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]).
Claim 7
Regarding Claim 7, Ohara discloses the image formation apparatus according to claim 1, further comprising:
a setting unit configured to set a layout method applied in a case where the combined image, which is obtained by integrating the two cropped images, is generated, wherein the generation unit generates the combined image ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]), which is obtained by integrating the two cropped images, based on the layout method set by the setting unit ("The front and back are determined and output in this manner," paragraph [0033]).
Claim 9
Regarding Claim 9, Ohara discloses the image formation apparatus according to claim 8, wherein the UI screen displays setting to invert a layout order of the two cropped images such that the setting is selectable ("Specifically, the display control unit 518 performs a display for prompting the user to confirm face image detection results, or a display for prompting the user to select whether the image data is on the front side or the back side," paragraph [0056]).
Claim 10
Regarding Claim 10, Ohara discloses the image formation apparatus according to claim 1, wherein the generation unit generates the combined image, which is obtained by integrating the two cropped images obtained from the two scanned images corresponding to a front surface and a back surface of the specific original ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]).
Claim 11
Regarding Claim 11, Ohara discloses the image formation apparatus according to claim 1, wherein the generation unit generates the combined image, which is obtained by integrating the two cropped images obtained from the two scanned images corresponding to a front surface of each of two specific originals("The decision unit 512 decides a relationship for the plurality of pieces of image data on the basis of the determination results of the determination unit 510. Herein, the term "relationship" means the front and back of the ID card or the page order," paragraph [0052] where deciding a relationship is integrating).
Claim 12
Regarding Claim 12, Ohara discloses the image formation apparatus according to claim 1, wherein the specific original is an ID card ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]).
Claim 13
Regarding Claim 13, Ohara discloses an image formation method ("the image processing device," paragraph [0014]), comprising:
obtaining two cropped images by performing cropping processing on two scanned images corresponding to two original surfaces ("An image reading device according to the present invention includes a reading unit configured to read image data from both sides of an image presenting medium," paragraph [0015]) that are obtained by scanning a specific original ("a scanner capable of simultaneously reading both sides reads an ID card," paragraph [0032]); and
generating a combined image ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]), which is obtained by integrating the two cropped images obtained by the obtaining ("The decision unit 512 decides a relationship for the plurality of pieces of image data on the basis of the determination results of the determination unit 510. Herein, the term "relationship" means the front and back of the ID card or the page order," paragraph [0052] where deciding a relationship is integrating).
Claim 14
Regarding Claim 14, Ohara discloses a non-transitory computer readable storage medium storing a program which causes a computer to perform an image formation method ("the image processing device," paragraph [0014]), comprising:
obtaining two cropped images by performing cropping processing on two scanned images corresponding to two original surfaces ("An image reading device according to the present invention includes a reading unit configured to read image data from both sides of an image presenting medium," paragraph [0015]) that are obtained by scanning a specific original ("a scanner capable of simultaneously reading both sides reads an ID card," paragraph [0032]); and
generating a combined image ("Specifically, the output order control unit 516 swaps the front and back of the image data and swaps the output order of the images in accordance with the front and back of the ID card decided by the decision unit 512," paragraph [0055]), which is obtained by integrating the two cropped images obtained by the obtaining ("The decision unit 512 decides a relationship for the plurality of pieces of image data on the basis of the determination results of the determination unit 510. Herein, the term "relationship" means the front and back of the ID card or the page order," paragraph [0052] where deciding a relationship is integrating).
Claim Rejections - 35 USC § 103
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 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 8 (all remaining claims) are rejected under 35 U.S.C. 103 as obvious over US Patent Publication 2022 0150374 A1, (Ohara) in view of Japanese Patent Publication 2010 029074 A, (Tanaka). The references are listed in a PTO-892 from the Office Action in which they are first used. If a reference is not identifiable (e.g., due to a typo), it can be identified by searching for the quoted text.
Claim 5
Regarding Claim 5, Ohara teaches he image formation apparatus according to claim 2, as noted above.
Ohara is not relied upon to explicitly teach all of warning messages indicating that the specific original was not turned over.
However, Tanaka teaches wherein in a case where a design of one of the two cropped images is the same design as that of the other one of the two cropped images, the notification unit notifies of the warning message indicating that the specific original placed on a platen glass is not turned over ("if the number of valid data on the front and back surfaces does not match (step S144 / No), for example, a warning message is displayed (step S150)," page 18 paragraph 3).
Therefore, taking the teachings of Ohara and Tanaka as a whole, it would have been obvious to a person having ordinary skill in the art before the time of the effective filing date of the claimed invention of the instant application to modify Scanning ID cards as taught by Ohara to use warning messages as taught by Tanaka, showing that Ohara and Tanaka are analogous art because both are scanning both sides of an ID card. The suggestion/motivation for combination is that, “an image forming apparatus and an image forming program that reduce a user's operation burden” as noted by the Tanaka disclosure in page 13 last paragraph, which also motivates combination because the combination would predictably have a higher productivity as there is a reasonable expectation that there is going to be variation in placement of ID cards on a scanner; and/or because doing so merely combines prior art elements according to known methods to yield predictable results.
Claim 8
Regarding claim 8, Ohara teaches the image formation apparatus according to claim 7, as noted above.
Ohara is not relied upon to explicitly teach all of a plurality of layout methods.
However, Tanaka teaches a display control unit while there are a plurality of the layout methods, the display control unit being configured to display a UI screen to set one layout method out of the plurality of the layout methods, wherein the setting unit sets setting of the one layout method based on a user operation via the UI screen displayed by the display control unit ("Next, an example of vertical / horizontal conversion processing performed when accumulating from the line buffer to the page memory will be described. Unlike reduced printing such as 2 in 1 copy, in this embodiment, since the same size printing is performed, data thinning processing or the like is unnecessary," page 15, paragraph 3, where reduced printing is one layout and same size printing is the second layout).
Ohara and Tanaka are combined as per claim 5.
Reference Cited
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
US Patent Publication 2017 0339290 A1 to Kim et al. discloses compare the generated first scan image and second scan image and determine whether the first scan image and the second scan image are scan images with respect to the a same original, and in response to determining that the first scan image and the second scan image are scan images with respect to a same original, control the display unit to display a notification message.
US Patent Publication 2013 0293917 A1 to Safonov et al. discloses a user interface unit to adjust a layout for copying both sides of the two-sided card, an image reading unit to read the both sides of the two-sided card and generates scanned images, a controlling unit to generate image data where the scanned images are laid out on at least one page according to the adjusted layout, and an output unit to output the image data generated by the controlling unit. Accordingly, the both sides of the two-sided card may be laid out and output in various types.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATH E WELLS whose telephone number is (703)756-4696. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/Heath E. Wells/Examiner, Art Unit 2664
Date: 25 August 2026
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