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 of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 31 October 2024, 22 October 2025, and 24 March 2026 are being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1 and 10 each similarly recite “…a first inspection mode in which the reference image is registered at a predetermined timing in an image forming process of forming the image to be inspected by the image former and a second inspection mode in which the reference image is not registered at the predetermined timing.” It is unclear from the claim language how the reference image can be both registered and unregistered at “the” predetermined timing.
Claims 2-9 and 11 are rejected due to their dependency on claims 1 and 10, respectively.
For examination purposes, the examiner will interpret the predetermined timing broadly to be the timing of the entire methodology encompassing the timing to perform both modes as claimed.
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.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 11 recites “computer-readable recording medium.” The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01.
The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § I01 by adding the limitation "non-transitory" to the claim. Cf. Animals -Patentability, 1 077 0ff. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
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 1-5 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obayashi et al. (US 2021/0201097).
Regarding claim 1, Obayashi et al. disclose an image inspection apparatus (Figure 1) comprising:
an image former that forms an image on a recording medium on the basis of acquired image data (Figure 1, 101 is an image former. See paragraphs [0020]-[0021].); and
a hardware processor (Figures 1 and 2, 109 is a hardware processor, see paragraph [0033].),
the hardware processor generating a reference image to be used for inspection of the image formed on the recording medium, and inspecting the image formed on the recording medium on the basis of the reference image (Paragraphs [0003], [0033]-[0034], [0045] and [0048].),
the image inspection apparatus having a first inspection mode in which the reference image is registered at a predetermined timing in an image forming process of forming the image to be inspected by the image former and a second inspection mode in which the reference image is not registered at the predetermined timing (Figure 4, steps S401-, S402 and S403. See paragraph [0048]. There is a first mode where the reference image is registered is YES at S401 and proceeds to step S402, and a second mode where the reference image is not registered is NO at S402 and proceeds to step 403.).
Regarding claim 2, Obayashi et al. disclose the image inspection apparatus according to claim 1, wherein the predetermined timing includes a timing of acquiring a job based on the image data (Paragraph [0049], where since the predetermined timing is the entire method, it includes the print job in S405 of Figure 4.).
Regarding claim 3, Obayashi et al. disclose the image inspection apparatus according to claim 1, wherein the predetermined timing includes a timing of starting image formation by the image former (Since the predetermined timing is the entire method, it includes a starting of the image formation in S401-S406 in Figure 4.).
Regarding claim 4, Obayashi et al. disclose the image inspection apparatus according to claim 1, wherein the predetermined timing includes a timing during image formation by the image former (Since the predetermined timing is the entire method, it includes a timing during image formation in S401-S406 in Figure 4.).
Regarding claim 5, Obayashi et al. disclose the image inspection apparatus according to claim 4, wherein
the image data is image data for forming images of a plurality of pages on a recording medium (Paragraph [0033]), and
the predetermined timing includes a timing during image formation of at least a first page (Since the predetermined timing is the entire method, it includes a timing during image formation in S401-S406 in Figure 4, which would include a first page.).
Regarding claim 8, Obayashi et al. disclose the image inspection apparatus according to claim 1, wherein the reference image registered in the first inspection mode is a read image generated by reading the recording medium (Paragraph [0033] and [0048].).
Regarding claim 9, Obayashi et al. disclose the image inspection apparatus according to claim 1, wherein the first inspection mode is selected when inspection for additional printing is performed (Paragraph [0034], the user operates to set the settings for registration, and thus the mode for image registration can be selected for additional printing.).
Regarding claim 10, this claim is rejected under the same rationale as claim 1.
Regarding claim 11, Obayashi et al. disclose a computer-readable recording medium storing an image inspection program for causing a computer to execute the image inspection method according to claim 10 (Paragraph [0084].).
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Obayashi et al. (US 2021/0201097) in view of Shinya (US 2023/0401695).
Regarding claim 6, Obayashi et al. disclose image inspection apparatus according to claim 1.
Obayashi et al. fail to teach wherein the generation of the reference image and the formation of the image on the recording medium are performed in parallel in the second inspection mode.
Shinya discloses wherein generation of a reference image and the formation of an image are performed in parallel in a second inspection mode (Paragraph [0093].).
Hence the prior art includes each element claimed although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of the actual combination of the elements in a single prior art reference. In combination Obayashi et al. performs the same function as it does separately of generating a reference image and forming an image on a recording medium are performed in a second inspection mode, and Shinya performs the same function as it does separately of parallel processing when generating a reference image.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could have combined the elements as claimed by known methods, and that in combination, each element merely performed the same function as it does separately. The results of the combination would have been predictable and resulted in the generation of the reference image and the formation of the image on the recording medium being performed in parallel in the second inspection mode.
Therefore, the claimed subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 7, please refer to the rejection of claim 6, and furthermore Obayashi et al. also disclose of inspection of a read image generated by reading the recording medium on which the image is formed (Paragraphs [0003], [0033]-[0034], [0045] and [0048].), where, in the combination, this would also occur in parallel as explained in claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN G SHERMAN whose telephone number is (571)272-2941. The examiner can normally be reached Monday - Friday, 8:00am - 4pm ET.
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/STEPHEN G SHERMAN/Primary Examiner, Art Unit 2621
28 July 2026
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