Prosecution Insights
Last updated: October 02, 2026
Application No. 18/934,131

ELECTRONIC DEVICE, METHOD, AND STORAGE MEDIUM

Non-Final OA §101§102
Filed
Oct 31, 2024
Priority
Feb 09, 2024 — JP 2024-018798
Examiner
SABAH, HARIS
Art Unit
Tech Center
Assignee
Kabushiki Kaisha Toshiba
OA Round
1 (Non-Final)
77%
Grant Probability
Favorable
1-2
OA Rounds
9m
Est. Remaining
92%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
534 granted / 694 resolved
+16.9% vs TC avg
Strong +16% interview lift
Without
With
+15.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
24 currently pending
Career history
708
Total Applications
across all art units

Statute-Specific Performance

§101
9.7%
-30.3% vs TC avg
§103
60.4%
+20.4% vs TC avg
§102
18.0%
-22.0% vs TC avg
§112
6.6%
-33.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 694 resolved cases

Office Action

§101 §102
DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 2. Claims 1-20 are pending in this application. Priority 3. Acknowledgement is made of applicant’s claim for foreign priority based on application JP 2024-018798 filed on 02/09/2024 under 35 U.S.C 119(a)-(d). Drawings 4. The drawing has been filed on 10/31/2024 are acceptable for examination purpose. Information Disclosure Statement 5. The information disclosure statement filed on 10/31/2024, 06/18/2026 is in compliance with the provision of the 37 CFR 1.97 and therefore has been considered. Claim Rejections - 35 USC § 101 6. 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. 7. The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-20 are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1, 11, 20 are rejected under 35 U.S.C. 101, because the claimed invention directed to abstract idea without significantly more. The claim recites “an electronic device connectable to a host device, the electronic device comprising: a housing including a cover; a connector; a button on an outer surface of the housing; a sensor attached to the cover; a storage device that stores first information indicating a plurality of protocols each for establishing communication with a device of a different device class; and a processor configured to: perform a process of establishing communication with a host device connected to the connector using one of the protocols, and change said one of the protocols to another protocol to communicate with the host device upon receipt of an input operation through the button and a first signal from the sensor in a predetermined order”. The claim limitation of “a processor configured to: perform a process of establishing communication with a host device connected to the connector using one of the protocols, and change said one of the protocols to another protocol to communicate with the host device upon receipt of an input operation through the button and a first signal from the sensor in a predetermined order”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer component. That is, other than reciting “by a processor” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” language, “establishing” in the context of this claim encompasses the user manually establishing communication with a host device using a protocol. Similarly, the limitations of “changing” to another protocol by user’s instruction and from first signal from sensor as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer component. For example, but for the “by a processor” language, “establishing & changing” in the context of this claim encompasses the user thinking that the electronic device (printer) & the host device (computer) in connection with each other, and the processor should be establishing communication using a protocol, and then changing the protocol to another protocol by user’s instruction and from first signal from sensor. If a claim limitations, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim doesn’t recite any additional element – using a processor to perform “establishing”, “changing” steps. The processor in last claimed steps is recited at a high-level of generality (i.e., as a generic control unit performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, the claimed steps do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. The claim does not include any additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claimed steps of using a processor to perform “establishing”, “changing” steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. The dependent claims 2-10, 12-19 essentially claimed same subject matter as claimed in independent claims are directly or indirectly dependent from independent claims 1, 11, therefore the dependent claims 2-10, 12-19 would be rejected based on same rationale as applied to the independent claims 1, 11. Claim Rejections - 35 USC § 102 8. 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. 9. Claims 1-2, 9-12, 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirai, US Pub 2021/0271433. As to claim 1 [independent], Hirai teaches an electronic device [fig. 1, element 101; 0021] connectable to a host device [fig. 1, element 102; 0021], the electronic device comprising [fig. 1, element 101; 0021]: a housing [fig. 1, element 101; 0021] including a cover [fig. 1, 0032]; a connector [fig. 2, element 206; 0024, 0033]; a button [fig. 2, element 204 or 205; 0024, 0028] on an outer surface of the housing [fig. 2, element 204 or 205; 0024, 0028]; a sensor [0032] attached to the cover [0032]; a storage device [fig. 2, element 202 or 203; 0026-0027] that stores first information indicating a plurality of protocols each for establishing communication with a device of a different device class [0026-0027 Hirai teaches that the communication unit 206 of the printer 101 performs communication with another apparatuses such as apparatuses 102, 103]; and a processor configured to [fig. 2, element 201 (CPU 201); 0025 Hirai teaches that the processor 201 (CPU 201), which is a system controller, controls the entire functions of the printer 101]: perform a process of establishing communication with a host device connected to the connector ([fig. 2, element 206; 0024, 0033]) using one of the protocols [fig. 1; 0022 Hirai teaches that the printer 101 is able to perform wireless connection to computer 102 by a direct connection method/protocol, in which the printer 101 directly connects to the host terminal 102 by peer-to-peer connection without via the AP 103. Moreover, the printer 101 is able to perform wireless connection to the computer 102 by an infrastructure connection method/protocol, in which the printer 101 connects to the computer 102 via the AP 103], and change said one of the protocols to another protocol to communicate with the host device upon receipt of an input operation through the button and a first signal from the sensor in a predetermined order [0029, 0045, 0062, 0083-0084 Hirai teaches that the printer 101 is able to perform wireless & wired connections to computer 102 by a direct & indirect connection method/protocol, in which the printer 101 directly & indirectly connects to the host terminal 102 by using buttons on operating unit 204 in a predetermined order]. As to claim 2 [dependent from claim 1], Hirai teaches wherein the sensor outputs the first signal when the cover is opened [0032 Hirai teaches wherein the sensor outputs the signal to the CPU 201 when the cover is opened]. As to claim 9 [dependent from claim 1], Hirai teaches wherein the protocols are associated with priority levels by the first information, and the processor is configured to select another protocol based on the priority levels [0029, 0045, 0062, 0083-0084 Hirai teaches that the printer 101 is able to perform wireless & wired connections to computer 102 by a direct & indirect connection method/protocol, in which the printer 101 directly & indirectly connects to the host terminal 102 by using buttons on operating unit 204 in a predetermined order]. As to claim 10 [dependent from claim 1], Hirai teaches wherein the processor is configured to select another protocol randomly [0029, 0045, 0062, 0083-0084 Hirai teaches that the printer 101 is able to perform wireless & wired connections to computer 102 by a direct & indirect connection method/protocol, in which the printer 101 directly & indirectly connects to the host terminal 102 by using buttons on operating unit 204 in a predetermined order]. As to claims 11, 20 [independent], However, the independent claims 11, 20 essentially claimed same subject matter as claimed in the independent claim 1 for/and/with other claim limitations, and are therefore the independent claims 11, 20 would be rejected based on same rationale as applied to the independent claim 1. As to claim 12 [dependent from claim 11], the dependent claim 12 essentially claimed same subject matter as claimed in dependent claim 2 and are therefore the dependent claim 12 would be rejected based on same rationale as applied to the dependent claim 2. As to claim 19 [dependent from claim 11], the dependent claim 19 essentially claimed same subject matter as claimed in dependent claim 9 and are therefore the dependent claim 19 would be rejected based on same rationale as applied to the dependent claim 9. Allowable Subject Matter 10. Claims 3-8, 13-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101 (abstract idea), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. 11. The following is an examiner’s statement of reasons for allowance: The dependent claims 3-5 allowable over the prior arts of record (or cited or listed above) since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “wherein the electronic device is a printer configured to print on a print medium, and the processor is configured to: perform a process of feeding the print medium when the input operation is received through the button, and change said one of the protocols to another protocol when the input operation is received for a predetermined time or longer after the first signal is received from the sensor., wherein the sensor outputs a second signal when the cover is closed, and the processor is configured to perform a process of printing second information indicating said another protocol upon receipt of the second signal after said one of the protocols is changed to another protocol., wherein the second information further indicates said one of the protocols”, in combination with all other limitations as claimed. The dependent claims 6-8 are allowable over the prior arts of record (or cited or listed above) since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “wherein the processor is configured to restart the electronic device after said one of the protocols is changed to another protocol., wherein after the electronic device is restarted, the processor causes the connector to transmit a class code corresponding to said another protocol to the host device in response to a request from the host device and thereby start a process of establishing communication with the host device using said another protocol., wherein the processor is configured to determine that the process of establishing communication has been successfully completed when a message is received from the host device within a waiting period after the process of establishing communication is started”, in combination with all other limitations as claimed. The dependent claims 13-15 are allowable over the prior arts of record (or cited or listed above) since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “wherein the electronic device is a printer configured to print on a print medium, the method further comprises: performing a process of feeding the print medium when the input operation is received through the button, and said one of the protocols is changed to another protocol when the input operation is received for a predetermined time or longer after the first signal is received from the sensor., wherein the sensor outputs a second signal when the cover is closed, and the method further comprises: performing a process of printing second information indicating said another protocol upon receipt of the second signal after said one of the protocols is changed to another protocol., wherein the second information further indicates said one of the protocols”, in combination with all other limitations as claimed. The dependent claims 16-18 are allowable over the prior arts of record (or cited or listed above) since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “restarting the electronic device after said one of the protocols is changed to another protocol., after the electronic device is restarted, transmitting a class code corresponding to said another protocol to the host device in response to a request from the host device and thereby starting a process of establishing communication with the host device using said another protocol., determining that the process of establishing communication has been successfully completed when a message is received from the host device within a waiting period after the process of establishing communication is started”, in combination with all other limitations as claimed. Conclusion 12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARIS SABAH whose telephone number is (571)270-3917. The examiner can normally be reached on Monday through Friday from 8:00AM to 4:30PM. The examiner’s personal fax number is (571) 270-4917. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Benny Tieu, can be reached on (571)272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). /HARIS SABAH/Examiner, Art Unit 2682
Read full office action

Prosecution Timeline

Oct 31, 2024
Application Filed
Sep 15, 2026
Non-Final Rejection mailed — §101, §102 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
77%
Grant Probability
92%
With Interview (+15.6%)
2y 8m (~9m remaining)
Median Time to Grant
Low
PTA Risk
Based on 694 resolved cases by this examiner. Grant probability derived from career allowance rate.

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