CTNF 18/934,537 CTNF 84771 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 1-13 are pending in this preliminary amended application. Priority 3. Acknowledgement is made of applicant’s claim for foreign priority based on application JP 2022-155295 filed on 09/28/2022 under 35 U.S.C 119(a)-(d). 02-05 This application discloses and claims only subject matter disclosed in priorApplication No. 18/474,370, filed on 09/26/2023, and name an inventor or inventors named in the prior application. Accordingly, this application may constitute a continuation or division. Should applicant desire to obtain the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78. Drawings 4. The drawing has been filed on 11/01/2024 are acceptable for examination purpose. Information Disclosure Statement 5. The information disclosure statement filed on 11/01/2024 is in compliance with the provision of the 37 CFR 1.97 and therefore has been considered. Double Patenting 08-33 AIA 6. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). 7. Claims 1-13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of U.S. Patent 12,169,655 B2. It is clear that all the elements of an instant application independent claims 1, 9-13 are to be found in patent ( U.S. Patent No. 12,169,655 B2 ) claims 1, 10-11 as the instant application independent claims 1, 9-13 fully encompasses the patent claim 1, 10-11. The difference between the instant application independent claims 1, 9-13 and the patent ( U.S. Patent No. 12,169,655 B2 ) claims 1, 10-11 lies in the fact that the patent ( U.S. Patent No. 12,169,655 B2 ) claim includes many more elements and is thus much more specific. Thus, the invention of claims 1, 10-11 of the patent ( U.S. Patent No. 12,169,655 B2 ) is in effect a “species” of the “generic” invention of the instant application independent claims 1, 9-13. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the instant application independent claims 1, 9-13 are anticipated by claims 1, 10-11 of the patent ( U.S. Patent No. 12,169,655 B2 ), it is not patentably distinct from claims 1, 10-11 of the patent ( U.S. Patent No. 12,169,655 B2 ). The dependent claims 2-8 of the instant application obviously claim the same subject matter as found in the claims 2-8 of the parent patent’ 655 and therefore would be rejected based on the claims 2-8 of the parent patent’ 655. Claim Rejections - 35 USC § 103 07-20-aia AIA 8. 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. 07-21-aia AIA 9. Claim s 1-3, 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Morita, US Pub 2018/0213019 in view of Sumi, US Pub 2022/0141347 . As to claim 1 [independent], Morita teaches an image forming apparatus comprising [ fig. 1, element 101; 0020 ]: at least one memory [ fig. 2a, element 202; 0026-0027, 0090 ] and at least one processor which function as [ fig. 2a, element 203 or 204 or 205; 0026-0027, 0090 ]: a connection unit configured to establish a Virtual Network Computing (VNC) connection with an information processing apparatus to execute a remote operation of the image forming apparatus by the information processing apparatus [ fig. 8; 0022-0024, 0099-0104 Morita teaches that the printer 101 establishes a Virtual Network Computing (VNC) connection with a mobile device 102 or 108 to execute a remote operation of the printer 101 ]; Morita doesn’t teach a disconnection unit configured to, during the VNC connection with the information processing device, based on a fact that a first condition, which includes the fact that no operation was performed on the image forming device by the user of the information processing device via the VNC connection for a specified period of time, has been met, control to disconnect the VNC connection with the information processing apparatus. Sumi teaches a disconnection unit configured to, during the VNC connection with the information processing device, based on a fact that a first condition, which includes the fact that no operation was performed on the image forming device by the user of the information processing device via the VNC connection for a specified period of time, has been met [ figs. 6a-b; 0053-0054, 0062-0065 Sumi teaches that the VNC connection has been disconnected, in case if a logout (ID) key 879 corresponding to the logout key 901 of the printer 110 is tapped, the user logs out from the printer 110. If an end button 878 on the hardware key UI 877 is tapped, the remote operation function is ended, i.e., the VNC connection is ended, also when state of the MFP application 300 refers a state where the MFP application 300 is not active & switches the MFP application 300 to background state, such as a state where the MFP application 300 is a user's operation target on the mobile device 100 isn’t received any operation from the user i.e. the background state of the MFP application 300 refers to a state where the MFP application 300 is operating but inactive and is not a user's operation target to use the printer 100 indicating that the first condition is met, and the disconnection, after a lapse of the predetermined time in the state of the background, is performed ], control to disconnect the VNC connection with the information processing apparatus [ figs. 6a-b; 0053-0054, 0062-0065 Sumi teaches that the VNC connection has been disconnected, in case if a logout (ID) key 879 corresponding to the logout key 901 of the printer 110 is tapped, the user logs out from the printer 110. If an end button 878 on the hardware key UI 877 is tapped, the remote operation function is ended, i.e., the VNC connection is ended, also when state of the MFP application 300 refers a state where the MFP application 300 is not active & switches the MFP application 300 to background state, such as a state where the MFP application 300 is a user's operation target on the mobile device 100 isn’t received any operation from the user i.e. the background state of the MFP application 300 refers to a state where the MFP application 300 is operating but inactive and is not a user's operation target to use the printer 100 indicating that the first condition is met, and the disconnection, after a lapse of the predetermined time in the state of the background, is performed ]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumi teaching to disconnect VNC connection for a specified period of time is elapsed based on a fact that a first condition is met to modify Morita’s teaching consisting a screen displayed on display means of the image processing apparatus and is subjected to display control by the printer, and an instruction is transmitted to stop the display control to the printer if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target on the information processing apparatus. The state where the application is no longer operating as the user's operation target on the information processing apparatus is a state where the application is no longer operating in a foreground state on the information processing apparatus. The suggestion/motivation for doing so would have been benefitted to the user to enable performing operations on the screen displayed on the terminal, so that a user can log in to the apparatus on the operation screen provided by the apparatus and instruct the apparatus to perform processing without operating the operation panel of the apparatus. As to claim 2 [dependent from claim 1], Sumi teaches wherein the at least one memory and the at least one processor further function as a control unit configured to control to execute an auto clear function for displaying a predetermined screen based on the first condition has been met apparatus [ figs. 6a-b; abstract, 0006 , 0053-0054, 0062-0065 Sumi teaches that the VNC connection has been disconnected, in case if a logout (ID) key 879 corresponding to the logout key 901 of the printer 110 is tapped, the user logs out from the printer 110. If an end button 878 on the hardware key UI 877 is tapped, the remote operation function is ended, i.e., the VNC connection is ended, also when state of the MFP application 300 refers a state where the MFP application 300 is not active & switches the MFP application 300 to background state, such as a state where the MFP application 300 is a user's operation target on the mobile device 100 isn’t received any operation from the user i.e. the background state of the MFP application 300 refers to a state where the MFP application 300 is operating but inactive and is not a user's operation target to use the printer 100 indicating that the first condition is met, and the disconnection, after a lapse of the predetermined time in the state of the background, is performed. The screen corresponds to a screen displayed on a display unit of the image processing apparatus and is subjected to display control by the image processing apparatus, and transmitting an instruction to stop the display control to the image processing apparatus if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target ]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumi teaching to disconnect VNC connection for a specified period of time is elapsed based on a fact that a first condition is met to modify Morita’s teaching consisting a screen displayed on display means of the image processing apparatus and is subjected to display control by the printer, and an instruction is transmitted to stop the display control to the printer if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target on the information processing apparatus. The state where the application is no longer operating as the user's operation target on the information processing apparatus is a state where the application is no longer operating in a foreground state on the information processing apparatus. The suggestion/motivation for doing so would have been benefitted to the user to enable performing operations on the screen displayed on the terminal, so that a user can log in to the apparatus on the operation screen provided by the apparatus and instruct the apparatus to perform processing without operating the operation panel of the apparatus. As to claim 3 [dependent from claim 2], Sumi teaches wherein the predetermined screen is a home screen [ fig. 8a; 0046-0047 ]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumi teaching to disconnect VNC connection for a specified period of time is elapsed based on a fact that a first condition is met to modify Morita’s teaching consisting a screen displayed on display means of the image processing apparatus and is subjected to display control by the printer, and an instruction is transmitted to stop the display control to the printer if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target on the information processing apparatus. The state where the application is no longer operating as the user's operation target on the information processing apparatus is a state where the application is no longer operating in a foreground state on the information processing apparatus. The suggestion/motivation for doing so would have been benefitted to the user to enable performing operations on the screen displayed on the terminal, so that a user can log in to the apparatus on the operation screen provided by the apparatus and instruct the apparatus to perform processing without operating the operation panel of the apparatus. As to claim 7 [dependent from claim 1], Sumi teaches wherein in a case where the VNC connection is disconnected by the disconnection unit, a notification screen indicating that the VNC connection has been disconnected is displayed on a display of the information processing apparatus [ fig. 8b, element 880; 0059 ]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumi teaching to disconnect VNC connection for a specified period of time is elapsed based on a fact that a first condition is met to modify Morita’s teaching consisting a screen displayed on display means of the image processing apparatus and is subjected to display control by the printer, and an instruction is transmitted to stop the display control to the printer if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target on the information processing apparatus. The state where the application is no longer operating as the user's operation target on the information processing apparatus is a state where the application is no longer operating in a foreground state on the information processing apparatus. The suggestion/motivation for doing so would have been benefitted to the user to enable performing operations on the screen displayed on the terminal, so that a user can log in to the apparatus on the operation screen provided by the apparatus and instruct the apparatus to perform processing without operating the operation panel of the apparatus. As to claim 8 [dependent from claim 1], Sumi teaches wherein the first condition includes that an operation to the image forming apparatus from a user of the information processing apparatus has not been performed via the VNC connection for the predetermined period [ figs. 6a-b; abstract, 0006 , 0054, 0062-0065 Sumi teaches that the VNC connection has been disconnected, in case if a logout (ID) key 879 corresponding to the logout key 901 of the printer 110 is tapped, the user logs out from the printer 110. If an end button 878 on the hardware key UI 877 is tapped, the remote operation function is ended, i.e., the VNC connection is ended, also when state of the MFP application 300 refers a state where the MFP application 300 is not active & switches the MFP application 300 to background state, such as a state where the MFP application 300 is a user's operation target on the mobile device 100 isn’t received any operation from the user i.e. the background state of the MFP application 300 refers to a state where the MFP application 300 is operating but inactive and is not a user's operation target to use the printer 100 indicating that the first condition is met, and the disconnection, after a lapse of the predetermined time in the state of the background, is performed. The screen corresponds to a screen displayed on a display unit of the image processing apparatus and is subjected to display control by the image processing apparatus, and transmitting an instruction to stop the display control to the image processing apparatus if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target ], and that an operation to the image forming apparatus has not been performed for the predetermined period [ figs. 6a-b; abstract, 0006 , 0054, 0062-0065 Sumi teaches that the VNC connection has been disconnected, in case if a logout (ID) key 879 corresponding to the logout key 901 of the printer 110 is tapped, the user logs out from the printer 110. If an end button 878 on the hardware key UI 877 is tapped, the remote operation function is ended, i.e., the VNC connection is ended, also when state of the MFP application 300 refers a state where the MFP application 300 is not active & switches the MFP application 300 to background state, such as a state where the MFP application 300 is a user's operation target on the mobile device 100 isn’t received any operation from the user i.e. the background state of the MFP application 300 refers to a state where the MFP application 300 is operating but inactive and is not a user's operation target to use the printer 100 indicating that the first condition is met, and the disconnection, after a lapse of the predetermined time in the state of the background, is performed. The screen corresponds to a screen displayed on a display unit of the image processing apparatus and is subjected to display control by the image processing apparatus, and transmitting an instruction to stop the display control to the image processing apparatus if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target ]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumi teaching to disconnect VNC connection for a specified period of time is elapsed based on a fact that a first condition is met to modify Morita’s teaching consisting a screen displayed on display means of the image processing apparatus and is subjected to display control by the printer, and an instruction is transmitted to stop the display control to the printer if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target on the information processing apparatus. The state where the application is no longer operating as the user's operation target on the information processing apparatus is a state where the application is no longer operating in a foreground state on the information processing apparatus. The suggestion/motivation for doing so would have been benefitted to the user to enable performing operations on the screen displayed on the terminal, so that a user can log in to the apparatus on the operation screen provided by the apparatus and instruct the apparatus to perform processing without operating the operation panel of the apparatus. As to claims 9-10 [independent], However, the independent claims 9-13 essentially claimed same subject matter as claimed in the independent claim 1 for/and/with other claim limitations, and are therefore the independent claims 9-13 would be rejected based on same rationale as applied to the independent claim 1. As to claim 11 [independent], Morita teaches an image forming apparatus comprising [ fig. 1, element 101; 0020 ]: at least one memory [ fig. 2a, element 202; 0026-0027, 0090 ] and at least one processor which function as [ fig. 2a, element 203 or 204 or 205; 0026-0027, 0090 ]: a connection unit configured to establish a Virtual Network Computing (VNC) connection with an information processing apparatus to execute a remote operation of the image forming apparatus by the information processing apparatus [ fig. 8; 0022-0024, 0099-0104 Morita teaches that the printer 101 establishes a Virtual Network Computing (VNC) connection with a mobile device 102 or 108 to execute a remote operation of the printer 101 ]; and Morita doesn’t teach a disconnection unit configured to control to disconnect the VNC connection with the information processing apparatus in response to a logout instruction from a user in a state where the user is logged in to the image forming apparatus during the VNC connection with the information processing apparatus. Sumi teaches a disconnection unit configured to control to disconnect the VNC connection with the information processing apparatus in response to a logout instruction from a user in a state where the user is logged in to the image forming apparatus during the VNC connection with the information processing apparatus [ figs. 6a-b; 0053-0054, 0062-0065 Sumi teaches that the VNC connection has been disconnected, in case if a logout (ID) key 879 corresponding to the logout key 901 of the printer 110 is tapped, the user logs out from the printer 110. If an end button 878 on the hardware key UI 877 is tapped, the remote operation function is ended, i.e., the VNC connection is ended, also when state of the MFP application 300 refers a state where the MFP application 300 is not active & switches the MFP application 300 to background state, such as a state where the MFP application 300 is a user's operation target on the mobile device 100 isn’t received any operation from the user i.e. the background state of the MFP application 300 refers to a state where the MFP application 300 is operating but inactive and is not a user's operation target to use the printer 100 indicating that the first condition is met, and the disconnection, after a lapse of the predetermined time in the state of the background, is performed ]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumi teaching to disconnect VNC connection for a specified period of time is elapsed based on a fact that a first condition is met to modify Morita’s teaching consisting a screen displayed on display means of the image processing apparatus and is subjected to display control by the printer, and an instruction is transmitted to stop the display control to the printer if a predetermined condition is satisfied in a state where the application is no longer operating as a user's operation target on the information processing apparatus. The state where the application is no longer operating as the user's operation target on the information processing apparatus is a state where the application is no longer operating in a foreground state on the information processing apparatus. The suggestion/motivation for doing so would have been benefitted to the user to enable performing operations on the screen displayed on the terminal, so that a user can log in to the apparatus on the operation screen provided by the apparatus and instruct the apparatus to perform processing without operating the operation panel of the apparatus. As to claims 12-13 [independent], However, the independent claims 12-13 essentially claimed same subject matter as claimed in the independent claim 11 for/and/with other claim limitations, and are therefore the independent claims 12-13 would be rejected based on same rationale as applied to the independent claim 11 . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 10. Claim s 4-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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 claim 4 is 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 at least one memory and the at least one processor further function as a setting unit configured to set at least one of a plurality of conditions including the auto clear event and a logout from the image forming apparatus as a condition for disconnecting the VNC connection ”, in combination with all other limitations as claimed. The dependent claims 5-6 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 at least one memory and the at least one processor further function as a transmitting unit configured to transmit information of a confirmation screen for confirming whether or not to disconnect the VNC connection before the VNC connection is disconnected in a case where the first condition has been met., wherein the disconnection unit, after transmitting the information of the confirmation screen, does not disconnect the VNC connection in a case where a predetermine information indicating that the VNC connection is maintained from the information processing apparatus has been received, and disconnects the VNC connection in a case where the predetermined information has not been received by the image forming apparatus ”, 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/Friday from 9:00AM to 5:30PM EST. 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. The Examiner’s personal fax number is (571)270-4917. 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://portal.uspto.gov/external/portal. 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 Application/Control Number: 18/934,537 Page 2 Art Unit: 2682 Application/Control Number: 18/934,537 Page 3 Art Unit: 2682 Application/Control Number: 18/934,537 Page 4 Art Unit: 2682 Application/Control Number: 18/934,537 Page 5 Art Unit: 2682 Application/Control Number: 18/934,537 Page 6 Art Unit: 2682 Application/Control Number: 18/934,537 Page 7 Art Unit: 2682 Application/Control Number: 18/934,537 Page 8 Art Unit: 2682 Application/Control Number: 18/934,537 Page 9 Art Unit: 2682 Application/Control Number: 18/934,537 Page 10 Art Unit: 2682 Application/Control Number: 18/934,537 Page 11 Art Unit: 2682 Application/Control Number: 18/934,537 Page 12 Art Unit: 2682 Application/Control Number: 18/934,537 Page 13 Art Unit: 2682 Application/Control Number: 18/934,537 Page 14 Art Unit: 2682 Application/Control Number: 18/934,537 Page 15 Art Unit: 2682 Application/Control Number: 18/934,537 Page 16 Art Unit: 2682
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