CTNF 18/937,531 CTNF 83716 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA 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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-5 of U.S. Patent No. 12164820 . Although the claims at issue are not identical, they are not patentably distinct from each other because patent 12164820 is narrower than independent claim by “wherein when execution of the job based on the user setting is completed, the controller deletes the user setting from the non-volatile storage device, and when execution of the job based on the user setting is interrupted”, while the current application discloses interrupting the execution of the job based on user setting. See below . 18937531 12164820 Claim 1. An image forming apparatus comprising: a display device; an instruction acceptor that accepts an instruction from a user; a non-volatile storage device; and a control device that includes a processor and functions, through the processor executing a control program, as: a controller that allows the display device to display a settings screen on which the user makes a user setting for an executable function, and executes a job based on the user setting accepted by the instruction acceptor through the settings screen; and a backup device that backs up the user setting on the non-volatile storage device each time the instruction acceptor accepts the user setting, wherein when execution of the job based on the user setting is interrupted, the controller remains the user setting on the non-volatile storage device without deleting the user setting from the non-volatile storage device, when, in newly displaying the settings screen on the display device, the user setting is backed up on the non-volatile storage device, the controller allows the display device to display the settings screen showing the content of the user setting. Claim 2. The image forming apparatus according to claim 1, wherein when, in newly displaying the settings screen on the display device, the user setting is absent from the non-volatile storage device, the controller keeps the display device from displaying the settings screen showing the content of the user setting. Claim 3. The image forming apparatus according to claim 1, wherein before allowing the display device to newly display the settings screen, the controller allows the display device to display a message prompting the user to input an instruction of whether to use the user setting, when an instruction to use the user setting is accepted by the instruction acceptor, the controller allows the display device to display the settings screen showing the content of the user setting backed up on the non-volatile storage device, and when an instruction not to use the user setting is accepted by the instruction acceptor, the controller keeps the display device from displaying the settings screen showing the content of the user setting. Claim 4. The image forming apparatus according to claim 3, wherein when the instruction not to use the user setting is accepted by the instruction acceptor, the controller deletes the user setting backed up on the non-volatile storage device. Claim 5. The image forming apparatus according to claim 1, the control device further functions as an individual identifier that identifies the user, wherein the backup device backs up the user setting on the non-volatile storage device for each user identified by the individual identifier, when an instruction to use the user setting is accepted by the instruction acceptor, the controller allows the display device to display the settings screen showing the content of the user setting for the user identified by the individual identifier, and when an instruction not to use the user setting is accepted by the instruction acceptor, the controller keeps the display device from displaying the settings screen showing the content of any of the user settings backed up on the non-volatile storage device. Claim 1. An image forming apparatus comprising: a display device; an instruction acceptor that accepts an instruction from a user; a non-volatile storage device; and a control device that includes a processor and functions, through the processor executing a control program, as: a controller that allows the display device to display a settings screen on which the user makes a user setting for an executable function, and executes a job based on the user setting accepted by the instruction acceptor through the settings screen; and a backup device that backs up the user setting on the non-volatile storage device each time the instruction acceptor accepts the user setting, wherein when execution of the job based on the user setting is completed, the controller deletes the user setting from the non-volatile storage device, and when execution of the job based on the user setting is interrupted, the controller remains the user setting on the non-volatile storage device without deleting the user setting from the non-volatile storage device, when, in newly displaying the settings screen on the display device, the user setting is backed up on the non-volatile storage device, the controller allows the display device to display the settings screen showing the content of the user setting. Claim 2. The image forming apparatus according to claim 1, wherein when, in newly displaying the settings screen on the display device, the user setting is absent from the non-volatile storage device, the controller keeps the display device from displaying the settings screen showing the content of the user setting. Claim 3. The image forming apparatus according to claim 1, wherein before allowing the display device to newly display the settings screen, the controller allows the display device to display a message prompting the user to input an instruction of whether to use the user setting, when an instruction to use the user setting is accepted by the instruction acceptor, the controller allows the display device to display the settings screen showing the content of the user setting backed up on the non-volatile storage device, and when an instruction not to use the user setting is accepted by the instruction acceptor, the controller keeps the display device from displaying the settings screen showing the content of the user setting. Claim 4. The image forming apparatus according to claim 3, wherein when the instruction not to use the user setting is accepted by the instruction acceptor, the controller deletes the user setting backed up on the non-volatile storage device. Claim 5. The image forming apparatus according to claim 1, the control device further functions as an individual identifier that identifies the user, wherein the backup device backs up the user setting on the non-volatile storage device for each user identified by the individual identifier, when an instruction to use the user setting is accepted by the instruction acceptor, the controller allows the display device to display the settings screen showing the content of the user setting for the user identified by the individual identifier, and when an instruction not to use the user setting is accepted by the instruction acceptor, the controller keeps the display device from displaying the settings screen showing the content of any of the user settings backed up on the non-volatile storage device . Claim Rejections - 35 USC § 103 07-20-aia AIA 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 Claim s 1-2, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kumagai (US 2007/0086022 A1) in view of Yoshihara et al. (US 2019/0095141 A1) . With to Claim 1 , Kumagi’022 shows an image forming apparatus (Figure 1 image forming apparatus 1) comprising: a display device (paragraph [0043] display) ; an instruction acceptor that accepts an instruction from a user (paragraph [0055] user selects setting information using any of applications 2a, 2b and 2c in figure 1) ; a non-volatile storage device (paragraphs [0055]-[0056] The non-volatile memory 107b stores the setting information which a user set by using any one of applications 2a, 2b, and 2c) ; and a control device that includes a processor and functions, through the processor executing a control program (paragraph [0046] CPU) , as: [ ]; and a backup device that backs up the user setting on the non-volatile storage device (paragraphs [0055]-[0056] non-volatile memory 107b stores the setting information which a user set by using any one of applications 2a, 2b, and 2c (FIG. 1) through the operation panel 113 (FIG. 2). For example, the non-volatile memory 107b can be a part of a storage area within the system memory 107 or the HDD 104) [ ], when, in newly displaying the settings screen on the display device, the user setting is backed up on the non-volatile storage device (Figure 4 S13 selecting backup paragraph [0071] conducts backup process) , [ ]. Kumagi’022 does not specifically show a controller that allows the display device to display a settings screen on which the user makes a user setting for an executable function, and executes a job based on the user setting accepted by the instruction acceptor through the settings screen; each time the instruction acceptor accepts the user setting, wherein when execution of the job based on the user setting is interrupted, the controller remains the user setting on the non-volatile storage device without deleting the user setting from the non-volatile storage device; and the controller allows the display device to display the settings screen showing the content of the user setting. Yoshihara’141 shows a controller that allows the display device to display a settings screen on which the user makes a user setting for an executable function (Figure 17 user-specific setting registration screen 1700) , and executes a job based on the user setting accepted by the instruction acceptor through the settings screen (Figure 17 executing the job when pressing OK 1709 according the settings paragraph [0116]) ; each time the instruction acceptor accepts the user setting, wherein when execution of the job based on the user setting is interrupted , the controller remains the user setting on the non-volatile storage device without deleting the user setting from the non-volatile storage device (figure 17 and paragraphs [0116]-[0121] when button 1708 is not selected no deletion of the settings is caused) ; and the controller allows the display device to display the settings screen showing the content of the user setting (paragraph [0116] one-time setting information 1708 check box that temporarily stores/backup setting information without being registered, Figure 6A S605 determines if user setting information is registered/backed up, figure 9 displays the screen of registered user specific settings, paragraphs [0058]-[0059] ) . At the time of the invention, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify Kumagi’022 to include a controller that allows the display device to display a settings screen on which the user makes a user setting for an executable function, and executes a job based on the user setting accepted by the instruction acceptor through the settings screen; each time the instruction acceptor accepts the user setting, wherein when execution of the job based on the user setting is interrupted, the controller remains the user setting on the non-volatile storage device without deleting the user setting from the non-volatile storage device; and the controller allows the display device to display the settings screen showing the content of the user setting method taught by Yoshihara’141. The suggestion/motivation for doing so would have been to improve the system’s ability to be able to allow the user to set settings to be a one-time setting or how many times is desired to be stored by or if they are registered (paragraphs [0116] and [0123]-[0124]). With to Claim 2 , the combination of Kumagi’022 and Yoshihara’141 shows the image forming apparatus according to claim 1, wherein when, in newly displaying the settings screen on the display device, the user setting is absent from the non-volatile storage device, the controller keeps the display device from displaying the settings screen showing the content of the user setting (in Yoshihara’141: paragraph [0116] one-time setting information 1708 check box that temporarily stores/backup setting information without being registered, paragraph [0121] one-time setting information is deleted from the flash ROM 212 when the condition set in the setting field 1710 is satisfied) . With to Claim 5 , the combination of Kumagi’022 and Yoshihara’141 shows the image forming apparatus according to claim 1, the control device further functions as an individual identifier that identifies the user, wherein the backup device backs up the user setting on the non-volatile storage device for each user identified by the individual identifier (Yoshihara’141: Figures 6A S603 user authentications and user-specific setting information) , when an instruction to use the user setting is accepted by the instruction acceptor, the controller allows the display device to display the settings screen showing the content of the user setting for the user identified by the individual identifier (Yoshihara’141: Figure 10 user-specific settings) , and when an instruction not to use the user setting is accepted by the instruction acceptor, the controller keeps the display device from displaying the settings screen showing the content of any of the user settings backed up on the non-volatile storage device (Yoshihara’141: paragraph [0055] default settings being display, figure 7) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kaneko (US 2022/0147293 A1): figures 9A, 12 and 13; Chew (US 2021/0096799 A1): paragraph [0113]. Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRIANA CRUZ whose telephone number is (571)270-3246. The examiner can normally be reached 10-6. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Akwasi M. Sarpong can be reached at (571) 270-3438. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /IRIANA CRUZ/Primary Examiner, Art Unit 2681 Application/Control Number: 18/937,531 Page 2 Art Unit: 2681 Application/Control Number: 18/937,531 Page 3 Art Unit: 2681 Application/Control Number: 18/937,531 Page 4 Art Unit: 2681 Application/Control Number: 18/937,531 Page 5 Art Unit: 2681 Application/Control Number: 18/937,531 Page 6 Art Unit: 2681 Application/Control Number: 18/937,531 Page 7 Art Unit: 2681 Application/Control Number: 18/937,531 Page 8 Art Unit: 2681 Application/Control Number: 18/937,531 Page 9 Art Unit: 2681 Application/Control Number: 18/937,531 Page 10 Art Unit: 2681 Application/Control Number: 18/937,531 Page 11 Art Unit: 2681 Application/Control Number: 18/937,531 Page 12 Art Unit: 2681 Application/Control Number: 18/937,531 Page 13 Art Unit: 2681 Application/Control Number: 18/937,531 Page 14 Art Unit: 2681 Application/Control Number: 18/937,531 Page 15 Art Unit: 2681 Application/Control Number: 18/937,531 Page 16 Art Unit: 2681 Application/Control Number: 18/937,531 Page 17 Art Unit: 2681 Application/Control Number: 18/937,531 Page 18 Art Unit: 2681 Application/Control Number: 18/937,531 Page 19 Art Unit: 2681 Application/Control Number: 18/937,531 Page 20 Art Unit: 2681 Application/Control Number: 18/937,531 Page 21 Art Unit: 2681 Application/Control Number: 18/937,531 Page 22 Art Unit: 2681 Application/Control Number: 18/937,531 Page 23 Art Unit: 2681 Application/Control Number: 18/937,531 Page 24 Art Unit: 2681
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