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 .
Status of Claims
This is the office action on the merits in response to the application filed on 12/22/2025.
Claims 1-11 are currently pending and have been examined.
Response to Arguments
3. Applicant's arguments filed 12/22/2025 with respect to the rejection(s) of claim(s) 1-11 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made. See remarks on page
9-12.
The rejection of claim 1, 7-9, and 10 under 35 U.S.C. 112(f) is withdrawn in view of Applicant’s amendments to correct the indefinite recitation indicated in the Office Action.
The rejection of claim 1, 7-9, and 10 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to correct the indefinite recitation indicated in the Office Action.
The rejection of claim 1, 7-9, and 10 under 35 U.S.C. 112(a) is withdrawn in view of Applicant’s amendments to correct the indefinite recitation indicated in the Office Action. See Remarks on page 8-9.
Applicant arguments filed 12/22/2025 with respect to the rejection of claim(s) 1-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/897,442 have been fully considered but are not persuasive. The rejection is maintained. The claims of the copending application recite to a production management system that allocates software licenses to production-related apparatuses and cancels allocations when apparatuses are removed from the product line and the current claimed invention similarly relates to management of software licenses associated with production-related apparatuses. The amendments are an obvious variation of the current claim set. Therefore, the current claimed subject matter is not patentably distinct from the claims of copending Application No. 18/897,442 and the rejection of claims 1-11 of nonstatutory double patenting is maintained. See Remarks on page 7.
Double Patenting
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.
Claim 1-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/897,442. Although the claims at issue are not identical, they are not patentably distinct from each other because claims are claimed invention directed toward monitoring, searching, tracking and tracing Monero transaction chain.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nakamura et al. (US 7477745 B2), in view of Biswas et al. (US 8429082 B1).
7. Regarding claims 1, 9, and 10, Nakamura discloses a production management apparatus, (a production management system, and a display method, (Abstract Section)),
comprising: configured to display, on a single screen, license information including first information, second information, a usage state, and a total number used, the first information indicating production-related apparatuses included in production lines for producing a mounting substrate, the second information indicating software licenses to be used to permit software that realize operations of the production-related apparatuses to be executed on the production-related apparatuses; and a receiver configured to obtain change information for changing the usage state, wherein the display is configured to display updated license information that is the license information in which the usage state has been updated according to the change information obtained by the receiver, (Column 5/line 23, Connected to the CPU 31 via the bus 30 are an input unit 34 including a keyboard, a mouse, etc., a storing portion 35, a display portion 36, a communication interface portion 37, etc.; and Column 4/line 38, This license management system shown in FIG. 1 is provided with user terminal devices 1 and 2, a license management apparatus 3 (hereinafter referred to as “server”), plural multifunction-type printing apparatuses 4-6 as operation function executing units. These terminal devices 1 and 2, server 3 and printing apparatuses 4-6 are mutually connected through a network 7.; and Column 5/line 27, The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.; and Column 5/line 7, In this case, upon the request for the use of the scanner, the CPU 31 of the server 3 determines whether the number of licenses currently permitted for the use of the scanner function is equal to the number of licenses initially set for the use of the scanner function. For example, it is determined whether the number of licenses for the use of the scanner function in the license management table T1 of the storing portion 35 of the server 3 is “0.” In the non-use state, since the number of the available licenses is not “0,” but “1” as shown in FIG. 4, the CPU 31 permits the use of the scanner function. Then, the CPU 31 subtracts “1” from the number of licenses for the use of the scanner function in the license management table T1 to update the number of licenses currently available for the use of the scanner function as “0,” as shown in FIG. 5. In this state, any one of scanner functions of the printing apparatuses 4-6 can be used from the terminal device 1.; and Column 6/line 24, It is further assumed that the terminal device 2 requests activation of one scanner function of any one of the printing apparatuses 4-6 when the scanner function of the printing apparatus 4 is being used from the terminal device 1. At this time, the number of licenses available for a use of a scanner function in the license management table is “0,” which means that the number of licenses currently permitted for the use of the scanner function has CPU 31 of the server 3 determines to refuse the request for the use of the scanner function. Then, the refusal is notified to the user's terminal device 2 through the communication interface portion 37 of the server 3.; and Column 6/line 37, Next, it is assumed that the use of the scanner function of the printing apparatus 4 from the user's terminal device 1 is terminated. At this time, since the number of licenses available for a scanner function in the license management table T1 is “0” as shown in FIG. 5, the CPU 31 of the server 3 adds “1” to the number of licenses for the use of the scanner function in the license management table T1 after the termination of the scanner function to update the number “1” as shown in FIG. 4. Thus, the scanner function becomes available by a new request.)
Nakamura does not explicitly disclose the usage state indicating, for pairs of the production-related apparatuses and the software licenses, whether each of the software licenses is being used in the production-related apparatuses, the total number used indicating a total number of the software licenses used in each of the production lines.
However, Biswas teaches the usage state indicating, for pairs of the production-related apparatuses and the software licenses, whether each of the software licenses is being used in the production-related apparatuses, the total number used indicating a total number of the software licenses used in each of the production lines, (Claim 4. 4. The method of claim 1 further comprising: for each use of the respective application on the client device, incrementing a usage counter that indicates the number of uses of the respective application on the client device; and identifying a value of the usage counter to include in the usage data associated with the permanent license.; and Column 4/line 35, a license manager that tracks, manages and/or revokes permanent licenses on client devices from a server device (e.g., license server) in a network environment (e.g., LAN, WAN, the Internet, etc.). The license manager tracks and monitors usage information related to the permanent licenses and their corresponding software applications on the client devices. In addition, according to example embodiments herein, the license manager is able to present the usage information to a network or system administrator in a graphical user interface so that a determination can be made on whether or not to revoke the permanent license on the client device. Furthermore, as in one example embodiment, the license manager remotely revokes the permanent licenses on the client devices either automatically or as instructed by the user administrator.; and Column 6/line 42, the license manager 150 receives a license query 155 from a server device 160. The license query 155 requests usage data 187 associated with a permanent license 182 on client device 180-1.; and Column 8/line 48, In step 510, the license manager 150 queries a database 190-1 on the client device 180-1 in order to procure the usage data 187 associated with the permanent license 182. As shown in the example embodiment of FIG. 1, the license manager retrieves the usage data 187 from database 190-1.)
One of ordinary skill in the art would have recognized that applying the known technique of Biswas to the known invention of Nakamura would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate production-related features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the system to include the usage state indicating, for pairs of the production-related apparatuses and the software licenses, whether each of the software licenses is being used in the production-related apparatuses, the total number used indicating a total number of the software licenses used in each of the production lines result in an improved invention because applying said technique will ensure that the system can track which devices are using software licenses, thus improving the overall performance of the invention.
8. Regarding claim 2, Nakamura discloses wherein the software licenses indicated by the second information comprise a plurality of types of software licenses, and the license information further includes: a total number of software licenses used indicating, for each of the plurality of types of software licenses, the total number of software licenses being used; and a total number of software licenses available indicating, for each of the plurality of types of software licenses, the total number of software licenses available for use in the production lines, (Column 5/line 26, The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.; and Column 6/line 8, In this case, upon the request for the use of the scanner, the CPU 31 of the server 3 determines whether the number of licenses currently permitted for the use of the scanner function is equal to the number of licenses initially set for the use of the scanner function. For example, it is determined whether the number of licenses for the use of the scanner function in the license management table T1 of the storing portion 35 of the server 3 is "0." In the non-use state, since the number of the available licenses is not "0," but "1" as shown in FIG. 4, the CPU 31 permits the use of the scanner function. Then, the CPU 31 subtracts "1" from the number of licenses for the use of the scanner function in the license management table T1 to update the number of licenses currently available for the use of the scanner function as "0," as shown in FIG. 5. In this state, any one of scanner functions of the printing apparatuses 4-6 can be used from the terminal device; and Column 6/line 50, As mentioned above, the number of licenses currently available is stored in the storing portion 35 for each function of the printing apparatuses 4-6, i.e., the print function, the scanner function, the copy function and the FAX function. Therefore, upon request for a use of a certain operation function by a user, it is determined whether the request for the use of the operation function is to be permitted depending on whether the number of licenses stored in the table is "0." Accordingly, if a user purchases the number of licenses corresponding to the frequency in use of each function of the printer, the scanner, the copy and the FAX at the time of the license agreement for the operation function executing units, it is possible to avoid excessive costs for an operation function with less operation frequency. Furthermore, when the CPU 31 of the server 3 permits the use of the operation function, since the number of licenses in the license management table T1 of the storing portion 35 is subtracted by "1," the subtracted result is stored as the number of licenses currently available. When the currently executing operation function is terminated, since the number of licenses stored in the license management table T1 of the storing portion 35 is added by "1," the added result is stored as the number of currently available licenses therein. Accordingly, if the number of licenses currently available is not "0," permission can be given to the use of the function, enabling an easy license management for each operation function.)
9. Regarding claim 3, Nakamura discloses wherein the first information includes names of the production-related apparatuses, and the second information includes names of the plurality of types of software licenses, (Column 4/line 38, This license management system shown in FIG. 1 is provided with user terminal devices 1 and 2, a license management apparatus 3 (hereinafter referred to as "server"), plural multifunction-type printing apparatuses 4-6 as operation function executing units. These terminal devices 1 and 2, server 3 and printing apparatuses 4-6 are mutually connected through a network 7.; and Column 5/line 26, The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.)
10. Regarding claim 4, Nakamura discloses wherein the production-related apparatuses included in the first information are displayed in an order in which the production-related apparatuses are disposed in a production line among the production lines, (Column 4/line 38, This license management system shown in FIG. 1 is provided with user terminal devices 1 and 2, a license management apparatus 3 (hereinafter referred to as “server”), plural multifunction-type printing apparatuses 4-6 as operation function executing units. These terminal devices 1 and 2, server 3 and printing apparatuses 4-6 are mutually connected through a network 7.; Column 5/line 26, The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.)
11. Regarding claim 5, Nakamura discloses wherein the plurality of types of software licenses included in the second information are displayed in a predetermined order, (Column 5/line 26, The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.; and Column 5/line 7, In this case, upon the request for the use of the scanner, the CPU 31 of the server 3 determines whether the number of licenses currently permitted for the use of the scanner function is equal to the number of licenses initially set for the use of the scanner function. For example, it is determined whether the number of licenses for the use of the scanner function in the license management table T1 of the storing portion 35 of the server 3 is “0.” In the non-use state, since the number of the available licenses is not “0,” but “1” as shown in FIG. 4, the CPU 31 permits the use of the scanner function. Then, the CPU 31 subtracts “1” from the number of licenses for the use of the scanner function in the license management table T1 to update the number of licenses currently available for the use of the scanner function as “0,” as shown in FIG. 5. In this state, any one of scanner functions of the printing apparatuses 4-6 can be used from the terminal device 1.)
12. Regarding claim 6, Nakamura discloses further comprising: a storage that stores the first information, the second information, and the usage state, wherein the storage stores the usage state that has been updated according to the change information, (Column 5/line 19, The server 3 is equipped with a CPU 31 which generally controls the entire server, a ROM 32 storing the program which the CPU 31 executes and a RAM 33 as a work area used as a data read/write area. Connected to the CPU 31 via the bus 30 are an input unit 34 including a keyboard, a mouse, etc., a storing portion 35, a display portion 36, a communication interface portion 37, etc. The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.; and Column 5/line 7, In this case, upon the request for the use of the scanner, the CPU 31 of the server 3 determines whether the number of licenses currently permitted for the use of the scanner function is equal to the number of licenses initially set for the use of the scanner function. For example, it is determined whether the number of licenses for the use of the scanner function in the license management table T1 of the storing portion 35 of the server 3 is “0.” In the non-use state, since the number of the available licenses is not “0,” but “1” as shown in FIG. 4, the CPU 31 permits the use of the scanner function. Then, the CPU 31 subtracts “1” from the number of licenses for the use of the scanner function in the license management table T1 to update the number of licenses currently available for the use of the scanner function as “0,” as shown in FIG. 5. In this state, any one of scanner functions of the printing apparatuses 4-6 can be used from the terminal device 1.; .; and Column 6/line 37, Next, it is assumed that the use of the scanner function of the printing apparatus 4 from the user's terminal device 1 is terminated. At this time, since the number of licenses available for a scanner function in the license management table T1 is “0” as shown in FIG. 5, the CPU 31 of the server 3 adds “1” to the number of licenses for the use of the scanner function in the license management table T1 after the termination of the scanner function to update the number “1” as shown in FIG. 4. Thus, the scanner function becomes available by a new request.)
13. Regarding claim 7, Nakamura discloses further comprising: a transmitter configured to transmit, to one production-related apparatus among the production-related apparatuses, usage permission information for software corresponding to a new software license, when the new software license is used in the one production-related apparatus as a result of the usage state being changed according to the change information that has been inputted to a line management apparatus that manages the production lines, (Column 6/line 24, It is further assumed that the terminal device 2 requests activation of one scanner function of any one of the printing apparatuses 4-6 when the scanner function of the printing apparatus 4 is being used from the terminal device 1. At this time, the number of licenses available for a use of a scanner function in the license management table is "0," which means that the number of licenses currently permitted for the use of the scanner function has reached the number of licenses initially set for the use of the scanner function. Therefore, the CPU 31 of the server 3 determines to refuse the request for the use of the scanner function. Then, the refusal is notified to the user's terminal device 2 through the communication interface portion 37 of the server 3.; and Column 6/line 37, Next, it is assumed that the use of the scanner function of the printing apparatus 4 from the user's terminal device 1 is terminated. At this time, since the number of licenses available for a scanner function in the license management table T1 is "0" as shown in FIG. 5, the CPU 31 of the server 3 adds "1" to the number of licenses for the use of the scanner function in the license management table T1 after the termination of the scanner function to update the number "1" as shown in FIG. 4. Thus, the scanner function becomes available by a new request…the number of licenses currently available is stored in the storing portion 35 for each function of the printing apparatuses 4-6)
14. Regarding claim 8, Nakamura discloses further comprising: a transmitter configured to transmit, to one production-related apparatus among the production-related apparatuses, usage prohibition information for software corresponding to one software license among the software licenses, when the one software license being used in the one production-related apparatus has been deleted as a result of the usage state being changed according to the change information that has been inputted to a line management apparatus that manages the production lines, (Column 6/line 24, It is further assumed that the terminal device 2 requests activation of one scanner function of any one of the printing apparatuses 4-6 when the scanner function of the printing apparatus 4 is being used from the terminal device 1. At this time, the number of licenses available for a use of a scanner function in the license management table is “0,” which means that the number of licenses currently permitted for the use of the scanner function has reached the number of licenses initially set for the use of the scanner function. Therefore, the CPU 31 of the server 3 determines to refuse the request for the use of the scanner function. Then, the refusal is notified to the user's terminal device 2 through the communication interface portion 37 of the server 3.; and Column 5/line 11, The communication interface portion 28 enables a signal/data communication among the terminal devices 1 and 2, the printing apparatuses 4-6 and the server 3. The display portion 29 is provided on an operation panel to display an input operation status, etc., and composed of an LCD, an EL element, etc.)
15. Regarding claim 11, Nakamura discloses a non-transitory computer-readable recording medium having recorded thereon a program for causing a computer to execute the display method according to claim 10, (Column 5/line 7, The storing portion 27 is composed of, for example, a hard disk drive unit for storing image data, designated print jobs and the like. The communication interface portion 28 enables a signal/data communication among the terminal devices 1 and 2, the printing apparatuses 4-6 and the server 3. The display portion 29 is provided on an operation panel to display an input operation status, etc., and composed of an LCD, an EL element, etc. FIG. 3 is a block diagram showing an electric structure of the server 3 according to an embodiment of the invention. The server 3 is equipped with a CPU 31 which generally controls the entire server, a ROM 32 storing the program which the CPU 31 executes and a RAM 33 as a work area used as a data Connected to the CPU 31 via the bus 30 are an input unit 34 including a keyboard, a mouse, etc., a storing portion 35, a display portion 36, a communication interface portion 37, etc. The storing portion 35 is composed of, for example, a hard disk drive unit, and stores the number of licenses set for each of the operation functions of the printing apparatus 4-6, i.e., the printer function, the scanner function, the copy function and the FAX function, as a license management table T1 as shown in FIG. 4.)
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Image Forming Apparatus, License Determination Method, and Computer-Readable Recording Medium Thereof (US 20100071069 A1) teaches an image forming apparatus capable of executing an application formed by a plurality of program modules is disclosed, including: a correspondence information storing part, a determination part, and a boot control part. A correspondence information storing part stores correspondence information corresponding to the plurality of program modules and a plurality of sets of license data for the application. A determination part determines whether to permit or deny activation based on the license data corresponded to the correspondence information for each of the program modules included in the application. A boot control part activates one or more program modules which are permitted to be activated by the determination part.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
In addition to the foregoing, other aspects are described in the claims, drawings, and text. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Davida L. King whose telephone number is (571) 272-4724. The examiner can normally be reached M-F 8am-5pm.
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, Neha Patel can be reached on (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L.K./Examiner, Art Unit 3699
/NEHA PATEL/Supervisory Patent Examiner, Art Unit 3699