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 .
DETAILED ACTION
This action is responsive to amendment filed June 11, 2026.
Status of Claims
Applicant amended the claims, and canceled claim 10.
Claims 1-9 remain pending.
Response to Arguments
Applicant’s arguments, filed 6/11/26, regarding the 102 rejections have been fully considered and are persuasive. However a new grounds of rejection is made under 103 based on Migishima in view of Saito, as presented below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1 for example:
Line 8 recites “…the notifying device to perform the first notification…”, and line 13 recites “…the notifying device executing the first notification….”. The difference between “perform” and “execute” is unclear, or if there is no difference then the scope is unclear and undefined. Also, it is unclear how the notifying device relates to the claimed first method and second method, and is unclear the extent of its involvement in said methods.
Line 14 recites “… an object for receiving a request…”. It is unclear how a displayed object receives a request when a displayed object (according to its plain meaning) is an image and is not a device or module that can receive or execute requests.
Dependent claims inherit the deficiencies of parent claim 1 and are thus rejected based upon the same rationale.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6,9,10 are rejected under 35 U.S.C. 103 as being unpatentable over Migishima (US Publication 20240406328) in view of Saito (US Publication 20180181352).
In reference to claim 1, Migishima teaches a communication apparatus, comprising: a communication interface; a notifying device including a display; and a controller configured to:
in response to power supply to the communication apparatus, determine whether an initial-setting process is completed in the communication apparatus; (see at least ¶ 44 lines 1-2, ¶ 47 lines 1-5 and ¶s 97,98, which teaches a power on instruction from a user to an MFP/communication apparatus, and determining if an initial setting process is completed) and
in response to determining that the initial-setting process is incomplete, control the notifying device to perform a first notification that prompts execution of the initial-setting process by a first method using an external terminal, the first notification including displaying a location to be accessed by the external terminal, the location from which a program for completing the initial-setting process is downloadable by the external terminal, on the display; (see at least ¶s 69-71, which teaches determining that the initial setting process is complete or not completed, and generating a notification prompt displaying a location to be accessed by the external device for which a website/program is to be utilized for completing the initial setup) and
in response to the notifying device executing the first notification, control the display to display an object for receiving a request to execute the initial-setting process by a second method different from the first method using the external terminal. (see at least ¶s 63-64, which teaches in response, displaying a notification of the initial setup process by different methods)
From the above limitations, Migishima fails to explicitly teach the location from which a program for completing the initial-setting process is downloadable by the external terminal, on the display, and to display an object for receiving a request to execute the initial-setting process by a second method different from the first method using the external terminal. However, Saito teaches managing and setting up an MFP/image processing apparatus (see Saito, at least Abstract & Summary). Saito discloses displaying an access location for an external terminal to load configuration information for configuring the MFP device (see Saito, at least ¶s 48-49), and also discloses receiving a command to execute the command via a method different than the first method (see Saito, at least ¶s 51-52). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Migishima based on the teachings of Saito for the purpose of simplifying the MFP setup process for a user.
In reference to claim 2, Migishima teaches receiving a start instruction requesting that the initial setting process is executed after the first notification (see at least ¶s 48,56).
In reference to claim 3, Migishima teaches a notification different than the first notification and which is not executing the initial setting process (see at least ¶ 98).
In reference to claim 4, Migishima teaches in response to the start instruction from the external terminal, perform another notification for another step of the initial setting process (see at least ¶s 100,101).
In reference to claim 5, Migishima teaches performing the other notification without the first notification (see at least ¶ 102).
In reference to claim 6, Migishima teaches not repeating the other notification when successful (see at least ¶ 103).
In reference to claim 9, Migishima teaches displaying objects for configuring communication settings (see at least ¶s 49,50).
In reference to claim 10, Migishima teaches displaying an option for canceling the network connection to the external device and related to executing the initial setting process. (see at least ¶ 50).
Claims 7,8 are rejected under 35 U.S.C. 103 as being unpatentable over Migishima et al (US Patent 11562099) in view of Asai (US Publication 20220174170).
In reference to claim 7, Migishima teaches the intial settings (see Migishime, at least ¶ 63). Migishima fails to explicitly teach wherein the program includes a transmitting program for transmitting a start instruction for starting the initial-setting process to the communication apparatus. However, Asai teaches controlling an image forming device via an external device, where the image device displays a location to be accessed by the external device in order to download a program for transmitting an instruction to the image device for a setup process (see Asai, at least Abstract & ¶s 3-5 & 63-65). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Migishima based on the teachings of Asai for the purpose of facilitating the connection and setup process for users that utilize different platform devices.
In reference to claim 8, Asai teaches displaying a QR code readable by the external device (see Asai, at least ¶s 63-65). One of ordinary skill in the art would have been motivated to modify Migishima in view of the teachings of Asai for the purpose as mentioned in claim 7 above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
For any subsequent response that contains new/amended claims, Applicant is required to cite its corresponding support in the specification. (See MPEP chapter 2163.03 section (I.) and chapter 2163.04 section (I.) and chapter 2163.06) Applicant may not introduce any new matter to the claims or to the specification.
In formulating a response/amendment, Applicant is encouraged to take into consideration the prior art made of record but not relied upon, as it is considered pertinent to applicant's disclosure. See attached Form 892.
Contact & Status
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMY M OSMAN whose telephone number is (571)272-4008. The examiner can normally be reached Mon-Fri, 9AM-5PM.
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/Ramy M Osman/
Primary Examiner, Art Unit 2457
August 24, 2026
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