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 .
Priority
2. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Oath/Declaration
3. The receipt of Oath/Declaration is acknowledged.
Preliminary Amendment
4. The Preliminary Amendment submitted on 08/15/2025 containing amendments to the claims, specification and abstract is acknowledged.
Information Disclosure Statement
5. The information disclosure statements (IDS) submitted on 11/26/2024, 12/26/2024 and 04/16/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
6. The drawing(s) filed on 11/26/2024 are accepted by the Examiner.
Status of Claims
7. Claims 1-14 are pending. Claims 1-4 and 13-14 are presently amended by the preliminary amendment; claims 5-12 remain in their original form.
Double Patenting
8. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
9. Claims 1-9 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,197,794 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other:
Independent Claim 1 - Comparison with Patented Claim 12
Pending claim limitation
U.S. Patent 12,197,794 - principally corresponding claim(s)
Difference / ODP significance
A non-transitory computer-readable storage medium storing a support program executable by a computer of an information processing device, conforming to a printer, and configured to support a general-purpose print program incorporated in an operating system.
Claim 12 recites a non-transitory computer-readable storage medium storing computer-readable instructions executable by a computer, conforming to a printer, and supporting a general-purpose print program incorporated in an operating system.
Substantively corresponding program/storage-medium architecture.
The support program being not included in the operating system.
Claim 12 does not expressly recite that the supporting instructions/program are "not included in the operating system."
Express difference. This is the principal structural wording added to the pending independent claims. The patented claim nevertheless distinguishes the supporting instructions from the general-purpose print program that is incorporated in the operating system.
Obtain image information from an external device connected with the information processing device, the image information indicating an image for composition registered in the external device.
Claim 12 recites obtaining image information from an external device connected with the information processing device, the image information indicating an image for composition registered in the external device.
Express correspondence.
Cause the user interface to display the obtained image information.
Claim 12 recites causing a user interface of the information processing device to display the obtained image information.
Express correspondence.
Perform a printing process to cause the printer to print a composite image in which the image for composition is combined with a target image.
Claim 12 recites causing the printer to print a composite image in which the obtained image for composition is combined with a target image.
Express correspondence.
Printing occurs in response to a print instruction being output from an application program to the general-purpose print program.
Claim 12 recites printing in response to a print instruction with a print setting for image composition being output from an application program to the general-purpose print program.
Express correspondence in the application-program to general-purpose-print-program to printing sequence.
Printing occurs when print settings corresponding to the print instruction include a particular setting for image composition.
Claim 12 instead recites a print instruction "with a print setting for image composition."
Wording difference, but substantially the same operative condition. Both require the image-composition setting to be associated with the print instruction before the composite-image printing process is performed.
No corresponding limitation in pending claim 1.
Claim 12 further requires sending a designation command specifying the image for composition and target-image data, causing the printer to generate the composite image.
The issued claim contains additional narrowing limitations absent from pending claim 1. Pending claim 1 is broader in this respect; it does not introduce a different image-composition concept.
Independent Claim 13 - Comparison with Patented Claims 10 and 12
Pending claim limitation
U.S. Patent 12,197,794 - principally corresponding claim(s)
Difference / ODP significance
An information processing device comprising a user interface and a controller including a processor and a non-transitory computer-readable storage medium.
Claim 10 recites an information processing device comprising a user interface and a controller including a processor and non-transitory computer-readable storage medium.
Essentially identical statutory/device framework.
The storage medium stores an application program, a general-purpose print program incorporated in an operating system, and a support program conforming to the printer and supporting the general-purpose print program.
Claim 10 recites the same application-program/general-purpose-print-program/supporting-instructions architecture.
Express substantive correspondence.
The support program being not included in the operating system.
Claim 10 does not expressly recite this negative limitation.
Express difference. This is the same structural wording difference appearing in pending claim 1.
Obtain image informationfrom an external device indicating an image for composition.
Claim 10 obtains a plurality of pieces of image information; claim 12 expressly provides the corresponding single-imageimplementation.
Pending claim 13 places the single-image implementation of claim 12 into the information-processing-device form already claimed in claim 10.
Cause the user interface to display the obtained image information.
Claim 10 displays the plurality and then the selected piece; claim 12 expressly displays the obtained single piece of image information.
Same display functionality; pending claim 13 omits the plurality/selection restrictions.
Print a composite image in which the image for composition indicated by the obtained information is combined with a target image.
Claim 10 prints a composite image using the selected one piece of image information; claim 12 performs the corresponding operation using the obtained single image.
Same underlying composite-image printing operation.
The print instruction is output from an application program to the general-purpose print program.
Claims 10 and 12 expressly recite this application-program to general-purpose-print-program relationship.
Express correspondence.
Printing occurs when print settings corresponding to the print instruction include a particular setting for image composition.
Claims 10 and 12 recite a print instruction "with a print setting for image composition."
Same principal wording difference as pending claim 1. The operative condition remains the presence of the image-composition print setting.
No corresponding limitation in pending claim 13.
Claim 10 additionally requires obtaining a plurality, receiving selection of one piece, and displaying the selected piece; claim 12 additionally includes printer-side designation-command limitations.
Pending claim 13 generally removes narrowing details from the patented implementations rather than adding a distinct technical operation.
Independent Claim 14 - Comparison with Patented Claims 11 and 12
Pending claim limitation
U.S. Patent 12,197,794 - principally corresponding claim(s)
Difference / ODP significance
A method implementable by a processor executing a support program on an information processing device, the support program conforming to a printer and supporting a general-purpose print program incorporated in an operating system.
Claim 11 recites a method implementable by a processor executing computer-readable instructions on an information processing device, the instructions conforming to a printer and supporting a general-purpose print program incorporated in the operating system.
Same method/statutory framework and support-program function.
The support program being not included in the operating system.
Claim 11 does not expressly recite this negative limitation.
Express difference. This is the same difference appearing in claims 1 and 13.
Obtaining image information from an external device indicating an image for composition.
Claim 11 obtains a plurality of pieces of image information; claim 12 expressly recites obtaining the corresponding single image information.
Pending claim 14 substitutes the single-image implementation already claimed in claim 12 for the plurality/selection implementation of claim 11.
Causing the user interface to display the obtained image information.
Claim 11 displays the plurality and selected piece; claim 12 displays the obtained single image information.
Same underlying display operation.
Performing a printing process causing the printer to print a composite image combining the image for composition with a target image.
Claim 11 performs the same composite-image printing operation using the selected piece; claim 12 performs the corresponding single-image operation.
Same underlying technical function.
The print instruction is output from an application program to the general-purpose print program.
Claims 11 and 12 expressly recite the application-program to general-purpose-print-program sequence.
Express correspondence.
Printing occurs when print settings corresponding to the print instruction include a particular setting for image composition.
Claims 11 and 12 instead state that the print instruction is "with a print setting for image composition."
Same wording distinction as claims 1 and 13. The operative condition remains presence of the image-composition print setting.
No corresponding limitation in pending claim 14.
Claim 11 contains additional plurality/selection limitations, and claim 12 contains additional printer-side designation-command limitations.
Pending claim 14 omits those narrowing details rather than adding a materially different composite-printing operation.
10. Claims 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,197,794 B2, in view of Wu (US 2004/0130746 A1) .
Regarding Claim 10:
‘794 does not explicitly disclose that the printing communication and the communication used to obtain information from the external device use different communication protocols.
Wu discloses that the printing communication and the communication used to obtain information from the external device use different communication protocols (Wu teaches a printer communication arrangement in which a print job is transmitted using Internet Printing Protocol (IPP) while printer information is obtained using a different protocol, including Simple Network Management Protocol (SNMP) (FIGS. 2-3; steps 210-216 and 304-320))
‘’794 in view of Wu are combinable because they are from the same field of endeavor of print control. It would have been obvious to one of ordinary skill in the art to employ different communication protocols for the two communications already required by the patented system, selecting a protocol according to the type of communication being performed.
The suggestion/motivation for doing is to use the communication method suited to each operation to be used without changing the underlying composite-printing functionality.
Therefore, it would have been obvious to combine ‘794 with Wu to obtain the invention as specified in claim 10.
Regarding Claim 11:
Wu discloses the non-transitory computer-readable storage medium according to claim 10, wherein the first protocol is IPP (Wu: ¶[0008]).
’794 in view of Wu are combinable because they are from the same field of endeavor of print control. It would have been obvious to one of ordinary skill in the art to disclose wherein the first protocol is IPP. The suggestion/motivation for doing is to use a well known print communication protocol for network printing. Therefore, it would have been obvious to combine ‘794 with Wu to obtain the invention as specified in claim 11.
11. Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,197,794 B2, in view of Wu (US 2004/0130746 A1) , and further in view of Torii (US 2005/0162693 A1).
Regarding Claim 12:
The combination of the '794 patent and Wu teaches the subject matter of claim 11
But do not expressly disclose wherein the second protocol is MIB.
Torii discloses wherein the second protocol is MIB (Torii: ¶[0004]).
’794, Wu and Torii are combinable because they are from the same field of endeavor of print control. It would have been obvious to one of ordinary skill in the art to implement the second information-obtaining communication of the '794/Wu system using the known Job MIB/SNMP mechanism taught by Torii . The suggestion/motivation for doing is because MIB-based SNMP communication was a known mechanism for retrieving management/job information from network printers. Therefore, it would have been obvious to combine ‘794 with Wu and Torii to obtain the invention as specified in claim 12.
Allowable Subject Matter
12. Claims 1-14 would be allowable if rewritten or amended to overcome the rejection(s) under nonstatutory double patenting, set forth in this Office action.
13. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1:
The prior art of record fails to disclose nor suggest in the claimed combinations a non-transitory computer-readable storage medium storing a support program that is executable by a computer of an information processing device and conforms to a printer connected with the information processing device, the support program being configured to support a general-purpose print program incorporated in an operating system of the information processing device, the support program being not included in the operating system when executed by the computer, the support program being further configured to, when executed by the computer, cause the information processing device to: obtain image information from an external device connected with the information processing device, the image information indicating an image for composition registered in the external device; cause a user interface of the information processing device to display the obtained image information; and perform a printing process to cause the printer to print a composite image in which the image for composition indicated by the obtained image information is combined with a target image to be printed, in response to a print instruction with a print setting for image composition being output from an application program incorporated in the information processing device to the general-purpose print program.
Regarding Claim 13:
The prior art of record fails to disclose nor suggest in the claimed combinations a information processing device comprising: a user interface; and a controller including: a processor; and a non-transitory computer-readable storage medium storing an application program, a general-purpose print program incorporated in an operating system of the information processing device, and a support program conforming to a printer connected with the information processing device and supporting the general-purpose print program, the support program being not included in the operating system, the support program being configured to, when executed by the processor, cause the controller to: obtain image information from an external device connected with the information processing device, the image information indicating an image for composition registered in the external device; cause the user interface to display the obtained image information; and perform a printing process to cause the printer to print a composite image in which the image for composition indicated by the obtained image information is combined with a target image to be printed, in response to a print instruction with a print setting for image composition being output from the application program to the general-purpose print program.
Regarding Claim 14:
The prior art of record fails to disclose nor suggest in the claimed combinations a method implementable by a processor executing a support program on an information processing device, the support program conforming to a printer connected with the information processing device and supporting a general-purpose print program incorporated in an operating system of the information processing device, the support program being not included in the operating system, the method comprising: obtaining image information from an external device connected with the information processing device, the image information indicating an image for composition registered in the external device; causing a user interface of the information processing device to display the obtained image information; and performing a printing process to cause the printer to print a composite image in which the image for composition indicated by the obtained image information is combined with a target image to be printed, in response to a print instruction with a print setting for image composition being output from an application program incorporated in the information processing device to the general-purpose print program.
14. Claims 2-12 depend from allowable claims and, by virtue of their dependency, are also indicated as allowable subject matter.
Relevant Prior Art
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Itoh (US 2008/0266600 A1) discloses a print control apparatus includes a command section for causing a printing apparatus to execute a print job, the print job for printing a print subject image on a sheet, with a mark overlaying the sheet. Furthermore, the print control apparatus includes: an accepting section that accepts a processing condition for an image process of the mark, during a processing condition accepting period, which is set for every print job and is the period before an input of an executive instruction; and an image processing section that performs the image process of the mark in accordance with the processing condition during the processing condition accepting period. This makes it possible to prevent delay in initiation of printing, without excessive consumption of storage capacity of a storage device.
Conclusion
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL R MCLEAN whose telephone number is (571)270-1679. The examiner can normally be reached Monday-Thursday, 6AM - 4PM, PST.
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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/NEIL R MCLEAN/Primary Examiner, Art Unit 2681
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