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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: first setting unit, second setting unit, control unit in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
A review of the specification shows that the following appears to be the corresponding structure described in the specification: Published specification in paragraph [0043] CPU 212 controls the entire operation of the client terminal.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hosomizo et al. (US 2023/0315348 A1) in view of Saito (US 2003/0202213 A1).
With respect to Claim 1, Hosomizo’348 shows a non-transitory computer-readable storage medium storing an application program which causes an information processing apparatus to perform a control method (figure 1 PC 100),
the application program being configured to support a general-purpose printer driver stored in the information processing apparatus (figure 1, general-purpose printing program 41 and supporting program 42, paragraphs [0030]-[0031] ), the control method comprising:
setting a setting value of a first function which transmits a file of a predetermined format output by a document generation application to a printing apparatus without converting the format of the file (paragraphs [0033]-[0034] registration-enable-disable information 46 indicating a setting of whether the pass-through registration is to be performed); and in a case where the first function has been set enabled (paragraph [0036] printer receives the print job including print data and print settings from the external device, and executes printing in accordance with the received print settings. ) [ ].
Hosomizo’348 does not specifically show setting a setting value of a second function which prints information appended with use of a predetermined function provided by the document generation application; and in a case where the first function has been set enabled, causing print data generated based on the set setting value of the second function to be transmitted.
Saito’213 shows setting a setting value of a second function which prints information appended with use of a predetermined function provided by the document generation application (paragraph [0007] an application of Adobe enables an annotation to be added for printing to a PDF document and can switch back and forth between printing and no-printing of the annotation added to the document during printing); and in a case where the first function has been set enabled (paragraphs [0007] and [0017] printing is a PDF), causing print data generated based on the set setting value of the second function to be transmitted (paragraph [0007] and [0017] printing is a PDF, an application of Adobe enables an annotation to be added to a PDF document for printing and can switch back and forth between printing and no-printing of the annotation added to the document during printing).
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 Hosomizo’348 to include setting a setting value of a second function which prints information appended with use of a predetermined function provided by the document generation application; and in a case where the first function has been set enabled, causing print data generated based on the set setting value of the second function to be transmitted method taught by Saito’213. The suggestion/motivation for doing so would have been to improve the system’s ability to be able to permit enabling or disabling an annotation thereby improving the operability (paragraphs [0121]-[0122]).
With respect to Claim 2, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the control method further comprises, in a case where the second function has been set disabled, causing the file of the predetermined format with the information generated by the document generation application not appended thereto to be transmitted as the print data (in Saito’213: paragraphs [0007]-[0017] disabling adding the annotation for printing).
With respect to Claim 3, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the control method further comprises: in a case where the second function has been set disabled (in Saito’213: paragraphs [0007]-[0017] disabling adding the annotation for printing), based on the file of the predetermined format output by the document generation application, generating the file of the predetermined format with the information not added thereto; and causing the generated file to be transmitted as the print data (in Saito’213: paragraphs [0007]-[0017] disabling adding the annotation for printing and not printing the annotation).
With respect to Claim 4, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 3, wherein the control method further comprises, based on capability information about the printing apparatus, determining whether to perform generating the file of the predetermined format with the information not added thereto (in Saito’213: paragraphs [0007]-[0017] disabling adding the annotation for printing and not printing the annotation).
With respect to Claim 5, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the control method further comprises, based on a setting value of a setting item concerning printing of the information set in a print setting screen provided by the document generation application being a predetermined value, setting the first function disabled (in Hosomizo’348: paragraphs [0033]-[0034] setting indicating of whether the pass-through function for each of the supporting programs is set to be valid or not).
With respect to Claim 6, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the control method further comprises: acquiring a setting value of a setting item concerning printing of the information set in a print setting screen provided by the document generation application (in Hosomizo’348: paragraphs [0033]-[0034] setting indicating of whether the pass-through function for each of the supporting programs is set to be valid or not, paragraph [0036] printer receives the print job including print data and print settings from the external device, and executes printing in accordance with the received print settings); and based on the acquired setting value, setting a setting value of the second function (in Saito’213: paragraphs [0007]-[0017] enabling or disabling adding the annotation for printing and not printing the annotation).
With respect to Claim 7, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the predetermined format is Portable Document Format (PDF) (in Hosomizo’348: general purpose printing program 41 has a pass-through function in which PDF data corresponding to image data to the supporting program without generating intermediate data, that is the image data is not processed. PDF is an example of a predetermined file format).
With respect to Claim 8, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the general-purpose printer driver is a driver provided by a vendor which provides an operating system of the information processing apparatus (in Hosomizo’348: figure 1 general-purpose printing program 41).
With respect to Claim 9, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 8, wherein the application program is provided by a vendor which provides the printing apparatus (in Hosomizo’348: in paragraph [0032] supporting program 42 may be a program provided for each of various types of the printers by the vendor of each of the printers).
With respect to Claim 10, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 1, wherein the control method further comprises: in a case where the first function is currently set disabled, receiving intermediate data that is based on a file output by the document generation application; and causing print data that is based on data obtained by converting the intermediate data into the predetermined format to be transmitted (in Hosomizo’348: paragraph [0056] in a case where the pass-through registration is not performed/disabled by the supporting program 42 the general purpose printing program 41 generates the intermediate data based on the image data received from the information application 43, The intermediate data is, for example, XSP data).
With respect to Claim 11, the combination of Hosomizo’348 and Saito’213 show the non-transitory computer-readable storage medium according to claim 10, wherein the intermediate data is XML Paper Specification (XPS) data (in Hosomizo’348: paragraph [0056] in a case where the pass-through registration is not performed by the supporting program 42 the general purpose printing program 41 generates the intermediate data based on the image data received from the information application 43, The intermediate data is, for example, XSP data).
With respect to Claim 12, rejection analogous to those presented for claim 1, are applicable.
With respect to Claim 13, Hosomizo’348 shows an information processing apparatus (figure 1 PC 100) storing a general-purpose printer driver and a print setting application for enhancing a function of the general-purpose printer driver (figure 1, general-purpose printing program 41 and supporting program 42, paragraphs [0030]-[0031] ), the information processing apparatus comprising:
a first setting unit configured to set a setting value of a first function which transmits a file of a predetermined format output by a document generation application to a printing apparatus without converting the format of the file (paragraphs [0033]-[0034] registration-enable-disable information 46 indicating a setting of whether the pass-through registration is to be performed); [ ] a control unit configured to, in a case where the first function has been set enabled (paragraph [0036] printer receives the print job including print data and print settings from the external device, and executes printing in accordance with the received print settings. ), [ ].
Hosomizo’348 does not specifically show a second setting unit configured to set a setting value of a second function which prints information appended with use of a predetermined function provided by the document generation application; and a control unit configured to, in a case where the first function has been set enabled, cause print data generated based on the setting value set by the second setting unit to be transmitted.
Saito’213 shows a second setting unit configured to set a setting value of a second function which prints information appended with use of a predetermined function provided by the document generation application (paragraph [0007] an application of Adobe enables an annotation to be added for printing to a PDF document and can switch back and forth between printing and no-printing of the annotation added to the document during printing); and a control unit configured to, in a case where the first function has been set enabled (paragraphs [0007] and [0017] printing is a PDF), cause print data generated based on the setting value set by the second setting unit to be transmitted (paragraph [0007] and [0017] printing is a PDF, an application of Adobe enables an annotation to be added to a PDF document for printing and can switch back and forth between printing and no-printing of the annotation added to the document during printing).
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 Hosomizo’348 to include a second setting unit configured to set a setting value of a second function which prints information appended with use of a predetermined function provided by the document generation application; and a control unit configured to, in a case where the first function has been set enabled, cause print data generated based on the setting value set by the second setting unit to be transmitted method taught by Saito’213. The suggestion/motivation for doing so would have been to improve the system’s ability to be able to permit enabling or disabling an annotation thereby improving the operability (paragraphs [0121]-[0122]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakagawa (US 2020/0089452 A1): shows in paragraph [0079] The print command generation unit 312 further generates print attribute information compliant with the IPP based on settings specified by the PrintTicket 304 included in the XPS spool file. If the PDL data compliant with the IPP and the PrintTicket 304 are properly interpretable and the print job can be properly output, the print job may, be transmitted to the printer 200 without change. Specifically, the common printer driver 1054 transmits the print job processed by the print command generation unit 312 to the print manager 318 so that the print job is transmitted to the printer 200 via the communication unit 319. Does not have an option to add annotations to the print job as a setting.
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.
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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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/IRIANA CRUZ/Primary Examiner, Art Unit 2681
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