Part III DETAILED ACTION
1. The present application is being examined under the pre-AIA first to invent provisions. This application has been examined. Claims 1-13 are pending in this application.
2. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. Applicant should update the cross-references recited to indicate that cited reference have been issued.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
3. Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable
over claims 1-18 of U.S. Patent No. 12,192,421. Although the claims at issue are not identical, they
are not patentably distinct from each other because claims 1-13 of the instant application are
anticipated recited by the limitations of claims 1-18 of ‘421, such claim 1 of the instant application an
image forming apparatus comprising: a sheet discharge roller configured to discharge a sheet (reads
on claim 4 of ‘421); a document scanner including; a document glass, an image scanner configured to
scan an image on the document supported by the document glass, and a document cover configured
supported by glass, the pivotally movable about a cover pivot axis along with a first direction between
a closed position, in which the document cover covers the document glass, and an open position, in
which the document cover uncovers the document glass (reads on claim 1 of ‘421); an NFC indication
located at the document cover (reads on fig. 1 of claim 1 of ‘421); and a USB port; wherein the USB
port and the NFC indication are located closer to a front side of the image forming apparatus than the
sheet discharge roller is to the front side of the image forming apparatus in the rear-to-front direction
(reads on claims 1-8 of ‘421, the USM port and NFC indication can be placed within different location
of the document cover).
Although the conflicting claims are not identical, they are not patentably distinct from each other
because features of claim 1 of the instant application read on the features of claims 1-8 of ‘421.
Therefore. It would have been obvious to one of ordinary skill in the art at the effective time of the
invention to combine the features of claims 1-8 of '421 to create an image processing apparatus as
recited in claim 1 of the instant application, thereby creating an apparatus that uses a NFC to detect
proximity, since it is well known in the art to use a NFC to detect the proximity of a user to a device.
With regard to claims 2-13 of the instant application are covered by the limitations of
claims 2-18 and additional features not describe in ‘421 are well known features incorporated into an
image processing apparatus. Therefore. It would have been obvious to one of ordinary skill in the art
at the effective time of the invention to combine the features of claims 2-13 of '421 with additional well
known features in order to improve and allow the image processing apparatus to add additional
features well known to be used in an image processing apparatus.
4. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Gabriel I. Garcia whose telephone number is (571)
272-7434. The examiner can normally be reached Monday-Thursday from 7:30 AM-6:00 PM.. The fax
phone number for this group is (571) 273-8600.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Benny Tieu can be reached on (571) 272-7490. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.
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800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Any inquiry of a general nature or relating to the status of this application should be
directed to the Group receptionist whose telephone number is (571) 272-2600.
/Gabriel I Garcia/
Primary Examiner, Art Unit 2682
August 08, 2026
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