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 .
Claims 1 – 20 are pending in this application.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/18/2024 was filed in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the information disclosure statement is being considered by the examiner.
Applicant has provided an explanation of relevance of cited document(s) JP—4534823 B2 on pages 1 - 2 of the specification.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1 – 7 and 15 - 20 are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1 – 7 and 15 - 20 are rejected under 35 U.S.C. 101, because the claimed invention directed to abstract idea without significantly more. The claim recites “An information processing system including an image forming apparatus configured to print a print image on a medium, an information processing apparatus, and a cutting machine, the information processing system comprising: at least one memory and at least one processor which function as : a setting unit configured to set a cutting region in which the cutting machine cuts the medium on which the print image has been printed; and a print image generation unit configured to generate, from an input image, the print image not including an image outside a cutting region”.
The claim limitation of “a setting unit configured to set a cutting region in which the cutting machine cuts the medium on which the print image has been printed“, as drafted, is a process that, under its broadest reasonable interpretation, cover performance of the limitation in the human activity but for the recitation of generic computer component. That is, other than reciting “information processing system”, “image forming apparatus”, “cutting machine” and “memory” nothing in the claim element precludes the step from practically performed in human activity. For example, but for the ““information processing system”, “image forming apparatus”, “cutting machine” and “memory” language, “set” in the content of this claim encompass an user to draw, with a pencil, a broken-line region/range in order to fold a printed paper.
Similarly, the limitation of “a print image generation unit configured to generate, from an input image, the print image not including an image outside a cutting region”, as drafted, is a process that, under its broadest reasonable interpretation, cover performance of the limitation in the human activity but for the recitation of generic computer component. That is, other than reciting information processing system”, “image forming apparatus”, “cutting machine”, “processor” and “memory” nothing in the claim element precludes the step from practically performed in human activity. For example, but for the information processing system”, “image forming apparatus”, “cutting machine”, “processor” and “memory” language, “generate” in the content of this claim encompass the user to fold the printed paper into 3 parts and show the only the center one hiding the others two.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the human activity but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using an information processing system, image forming apparatus and cutting machine to perform the set and generate steps.
The processor in first step is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform set and generate steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Claim Interpretation/Rejection - 35 USC §112
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.
Claim limitations “Setting unit”, “Print Image Generation Unit”, “First Acquisition Unit”, “Warning Notification Unit”, “Second Acquisition Unit”, “Giving Unit” have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “unit” coupled with merely functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1 – 7 and 15 - 20 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Setting Unit is read by the Examiner as item 505 “Cutting Condition Setting Unit” of Fig. 5, in which is configured to receive user input, Specification on ¶0065 and ¶0106.
Print Image Generation Unit is read by the Examiner as being item 338 “Image Generation Unit 338” of Fig. 3, in which is controlled by a CPU, Specification on ¶0040 and ¶0047.
Claims contain limitations ‘First Acquisition Unit’, Warning Notification Unit’, ‘Second Acquisition Unit’ and ‘Giving Unit’, however the specification does not mention the terms " First Acquisition Unit, ‘Warning Notification Unit’, ‘Second Acquisition Unit’ and ‘Giving Unit’. Although there is support for the steps and process of acquiring, notifying and giving, there is a lack of support for each of their respective units. Therefore, one cannot determine the further features of the sections besides what is described in the claims. As a result of a 112(f) identification in regards to the sections, there needs to be more information to identify what the sections comprise and action they performs.
Consequently, claims 1 – 7 and 15 - 20 are rejected under 35 U.S.C 112 (b) as indefinite for referring back to an element in the specification which is not clearly linked.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 ets eq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1- 4, 8 - 11 and 15 - 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ichikawa (U.S PreGrant Publication No. 2023/0034261 A1, hereinafter ‘Ichikawa’).
With respect to claim 1, Ishikawa teaches an information processing system (e.g., having at least a PC 1 and a printer 3 constitute a system, Fig. 1) including an image forming apparatus (e.g., said printer 3, Fig. 1) configured to print a print image on a medium (e.g., configured to print image on sheets, ¶0038), an information processing apparatus (e.g., said PC 1, ¶0031), and a cutting machine (e.g., a cutter 35, ¶0038, ¶0042), the information processing system comprising: at least one memory (e.g., a memory 12, Fig. 1) and at least one processor (e.g., a controller 10 / CPU 11, Fig. 1) which function as : a setting unit configured to set a cutting region in which the cutting machine cuts the medium on which the print image has been printed (e.g., identifying a cutting area(s) in which the cutter cuts the sheet on which the image has been printed, ¶0084 - ¶0088 & ¶0095); and a print image generation unit configured to generate, from an input image, the print image not including an image outside a cutting region (e.g., generate a print image, not including the margins, that correspond to the specified cutting area(s), ¶0037, ¶0042, ¶0053, ¶0085 - ¶0099, ¶0122, ¶0140, Fig. 12 & Fig. 13).
With respect to claim 2, Ishikawa teaches the information processing system according to claim 1, wherein the at least one memory and the at least one processor further function as: a first acquisition unit configured to acquire a cuttable region of the cutting machine; and a warning notification unit configured to notify a warning in a case where the cutting region does not fall within the cuttable region (e.g., this corresponds to the cutting area, ¶0084 - ¶0088 & ¶0095; and further involved when cutting area is not accepted, ¶0062, ¶0149).
With respect to claim 3, Ishikawa teaches the information processing system according to claim 1, wherein the at least one memory and the at least one processor further function as: a second acquisition unit configured to acquire a setting related to printing of the input image, wherein the setting unit sets the cutting region on a basis of the setting acquired by the second acquisition unit (e.g. acquiring setting related to printing and cutting settings, Fig. 4, Fig. 7, Fig. 9).
With respect to claim 4, Ishikawa teaches the information processing system according to claim 3, wherein, in a case where the setting acquired by the second acquisition unit is a setting in which an image outside the cuttable region is not to be printed, the setting unit sets the cuttable region as the cutting region (e.g., If setting cannot be set, then change/edit the setting, ¶0036, ¶0062, ¶0149).
With respect to claim 8, Ichikawa notes that the invention may be realized through the execution by a CPU (e.g., a computer executed, ¶0005) of instruction codes (e.g. a set of computer-readable instruction, ¶0005) stored in a non-transitory computer readable storage medium (stored in a non-transitory computer-readable storage medium, ¶0005). The further limitations are met by the teachings as previously discussed with respect to claim 1.
With respect to claims 9 - 11, Ichikawa notes that the invention may be realized through the execution by a CPU (e.g., a computer executed, ¶0005) of instruction codes (e.g. a set of computer-readable instruction, ¶0005) stored in a non-transitory computer readable storage medium (stored in a non-transitory computer-readable storage medium, ¶0005). The further limitations are met by the teachings as previously discussed with respect to claim 2 – 4, respectively.
With respect to claims 15 - 17, these are apparatus claims corresponding to the system claim 1, 3 and 4, respectively. Therefore, this is rejected for the same reasons as the system claim 1, 3 and 4, respectively.
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 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 5 - 7, 12 - 14 and 18 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa in view of Kimura (U.S PreGrant Publication No. 2014/0154030 A1, hereinafter ‘Kimura’).
With respect to claim 5, Ishikawa teaches the information processing system according to claim 3, but fails to teach wherein the at least one memory and the at least one processor further function as: a giving unit configured to give a cutting line to an image to be cut according to a user operation, wherein, in a case where the setting acquired by the second acquisition unit is a setting in which an image outside of the cutting line is not to be printed, the setting unit sets inside of the cutting line as the cutting region.
However, in the same field of endeavor of printers and cutting sheets, the mentioned claimed limitations are well-known in the art as evidenced by Kimura. In general, Kimura teaches wherein the at least one memory and the at least one processor further function as: a giving unit configured to give a cutting line to an image to be cut according to a user operation, wherein, in a case where the setting acquired by the second acquisition unit is a setting in which an image outside of the cutting line is not to be printed, the setting unit sets inside of the cutting line as the cutting region (e.g., this is merely allowing the user to readjust/edit the cutting line until region is satisfied, Figs. 14 – 17F, ¶0148 with ¶0213 - ¶0220).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the information processing system of Ichikawa as taught by Kimura since Kimura suggested within ¶0148 with ¶0213 - ¶0220 and Figs. 14 – 17F that such modification would allow the user to manually shift the margins until criteria falls in order to generate the image without non-image portions based on layout.
With respect to claim 6, Ishikawa in view of Kimura teaches the information processing system according to claim 5, wherein Kimura teaches, in a case of setting inside of the cutting line as the cutting region, the setting unit sets a margin inside of the cutting line according to a user operation (e.g., this is merely allowing the user to readjust/edit the cutting line within margins until region is satisfied, Figs. 14 – 17F, ¶0148 with ¶0212 - ¶0220).
With respect to claim 7, Ishikawa in view of Kimura teaches the information processing system according to claim 5, wherein Kimura teaches, in a case of setting outside of the cutting line as the cutting region, the setting unit gives a fixed amount of image protrusion to outside of the cutting line according to a user operation (e.g., it’s up to the user to specify/set/readjust a cutting amount, ¶0107, ¶0110, ¶0148).
With respect to claims 12 - 14, Ichikawa notes that the invention may be realized through the execution by a CPU (e.g., a computer executed, ¶0005) of instruction codes (e.g. a set of computer-readable instruction, ¶0005) stored in a non-transitory computer readable storage medium (stored in a non-transitory computer-readable storage medium, ¶0005). The further limitations are met by the teachings as previously discussed with respect to claim 5 – 7, respectively.
With respect to claims 18 - 20, these are apparatus claims corresponding to the system claims 5 – 7, respectively. Therefore, these are rejected for the same reasons as the system claim 5 – 7, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN M GUILLERMETY whose telephone number is (571)270-3481. The examiner can normally be reached 9:00AM - 5:00PM.
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/JUAN M GUILLERMETY/ Primary Examiner, Art Unit 2682
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