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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/18/24 and 06/16/25 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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:
print API generation unit in claim 1 in Applicants Specification paragraph 0028
print data generation unit in claim 1 in Applicants Specification paragraph 0029
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.
Claim Rejections - 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.
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.
Claim 1 recites the limitation " the smallest unit" in line 6 of claim. There is insufficient antecedent basis for this limitation in the claim.
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 (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 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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobashi US 20060170948 in view of Rasmussen et al US 20020178187.
Regarding claim 1, Kobashi teaches A print data generation device that generates print data including a plurality of print-related commands using a template and field data including data of print elements to be inserted into merge fields of the template (Host computer (100) spread sheet processing, photo retouching, drawing, painting, presentation or text editing, and an application which creates a form template (also referred to as a variable template), acquires necessary data from data fields of each record of a database, associated with the form template, and combines them (referred to as overlay or merging), and they have a printing function for an operating system (OS). These applications use a predetermined interface (for example, GDI) provided by the OS when printing created application data such as document data and image data. That is, the general applications 101 send a predetermined output command in an OS-dependent format (for example, a GDI function) to an output module of the OS which provides the above-described interface to print created data. The form creation application is also provided with a function of outputting print output (GDI) in which a form template and necessary data field data are merged (fig 1 and paragraph 0056),
the template including one or more API call commands for generating the print-related commands (By a user checking this item, storing the setting, and performing print output from a form creation application (also referred to as a variable output application), which is a general application, the electronic document writer can determine that the electronic document file instructed to be imported is a variable template file. When outputting the document, the variable output application acquires output settings from the electronic document writer 102, which is the printer driver for an output destination. If variable acquisition setting is made, then, after outputting job start, the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record (paragraph 0149), and
the one or more API call commands being constituted by commands of the smallest unit not including repetitions, the number of which corresponds to the number of print elements, which is variable (When outputting the document, the variable output application acquires output settings from the electronic document writer 102, which is the printer driver for an output destination. If variable acquisition setting is made (the checkbox 3302 is checked), then, after outputting job start, the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record. (paragraph 0149)Note: an API is recorded for each record,
the print data generation device comprising:
a print API generation unit which, on the basis of the content of both the template and the field data or the content of the template, specifies, from the template, a range of API call commands for repeatedly executing processing a number of times corresponding to the variable number of print elements (the electronic document writer 102 spools the document outputted from the variable output application for each record (API call commands) as a tentative file, calculates the number of records spooled until the job end is received, and sets the calculated number of print records (print element) for the document spooled as tentative files (paragraph 0150 also see paragraph 0151 as an example)Note: API call commands are read as the record, see paragraph 0149 -the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record. Also, the document consists of template and field data, see paragraph 0149 and rejection above , and
(NB: outputting the variable output data to be printed is a repetitive process in a computer system).
a print data generation unit which, by executing the print data generation API generated by the print API generation unit, generates the print data including print-related commands into which the data of the print elements have been inserted (When outputting the document, the variable output application acquires output settings from the electronic document writer 102, which is the printer driver for an output destination. If variable acquisition setting is made (the checkbox 3302 is checked), then, after outputting job start, the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record (paragraph 0149).
Kobashi fails to teach generates a print data generation API including a plurality of API call commands by replacing the merge fields included in the API call commands, including repeat substitutions within the specified range, with the data of the print elements
Rasmussen et al teaches generates a print data generation API including a plurality of API call commands by replacing the merge fields included in the API call commands, including repeat substitutions within the specified range, with the data of the print elements (The template form fields are first submitted to the original web application's "action" CGI script. The fields arrive as a set of standard CGI "name=value" pairs. The original application processes 102 (or stores) the form fields as defined by the original application. The original web application calls the ESS API for merging form field values 104 (as listed in the exemplary original application CGI script listed at the end of this description) which merges the form field values into the newly uploaded template form to produce a merged form file. (paragraph 0067)Note: the ESS API replaces the merged fields of the original document, see paragraph 0066 for original document;
Therefore, it would have been obvious to a person with ordinary skill in the art to have modified Kobashi to include: generates a print data generation API including a plurality of API call commands by replacing the merge fields included in the API call commands, including repeat substitutions within the specified range, with the data of the print elements.
The reason of doing so would be to create a document with various information by merging fields with different information.
Regarding claim 2, Kobashi in view of Rasmussen et al teaches wherein the template includes a plurality of API call commands, has a hierarchical structure of the plurality of API call commands, and includes a repeat start flag on one layer of the hierarchy, and the print API generation unit specifies the range of the API call commands for executing the repeat substitutions on the basis of the repeat start flag and the hierarchical structure (Kobashi: the electronic document writer 102 compares the constant N, which indicates the total number of print records, and the variable n to determine whether import has ended in a condition that all the records are separated from one another (step S2007). As a result, if import of all the records has not ended yet (No)(repeat flag), then the process returns to step S2004 and repeats the above-described process (paragraph 0160).
Regarding claim 3, Kobashi in view of Rasmussen et al teaches wherein the print API generation unit specifies the API call commands included on a layer that includes the repeat start flag and layers there below as the range of the API call commands for executing the repeat substitutions (Kobashi: the variable n is incremented when print processing of the n-th record ends (step S2406). The process returns to step S2405 and repeats the print processing described above as far as the variable n is below the constant N (in the case of No at step S2407). (paragraph 0182).
Regarding claim 4, Kobashi in view of Rasmussen et al teaches wherein the print API generation unit specifies a styling instruction API call command and a print instruction API call command including a substitution rule for repeated array elements, among the API call commands included on the layer that includes the repeat start flag and the layers therebelow, as the range of the API call commands for executing the repeat substitutions (Kobashi: the variable n is incremented when print processing of the n-th record ends (step S2406). The process returns to step S2405 and repeats the print processing described above as far as the variable n is below the constant N (in the case of No at step S2407). (paragraph 0182) Note: the variable output application outputs an API (paragraph 0149) therefore, the variable data is read as API call command.
Regarding claim 5, Kobashi in view of Rasmussen et al teaches wherein the print API generation unit specifies the range of the API call commands for executing the repeat substitutions on the basis of both the types of the API call commands and the field data or the types of the API call commands (Kobashi: a variable template file is imported (step S2500). Next, the electronic document writer 102 substitutes the total number of print records set for a document based on the variable template file to be imported into a constant N (paragraph 0185). Note: the variable output application outputs an API (paragraph 0149) therefore, the variable data is read as API call command.
Regarding claim 6, Kobashi in view of Rasmussen et al teaches wherein the print API generation unit specifies all the API call commands from a print instruction API call command including a substitution rule for repeated array elements among the plurality of print elements included in the filed data through the API call command immediately before a print instruction API call command not including the substitution rule, and a styling instruction API call command existing before the print instruction API call command including the substitution rule, as the range of the API call commands for executing the repeat substitutions (Kobashi: When the variable template file is imported, the electronic document writer 102 converts fixed rendering information (information which does not change for each record) in the variable template to its own format as done in ordinary import processing, and writes (styling instruction), when a field area where the variable data is to be merged is assumed to be a variable area, the size and location of the variable area and information about a link to data field data in a database, for the variable attribute of an electronic document file (paragraph 0186). Note: the variable output application outputs an API (paragraph 0149) therefore, the variable data is read as API call command.
Regarding claim 7, Kobashi The print data generation device according to claim 1, wherein the template includes a plurality of API call commands and has a hierarchical structure of the plurality of API call commands, and the print API generation unit specifies the range of the API call commands for executing the repeat substitutions on the basis of both the types of the API call commands and the field data or the types of the API call commands, and the hierarchical structure (Kobashi: a variable template file is imported (step S2500). Next, the electronic document writer 102 substitutes the total number of print records set for a document based on the variable template file to be imported into a constant N (paragraph 0185). Note: the variable output application outputs an API (paragraph 0149) therefore, the variable data is read as API call command.
Regarding claim 8, Kobashi in view of Rasmussen et al teaches wherein the print API generation unit specifies, from among the API call commands included on an uppermost layer and layers there below of the hierarchical structure that includes a print instruction API call command including a substitution rule for repeated array elements among the plurality of print elements included in the filed data, a styling instruction API call command and the print instruction API call command including the substitution rule, as the range of the API call commands for executing the repeat substitutions (Kobashi: the total number of virtual records to be printed may be changed as appropriate according to the range to be printed (paragraph 0179). a variable template file is imported (step S2500). Next, the electronic document writer 102 substitutes the total number of print records set for a document based on the variable template file to be imported into a constant N (paragraph 0185). Note: the variable output application outputs an API (paragraph 0149) therefore, the variable data is read as API call command.
Regarding claim 9, Kobashi teaches a print data generation method for generating print data including a plurality of print-related commands using a template and field data including data of print elements to be inserted into merge fields of the template (Host computer (100) spread sheet processing, photo retouching, drawing, painting, presentation or text editing, and an application which creates a form template (also referred to as a variable template), acquires necessary data from data fields of each record of a database, associated with the form template, and combines them (referred to as overlay or merging), and they have a printing function for an operating system (OS). These applications use a predetermined interface (for example, GDI) provided by the OS when printing created application data such as document data and image data. That is, the general applications 101 send a predetermined output command in an OS-dependent format (for example, a GDI function) to an output module of the OS which provides the above-described interface to print created data. The form creation application is also provided with a function of outputting print output (GDI) in which a form template and necessary data field data are merged (fig 1 and paragraph 0056),,
the template including one or more API call commands for generating the print-related commands (By a user checking this item, storing the setting, and performing print output from a form creation application (also referred to as a variable output application), which is a general application, the electronic document writer can determine that the electronic document file instructed to be imported is a variable template file. When outputting the document, the variable output application acquires output settings from the electronic document writer 102, which is the printer driver for an output destination. If variable acquisition setting is made, then, after outputting job start, the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record (paragraph 0149), and the one or more API call commands being constituted by commands of the smallest unit not including repetitions, the number of which corresponds to the number of print elements, which is variable (When outputting the document, the variable output application acquires output settings from the electronic document writer 102, which is the printer driver for an output destination. If variable acquisition setting is made (the checkbox 3302 is checked), then, after outputting job start, the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record. (paragraph 0149)Note: an API is recorded for each record,
the print data generation method comprising: a first step in which a print API generation unit of a print data generation device specifies, from the template on the basis of the content of both the template and the field data or the content of the template, a range of API call commands for repeatedly executing processing a number of times corresponding to the variable number of print elements (the electronic document writer 102 spools the document outputted from the variable output application for each record (API call commands) as a tentative file, calculates the number of records spooled until the job end is received, and sets the calculated number of print records (print element) for the document spooled as tentative files (paragraph 0150 also see paragraph 0151 as an example)Note: API call commands are read as the record, see paragraph 0149 -the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record. Also, the document consists of template and field data, see paragraph 0149 and rejection above, and
a second step in which a print data generation unit of the print data generation device executes the print data generation API generated by the print API generation unit in order to generate the print data including print-related commands into which the data of the print elements have been inserted (When outputting the document, the variable output application acquires output settings from the electronic document writer 102, which is the printer driver for an output destination. If variable acquisition setting is made (the checkbox 3302 is checked), then, after outputting job start, the variable output application outputs an API (its own API or its own command which is transferred without being processed by the OS may be possible), which is a variable output, and a record end API (or command) for each record (paragraph 0149).
Kobashi fails to teach generates a print data generation API including a plurality of API call commands by replacing the merge fields included in the API call commands, including repeat substitutions within the specified range, with the data of the print elements;
Rasmussen et al teaches generates a print data generation API including a plurality of API call commands by replacing the merge fields included in the API call commands, including repeat substitutions within the specified range, with the data of the print elements (The template form fields are first submitted to the original web application's "action" CGI script. The fields arrive as a set of standard CGI "name=value" pairs. The original application processes 102 (or stores) the form fields as defined by the original application. The original web application calls the ESS API for merging form field values 104 (as listed in the exemplary original application CGI script listed at the end of this description) which merges the form field values into the newly uploaded template form to produce a merged form file. (paragraph 0067)Note: the ESS API replaces the merged fields of the original document, see paragraph 0066 for original document;
Therefore, it would have been obvious to a person with ordinary skill in the art to have modified Kobashi to include: generates a print data generation API including a plurality of API call commands by replacing the merge fields included in the API call commands, including repeat substitutions within the specified range, with the data of the print elements.
The reason of doing so would be to create a document with various information by merging fields with different information.
Conclusion
Any inquiry concerning this communication should be directed to Michael Burleson whose telephone number is (571) 272-7460 and fax number is (571) 273-7460. The examiner can normally be reached Monday thru Friday from 8:00 a.m. – 4:30p.m. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Akwasi Sarpong can be reached at (571) 270- 3438.
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Michael Burleson
Patent Examiner
Art Unit 2681
Michael Burleson
September 30, 2026
/MICHAEL BURLESON/
/AKWASI M SARPONG/ SPE, Art Unit 2681 10/01/2026
