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 .
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 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 § 2146 et seq. 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).
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Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,197,796. Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims 1-7 fall within the scope of instant claims 1-7. Below are charts illustrating the similarity between instant claims 1-7 and reference claims 1-7 of U.S. Patent No. 12,197,796.
Instant Claim 1
Reference Claim 1 of USP 12,197,796
An image forming apparatus comprising:
An image forming apparatus comprising:
at least one memory and at least one processor which function as:
at least one memory and at least one processor which function as:
an authentication processing unit configured to perform authentication processing using user information;
a first authentication processing unit configured to perform first authentication processing using user information;
an executing unit configured to execute a stored job, which is stored in a storage device in association with a user based on a success of the authentication processing using user information input through a user operation on the image forming apparatus by the authentication processing unit without an instruction for executing the stored job from the user;
an executing unit configured to execute a stored job, which is stored in a storage device in association with a user based on a success of the first authentication processing using user information input through a user operation on the image forming apparatus by the first authentication processing unit without an instruction for executing the stored job from the user;
a second authentication processing unit configured to perform second authentication processing for starting communication with an information processing terminal;
a receiving unit configured to receive a job execution request to execute a second job different from the stored job from an information processing terminal; and
a receiving unit configured to receive a job execution request to execute a job different from the stored job from the information processing terminal,
wherein the receiving unit receives the job execution request from the information processing terminal with which the second authentication processing is successful; and
a control unit configured to perform control such that the second job is executed in response to receiving the job execution request from the information processing terminal but the stored job is not executed without the instruction for executing the stored job from the user in a case where the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
a control unit configured to perform control not to execute the stored job by the executing unit without the instruction for executing the stored job from the user even if the first authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
Instant Claim 2
Reference Claim 2 of USP 12,197,796
2. (Original) The image forming apparatus according to claim 1, wherein the job execution request includes user information.
2. The image forming apparatus according to claim 1, wherein the job execution request includes user information.
Instant Claim 3
Reference Claim 3 of USP 12,197,796
3. The image forming apparatus according to claim 1, wherein in a case where the job execution request includes control information for restricting execution of another job than the second job, the control unit performs control not to execute the stored job by the executing unit without the instruction for executing the stored job from the user even if the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
3. The image forming apparatus according to claim 1, wherein in a case where the job execution request includes control information for restricting execution of another job than the job related to the job execution request, the control unit performs control not to execute the stored job by the executing unit without the instruction for executing the stored job from the user even if the first authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
Instant Claim 4
Reference Claim 4 of USP 12,197,796
4. The image forming apparatus according to claim 3, wherein in a case where the job execution request does not include the control information, the control unit performs control to execute the stored job by the executing unit without the instruction for executing the stored job from the user based on a success of the authentication processing using user information that is received from the information processing terminal together with the job execution request.
4. The image forming apparatus according to claim 3, wherein in a case where the job execution request does not include the control information, the control unit performs control to execute the stored job by the executing unit without the instruction for executing the stored job from the user based on a success of the first authentication processing using user information that is received from the information processing terminal together with the job execution request.
Instant Claim 5
Reference Claim 5 of USP 12,197,796
5. The image forming apparatus according to claim 1, wherein in a case where the job execution request includes identification information about the information processing terminal from which the job execution request is transmitted, the control unit performs control not to execute the stored job by the executing unit without the instruction for executing the stored job from the user even if the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
5. The image forming apparatus according to claim 1, wherein in a case where the job execution request includes identification information about the information processing terminal from which the job execution request is transmitted, the control unit performs control not to execute the stored job by the executing unit without the instruction for executing the stored job from the user even if the first authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
Instant Claim 6
Reference Claim 6 of USP 12,197,796
6. The image forming apparatus according to claim 5, wherein in a case where the job execution request does not include the identification information, the control unit performs control to execute the stored job by the executing unit without the instruction for executing the stored job from the user based on a success of the authentication processing using user information that is received from the information processing terminal together with the job execution request.
6. The image forming apparatus according to claim 5, wherein in a case where the job execution request does not include the identification information, the control unit performs control to execute the stored job by the executing unit without the instruction for executing the stored job from the user based on a success of the first authentication processing using user information that is received from the information processing terminal together with the job execution request.
Instant Claim 7
Reference Claim 7 of USP 12,197,796
7. The image forming apparatus according to claim 1, wherein in the case where the job execution request is received and the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful, the control unit performs control to execute the second job.
7. The image forming apparatus according to claim 1, wherein in the case where the job execution request is received and the first authentication processing using user information that is received from the information processing terminal together with the job execution request is successful, the control unit performs control to execute the job related to the job execution request.
Instant Claim 8
Reference Claim 1 of USP 12,197,796
An image forming apparatus comprising:
An image forming apparatus comprising:
at least one memory and at least one processor which function as:
at least one memory and at least one processor which function as:
an authentication processing unit configured to perform authentication processing using user information;
a first authentication processing unit configured to perform first authentication processing using user information;
an executing unit configured to execute a stored job, which is stored in a storage device in association with a user based on a success of the authentication processing using user information input through a user operation on the image forming apparatus by the authentication processing unit without an instruction for executing the stored job from the user;
an executing unit configured to execute a stored job, which is stored in a storage device in association with a user based on a success of the first authentication processing using user information input through a user operation on the image forming apparatus by the first authentication processing unit without an instruction for executing the stored job from the user;
wherein the at least one memory and the at least one processor further function as second authentication processing unit configured to perform second authentication processing for starting communication with the information processing terminal (From dependent claim 8, reordered for comparison)
a second authentication processing unit configured to perform second authentication processing for starting communication with an information processing terminal;
a receiving unit configured to receive a job execution request to execute a second job different from the stored job from an information processing terminal; and
a receiving unit configured to receive a job execution request to execute a job different from the stored job from the information processing terminal,
wherein the receiving unit receives the job execution request from the information processing terminal with which the second authentication processing is successful (From dependent claim 8, reordered for comparison)
wherein the receiving unit receives the job execution request from the information processing terminal with which the second authentication processing is successful; and
a control unit configured to perform control such that the second job is executed in response to receiving the job execution request from the information processing terminal but the stored job is not executed without the instruction for executing the stored job from the user in a case where the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
a control unit configured to perform control not to execute the stored job by the executing unit without the instruction for executing the stored job from the user even if the first authentication processing using user information that is received from the information processing terminal together with the job execution request is successful.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 7, 10, 12, and 13 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawanishi (U.S.P.G. Pub. No. 2019/0361635).
Regarding claim 1, Kawanishi (U.S.P.G. Pub. No. 2019/0361635) discloses:
An image forming apparatus comprising:
at least one memory and at least one processor (paragraph [0036]) which function as:
an authentication processing unit configured to perform authentication processing using user information (paragraph [0039], authentication unit 303);
an executing unit configured to execute a stored job, which is stored in a storage device in association with a user (see, for example, paragraph [0004] regarding storage in association with user data) based on a success of the authentication processing using user information input through a user operation on the image forming apparatus by the authentication processing unit without an instruction for executing the stored job from the user (Figure 21, paragraphs [0086]-[0087], the job is automatically printed at login after authentication (YES at 2103 leads to S2111));
a receiving unit configured to receive a job execution request to execute a second job different from the stored job from an information processing terminal (paragraph [0049]-[0052], for example, the secure job described from the PC); and
a control unit configured to perform control such that the second job is executed in response to receiving the job execution request from the information processing terminal but the stored job is not executed without the instruction for executing the stored job from the user in a case where the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful (Figure 21, NO at S2103, paragraphs [0086]-[0092], the user logs in and then instructs printing of the stored job; the job is not automatically printed after authentication if automatic printing is off and printing instead occurs at S2110 after instruction of printing).
Regarding claim 2, Kawanishi additionally discloses:
wherein the job execution request includes user information (paragraphs [0074], [0078], print job received from PC 101 includes bibliographic information including user name)
Regarding claim 7, Kawanishi additionally discloses:
wherein in the case where the job execution request is received and the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful (Figure 21, paragraphs [0049]-[0052], [0074]-[0078], [0086], user is authenticated and a print instruction is issued), the control unit performs control to execute the second job (paragraph [0094]; Fig. 21, steps S2106-S2110, the job is printed).
Regarding claim 10, Kawanishi additionally discloses:
wherein the control unit performs control such that the second job is executed without a user operation on the image forming apparatus after receiving the job execution request to execute the second job but the stored job is not executed without the instruction for executing the stored job from the user in the case where the authentication processing using user information that is received from the information processing terminal together with the job execution request is successful (Figure 21, YES at S2103, paragraphs [0086]-[0092], the user logs into the apparatus and the job is printed because the automatic printing setting is set on leading to S2111).
Regarding claim 12, the structural elements of apparatus claim 1 perform all of the steps of method claim 12. Thus, claim 12 is rejected for the same reasons discussed in the rejection of claim 1.
Regarding claim 13, arguments analogous to claim 1 are applicable. The computer readable medium is explicitly taught as evidenced by paragraph [0111] of the Kawanishi reference.
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.
Claim(s) 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kawanishi in view of Takahashi et al. (U.S.P.G. Pub. No. 2006/0069918).
Regarding claim 8, Kawanishi discloses the apparatus of the parent claim (claim 1).
Kawanishi does not explicitly disclose:
wherein the at least one memory and the at least one processor further function as second authentication processing unit configured to perform second authentication processing for starting communication with the information processing terminal, and
wherein the receiving unit receives the job execution request from the information processing terminal with which the second authentication processing is successful
Takahashi et al. (U.S.P.G. Pub. No. 2006/0069918) discloses:
wherein the at least one memory and the at least one processor further function as second authentication processing unit configured to perform second authentication processing for starting communication with the information processing terminal (Abstract, claim 27, paragraphs [0041], [0170], authentication is done when using the application program at the terminal), and
wherein the receiving unit receives the job execution request from the information processing terminal with which the second authentication processing is successful (paragraphs [0091]-[0096], [0170], [0186], the authenticated job request is received)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Takahashi with the system of Kawanishi such that the system would have been configured to include second authentication processing to perform second authentication processing for starting communication with the information processing terminal and receiving the job execution request from the information processing terminal with which the second authentication processing is successful as described in Takahashi. The suggestion/motivation would have been in order to implement a system capable of “improving the operability of a user while ensuring the security of a document processing environment” (paragraph [0017] of the Takahashi et al. reference).
Regarding claim 11, Kawanishi discloses the apparatus of the parent claim (claim 1).
Kawanishi does not explicitly disclose:
wherein, in the authentication processing for the second job, user information that is received from the information processing terminal together with the job execution request is used instead of user information input through a user operation on the image forming apparatus.
Takahashi et al. discloses:
wherein, in the authentication processing for the second job, user information that is received from the information processing terminal together with the job execution request is used instead of user information input through a user operation on the image forming apparatus (Abstract, claim 27, paragraphs [0041], [0091]-[0096], [0170], [0186], authentication for the job is done when using the application program at the terminal)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Takahashi with the system of Kawanishi such that the system would have been configured such that in the authentication processing for the second job, user information that is received from the information processing terminal together with the job execution request is used instead of user information input through a user operation on the image forming apparatus as described in Takahashi. The suggestion/motivation would have been in order to implement a system capable of “improving the operability of a user while ensuring the security of a document processing environment” (paragraph [0017] of the Takahashi et al. reference).
Claim(s) 9 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kawanishi in view of Koizumi (U.S.P.G. Pub. No. 2013/0155452).
Regarding claim 9, Kawanishi discloses the apparatus of the parent claim (claim 1).
Kawanishi does not explicitly disclose:
wherein the second job is a scan job.
Koizumi (U.S.P.G. Pub. No. 2013/0155452) discloses:
wherein the second job is a scan job (paragraph [0049], the user can execute a reading (scan) job via the client terminal after being authenticated)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Koizumi with the system of Kawanishi such that the second job was a scan job as described in Koizumi. The suggestion/motivation would have been in order to implement a system in which “complicated repeated operation is unnecessary and it is possible to improve convenience for the user” (paragraph [0052] of the Koizumi reference).
Regarding claim 14, the apparatus of claim 14 is analogous to the apparatus of claim 1, except for the requirement that the second job be a “scan job”. However, for the reasons explained above in regards to claim 9, Koizumi discloses wherein the second job is a scan job (paragraph [0049], the user can execute a reading (scan) job via the client terminal after being authenticated).
As previously noted, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Koizumi with the system of Kawanishi such that the second job was a scan job as described in Koizumi. The suggestion/motivation would have been in order to implement a system in which “complicated repeated operation is unnecessary and it is possible to improve convenience for the user” (paragraph [0052] of the Koizumi reference).
Consequently, claim 14 is rejected under 35 U.S.C. 103 for the reasons described in the rejections of claims 1 and 9 as unpatentable over Kawanishi in view of Koizumi.
Regarding claim 15, the structural elements of apparatus claim 14 perform all of the steps of method claim 15. Thus, claim 15 is rejected for the same reasons discussed in the rejection of claim 14.
Regarding claim 16, arguments analogous to claim 14 are applicable. The computer readable medium is explicitly taught as evidenced by paragraph [0111] of the Kawanishi reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R WALLACE whose telephone number is (571)270-1577. The examiner can normally be reached Monday-Friday from 8:30-5 PM.
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/JOHN R WALLACE/ Primary Examiner, Art Unit 2682
