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 status in the amendment received on 8/12/2026:
Claims 1 and 8 have been amended.
Claims 1-8 are pending.
Response to Amendments
Applicant’s amendments have been considered and in response to the amendments:
The previous objection to the title of the specification has been withdrawn.
The previous 112(b) rejections have been withdrawn.
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive. Please see the new mappings and analysis for the amended limitations in the rejections below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claims 1 and 8, there is insufficient antecedent basis for the limitation “the name associated with the designated destination”, in lines 10-11.
As to the claim(s) that are dependent on claim(s) 1, the dependent claim(s) are also rejected under 112(b) for the same reason of their base claim(s).
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, 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (Pub. No.: US 20180024784 A1).
As to claim 1, Watanabe teaches an image processing apparatus including a scanner, the image processing apparatus comprising: one or more memories storing instructions (fig. 1 100); and one or more processors capable of executing the instructions (paragraph [0068]) causing the image processing apparatus to:
manage one or more destinations each with a name in a destination book (paragraph [0051], i.e. the table shown at the end of this paragraph teaches a destination book, the table is managed to contain “addresses” which teaches one or more destinations, and “subjects” which teaches a name);
perform control to set a subject for an email to which a file including image data generated by the scanner is attached, the file being attached to the email (paragraph [0055], “…The UI management unit 104 also displays, in the subject input field 1076, a pull-down menu indicating three options in the subject selection list “Subjects”: [“Report”, “Estimate”, “Invoice”] included in the screen information. From the pull-down menu displayed in the subject input field 1076, the user selects the subject of the e-mail to which a scanned document is to be attached.”); and
transmit the email to a designated destination (paragraph [0055], “scan to email”), wherein the control is performed to retrieve the name associated with the designated destination from the destination book and set the retrieved name as the subject of the email (paragraph [0055], i.e. “invoice”, which teaches a name of designated destination, is retrieved from the table and used as a subject of the email).
As to claim 2, Watanabe teaches wherein the instructions further cause the image processing apparatus to manage whether a subject setting indicating whether to use a name of a destination as a subject of an email is enabled or disabled, and wherein, in a case where the subject setting is enabled, the control is performed to set the name of the designated destination as the subject of the email (paragraph [0055], “…in the subject input field 1076, a pull-down menu indicating three options in the subject selection list “Subjects”: [“Report”, “Estimate”, “Invoice”] included in the screen information…”).
As to claim 6, Watanabe teaches wherein the destination book assigns different names to a single email address to manage each name as a separate destination (paragraph [0055], “in the subject input field 1076, a pull-down menu indicating three options in the subject selection list “Subjects”: [“Report”, “Estimate”, “Invoice”] included in the screen information. From the pull-down menu displayed in the subject input field 1076, the user selects the subject of the e-mail to which a scanned document is to be attached”).
As to claim 7, Watanabe teaches wherein the destination managed by the destination book includes a group destination including a plurality of destinations (fig. 7, 1072, “destination list”).
As to claim 8, the limitations of the claim are substantially similar or broader in scope to claim 1. Please refer to claim 1 above.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (Pub. No.: US 20180024784 A1) in view of Scott et al. (Pub. No.: US 20140181240 A1).
As to claim 3, Watanabe does not explicitly teach set a predetermined subject in case subject setting is disabled.
However, in the same field of endeavor (electronic mail) Scott teaches wherein, in a case where a subject setting is disabled, the control is performed to set a predetermined subject managed in advance in the image processing apparatus as the subject of the email (paragraph [0039], “…If a delivery method is set to email and a delivery subject parameter is not included, a default email subject parameter may be used …”).
Based on Watanabe in view of Scott, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate set a predetermined subject in case subject setting is disabled (taught by Scott) with email delivery (taught by Watanabe) in order to make creating and sending the email easier to use and user friendly.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (Pub. No.: US 20180024784 A1) in view of Deluca et al. (Pub. No.: US 20110154221 A1).
As to claim 4, Watanabe does not explicitly teach set a subject in case subject is inputted by a user.
However, in the same field of endeavor (electronic mail) Deluca teaches wherein, in a case where an operation of inputting a subject for the email is performed by a user, the control is performed to set the input subject as the subject of the email instead of setting the name of the designated destination as the subject of the email (fig. 3, 326, “receive subject string from user”).
Based on Watanabe in view of Deluca, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate set a subject in case subject is inputted by a user (taught by Deluca) with email delivery (taught by Watanabe) in order to allow a user to enter new subjects as desired.
As to claim 5, Deluca further teaches wherein, in a case where an operation of inputting a subject for the email is performed by a user, the control is further performed to register the input subject as the name of the destination of the email in the destination book (fig. 3, 326 and 328). The limitations of claim 5 are rejected in view of the analysis of claim 4 above, and the rationale to combine, as discussed in claim 4, applies here as well.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDULKADER M ALRIYASHI whose telephone number is (313)446-6551. The examiner can normally be reached Monday - Friday, 8AM - 5PM Alt, Friday, EST.
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/Abdulkader M Alriyashi/Primary Examiner, Art Unit 2447 10/9/2026
