CTNF 19/012,217 CTNF 89155 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority Acknowledgement is made to applicant’s claim for foreign priority to the Japanese patent application number 2024-001177, filed 01/09/2024. Specification 06-11 AIA 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. 06-11-01 AIA The following title is suggested: IMAGE PROCESSING APPARATUS AND CONTROL METHOD FOR SCANNING TO EMAILS . Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-8 are 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, the claims recite the limitation “ perform control to set a subject for an email to which a file including image data generated using the scanner is attached ”, however, the following elements in the limitation are not clear: a) It is not clear what is being generated using the scanner, the file or the image data. b) It is not clear what it is that is being attached. Appropriate correction is required. As to claim 7, additionally , there is insufficient antecedent basis for the limitation “ the destination managed by the destination book ”. 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 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA 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 [0055], ”…The UI management unit 104 displays, as a list, that is, in the destination list 1072 , the names of destinations (or the address information) included in the shared information (the address book part) included in the received screen information…” and fig. 7) ; perform control to set a subject for an email to which a file including image data generated using the scanner is attached (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, wherein the control is performed to set a name of the designated destination as the subject of the email (paragraph [0055], for example “invoice” teaches a designated destination). 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 07-20-aia AIA 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. 07-21-aia AIA 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 . 07-21-aia AIA 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 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ziolkowski et al. (Pub. No.: US 20230107116 A), teaches storing an attachment of an email to a predetermined location indicated in the subjected line of the email. Please see fig. 1. 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOON HWANG can be reached at (571)272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Abdulkader M Alriyashi/Primary Examiner, Art Unit 2447 5/2/2026 Application/Control Number: 19/012,217 Page 2 Art Unit: 2447 Application/Control Number: 19/012,217 Page 3 Art Unit: 2447 Application/Control Number: 19/012,217 Page 4 Art Unit: 2447 Application/Control Number: 19/012,217 Page 5 Art Unit: 2447 Application/Control Number: 19/012,217 Page 6 Art Unit: 2447 Application/Control Number: 19/012,217 Page 7 Art Unit: 2447 Application/Control Number: 19/012,217 Page 8 Art Unit: 2447
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