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 .
Filed IDS of 01/15/2025 and 07/11/2025 have been entered and considered. Claims 1-6 are currently pending.
Please refer to the action below.
Examiner Notes
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. However, the claimed subject matter, not the specification, is the measure of the invention.
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).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, and 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over respectively claims 1 and 6-7 of copending Application No. 19/019997 (reference application/PGPUB NO. 20250239179). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application 19022080 (“2080”)
Co-Pending Application 19019997 (“9997”)
1. A print speed setting system, comprising: an information processing system; and an image forming apparatus capable of varying a print speed, wherein the information processing system includes a generation processing portion which generates key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus, and an output processing portion which outputs the key data generated by the generation processing portion to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices, and the image forming apparatus includes an acquisition processing portion which acquires the key data from the mobile terminal, a specification processing portion which specifies the designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus, and a setting processing portion which sets a print speed of the image forming apparatus to the designated print speed specified by the specification processing portion.
5. An image forming apparatus capable of varying a print speed, comprising: an acquisition processing portion which acquires key data generated based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus from a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices; a specification processing portion which specifies the designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus, and a setting processing portion which sets a print speed of the image forming apparatus to the designated print speed specified by the specification processing portion.
6. A print speed setting method executed in a print speed setting system including an information processing system and an image forming apparatus capable of varying a print speed, the print speed setting method comprising: in the information processing system, a generation step of generating key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus; and an output step of outputting the key data generated in the generation step to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices, and in the image forming apparatus, an acquisition step of acquiring the key data from the mobile terminal; a specification step of specifying the designated print speed based on the key data acquired in the acquisition step and the unique information of the image forming apparatus; and a setting step of setting a print speed of the image forming apparatus to the designated print speed specified in the specification step.
1. A print speed setting system, comprising: an information processing system; and an image forming apparatus capable of varying a print speed, wherein the information processing system includes a generation processing portion which generates key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus, and an output processing portion which outputs the key data generated by the generation processing portion, and the image forming apparatus includes an acquisition processing portion which acquires the key data input by a user operation to the image forming apparatus, a specification processing portion which specifies the designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus, and a setting processing portion which sets a print speed of the image forming apparatus to the designated print speed specified by the specification processing portion.
6. An image forming apparatus capable of varying a print speed, comprising: an acquisition processing portion which acquires key data that is based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus, the key data being input by a user operation to the image forming apparatus, a specification processing portion which specifies the designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus, and a setting processing portion which sets a print speed of the image forming apparatus to the designated print speed specified by the specification processing portion.
7. A print speed setting method executed in a print speed setting system including an information processing system and an image forming apparatus capable of varying a print speed, the print speed setting method comprising: in the information processing system, a generation step of generating key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus; and an output step of outputting the key data generated in the generation step, and in the image forming apparatus, an acquisition step of acquiring the key data input by a user operation to the image forming apparatus; a specification step of specifying the designated print speed based on the key data acquired in the acquisition step and the unique information of the image forming apparatus; and a setting step of setting a print speed of the image forming apparatus to the designated print speed specified in the specification step.
Regarding Instant independent claims 1, and 5-6 of “2080” corresponding to respectively at least independent claims 1 and 6-7 of the Co-Pending Application “9997”:
Although the claims at issue are not identical, they are not patentably distinct from each other. As at least claims 1, and 6-7 of “9997” respectively encompasses all the teachings of the instant claims 1, and 5-6 except for the languages of “an output processing portion which outputs the key data generated by the generation processing portion to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices, and the image forming apparatus includes an acquisition processing portion which acquires the key data from the mobile terminal” vs. the claimed languages of “9997” citing “an output processing portion which outputs the key data generated by the generation processing portion, and the image forming apparatus includes an acquisition processing portion which acquires the key data input by a user operation to the image forming apparatus”.
It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant application claims 1, 5-6 are at least anticipated and obvious by either claims 1, 6, or 7 of the Co-Pending application, respectively, they are not patentably distinct from claims 1, and 6-7 of said Co-Pending application.
As one skill in the art would further appreciate that the methods/systems of the Co-Pending application “9997” illustrate a similar information processing system provided with generation processing portion that generates key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus. An output processing portion outputs the key data generated by the generation processing portion which output may obviously correspond to a user terminal indicative of the said mobile terminal obviously wirelessly communicated with the image forming apparatus without passing through other communication devices by known means and the said image forming apparatus provided with acquisition processing portion that acquires the key data input by a user operation to the image forming apparatus according to further known methods to yield predictable results since known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art as said combination is thus the adaptation of an old idea or invention using newer technology that is either commonly available and understood in the art thereby a variation on already known art (See MPEP 2143, KSR Exemplary Rationale F).
Dependent claims 2-4 are also rejected as they failed to solve the above problem.
Accordingly, the claimed subject matter of this application as currently claimed is unpatentable under the provisions of the nonstatutory obviousness-type double patenting rejection. Therefore, those claims are rejected as best understood by examiner as indicated in this office action above.
Claim Interpretations - 35 USC § 112(f)
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.
Claims limitations of “a generation processing portion”, “an output processing portion”, and “an acquisition processing portion”, “a specification processing portion”, and “a setting processing portion” of (claims 1, and 5) 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 “to” coupled with functional language “generates”, “outputs”, “acquires”, “specifies”, and “sets” (claims 1, and 5-6) without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-6 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:
• (“a generation processing portion”, “an output processing portion”, and “an acquisition processing portion”, “a specification processing portion”, and “a setting processing portion”) – Specification [0028] and [0044], It appears that the control portion 11/51 comprises the corresponding structure portions representing each a component and/or hardware of the apparatus 4 or server 1.
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 et seq. 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 § 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 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.
Claims 1, 4, and 6 is/are further rejected under 35 U.S.C. 103 as obvious over Hirota et al. (JP 2011/193138, A1) in view of Yabe et al. (US 2014/0211219, A1).
Regarding claim 1, Hirota teaches a print speed setting system of at least the Abstract, comprising:
an information processing system (the one or more plurality of computing apparatuses 3 illustrated in at least Figs. 1-14 comprises at least said information processing system comprising means to generate license key data and/or product key data and issue upon request the said generated license key data and/or product key data to at least one or more image processing apparatus 1 of Figs. 1-14 for setting or varying a print speed of the image forming apparatus); and
an image forming apparatus capable of varying a print speed (the at least image processing apparatus 1 of Fig. 1);
wherein the information processing system includes a generation processing portion which generates key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus (the Abstract and the disclosure further illustrates the devices 3 includes a generation means which generates product key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus); and
an output processing portion which outputs the key data generated by the generation processing portion
the image forming apparatus includes an acquisition processing portion which acquires the key data
a specification processing portion which specifies the designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus (and the apparatus 1 of at least Fig. 1 and the Abstract further comprises as implied a means to decode from the received product key data specified designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus);
a setting processing portion which sets a print speed of the image forming apparatus to the designated print speed specified by the specification processing portion (the apparatus 1 of at least Fig. 1 and the Abstract further comprises the MPU 20 as the implied setting means to set based specified print speed of the image forming apparatus to the designated print speed acquired from the product key and/or specified by the specification processing portion).
Hirota is silent regarding wherein the above lined-out items such said outputs key data generated by the generation processing portion to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices, and said acquires the key data from the mobile terminal.
Yabe teaches a print speed setting system of Fig. 1 and para. 0008-0009 comprising an information processing server system 102 which is configured according to a request from mobile terminal 50 of at least para. 0047-0050 to generate and issue license data including unique information pertaining to an image forming apparatus 104 for setting and changing a continuous copying speed of the said image forming apparatus to a continuous copying speed specified by a license issuance request, said license may obviously comprise license key data which is also sent to a mobile terminal 103 of at least para. 0055 capable of wirelessly communicating with the image forming apparatus without obviously passing through other communication devices where said image forming apparatus includes an acquisition processing portion which acquires license data from the mobile terminal. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hirota in view of Yabe to include wherein said outputs key data generated by the generation processing portion to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices, and said acquires the key data from the mobile terminal, as discussed above, as Hirota in view of Yabe are in the same of endeavor employing methods and systems for setting and changing by a user the print speed image forming apparatus according to received product key data and/or transmitted license data to the said image forming apparatus, Yabe’s combination architecture including a managing server of generating and transmitting generated license data unique to the image forming apparatus to the user device and the image forming apparatus configured to acquire said license from the user device further complements the methods and systems for setting and changing according to received product key data by a user device the print speed of the image forming apparatus of Hirota, in a sense that said methods and systems of Hirota when combined with the combination architecture of Yabe, it further advantageously enables said methods and systems to generate and issued by a server other than a user terminal device, the license key data and/or product key data at the server device upon receiving the user request system which license may be received by a terminal device which may have been incapable of producing said license data targeted to the printer for changing and setting new printing speed at the said printer where a user convenience of acquiring said license data or product key data is increased according to further known methods to yield predictable results since known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art as said combination is thus the adaptation of an old idea or invention using newer technology that is either commonly available and understood in the art thereby a variation on already known art (See MPEP 2143, KSR Exemplary Rationale F).
Regarding claim 4 (according to claim 1), Hirota further implies wherein the setting processing portion irrevocably sets the print speed of the image forming apparatus to the designated print speed specified by the specification processing portion (the speed setting of the image forming apparatus of at least the Abstract as understood by one skill in the art is irrevocably sets as the designated and specified print speed desired by the user).
Regarding claim 6, Hirota teaches a print speed setting method executed in a print speed setting system including an information processing system and an image forming apparatus capable of varying a print speed (the one or more plurality of computing apparatuses 3 illustrated in at least Figs. 1-14 comprises at least said information processing system comprising means to generate license key data and/or product key data and issue upon request the said generated license key data and/or product key data to at least one or more image processing apparatus 1 of Figs. 1-14 for setting or varying a print speed of the image forming apparatus),
the print speed setting method comprising:
in the information processing system,
a generation step of generating key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus (the Abstract and the disclosure further illustrates the devices 3 includes a generation means which generates product key data based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus); and
an output step of outputting the key data generated in the generation step
in the image forming apparatus, an acquisition step of acquiring the key data
a specification step of specifying the designated print speed based on the key data acquired in the acquisition step and the unique information of the image forming apparatus (and the apparatus 1 of at least Fig. 1 and the Abstract further comprises as implied a means to decode from the received product key data specified designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus);
and a setting step of setting a print speed of the image forming apparatus to the designated print speed specified in the specification step (the apparatus 1 of at least Fig. 1 and the Abstract further comprises the MPU 20 as the implied setting means to set based specified print speed of the image forming apparatus to the designated print speed acquired from the product key and/or specified by the specification processing portion).
Hirota is silent regarding wherein the above lined-out items such said acquiring the key data from the mobile terminal and said outputting the key data generated in the generation step to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices.
Yabe teaches a print speed setting system of Fig. 1 and para. 0008-0009 comprising an information processing server system 102 which is configured according to a request from mobile terminal 50 of at least para. 0047-0050 to generate and issue license data including unique information pertaining to an image forming apparatus 104 for setting and changing a continuous copying speed of the said image forming apparatus to a continuous copying speed specified by a license issuance request, said license may obviously comprise license key data which is also sent to a mobile terminal 103 of at least para. 0055 capable of wirelessly communicating with the image forming apparatus without obviously passing through other communication devices where said image forming apparatus includes an acquisition processing portion which acquires license data from the mobile terminal. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hirota in view of Yabe to include wherein said acquiring the key data from the mobile terminal and said outputting the key data generated in the generation step to a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices, as discussed above, as Hirota in view of Yabe are in the same of endeavor employing methods and systems for setting and changing by a user the print speed image forming apparatus according to received product key data and/or transmitted license data to the said image forming apparatus, Yabe’s combination architecture including a managing server of generating and transmitting generated license data unique to the image forming apparatus to the user device and the image forming apparatus configured to acquire said license from the user device further complements the methods and systems for setting and changing according to received product key data by a user device the print speed of the image forming apparatus of Hirota, in a sense that said methods and systems of Hirota when combined with the combination architecture of Yabe, it further advantageously enables said methods and systems to generate and issued by a server other than a user terminal device, the license key data and/or product key data at the server device upon receiving the user request system which license may be received by a terminal device which may have been incapable of producing said license data targeted to the printer for changing and setting new printing speed at the said printer where a user convenience of acquiring said license data or product key data is increased according to further known methods to yield predictable results since known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art as said combination is thus the adaptation of an old idea or invention using newer technology that is either commonly available and understood in the art thereby a variation on already known art (See MPEP 2143, KSR Exemplary Rationale F).
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 5 is/are further rejected under 35 U.S.C. 102 (a)(1) as being unpatentable over Hirota et al.
Regarding claim 5, Hirota teaches at least in Fig. 1 and the Abstract an image forming apparatus 1 capable of varying a print speed, comprising:
an acquisition processing portion which acquires key data generated based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus from a mobile terminal capable of wirelessly communicating with the image forming apparatus without passing through other communication devices (the Abstract and Fig. 1 further teaches at least one image forming apparatus 1 configured to acquire generated key data from a mobile terminal based on unique information unique to the image forming apparatus and a designated print speed of the image forming apparatus from said mobile terminal which as would be appreciated by one skill in the art according to at least Fig. 1 to be at least inherently capable of wirelessly communicating with the image forming apparatus without obviously passing through other communication devices);
a specification processing portion which specifies the designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus (and the apparatus 1 of at least Fig. 1 and the Abstract further comprises as implied a means to decode from the received product key data specified designated print speed based on the key data acquired by the acquisition processing portion and the unique information of the image forming apparatus); and
a setting processing portion which sets a print speed of the image forming apparatus to the designated print speed specified by the specification processing portion (the apparatus 1 of at least Fig. 1 and the Abstract further comprises the MPU 20 as the implied setting means to set based specified print speed of the image forming apparatus to the designated print speed acquired from the product key and/or specified by the specification processing portion).
Claims Standings
Claims 2-3 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior arts do not appear to teach: claim 2. The print speed setting system according to claim 1, comprising: the mobile terminal, wherein the setting processing portion notifies, after setting the print speed of the image forming apparatus, the mobile terminal of a completion of the setting of the print speed, and the mobile terminal includes a display portion, and a display processing portion which causes the display portion to display the image forming apparatus for which the setting of the print speed has been completed.
3. The print speed setting system according to claim 2, wherein the mobile terminal acquires the unique information from the image forming apparatus for which the print speed is unset, and the generation processing portion generates the key data based on the unique information and the designated print speed input from the mobile terminal.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELLUS AUGUSTIN whose telephone number is (571)270-3384. The examiner can normally be reached 9 AM- 5 PM.
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/MARCELLUS J AUGUSTIN/Primary Examiner, Art Unit 2682 08/18/2026
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