DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-12 are currently pending.
Claim 10 is withdrawn from consideration.
Election/Restrictions
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/29/26.
Drawings
The drawings are objected to because there is a typographical error in FIG. 6. Numeral 601 should be labeled “United States”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The references to “United State (US) 601” should be replaced with “United States (US) 601”. Appropriate correction is required.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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 limitations use 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 limitations are:
a transmission unit of claim 1,
a reception unit of claim 1,
a notification unit of claim 2, and
a change unit of claim 4.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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(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 1-9 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 pre-AIA the applicant regards as the invention.
The claim limitations “a transmission unit”, “a reception unit”, “a notification unit”, and
“a change unit” listed above invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The Applicant's specification does not provide an association between the structure and the function. Therefore, claims 1-6 are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9, 11 and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The flow chart in MPEP 2106, Subject Matter Eligibility Test For Products and Processes, will be referenced to establish that the subject matter is ineligible.
Step 1: claim 1 recites a device, claim 11 recites a method and claim 12 recites a computer readable medium. Claims 1, 11 and 12 fall under one of the four recognized statutory categories.
Step 2A Prong One: However, claims 1, 11 and 12 are further directed to the abstract idea of storing user subscription information for different regions. See MPEP 2106.04(a)(2). The limitations are a method of organizing human activity of commercial or legal interactions.
Step 2A Prong Two: Additional elements include an image processing apparatus and a management server. The involvement of a generic computer components does not provide additional elements that are sufficient to amount to significantly more than the judicial exception because the recitations to hardware involve no more than a generic computer performing generic computer functions that are well understood, routine and conventional activities previously known in the industry. That is, other than reciting “by a processor,” nothing in the claim precludes the steps from practically being performed in the human mind. See MPEP 2106.05(d)).
Step 2B: The claims do not provide an inventive concept as they do not provide an improvement to any type of particular machine. Storing user subscription information for different regions does not constitute a patentable improvement in computer technology. The claims do not improve the computer system that is implementing the abstract idea. Routine steps of data collection and organization using generic computer components and conventional computer data processing activities neither improve the functions of the computer itself, nor provide specific programming, tailored software, or meaningful guidance for implementing the abstract concept. Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1342 (Fed Cir. 2017). Therefore claims 1-9, 11 and 12 are non-statutory.
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.
Claims 1-7, 9, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by van den Dungen et al. US Publication 2023/0137359 (hereafter “van den Dungen”).
Referring to claims 1, 11 and 12, van den Dungen discloses a device comprising:
a transmission unit configured to transmit, to a management server, an information request to which identification information for identifying an image processing apparatus and region information including a region set in the image processing apparatus are assigned (paragraph 104, In 606, the CSP may identify a selection of the login region from the one or more available regions. For example, the CSP may identify a selection by a user of one of the regions from the one or more available regions displayed within the user interface to be utilized as the login region) (paragraph 176, user interface output devices may include printers); and
a reception unit configured to receive search information from the management server as a response to the information request (paragraph 115, In 706, the CSP may provide access to the network. For example, the CSP may provide access to the network in accordance with a determination to provide access to the network),
wherein the search information includes a result of searching performed using the identification information as to whether or not subscription information for a service regarding the image processing apparatus (paragraph 29, In some embodiments, the CSP may provide a subscription service for the regions of the CSP) exists in a region server arranged in another region different from the region included in the region information (paragraph 110, Retrieving the authentication information may include making a second back channel call to the second region to retrieve the authentication information) (paragraph 8, The method may further include determining, by the computing device based at least in part on one or more responses received in response to the querying of the first data center or the querying of the second data center, whether the passcode had been previously utilized, determining, by the computing device, whether to provide access to the network based at least in part on whether the passcode had been previously utilized, and providing, by the computing device, access to the network in accordance with a determination to provide access to the network).
Referring to claim 2, van den Dungen discloses a notification unit configured to make a notification according to the result of the searching included in the search information (paragraph 8, The method may further include determining, by the computing device based at least in part on one or more responses received in response to the querying of the first data center or the querying of the second data center, whether the passcode had been previously utilized, determining, by the computing device, whether to provide access to the network based at least in part on whether the passcode had been previously utilized, and providing, by the computing device, access to the network in accordance with a determination to provide access to the network).
Referring to claim 3, van den Dungen discloses wherein in a case where setting of the service is turned on in the image processing apparatus, the information request is transmitted by the transmission unit (paragraph 104, In 606, the CSP may identify a selection of the login region from the one or more available regions. For example, the CSP may identify a selection by a user of one of the regions from the one or more available regions displayed within the user interface to be utilized as the login region) (paragraph 176, user interface output devices may include printers [the user choosing to select the region to login is turning on the setting of the service]).
Referring to claim 4, van den Dungen discloses a change unit configured to change the region set in the image processing apparatus to the another region in a case where the result of the searching indicating that the subscription information exists in the region server arranged in the another region is included in the search information (paragraph 8, The method may further include determining, by the computing device based at least in part on one or more responses received in response to the querying of the first data center or the querying of the second data center, whether the passcode had been previously utilized, determining, by the computing device, whether to provide access to the network based at least in part on whether the passcode had been previously utilized, and providing, by the computing device, access to the network in accordance with a determination to provide access to the network).
Referring to claim 5, van den Dungen discloses wherein the identification information includes destination information of the image processing apparatus with which one or more regions are associated, and
the another region is a region associated with the destination information (paragraph 37, In some embodiments, each of the regions may correspond to a particular geographical area, where the computer hardware within a region is located within the corresponding geographical area).
Referring to claim 6, van den Dungen discloses wherein in a case where the result of the searching indicating that the subscription information does not exist in any region server is included in the search information (paragraph 53, The login region 104 may determine to deny access to the CSP 102 based on the passcode provided in the login credentials 114 not matching the passcode from the authentication information, the single-use password from the login credentials 114 being included in the previously utilized single-use passwords from the authentication information, the single-use password from the login credentials 114 not matching one of the still valid single-use passwords from the authentication information, or some combination thereof), the transmission unit transmits the information request to the management server after a lapse of a predetermined time from the reception of the search information by the reception unit (paragraph 105, In 608, the CSP may receive a request to login to a network. For example, the CSP may receive a request to log in to a network of the CSP [the user can attempt to login a second time after a first attempt]).
Referring to claim 7, van den Dungen discloses wherein the transmission unit transmits the information request to the management server at a timing when the image processing apparatus is activated or at a regular timing after a lapse of a predetermined time from the reception of the search information by the reception unit (paragraph 105, In 608, the CSP may receive a request to login to a network. For example, the CSP may receive a request to log in to a network of the CSP [the user device is activated because the user is able to select to login]).
Referring to claim 9, van den Dungen discloses wherein the device is the image processing apparatus (paragraph 176, user interface output devices may include printers).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over van den Dungen et al. US Publication 2023/0137359 as applied to claim 1 above, and further in view of Kim et al. WIPO Publication WO 2022/046166 A1 (hereafter “Kim”).
Referring to claim 8, van den Dungen discloses the service, but does not disclose expressly that the service is an automatic ordering service for consumables.
Kim discloses wherein the service is an automatic ordering service for consumables (paragraph 18, A subscription service related to an image forming apparatus may include a service that supplies ink or toner cartridges according to consumption of consumables such as ink and toner cartridges).
Before the effective filing date of the claimed invention, it would have obvious to a person of ordinary skill in the art to supply consumables to an image forming device as part of a service. The motivation for doing so would have been to increase the convenience of the customer by regularly providing consumables while the company increases sales of consumables. Therefore, it would have been obvious to combine Kim with van den Dungen to obtain the invention as specified in claim 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER K HUNTSINGER whose telephone number is (571)272-7435. The examiner can normally be reached Monday - Friday 8:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benny Q Tieu can be reached at 571-272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER K HUNTSINGER/ Primary Examiner, Art Unit 2682
