Notice of Pre-AIA or AIA Status
1.The present application, filed on or after March 16, 2013, is being examined under the
first inventor to file provisions of the AIA . This application has been examined. Claims
1-20 are pending in this application.
Specification
2. 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.
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 Ofce 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.
3. Claims 1-20 are provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-14 of copending Application No.
19/036,709 (reference application). Although the claims at issue are not identical, they
are not patentably distinct from each other because the claims of the instant application
are anticipated by the claims of the copending application with obvious variants as
applicable. Features of claims 1-20 of the current application are covered by the
limitations of claims 1-14 of ‘709, It would have been obvious to one of ordinary skill in
the art at the effective time of the invention to combine the features of claims 1014 of
‘709 to receive instructions and settings received through the control unit or operational
panel, e.g., by implementing a fax machine, since doing so would have predictable and
advantageously allowed for the transmission of documents and instructions.
This is a provisional nonstatutory double patenting rejection because the
patentably indistinct claims have not in fact been patented.
Claim Interpretation – 35 U.S.C. § 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.
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.
4. 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 limitation(s) uses 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 limitation(s) is/are: Claims 1 and 8 recite the limitations, “a generation unit configured to generate’; “a transmission unit configured to transmit”; “a first reception unit configured to receive”; “a second reception unit configured to receive”; and “a first display configured to perform display”. Limitations are depicted in figs. 3-4 and the description thereof.
.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
5. Claim(s) 1-15 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by US 2006/0209363 (“Suenaga”).
With respect to claim 1, Suenaga discloses an image processing apparatus
(¶[0016], Fig. 1 – see at least scanner system 10), comprising:
a generating unit configured to generate document data based on a read an
original document (¶[0051], Fig. 2 – in step S2, the read unit 13 scans an original);
a transmission unit configured to transmit the original document data generated
by the generation unit (reads item 15, line connecting the different component to
transmit data).
a first reception unit configured to receive an operation for providing an
instruction to transmit the original document data by the transmission unit (reads on fig.
1, item 13);
a second reception unit (reads on item 11 of fig. 11) configured to receive an
operation for enabling a trace-of- correction setting being a setting to information
between include, in the original document data generated by the generation unit, a
trace of correction indicating that the original document has been corrected (see fig. 3,
items 302-308); and
a first display unit (reads on fig. 4) configured to display a predetermined screen
in a case where the first reception unit receives transmission of the original document
data and the second reception unit receives the operation for enabling the trace-of-
correction setting (¶[0018], Fig. 1 – the user can use operation unit 11 to
enable/disable a detection mode setting; ¶[0050], Fig. 2 – at step S1, the system
checks this setting to determine whether it should move forward with
conventional scanning S6 or scan in correction mark/fluid/ detection mode S2).
With respect to claim 2, Suenaga further discloses wherein the predetermined screen
is a screen that displays a message f or notifying that the original document data cannot
be transmitted in a state where the trace-of-correction setting is enable(¶[0018], Fig. 1
– the user can use operation unit 11 to Fig. 2 – at step S1, the system checks this
setting to determine whether it should move forward with conventional scanning
S6 or scan in correction mark/fluid/ detection mode S2).
With respect to claim 3 , Suenaga discloses wherein, in a case where the second
reception unit receives the operation for enabling the trace-of-correction setting in a
state where the first reception unit has already received the transmission of the original
document data, the first display unit displays the predetermined screen corrected (see
fig. 3, items 302-308).
With respect to claim 4, Suenaga further discloses wherein, in a case where the first
reception unit receives the transmission of the original document data in a state where
the second reception unit has already received the operation for enabling the trace- of-
correction setting, the first display unit displays the predetermined screen (see figs.
1-2).
With respect to claim 5, Suenaga further discloses wherein the transmission unit
transmits the original document data by facsimile (FAX) or Internet FAX (IFAX)
(inherently reads on fig 1, which allow an image to be scanned and later be faxed).
With respect to claim 6, Suenaga further discloses a determination unit configured to
determine whether a transmission destination of the original document data includes a
transmission destination to which the original document data is to be transmitted by
FAX or IFAX. (inherently reads on fig 1, which allow an image to be scanned and later
be faxed to a destination).
With respect to claim 7 , Suenaga further discloses wherein, in a case where the
determination unit determines that the transmission destination of the original document
data includes the transmission destination to which the original document data is to be
transmitted by FAX or IFAX, the first display unit displays the predetermined screen a
setting unit configured to enable a correction mark setting for including a correction
mark in the document data to be generated by the generating unit, the correction mark
indicating that a correction has been made in the document (inherently reads on figs.
1-2, which allow an image to be scanned and later be faxed to a destination).
With respect to claims 8-14, the analysis applied to claims 8-14 applicable to
claims 1-7 mutatis mutandis.
Allowable Subject Matter
6. Claims 16-18 are 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 art of record does not teach or suggest
the limitations of claims 16-18 in combination with the features of claim 1.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
US 7,626,725 to Fukusaka discusses detecting correction marks/fluid in a document.
US 7,948,662 to Sato discusses detecting correction marks/fluid in a document.
US 7,796,305 to Ichihashi discusses detecting correction marks/fluid in a document.
8 .Any inquiry concerning this communication or earlier communications from the
Examiner should be directed to Gabriel I. Garcia whose telephone number is (571)
272-7434. The examiner can normally be reached Monday-Thursday from 7:30 AM-
6:00 PM.. The fax phone number for this group is (571) 273-8600.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Benny Tieu can be reached on (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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Any inquiry of a general nature or relating to the status of this application should be
directed to the Group receptionist whose telephone number is (571) 272-2600.
/Gabriel I Garcia/
Primary Examiner, Art Unit 2682
September 19, 2026
Prosecution Insights