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 .
Priority
Examiner acknowledges the following data:
Parent Data
19056063 filed 02/18/2025 is a Continuation of 18352172, filed 07/13/2023, now U.S. Patent # 12248713 18352172 is a Continuation of 17507610, filed 10/21/2021, now U.S. Patent # 11748041 and having 1 RCE-type filing therein claims foreign priority to 2020-179124, filed 10/26/2020.
Information Disclosure Statements
The information disclosure statements (IDS) were submitted and filed on 06/06/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12248713. This is a statutory double patenting rejection.
The following chart illustrates how claim 1 of the instant application compares with claim 1 of the US PAT. No. 12248713.
Instant Application: 19056063
US PAT NO. 12248713
1. An information processing apparatus comprising: a processor; and a memory containing instructions that, when executed by the processor, cause the processor to perform operations that include: acquiring sheet discharge information and a setting included in a recording job, determining whether a recorded product with an image recorded on the recorded product is to be discharged to a first sheet discharge portion arranged above a recording position of a recording unit based on the setting in a case where the sheet discharge information indicates the first sheet discharge portion, and receiving an instruction related to recording corresponding to the recording job from a user in a case where the recorded product is not to be discharged to the first sheet discharge portion as a result of the determining.
1. An information processing apparatus comprising: a processor; and a memory containing instructions that, when executed by the processor, cause the processor to perform operations that include: acquiring sheet discharge information and a setting included in a recording job, determining whether a recorded product with an image recorded on the recorded product is to be discharged to a first sheet discharge portion arranged above a recording position of a recording unit based on the setting in a case where the sheet discharge information indicates the first sheet discharge portion, and receiving an instruction related to recording corresponding to the recording job from a user in a case where the recorded product is not to be discharged to the first sheet discharge portion as a result of the determining.
From the chart above, it is very clear that claim 1 of the instant application 19056063 is the same as the claim of the US PAT. No. 12248713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANTZ BATAILLE whose telephone number is (571)270-7286. The examiner can normally be reached on Monday to Thursday 7:30 AM-6:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tammy Goddard can be reached on 571-272-7773.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANTZ BATAILLE/ Primary Examiner, Art Unit 2681
