Part III DETAILED ACTION
1.The present application is being examined under the pre-AIA first to invent provisions. This application has been examined. Claims 1-12 are pending in this application.
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.
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.
3. 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 1-12 recite the limitations, “a print data acquirer to acquire print data”; “a type selector configured to select …type information” and “an action executor configured to execute”. Limitations are depicted in fig. 1 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
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 (i.e., changing from AIA to pre-AIA ) 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.
4. Claim(s) 1-5 and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (2019/0212684), hereafter referred as Watanabe.
. With regard to claim 1, Watanabe teaches an information processing apparatus (1) comprising: a type information storage (50) storing a plurality of pieces of type information each indicating types of medium different from each other (reads on item 51 and fig. 3a); an image shape information storage storing a plurality of pieces of image shape information each indicating image shapes different from each other of a print image to be printed on the medium (reads on figs. 3a-3e, shape information is equivalent to the size information); a correspondence information storage storing correspondence information associating the plurality of pieces of type information with the plurality of pieces of image shape information (reads on fig. 3a, which depict the correspondence between type information (or sheet type) and shape Information (or size information)); a print image data acquirer configured to acquire print image data to be set in a print job (reads on fig. 4, which depicts how a file of document is acquired for printing or copying); a type selector configured to, by referring to the correspondence information, select, from the plurality of pieces of type information, type information corresponding to the image shape information of the print image data acquired by the print image data acquirer (reads on figs. 4 and 5, which depicts how print data is acquired for printing or copying); and an action executor configured to execute at least one action based on the type information selected by the type selector (reads on figs. 6-14, action is selected based on as to the selection of sheet size and type size).
With regard to claim 2, Watanabe further teaches wherein the image shape information indicates horizontal and vertical dimensions of the print image or an aspect ratio of the print image (reads on fig. 14, which allow user(s) to select aspect ratio with horizontal and vertical measurements).
With regard to claim 3, Watanabe further teaches, wherein the at least one action includes presenting the type information selected by the type selector or setting, in the print job, the type information selected by the type selector (reads on figs. 6-14) .
With regard to claim 4, Watanabe further teaches a print setting information storage storing a plurality of pieces of print setting information each indicating print settings used for printing on the medium, wherein the correspondence information associates the plurality of pieces of type information, the plurality of pieces of image shape information, and the plurality of pieces of print setting information with one another (reads on figs. 2-3); and a print setting information selector configured to, by referring to the correspondence information, select, from the plurality of pieces of print setting information, print setting information corresponding to the type information selected by the type selector, wherein the at least one action includes an action based on the print setting information selected by the print setting information selector (reads on fig. 4, step s6-s12).
With regard to claim 5, Watanabe further teaches wherein the at least one action includes presenting the print setting information selected by the print setting information selector or setting, in the print job, the print setting information selected by the print setting information selector (reads on figs. 6-14).
With regard to claim 8, Watanabe further teaches a registration section configured to acquire the type information and the image shape information, and register, in the correspondence information, a correspondence relationship between the type information and the image shape information (reads on figs. 3a-3e).
With regard to claim 9, Watanabe further teaches wherein when an image shape of the print image data acquired by the print image data acquirer does not match any of the image shapes of the plurality of pieces of image shape information stored in the image shape information storage, the type selector is configured to specify image shape information, an image shape of which is most similar to the image shape of the print image data acquired by the print image data acquirer, among the plurality of pieces of image shape information stored in the image shape information storage, and to select type information corresponding to the specified image shape information from the plurality of pieces of type information (reads on figs. 9-1 or 14, different shape or size is selected or specified ) .
With regard to claim 10, Watanabe further teaches wherein when an image shape of the print image data acquired by the print image data acquirer does not match any of the image shapes of the plurality of pieces of image shape information stored in the image shape information storage, the type selector is configured to specify a plurality of pieces of image shape information, image shapes of which are most similar to the image shape of the print image data acquired by the print image data acquirer, among the plurality of pieces of image shape information stored in the image shape information storage, to select a plurality of pieces of type information each corresponding to the specified plurality of pieces of image shape information, and to select any one of the plurality of pieces of type information based on user input (reads on figs. 6,9-11 or 14, different shape or size is selected or specified) .
5. Claims 6-7 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 features of claims 6-7 in combination with the features of claim 1.
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Omura (2024/0160134) teaches a device or method using different paper type and paper size.
Fujiwara (2024/0053939) teaches a printing apparatus capable of improving convenience of print setting.
Lida (2013/0016383) teaches a method for matching acquired attribute information.
7. 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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/Gabriel I Garcia/
Primary Examiner, Art Unit 2682
September 16, 2026
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