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 .
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.
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.
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 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: acquisition processing portion in claim 1; display processing portion in claims 1, 8; identification processing portion in claims 2, 3; alert processing portion in claim 4; selection processing portion in claim 5; edit processing portion in claims 6, 7. (Note that the structure associated with the limitation “image forming portion configured to form a target image on a sheet” is notoriously well known in the art, and therefore not subject to interpretation under 35 U.S.C. 112 (f).)
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.
Claim(s) 1 and 5-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Simpson et al. (US 2003/0084178; “Simpson”).
Regarding claim 1, Simpson discloses an image forming apparatus (web-based imaging service shown in Fig. 2A [0065]) comprising:
an image forming portion (not explicitly described, but inherent in a “printer”) configured to form a target image on a sheet (e.g., “printing more than one copy”) ([0076]);
an acquisition processing portion (part of destination service 34/hard disk 12; Fig. 2A [0065]) configured to acquire a sheet image obtained by reading the sheet 401/402 (via sensor 216 or scan mechanism at tray 215; Figs. 2A, 4A, 4C [0082, 0085-0086]); and
a display processing portion (part of destination service 34/hard disk 12; Fig. 2A [0065]) configured to superimpose the target image on the sheet image and display the target image and the sheet image as a preview screen ([0080, 0087]).
Regarding claim 5, Simpson discloses the image forming apparatus according to claim 1, further comprising a selection processing portion (part of destination service 34/hard disk 12; Fig. 2A [0065]) configured to select continuing or suspending formation of the target image in accordance with an operation of a user ([0088]: “After viewing the preview display at block 435, the user has the option to select print at block 436” exhibits both suspending formation while the user previews the image and continuing formation when the user selects print at block 436 in Fig. 4B).
Regarding claims 6-7, Simpson discloses the image forming apparatus according to claim 1, further comprising an edit processing portion (part of destination service 34/hard disk 12; Fig. 2A [0065]) configured to edit a formation condition (“print options”, e.g., option of printing more than one copy) regarding formation of the target image, wherein the edit processing portion edits the formation condition in accordance with an operation of a user (see Fig. 2C [0076]).
Regarding claim 8, Simpson discloses the image forming apparatus according to claim 1, wherein the display processing portion determines an attribute (particular specialized media) of the sheet from the sheet image and displays the preview screen (block 435 in Fig. 4B) in a case where the attribute satisfies a predetermined condition (YES in block 429 in Fig. 4B) ([0082-0087]).
The method steps of claim 9 are met by the operation of Simpson as applied to claim 1.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simpson (US 2003/0084178) in view of Kobayashi (US 2008/0240753).
Regarding claim 2, Simpson discloses the image forming apparatus according to claim 1, but fails to disclose an identification processing portion configured to identify, in the sheet image, a prohibition region in which the target image is prohibited from being formed.
Kobayashi teaches an image forming apparatus 10 (Fig. 1) comprising an identification processing portion (including recording section 24 and control unit 100; Figs. 2 & 4) configured to identify, in a sheet image, a prohibition region 65 (Figs. 8A-8D [0089]) in which a target image is prohibited from being formed (steps S7 -> S13 through S16 -> S20 through S27 in Figs. 10-11 [0044, 0065, 0089-0090, 0104-0114, 0126]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the image forming apparatus of Simpson to include an identification processing portion configured to identify, in the sheet image, a prohibition region in which the target image is prohibited from being formed, as taught by Kobayashi. One would have been motivated to make this modification in order to prevent ink from passing through any perforations within printing media (Kobayashi [0090]).
Regarding claim 3, modified Simpson teaches the image forming apparatus according to claim 2, wherein the identification processing portion identifies the prohibition region in accordance with an operation of a user (see Kobayashi Fig. 10 and [0036, 0102]; the prohibition region is identified after printing data is acquired in step S1, which is effected by a user).
Regarding claim 4, modified Simpson teaches the image forming apparatus according to claim 2, further comprising (see Simpson) an alert processing portion (part of destination service 34/hard disk 12; Fig. 2A [0065]) configured to output an alert in a case where the target image overlaps with the prohibition region (the preview is an alert; [0087]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLA J THERRIEN whose telephone number is (571)272-2677. The examiner can normally be reached Monday-Friday 8 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached at (571)272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLA J THERRIEN/Primary Examiner, Art Unit 2852
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