`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/970,206
`
`12/15/2015
`
`Kunihiko Morota
`
`731156.499
`
`3393
`
`Seed IP Law Group/Panasonic
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`RUST, ERIC A
`
`PAPER NUIVIBER
`
`ART UNIT
`
`2674
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/1 1/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentinfo @ seedip.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/970,206 MOROTA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2674ERIC A. RUST $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 12/15/2015.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160504
`
`Disposition of Claims*
`5)|XI C|aim(s) Bis/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s E? is/are rejected.
`
`is/are objected to.
`
`I )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l C|aim(s
`I
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atentS/init events"
`h/index.‘s
`
`
`
`
`
`or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 12/15/2015 is/are: a)IXI accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`

`

`Application/Control Number: 14/970,206
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`Page 2
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`Art Unit: 2674
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`DETAILED ACTION
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`Claims 1-9 are pending in this application.
`
`Examiner’s Note
`
`3.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`4.
`
`Please refer to the attached, considered IDS.
`
`IDS
`
`Priority
`
`5.
`
`Acknowledgment is made of Applicant’s claim for foreign priority under 35
`
`U.S.C. 119(a)-(d). The certified copy of Application No. JP 2014-259326, filed on
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`December 22, 2014, in the Japanese Patent Office, has been received by the Office.
`
`

`

`Application/Control Number: 14/970,206
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`Page 3
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`Art Unit: 2674
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`Applicant should note that the following claim analysis under 35 USC § 112 is
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`for claim interpretation, and is NOT a claims) reiection.
`
`Claim Analysis - 35 USC § 1 12
`
`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.
`
`8.
`
`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
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`the function is recited with sufficient structure, material, or acts within the claim itself to
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`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
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`element recites function but fails to recite sufficiently definite structure, material or acts
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`to perform that function.
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`

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`Application/Control Number: 14/970,206
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`Page 4
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`Art Unit: 2674
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`Claim elements in this application that use the word “means” (or “step for”) are
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`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.
`
`In regard to the claims, claim limitations print data generator, transmitter,
`
`storage, receptor, and operator has/have been interpreted under 35 U.S.C. 112(f) or
`
`pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic
`
`placeholder(s) “print data generator, transmitter, storage, receptor, and operator,”
`
`coupled with functional language without reciting sufficient structure to achieve the
`
`function. Furthermore, the generic placeholder is not preceded by a structural modifier.
`
`Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, at least the claims containing the limitations described above has/have
`
`been interpreted to cover the corresponding structure described in the specification that
`
`achieves the claimed function, and equivalents thereof.
`
`A review of the specification does show structure for the 35 U.S.C. 112(f) or pre-
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`AIA 35 U.S.C. 112, sixth paragraph limitation(s). That is, the print data generator is
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`read as being item 111 of Fig. 2, the transmitter is read as being item 210 of Fig. 3,
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`the storage is read as being the storage in line 12 of pg. 12, the receptor is read
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`as being item 122 of Fig. 3, and the operator is read as being item 141 of Fig. 3.
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`If applicant wishes to provide further explanation or dispute the examiner’s
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`interpretation of the corresponding structure, applicant must identify the corresponding
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`

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`Application/Control Number: 14/970,206
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`Page 5
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`Art Unit: 2674
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
`
`If applicant does not intend to have the claim |imitation(s) treated under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the
`
`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
`
`structure, material, or acts for performing the claimed function to preclude application of
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`In further regard to the claims, claim limitations printer, print data controller
`
`and display has/have been NOT interpreted under 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph, because they are read by the Examiner as hardware
`
`devices and are therefore sufficient structure to achieve the function.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of
`
`Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`Unless expressly noted otherwise by the Examiner in this or future Actions, the
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`preceding discussion on 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`applies to all examined claims currently pending, as well as future claims that recite the
`
`same limitations discussed above.
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`

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`Application/Control Number: 14/970,206
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`Page 6
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`Art Unit: 2674
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`Claim Rejections - 35 USC § 103
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`9.
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`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 of this title, 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.
`
`10.
`
`Claims 1 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`U.S. Patent Application Publication No. 2006/0061807 A1 to Matsuda in view of U.S.
`
`Patent Application Publication No. 2009/0070276 A1 to Kodimer et al. (hereinafter,
`
`Kodimer).
`
`In regard to claims 1 and 8-9, Matsuda discloses a printing system (Matsuda,
`
`Fig. 1), comprising:
`
`a printing instruction apparatus (Matsuda, Fig. 1, item 2); and
`
`a printing apparatus (Matsuda, Fig. 1, item 3) that is connected to the printing
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`instruction apparatus (Matsuda, Fig. 1, items 2 and 3 are connected via item 4),
`
`wherein the printing instruction apparatus includes, a print data generator
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`(Matsuda, Fig. 1, cpu of item 2) that generates first print data corresponding to
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`document data of a first copy in document data and second print data corresponding to
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`document data of second and subsequent copies in the document data, according to a
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`print request for multiple copies of the document data, and a transmitter (Matsuda, Fig.
`
`

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`Application/Control Number: 14/970,206
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`Page 7
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`Art Unit: 2674
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`1, network interface of item 2) that transmits the generated first print data to the
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`printing apparatus (Matsuda, [0032] — [0035], first set of copies is sent and printed
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`and after the printing process for the first set of copies is ended, the server
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`performs the printing process for a second set of copies; the first set of copies is
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`a first copy in document data and the second set of copies is second print data
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`corresponding to document data of second and subsequent copies in the
`
`document data), wherein the printing apparatus includes, a receptor (Matsuda, Fig. 1,
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`network interface of item 3) that receives the transmitted first print data, a printer
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`(Matsuda, Fig. 1, printer of item 3) that performs printing according to the received
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`first print data (Matsuda, [0034] — [0035]).
`
`Matsuda does not specifically disclose wherein the printing apparatus
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`includes, an operator that receives a print execution operation corresponding to the
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`printed result according to the first print data, wherein the transmitter transmits the
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`generated second print data to the printing apparatus according to the print execution
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`operation, and wherein the printer performs printing according to the second print data
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`which is transmitted from the transmitter.
`
`Matsuda does disclose printing out sample pages from the copies printed
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`so that a user can observe changes in a printing state over time in detail (Matsuda,
`
`[0039]).
`
`Moreover, Kodimer discloses that after one sample of a copy of a print job
`
`is printed, a user approves the sample before more copies of the print job is printed
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`(Kodimer, [0057]). When combining Kodimer with Matsuda, a user would approve the
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`

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`Application/Control Number: 14/970,206
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`Page 8
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`Art Unit: 2674
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`first sample printed before the next sample was sent and printed. This approval in
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`Kodimer corresponds to the print execution operation in the claims. After approval, the
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`server in Matsuda would send the second copy for printing. This corresponds to the
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`claimed transmitting the generated second print data to the printing apparatus according
`
`to the print execution operation, and wherein the printer performs printing according to
`
`the second print data which is transmitted from the transmitter.
`
`It would have been obvious to one having ordinary skill in the art before
`
`the effective filing date of the invention to combine the teachings of Kodimer with the
`
`teachings of Matsuda in order to save money by not printing out all the copies of a print
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`job when there is an error affecting the quality of the printed matter.
`
`In regard to claim 5, which depends from claim 1, Matsuda discloses wherein
`
`the printing instruction apparatus further includes a storage that stores the second print
`
`data generated from the print data generator (Matsuda, [0032] — [0035], would be
`
`stored at least temporality in, for example, a cache memory).
`
`In regard to claim 6, which depends from claim 1, Matsuda discloses wherein
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`the printing instruction apparatus is a personal computer (Matsuda, [0030], the server
`
`is typically a personal computer).
`
`

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`Application/Control Number: 14/970,206
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`Page 9
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`Art Unit: 2674
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`In regard to claim 7, which depends from claim 6, Matsuda discloses wherein a
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`plurality of the personal computers are connected to the printing apparatus (Matsuda,
`
`Fig. 1, items 1 are connected to item 3 via item 4 and/or via item 2).
`
`11.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuda
`
`and Kodimer in view of U.S. Patent No. 7,669,196 B2 to Takizawa.
`
`In regard to claim 2, which depends from claim 1, neither Matsuda nor Kodimer
`
`disclose wherein the printing instruction apparatus further includes a print data controller
`
`that deletes the second print data generated from the print data generator, according to
`
`a print stop operation corresponding to a printed result according to the first print data.
`
`Takizawa, however, discloses when the user does not approve a sample output,
`
`the user selects erasure of a print job (Takizawa, col. 9, lines 44-47).
`
`In KSR the Supreme Court emphasized "the need for caution in granting a patent
`
`based on the combination of elements found in the prior art," and discussed
`
`circumstances in which a patent might be determined to be obvious. KSR, 127 S. Ct. at
`
`1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)).
`
`The Court reaffirmed principles based on its precedent that "[t]he combination of
`
`familiar elements according to known methods is likely to be obvious when it does no
`
`more than yield predictable results." Id. The operative question in this "functional
`
`approach" is thus "whether the improvement is more than the predictable use of prior art
`
`elements according to their established functions." Id. at 1740.
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`

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`Application/Control Number: 14/970,206
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`Page 10
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`Art Unit: 2674
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`Since the combination of Matsuda and Kodimer discloses everything in the
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`claims except wherein the printing instruction apparatus further includes a print data
`
`controller that deletes the second print data generated from the print data generator,
`
`according to a print stop operation corresponding to a printed result according to the
`
`first print data, and since Takizawa discloses/makes obvious this missing subject
`
`matter, the combination of Takizawa with Matsuda and Kodimer would result in
`
`combining familiar elements according to known methods yielding no more than
`
`predictable results. Accordingly, Applicant's improvement is no more than the
`
`predictable use of prior art elements according to their established functions.
`
`Therefore the combination and the claimed invention would be obvious. See
`
`MPEP 2141, III, section A (combining prior art elements according to known methods to
`
`yield predictable results).
`
`12.
`
`Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Matsuda and Kodimer in view of U.S. Patent Application Publication No. 2001/0029521
`
`A1 to Matsuda et al. (hereinafter, Matsuda II).
`
`In regard to claim 3, which depends from claim 1, neither Matsuda nor Kodimer
`
`disclose wherein the printing instruction apparatus further includes a print data controller
`
`that generates at least one print job corresponding to the print request, and a display
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`that displays at least one print job generated from the print data controller.
`
`

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`Application/Control Number: 14/970,206
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`Page 11
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`Art Unit: 2674
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`Matsuda ll, however, discloses wherein the printing instruction apparatus further
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`includes a print data controller that generates at least one print job corresponding to the
`
`print request, and a display that displays at least one print job generated from the print
`
`data controller (Matsuda II, [0155], job status icon is displayed).
`
`In KSR the Supreme Court emphasized "the need for caution in granting a patent
`
`based on the combination of elements found in the prior art," and discussed
`
`circumstances in which a patent might be determined to be obvious. KSR, 127 S. Ct. at
`
`1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)).
`
`The Court reaffirmed principles based on its precedent that "[t]he combination of
`
`familiar elements according to known methods is likely to be obvious when it does no
`
`more than yield predictable results." Id. The operative question in this "functional
`
`approach" is thus "whether the improvement is more than the predictable use of prior art
`
`elements according to their established functions." Id. at 1740.
`
`Since the combination of Matsuda and Kodimer discloses everything in the
`
`claims except wherein the printing instruction apparatus further includes a print data
`
`controller that generates at least one print job corresponding to the print request, and a
`
`display that displays at least one print job generated from the print data controller, and
`
`since Matsuda ll discloses/makes obvious this missing subject matter, the combination
`
`of Matsuda II with Matsuda and Kodimer would result in combining familiar elements
`
`according to known methods yielding no more than predictable results. Accordingly,
`
`Applicant's improvement is no more than the predictable use of prior art elements
`
`according to their established functions.
`
`

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`Application/Control Number: 14/970,206
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`Page 12
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`Art Unit: 2674
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`Therefore the combination and the claimed invention would be obvious. See
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`MPEP 2141, III, section A (combining prior art elements according to known methods to
`
`yield predictable results).
`
`In regard to claim 4, which depends from claim 1, neither Matsuda nor Kodimer
`
`disclose wherein the printing instruction apparatus further includes a print data controller
`
`that generates at least one print job corresponding to the print request, and a display
`
`that displays a predetermined icon representing generation of the print job in the print
`
`data controller.
`
`Matsuda ll, however, discloses wherein the printing instruction apparatus further
`
`includes a print data controller that generates at least one print job corresponding to the
`
`print request, and a display that displays a predetermined icon representing generation
`
`of the print job in the print data controller (Matsuda II, [0155], job status icon is
`
`displayed).
`
`In KSR the Supreme Court emphasized "the need for caution in granting a patent
`
`based on the combination of elements found in the prior art," and discussed
`
`circumstances in which a patent might be determined to be obvious. KSR, 127 S. Ct. at
`
`1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)).
`
`The Court reaffirmed principles based on its precedent that "[t]he combination of
`
`familiar elements according to known methods is likely to be obvious when it does no
`
`more than yield predictable results." Id. The operative question in this "functional
`
`

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`Application/Control Number: 14/970,206
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`Page 13
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`Art Unit: 2674
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`approach" is thus "whether the improvement is more than the predictable use of prior art
`
`elements according to their established functions." Id. at 1740.
`
`Since the combination of Matsuda and Kodimer discloses everything in the
`
`claims except wherein the printing instruction apparatus further includes a print data
`
`controller that generates at least one print job corresponding to the print request, and a
`
`display that displays a predetermined icon representing generation of the print job in the
`
`print data controller, and since Matsuda ll discloses/makes obvious this missing subject
`
`matter, the combination of Matsuda II with Matsuda and Kodimer would result in
`
`combining familiar elements according to known methods yielding no more than
`
`predictable results. Accordingly, Applicant's improvement is no more than the
`
`predictable use of prior art elements according to their established functions.
`
`Therefore the combination and the claimed invention would be obvious. See
`
`MPEP 2141, III, section A (combining prior art elements according to known methods to
`
`yield predictable results).
`
`Conclusion
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ERIC A. RUST whose telephone number is (571 )-270-
`
`3380. The examiner can normally be reached on Monday - Friday, 8:00 am. - 5:00
`
`pm, EST.
`
`lf 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
`
`

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`Application/Control Number: 14/970,206
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`Page 14
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`Art Unit: 2674
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`the organization where this application or proceeding is assigned is 571 -273-8300. The
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`Examiner’s direct fax phone number is 571-270-4380.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/ERIC A. RUST/
`
`Primary Examiner, Art Unit 2674
`
`05/05/2016
`
`