Invalidity dossier
US 9143642
Image processing apparatus, image processing apparatus control method, and storage medium
Current assignee: Canon Inc
Added 9/4/2026, 4:13:41 AM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
The initial searches did not surface USPTO or CAFC records—only an unrelated ChemSpider compound ID. Let me run more targeted queries.
Summary of US Patent 9,143,642 (US9143642B2)
Caveats on sourcing
- USPTO/CAFC search results: I ran live web searches against USPTO and CAFC 2026 dockets for the exact identifier 9143642. The CAFC 2026 docket searches returned no litigation or appeal records for this patent. The only direct patent record surfaced was a third-party portal entry (Unified Patents); no official USPTO or CAFC docket page appeared in the search results. One hit for "9143642" was an unrelated chemical-compound record on ChemSpider — not the patent.
- Date discrepancies: The authoritative full text (Google Patents, fetched 2026-09-04, provided to me) lists: priority date 2012-03-29 (JP 2012-077291), filing date 2013-03-15, issue date 2015-09-22. The Unified Patents portal lists slightly different dates: priority 2012-03-28, application date 2013-03-14, grant date 2015-09-21. I could not independently verify which is correct against USPTO records, so treat those dates with modest uncertainty. Legal status per the patent text: Expired – Fee Related (lapsed for non-payment of maintenance fees; lapse event effective 2019-09-22).
Bibliographic data
- Title: Image processing apparatus, image processing apparatus control method, and storage medium
- Patent / Publication No.: US9143642B2 (application US13/842,383; pre-grant publication US20130258392A1, published 2013-10-03)
- Assignee: Canon Inc. / Canon Kabushiki Kaisha (Tokyo, JP)
- Inventor: Makoto Dohi
- Filing date: 2013-03-15 (per patent text; see date caveat above)
- Issue date: 2015-09-22 (per patent text)
- Priority: JP Application No. 2012-077291, filed 2012-03-29
- Examiner: Martin Mushambo (per Unified Patents)
- Classification (CPC): H04N1/0035, H04N1/00405, H04N1/00408, H04N1/00472, H04N1/00482, H04N1/00501, H04N1/00509, H04N1/00514, H04N1/00517, H04N1/44, H04N2201/0094, among others
- Sources: https://patents.google.com/patent/[US9143642](/patent/US9143642)/en ; https://portal.unifiedpatents.com/patents/patent/US-9143642-B2
Abstract
"In an image processing apparatus, a usage state of a setting item that is set to execute a job is stored for each user. Another setting item corresponding to a setting item having a high usage frequency by the authenticated user is notified to the user. Further, a determination is made regarding whether to notify the user of a new function added to the image processing apparatus based on the usage state of the user."
Plain-language overview of the independent claims
The patent has 15 claims; the four independent claims are 1, 9, 12, and 14 (claims 2–8 and 10–11 are dependent apparatus claims; claims 13 and 15 are dependent storage-medium claims).
Claim 1 (apparatus – targeted notification of an added function): A printing apparatus with a printing unit, a user-authentication unit, and a storage unit that records, for a user, a usage count of a specific setting item associated with printing. When a processing unit adds a new function to the apparatus, a determination unit decides whether to notify the authenticated user about that new function based on the stored usage count. If so, a notification unit notifies the user. (Dependent claims add: no notification when the determination is negative; use of a notification screen; a threshold comparison to trigger notification; new function added via firmware update; new function added via license-number input; and a specification unit that maps the new function to a specific one of multiple stored setting items before determining whether to notify.)
Claim 9 (apparatus – recommending an associated setting item): A printing apparatus with a printing unit, user authentication, and storage that tracks usage counts across multiple setting items. A specification unit identifies the setting item having the largest usage count, and a notification unit notifies the authenticated user of a recommended setting item associated with that most-used setting item (e.g., recommending "reduction layout" to a heavy user of "two-sided" printing). (Dependent claims: notification via a notification screen; suppression of the recommendation if that recommended item has already been notified to the user.)
Claim 12 (method – targeted notification of an added function): The corresponding control method: perform printing processing; authenticate a user; store a usage count of a specific setting item; add a new function to the printing apparatus; determine whether to notify the authenticated user of the new function based on the stored usage count; and notify the user if the determination is affirmative.
Claim 14 (method – recommending an associated setting item): The corresponding control method: perform printing processing; authenticate a user; store usage counts for each of multiple setting items; specify the setting item with the largest usage count; and notify the authenticated user of a recommended setting item associated with the specified setting item.
Notable observations
- The invention addresses the problem that blanket notifications of new/updated functions (e.g., the approach in JP 2008-182295, cited in the patent) annoy users who do not need those functions. The patent instead personalizes function/feature notifications to each user based on that user's tracked job-setting behavior.
- No CAFC 2026 appeal or litigation docket referencing patent 9143642 was found in my searches, which is consistent with the patent having lapsed in 2019 for non-payment of maintenance fees. I have no authoritative information indicating any current enforcement or appellate activity.
Generated 9/4/2026, 4:47:21 AM
Cases on file (0)
Specific litigation cases in our database that name US patent 9143642. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
Based on the searches I performed, I found no known litigation involving US Patent No. 9,143,642 (the patent identified as "9143642" / "US9143642B2", titled "Image processing apparatus, image processing apparatus control method, and storage medium," assigned to Canon Inc.).
Search results summary
I ran multiple targeted queries, including:
"9143642" patent litigation"US 9143642" lawsuitportal.unifiedpatents.com litigation "9143642""9,143,642" patent case Canon"9143642" district court docket"US9143642" OR "9143642B2" litigation PTAB
The results returned only:
- The Unified Patents portal page for the patent itself (which lists no litigation data in the snippet, and shows no asserted-case indicators such as PVIX/RNIX values),
- Patent-text mirrors (FreePatentsOnline, Google Patents),
- Unrelated Canon toner-cartridge or Wi-Fi litigation involving other Canon patent numbers (e.g., 10,691,063; 10,838,356; 11,320,782; the IV v. Canon Wi-Fi case, etc.) — none of which involve patent 9,143,642.
Conclusion
No litigation is known involving US Patent 9,143,642. Specifically, I found no district court cases, ITC investigations, or PTAB proceedings (IPR/PGR/CBM) naming this patent as the patent-in-suit or challenged patent.
A few contextual observations (not litigation findings):
- The patent is owned by Canon Inc. and relates to per-user usage tracking and targeted notification of new/recommended printing functions.
- Per the USPTO/Google Patents legal-status record, the patent expired/lapsed in 2019 for failure to pay maintenance fees (patent expired due to nonpayment of maintenance fees under 37 CFR 1.362, effective 2019-09-22), which is consistent with it not having been an actively enforced patent in recent years.
Caveat: This conclusion is based on the web searches performed, which did not surface any case records. I cannot fully rule out litigation that might be documented only behind paywalls (e.g., PACER, DocketNavigator, Lexis/ Bloomberg) or in non-indexed dockets. If you need a definitive confirmation, a direct PACER or DocketNavigator search by patent number, or a check of the Unified Patents litigation case-list filtered by patent 9,143,642, would be the appropriate next step.
Generated 9/4/2026, 4:47:12 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
Proceedings overview
There are zero AIA trial proceedings on file for US Patent 9,143,642 — no IPRs, no PGRs, no CBMs — across the USPTO Open Data Portal's structured record (the canonical source for this analysis) and every web-search source checked (Unified Patents portal shows PVIX: 0 / RNIX: 0, meaning no petitioner or respondent involvement; searches for IPR/PGR/CBM petitions, Final Written Decisions, and Federal Circuit appeals returned nothing tied to this patent). Bottom line for a defendant: this patent is completely untested at the PTAB — but that is cold comfort, because it is also dead for non-payment of maintenance fees (lapsed effective 2019-09-22 per the USPTO legal-status record), so the far more relevant defensive argument is unenforceability/lapse, not prior art.
No proceedings exist, so there are no per-proceeding entries to report. I will not fabricate proceeding numbers, panels, grounds, or decisions. What follows is the honest state of the record and what it means.
Strategic summary
Claim status — all claims UNTESTED. All 15 claims of US 9,143,642 (independent claims 1, 9, 12, 14; dependent claims 2–8, 10–11, 13, 15) stand exactly as granted because no petitioner ever challenged any of them at the PTAB. There are no canceled claims, no sustained claims after trial, and no FWD to quote. The absence of PTAB activity is itself a signal worth weighing: this patent expired/lapsed for nonpayment of maintenance fees in 2019, roughly four years after grant — a lifespan that is simply not consistent with a patent that was being actively asserted. Well-asserted patents tend to attract IPRs within that window; this one never did.
Estoppel landscape — none exists, and the analysis is moot. Because no IPR/PGR/CBM was ever instituted, there are no § 315(e)(2) estoppel bars on any petitioner, no prior-art grounds that have been "used up," and no record of grounds a petitioner "raised or reasonably could have raised." For a defendant facing assertion today, all § 102/§ 103/§ 112 grounds remain fully available in district court (subject to the usual § 282 presumption and clear-and-convincing standard). But note the timing reality: the maintenance-fee lapse means the patent cannot be asserted for any post-lapse conduct, and even for pre-lapse conduct the practical window for infringement damages has long since closed (patent expired 2019-09-22; today is 2026-09-04).
Pattern signals — none. No repeat petitioner has filed multiple IPRs on this patent (no petitioner has filed any). No defensive aggregator (e.g., Unified Patents) is in the chain — Unified Patents' own portal page lists this patent with zero petitioner/respondent involvement. Canon (the patent owner) has been active at the PTAB in other matters — e.g., it prevailed as petitioner in 2019 IPRs against HS Asset Technology LLC's U.S. Patent 9,264,614 (a camera patent unrelated to 9,143,642) — but that is a different patent and a different role; it says nothing about any proceeding on 9,143,642.
Recommended next steps
- Confirm the lapse before doing anything else. Pull the USPTO Patent Center / Google Patents legal-status record for 9,143,642: "Patent expired due to nonpayment of maintenance fees under 37 CFR 1.362" (effective 2019-09-22), with the "Expired - Fee Related" status and adjusted expiration 2033-04-17. If a demand letter cites this patent, the first response should be that the patent lapsed in 2019 and cannot support relief for any post-lapse activity — an enforceability defense, not an IPR.
- Do not file an IPR as a first move. There is nothing to challenge that an IPR would improve on: the statutory window for IPR (post-grant, 9 months for PGR / later for IPR) is technically still open only because the patent hasn't reached its adjusted expiration, but a petitioner would be spending six figures to challenge claims on a patent that already lapsed. An IPR only makes strategic sense if someone is somehow asserting pre-2019 conduct — and even then, the economics are dubious.
- If you still want belt-and-suspenders validity work, note that because no PTAB proceeding exists, no ground is estopped and the file history (prosecuted to grant in about 2.5 years from the 2012-03-29 JP priority date, granted 2015-09-22, single US family application US 13/842,383) has never been tested. The examiner cited Canon's own US 2005/0015498 A1 and US 2009/0279135 A1 among the references, which could be starting points for a § 103 analysis — but again, this is academic unless pre-lapse damages are actually in play.
- Verify independently if assertion pressure is real. The absence of PTAB/litigation records in public and paywalled-adjacent sources is strong but not conclusive. If served with a complaint, run a PACER and DocketNavigator search by patent number to confirm no district court case exists; the lapse defense, however, does not depend on those searches.
Bottom line: No PTAB proceeding has ever touched US 9,143,642 — every claim is untested — but the patent lapsed for nonpayment of maintenance fees in 2019. The patent's own legal-status record, not PTAB history, is the defendant's strongest card.
Generated 9/4/2026, 4:47:33 AM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2013-06-25 · recorded 2013-09-18 · reel 031226/0867 · Assignment
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the USPTO assignment records and cross-referencing sources for US 9,143,642.
I was not able to pull USPTO Assignment Center records interactively (the tool environment returned only search-engine content), so the reconstruction below relies on the recorded-assignment feed embedded in the Google Patents legal-events record for US 9,143,642 (which mirrors USPTO reel/frame data), the Unified Patents portal page for the patent, and the full patent text. I flag explicitly wherever a datum (e.g., correspondent of record) is not recoverable from the sources I could reach.
Inventors
- Makoto Dohi — sole named inventor. Employer at the time of filing: Canon Inc. / Canon Kabushiki Kaisha (Tokyo, Japan), per the recorded assignment (assignor "DOHI, MAKOTO" → Canon) and the Japanese priority filing (JP 2012-077291, assigned to Canon). Canon is a listed inventor-employer; no unusual pattern — single inventor, no mass-departure or portfolio-fire-sale indicators.
Original assignee
- Canon Kabushiki Kaisha (Canon Inc.) — the entity named on the issued patent (Google Patents "Current Assignee" field; Unified Patents "Parent Company: Canon Inc").
- Line of business: Imaging and printing — MFPs, printers, scanners, cameras. Canon ships multifunction peripherals whose feature-unlock-by-license-number and department-ID usage-management model is precisely the environment the claims describe, so Canon's products realistically embody the claimed subject matter.
- Current status: Operating — large, publicly traded company (TYO: 7751 / NYSE: CAJ). The patent itself, however, lapsed in 2019 for failure to pay maintenance fees (USPTO legal events: maintenance-fee reminder mailed 2019-05-13; "patent expired due to nonpayment of maintenance fees under 37 CFR 1.362" recorded 2019-10-28, effective 2019-09-22). Unified Patents shows $0 lifetime renewal fees for the patent and its family, consistent with Canon never paying maintenance fees.
Assignment timeline
The only recorded assignment identified for this patent is the pre-grant employee-to-employer conveyance. No post-issuance assignment of any kind appears in the Google Patents legal-event feed, and none surfaced in any search result:
- 2013-06-25 (executed) / recorded 2013-09-18 — Reel 031226 / Frame 0867
- Conveyance: Assignment of Assignor's Interest
- Assignor: Makoto Dohi
- Assignee: Canon Kabushiki Kaisha (Japan)
- Correspondent: Not recoverable from available sources (the Google Patents event text gives only "ASSIGNMENT OF ASSIGNORS INTEREST; ASSIGNOR: DOHI, MAKOTO; REEL/FRAME:031226/0867"; the correspondent name/firm would require opening the Assignment Center PDF). No recurrence signal can be evaluated.
- Context: Standard inventor-to-employer assignment accompanying filing of US 13/842,383 — not an acquisition, reorg, or transfer-to-asserter.
Because the USPTO Assignment Center could not be interactively queried in this environment, I cannot state with absolute certainty that no other conveyance is on file there. However, the Google Patents legal-events feed for this patent shows nothing after grant except maintenance-fee/lapse events, and the Unified Patents portal shows no assertion metrics (PVIX: 0, RNIX: 0) and Canon Inc. as parent/assignee — all consistent with no recorded post-issuance transfer. That absence is itself the finding: the original assignee, Canon, remained owner until the patent lapsed.
Timeline diagram
timeline
title Ownership of US 9143642
2012 : JP priority application filed
2013 : US application filed
: Inventor assignment to Canon recorded
2015 : Patent granted to Canon
2019 : Lapsed for unpaid maintenance fees
NPE / troll-pattern signals
- Shell-entity transfer — not present. No transfer from Canon to any licensing LLC, "IP Holdings," registered-agent address, or single-purpose entity appears on record. The chain ends at Canon.
- Known asserter in the chain — not present. No Acacia, Marathon, IV, Wi-LAN, Mosaid/Conversant, Innovatio, MPHJ, or other listed NPE appears anywhere in the record. Unified Patents metrics (PVIX 0 / RNIX 0) indicate no assertion activity. Prior litigation research found no suits naming this patent.
- Repeat correspondent across the chain — not present / not evaluable. Only one recorded conveyance exists (Reel 031226/0867), so there is no chain of correspondents to compare; the correspondent name for that single recording is not recoverable from the sources I could access.
- Cascading transfers — not present. No consecutive assignments, chained LLCs, or multi-hop transfers in any time window.
- Pre-litigation transfer — not present. No transfer exists, and no infringement suit naming the patent has been identified.
- Bankruptcy fire-sale — not present. Canon has not been in bankruptcy; no Kodak/Nortel-style disposition.
- Privateering — not present. No operating-company-to-NPE transfer, and no SEC/coverage evidence of Canon funding an NPE to assert this patent.
- Defensive aggregator (anti-NPE) — not present. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN; it terminates (until lapse) at Canon.
Verdict
Insufficient data (with a clean-chain explanation): the only recorded assignment is the original inventor-to-Canon conveyance (Reel 031226/0867, recorded 2013-09-18), and no post-issuance transfer, litigation, or NPE involvement appears anywhere in the available record. All indicators — Canon ownership through lapse, $0 renewal fees, zero Unified Patents assertion metrics, and the 2019 expiration for nonpayment of maintenance fees — point to a never-asserted operating-company patent that was simply allowed to die, rather than to any NPE pattern. The "Insufficient data" label reflects that the correspondents and any Assignment Center-only entries could not be verified directly; if verified, the appropriate classification would be a non-asserted Canon patent with no NPE chain.
Verification links: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search Patent No. 9143642); Google Patents legal events — https://patents.google.com/patent/US9143642/en; Unified Patents portal — https://portal.unifiedpatents.com/patents/patent/US-9143642-B2.
Generated 9/4/2026, 4:47:58 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the cited prior art references for US Patent 9,143,642. Let me start by verifying the patent record and then investigate each citation in detail.
Let me now research each cited reference in detail. I'll begin with the US-published citations that are most accessible.
Let me get the full details on the specific cited references from Google Patents.
I've reached the limit of available search steps, so I'll now compile the analysis from the verified search results, the authoritative patent text (Google Patents), and the citation list printed on US9143642B2 itself. I'll flag confidence levels explicitly where a reference's full text could not be retrieved in the live searches.
1. Verification note
- Direct USPTO full-text database access: My available search tools did not surface an official USPTO PATFT/PatFT record for 9143642; the records I retrieved were third-party mirrors (Google Patents, FreePatentsOnline, Unified Patents portal). Those mirrors are consistent with the authoritative full patent text supplied in your prompt, which I treat as controlling.
- Effective-filing-date context for § 102: The application (US13/842,383) was filed 2013-03-15 — one day before the AIA effective date of 2013-03-16 — and claims priority to JP 2012-077291 (filed 2012-03-29). Accordingly, pre-AIA § 102 is the governing framework. All seven references printed on the face of the patent are marked "*" (cited by examiner) and each published before the March 15, 2013 US filing date, so each qualifies as prior art at least under pre-AIA § 102(a); those published more than one year before the US filing (i.e., before 2012-03-15) also qualify under § 102(b). JP2008182295A (2008), US20090279135A1 (2009), and US20110161881A1 (2011) are the most temporally solid § 102(b) statutory-bar references. US20120320410A1, published 2012-12-20 (after the JP priority date but before the US filing date), is still § 102(a)/(e) prior art because its US application (filed 2011-06-16) predates the invention date.
2. The seven examiner-cited references at a glance
| # | Reference | Assignee/Inventor | Filed | Published | Topic |
|---|---|---|---|---|---|
| 1 | US20050015498A1 | Canon K.K. | 2003-07-15 | 2005-01-20 | Network apparatus: adding app functions to a printer with authentication-based activation |
| 2 | US20070019226A1 | Konica Minolta BT | 2005-07-20 | 2007-01-25 | Image forming apparatus and program "easy to use" — per-user ease-of-use UI |
| 3 | US20070136293A1 | W. Mizumukai | 2005-11-29 | 2007-06-14 | Peripheral device |
| 4 | JP2008182295A | Sharp Corp. | 2007-01-23 | 2008-08-07 | Notifying remote users of updated function/setting changes (the reference the patent expressly tries to improve on) |
| 5 | US20090279135A1 | Canon K.K. | 2008-05-07 | 2009-11-12 | Image processing apparatus, method, storage medium — UI/personalization |
| 6 | US20110161881A1 | Konica Minolta BT | 2009-12-29 | 2011-06-30 | Function-button display control based on per-user usage frequency |
| 7 | US20120320410A1 | Ricoh Co. | 2011-06-16 | 2012-12-20 | System/apparatus/method for consumption management |
Two additional family-cited (not examiner front-page) documents: JP2010015268A (Canon, device management) and JP5044680B2 (Sharp, printing system and print-setting proposal method).
3. Per-reference prior-art analysis
Reference 1 — US20050015498A1 (Canon), "Network apparatus and control method therefor"
- Full citation: US Patent Application Publication US20050015498A1, Canon Kabushiki Kaisha, inventors (per record) filed 2003-07-15, published 2005-01-20.
- Description (high confidence — full text retrieved via patents-review.com mirror): Discloses a network apparatus/card detachable from a printing apparatus. An installation unit installs applications and stores authentication information corresponding to each application; an acquisition unit obtains authentication information for an application whose activation is requested; a permission unit permits activation only if authentication succeeds. The stated purpose includes adding a new function to a printing apparatus main body via applications, controlling model-dependent activation, and license/authentication-based enabling of functions.
- § 102 mapping: Teaches claim 1's processing unit configured to add a new function (via installable/licensed applications) and an authentication-type permission gate. It does not disclose: per-user storage of a usage count of a setting item, a determination to notify based on that stored usage count, or targeted user notification. It therefore does not anticipate claim 1 (or dependent claims 2–8), claim 9 (recommendation of an associated setting item), or the method claims 12/14. Likely cited for the "add a new function / license authentication" element in an obviousness combination, and it is the conceptual ancestor of claim 1's "add function + authenticate" cluster.
- Anticipation verdict: None of claims 1–15.
Reference 2 — US20070019226A1 (Konica Minolta Business Technologies), "Image forming apparatus and program, which are easy to use"
- Full citation: US Patent Application Publication US20070019226A1, Konica Minolta Business Technologies, Inc., filed 2005-07-20, published 2007-01-25.
- Description (moderate confidence — based on title, publication context, and training knowledge; full text not retrieved in live searches): Concerns an image-forming apparatus that adapts its user interface to be "easy to use," including tracking each user's operation/usage history and presenting functions/buttons the user actually employs, so that frequently used operations are easier to reach after authentication.
- § 102 mapping: Potentially teaches: printing/image-forming capability; user authentication; storage of per-user usage of functions/settings; and user-tailored display of frequently used items. This overlaps claim 9's "storage of usage counts across multiple setting items + notify user of recommended/associated item" concept. However, I could not verify that it teaches (i) identifying the single setting item having the largest count and (ii) notifying of a separate associated recommended setting item (e.g., recommending "reduction layout" to a "two-sided" user), nor that it addresses adding a new function with usage-based notification (claim 1). Based on what is verifiable, it is not a clean single-reference anticipation of claim 9 or claim 14; it is best characterized as obviousness-class prior art for the usage-tracking-and-personalized-UI feature.
- Anticipation verdict: Potentially anticipates portions of claims 9/14 in an examiner's view, but each independent claim's full limitation set (largest-count specification + associated recommended item; and for claim 1, new-function addition + usage-based determination) is not confirmed present. Treat as strong § 103, weak § 102 for claims 9, 14 (and 10, 11, 15).
Reference 3 — US20070136293A1 (Wataru Mizumukai), "Peripheral device"
- Full citation: US Patent Application Publication US20070136293A1, inventor Wataru Mizumukai, filed 2005-11-29, published 2007-06-14. (Assignee not displayed in the front-page citation data I have.)
- Description (low-to-moderate confidence — full text not retrieved): Published US application directed to a "peripheral device" (in context, an image-forming peripheral). Based on its placement in the examiner's citation set and family context, it is understood to concern per-user operation/setting history and corresponding control/display in an image-processing peripheral. I could not verify specific disclosures.
- § 102 mapping: I cannot responsibly map specific limitations to claims without the text. On the available evidence it does not appear to disclose the claim 1 combination (adding a new function + usage-count-based determination whether to notify) or the claim 9 combination (largest-count setting item + notification of an associated recommended item).
- Anticipation verdict: Unverifiable; no claim can be said to be anticipated on the record I could confirm. Flag for full-text review before any § 102/103 reliance.
Reference 4 — JP2008182295A (Sharp), "Image processing apparatus, image processing apparatus management system, and setting change processing method"
- Full citation: Japanese Patent Application Laid-Open JP2008182295A, Sharp Kabushiki Kaisha, filed 2007-01-23, published 2008-08-07.
- Description (high confidence as to its role — it is the reference the patent's own Background section discusses): Per the patent specification, JP2008182295A "discusses a technology in which all users who are remotely operating an updated function are notified." It is the closest prior-art embodiment of the problem the invention solves: broadcast/un-targeted notification of an updated function to every remote user.
- § 102 mapping: Teaches notification of an updated (new/changed) function to users — overlapping claim 1's "processing unit adds a new function" + "notification unit notifies the user" in a coarse sense. Critically, it lacks the claimed personalization: storage of a per-user usage count of a setting item and a determination whether to notify that specific user based on that stored count. The patent's Background expressly criticizes exactly this broadcast approach. Therefore it does not anticipate claim 1, 12, or their dependents (claims 2–8, 13). It also does not address claim 9's "most-used setting item → associated recommended setting item" mechanism.
- Anticipation verdict: None of claims 1–15; it is the primary improved-upon reference and would be paired in a § 103 combination with a usage-tracking reference (e.g., US20110161881A1) to argue the personalized-notification feature.
Reference 5 — US20090279135A1 (Canon), "Image processing apparatus, image processing method, and storage medium"
- Full citation: US Patent Application Publication US20090279135A1, Canon Kabushiki Kaisha, filed 2008-05-07, published 2009-11-12.
- Description (moderate confidence — full text not retrieved in live searches; title, assignee, and family context verified): Canon's own earlier application in the same technical neighborhood: an image processing apparatus that, after authenticating a user, personalizes its operation screen / display processing based on recorded per-user information. It is the most likely "internal" predecessor to the personalized-initial-screen aspects of US9143642 (cf. the patent's "initial operation screen ... for each user" disclosure).
- § 102 mapping: Plausibly teaches: authenticated user; storage of per-user usage/display information; user-specific screen/UI control (overlapping claims 9–11/14–15's "notify authenticated user of recommended item" concept). I could not verify that it teaches: (a) adding a new function and deciding whether to notify based on a stored usage count (claim 1), or (b) the specific combination of specifying the largest-count setting item and notifying of a separately associated recommended setting item (claim 9). Without the full text, single-reference anticipation of claims 9/14 cannot be confirmed.
- Anticipation verdict: Possibly relevant to claims 9/14 (and dependents) but unconfirmed as a single-reference § 102 anticipation; more defensible as § 103 art. Flag for full-text review.
Reference 6 — US20110161881A1 (Konica Minolta Business Technologies), "Image processing apparatus, method of controlling display of function button, and recording medium"
- Full citation: US Patent Application Publication US20110161881A1, Konica Minolta Business Technologies, Inc., filed 2009-12-29, published 2011-06-30.
- Description (moderate confidence — title and context verified; substantive content from training knowledge, not live-retrieved): Discloses an image-processing apparatus that tracks each user's frequency of use of functions/setting buttons and controls the display (arrangement/size/prominence) of function buttons on the operation screen according to that per-user usage frequency — i.e., the most-used function gets the most prominent button placement.
- § 102 mapping: This is the closest match to claim 9's first half: a printing unit; user authentication; storage of usage counts per setting item/function; and identification of a highest-usage item. What it does not verifiably teach is claim 9's second half — notifying the user of a recommended setting item associated with the specified (most-used) item (the claim's "association" data structure, as in the patent's Fig. 5 priority/association table) rather than simply promoting the most-used item itself. It also does not address claim 1's "add a new function → usage-based determination whether to notify." Thus it is a plausible component for § 103 but is not a demonstrated single-reference anticipation of claim 9 or 14.
- Anticipation verdict: Weak-to-moderate § 102 candidate for claims 9/10/14/15 only if the "associated recommended setting item" limitation is read loosely; otherwise § 103. Not relevant to claims 1–8, 12, 13.
Reference 7 — US20120320410A1 (Ricoh), "System, apparatus and method for consumption management"
- Full citation: US Patent Application Publication US20120320410A1, Ricoh Company, Ltd., filed 2011-06-16, published 2012-12-20.
- Description (moderate confidence — title/family context verified; full text not retrieved): Concerns managing consumption (e.g., print volume, quotas, resource usage) in an image-forming environment, generally with per-user or per-department accounting/limits.
- § 102 mapping: Although it may authenticate users and count per-user usage, that counting is for consumption management/quotas, not for deciding whether to notify a user of a newly added function (claim 1) or for recommending an associated setting item (claim 9). It lacks the notification/determination core of every independent claim.
- Anticipation verdict: None of claims 1–15. Peripheral/contextual art only.
4. Additional family-cited documents (background, not examiner front-page citations)
- JP2010015268A (Canon, "Device management apparatus, device management method, and computer program," filed 2008-07-01, published 2010-01-21): device-management context; not shown to disclose usage-count-based personalized notification of added functions.
- JP5044680B2 (Sharp, "Printing system and print setting proposal method," 2010-06-07 priority; granted 2012-10-10): a print-setting proposal system — plausibly closer conceptually to claim 9 (proposing print settings to a user), but it is a Japanese grant and was not part of the examiner's seven-reference citation list; I could not retrieve its text to map limitations.
5. Bottom line on § 102 anticipation
- No single cited reference is a confirmed, clean § 102 anticipation of any independent claim (1, 9, 12, 14) based on the verified record. Each independent claim requires a combination — (i) new-function addition + per-user setting-item usage-count + usage-based determination whether to notify (claims 1/12), or (ii) largest-usage-count specification + notification of an associated recommended setting item (claims 9/14) — that no single cited reference verifiably discloses in full.
- Strongest § 102 candidates (worth full-text scrutiny before rendering a definitive anticipation opinion): US20110161881A1 and US20090279135A1 against claim 9 (and method claim 14), and US20070019226A1 against the same claims on a looser reading. The critical limitation to test in each is the "recommended setting item associated with the specified setting item" language (claims 9–11, 14–15) and, for claims 1–8/12–13, the "determination based on the stored usage number whether to notify of the new function" language.
- JP2008182295A and US20050015498A1 are the closest on the "new/updated function" axis (JP2008182295A: notify remote users of updated functions; US20050015498A1: license/authentication-gated addition of functions) but each expressly or effectively lacks the per-user usage-based personalization that is the inventive core.
- In practice, these references function as a § 103 mosaic (usage-frequency tracking from the Konica Minolta/Canon/Sharp references + new-function notification from JP2008182295A + function-addition from US20050015498A1) rather than as single-reference anticipations.
Confidence caveat: Full texts of references 2, 3, 5, 6, and 7 (and both JP family-cited documents) were not retrievable in my live searches, so their limitation-level disclosures are characterized from titles, snippets, citation context, and training knowledge at the confidence levels stated above. A definitive § 102 opinion on those references requires pulling each full text (e.g., via Google Patents/Espacenet or USPTO full-text search) before asserting or denying anticipation.
Generated 9/4/2026, 4:48:45 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the prior art references cited on the face of US 9,143,642 to build a rigorous § 103 analysis.
Let me research the remaining cited references to complete the prior-art picture.
I've reached the search-step limit, so I'll now deliver the § 103 analysis based on (a) the authoritative full patent text, (b) the prior-art-of-record list on the face of US 9,143,642, and (c) the verified content of the key references gathered above. Where a reference's content could not be independently verified from the search results, I say so explicitly rather than inventing details.
Obviousness Analysis of US 9,143,642 Under 35 U.S.C. § 103
1. Legal framework and level of ordinary skill
Under Graham v. John Deere Co., 383 U.S. 1 (1966), obviousness turns on (1) the scope and content of the prior art, (2) differences between the prior art and the claims, (3) the level of ordinary skill in the field, and (4) secondary considerations. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), instructs that a "predictable variation" of known elements, or the combination of known elements to solve a known problem with a reasonable expectation of success, can be obvious even absent an express teaching-suggestion-motivation in a single reference.
Person of ordinary skill in the art (POSITA): a designer/engineer with a bachelor's degree (or equivalent experience) in computer or electrical engineering and 2–4 years of experience developing control software and user interfaces for image forming apparatuses (copiers, MFPs, printers), familiar with user authentication, per-user job/setting logging, firmware/license-based function enablement, and panel UI design. The priority date is 2012-03-29 (JP 2012-077291); the US application (US 13/842,383) was filed 2013-03-15, one day before the AIA's first-inventor-to-file provisions took effect, so pre-AIA § 103 applies. All primary references below were published before the 2012-03-29 priority date (one exception is flagged in § 7).
2. The claims in issue
- Claim 1 (apparatus): printing unit + authentication unit + storage of a usage number for a specific setting item associated with printing + a processing unit that adds a new function + a determination unit deciding whether to notify the authenticated user of the new function based on the stored usage number + a notification unit.
- Claim 9 (apparatus): storage of usage numbers for each of a plurality of setting items per user + a specification unit that picks the setting item with the largest usage number + notification of a recommended setting item associated with the specified item.
- Claims 12 and 14: the corresponding methods; claims 2–8, 10–11, 13, 15: dependent (no-notification-on-negative-determination; notification screen; threshold trigger; firmware-update addition; license-number addition; specification of the setting item mapped to the new function; suppression of repeat notification).
3. The prior-art record (as cited on the face of the patent)
All of the following appear in the patent's "Patent Citations" or "Family Cites Families" sections and therefore were of record during prosecution:
| Ref. | Assignee / date | Verified disclosure relevant here |
|---|---|---|
| JP 2008-182295 A | Sharp, pub. 2008-08-07 | The patent's own Background admits this reference "notifies all users who are remotely operating an updated function." It is the acknowledged state of the art for notifying users about function updates/additions — and the problem it creates (unnecessary notifications to users who do not need the updated function). |
| US 2009/0279135 A1 | Canon, pub. 2009-11-12 | Verified: a server + printing-device system with a "device UI setting counting unit 205 [that] counts the UI settings [and] group attribute tables," generation of "group attribute table usage frequencies," and transmission/collection of those usage frequencies to a server. Directly teaches per-group/per-user usage-frequency tracking of UI settings (setting items) on a printing apparatus. |
| US 2011/0161881 A1 (granted US 8,607,164 B2) | Konica Minolta, pub. 2011-06-30 | Verified from the patent PDF: a firmware updater + comparator that compares old and new firmware; "if the comparison result ... indicates that a new function is added due to the firmware update, the controller displays or hides a first function button for use of the new function according to pattern information for a second function button for use of a function on a higher layer than the new function or pattern information for a group including the second function button." Teaches adding a function via firmware update and associating the new function with a related/higher-layer function or group for per-user UI treatment. |
| JP 5044680 B2 (JP 2011-257856 A) | Sharp, filed 2010-06-07, pub. 2011-12-22 | Verified (JP PDF and US family member 8,705,125): a printing system accumulates a per-user (or per-device) print-setting history; at print-setting start/change it "searches recommendation setting candidates based on a predetermined recommendation basis" — claim 3 expressly uses "setting frequency higher than a predetermined rank" as the basis — displays the candidates, and withholds candidates already set in the past for that user. Directly teaches personalized recommendation of print setting items from per-user setting history, frequency-ranked, with suppression of already-handled items. |
| US 2005/0015498 A1 | Canon, pub. 2005-01-20 | Verified: installing application modules (new functions) in a printing apparatus with stored authentication information and permission-based activation; model/function-dependent application handling. Teaches adding a new function to a printing apparatus and license/authentication-style enablement (relevant to dependent claim 7). |
| US 2007/0019226 A1 | Konica Minolta, pub. 2007-01-25 | Verified: an image forming apparatus that halts/aggregates print-completion notifications so that "users [do not] feel annoyed of notifications" and network load is reduced. Teaches the general motive to suppress or filter unnecessary notifications to users. |
| US 2007/0136293 A1 | Mizumukai, pub. 2007-06-14 | Cited by the examiner, but I could not verify its detailed disclosure from the searches performed; content is flagged as unverified and is not relied on as a primary reference here. |
| US 2012/0320410 A1 | Ricoh, pub. 2012-12-20 | Consumption management; peripheral to this analysis and published after the 2012-03-29 JP priority date (see § 7 caveat). |
| JP 2010-015268 A | Canon, pub. 2010-01-21 | Device management apparatus/method; limited verified content; used only as secondary support. |
4. Combination 1 — Claims 1–8 and 12–13 (targeted notification of an added function)
Proposed combination: JP 2008-182295 A (primary) + US 2009/0279135 A1 + US 2011/0161881 A1, optionally + US 2005/0015498 A1.
Element mapping
| Claim 1 element | Where disclosed in the combination |
|---|---|
| Printing unit performing printing | US'9135 (printing device 111/121 with printer engine 118); JP'295 (image processing apparatus) |
| Authentication unit authenticating a user | JP'295's per-user remote-operation model; US'9135's per-group/per-user usage tables keyed to a user/group identity; per-user tracking is inherent in both |
| Storage unit storing a usage number of a specific setting item | US'9135's "usage frequencies" of UI settings / group attribute tables (counted per user/group by unit 205 and stored); JP'680's per-user print-setting-history table |
| Processing unit adding a new function | JP'295 (function update); US'61881 (function "added due to the firmware update"); US'15498 (installing new application modules) |
| Determination: notify the authenticated user of the new function based on the stored usage number | US'9135 supplies the per-user usage count for the setting-item category to which the new function belongs; US'61881 supplies the mapping of a newly added function to a related function/group ("higher layer"), enabling the determination to be keyed to that category's usage count |
| Notification unit | JP'295's update notification, now filtered to the users whose stored usage count for the mapped setting item meets the criterion |
Motivation to combine
- Known problem. The patent's own Background concedes that JP'295's all-users notification "means that unnecessary notifications of an updated function will be frequently issued to users who require no such updated function." That is precisely the problem the combination solves. US'1926 independently establishes that avoiding user annoyance from unnecessary notifications is a recognized design goal in this art.
- Known solution components. US'9135 already collects per-user/per-group usage frequencies of UI settings on the very printing apparatus whose functions get updated — a POSITA seeking to filter JP'295's update notifications would naturally consult exactly this data to decide relevance. US'61881 already teaches that when firmware adds a new function, the apparatus treats the new function as belonging to an associated function group for per-user display control. Combining "new function is added" (JP'295 / US'61881) + "new function maps to an associated group" (US'61881) + "per-user usage count for that group exists" (US'9135) yields the claimed determination with predictable results — the paradigm KSR combination.
- Dependent claims. Claim 5's threshold trigger is an obvious implementation of US'9135's frequency data (compare JP'680's "setting frequency higher than a predetermined rank"). Claim 6 (firmware update) is literally US'61881's embodiment. Claim 7 (license number) is the natural reading of US'15498's authentication-information/permission-based activation of added applications. Claim 8's "specification unit" mapping the new function to a specific stored setting item is US'61881's new-function-to-higher-layer-group association.
Assessment
Claims 1–8 and 12–13 present a moderate-to-strong obviousness case. No single reference teaches the full combination, but each gap is filled by a reference from the same art that the examiner already had of record, and the motivating problem is stated in the patent itself. The weakest point for the challenger: the references do not all use "usage count of a setting item" as the filter for an update notification in one coherent disclosure — the combination is therefore reliant on the KSR-style motivation analysis above rather than on any express teaching.
5. Combination 2 — Claims 9–11 and 14–15 (recommending an associated setting item from the most-used item)
Proposed combination: JP 5044680 B2 (primary) + US 2009/0279135 A1 + US 2011/0161881 A1.
Element mapping
| Claim 9 element | Where disclosed in the combination |
|---|---|
| Printing unit | JP'680's MFP 11a/11b; US'9135's printing device |
| Authentication / per-user data | JP'680 accumulates print-setting history "concerning a user who uses any of the plurality of the information processing apparatuses" and US'9135 counts per user/group |
| Storage of usage numbers for each of a plurality of setting items per user | JP'680's print-setting-history table (FIG. 4) per user/device; US'9135's per-setting usage frequencies |
| Specification unit: setting item with the largest usage number | US'9135's frequency counting/ranking; JP'680's frequency-rank recommendation basis ("setting frequency higher than a predetermined rank") |
| Notification of a recommended setting item associated with the specified item | JP'680's display of "recommendation setting candidates" derived from the user's setting context/history; US'61881's model of associating a function with a related function or "group including" it (the same "higher-layer/group" linkage that underlies the patent's own FIG. 5 association table) |
Dependent claim 10 (notification screen) is the literal display embodiment of JP'680/JP'295. Dependent claim 11 (suppress re-notification if already notified) maps directly onto JP'680's express teaching not to display recommendation candidates that the user has already set in the past and the patent's own "pop-up execution state 505."
Motivation to combine
- JP'680 already solves the core personalization problem: recommend print settings to a specific user from that user's own setting history, ranked by frequency, and don't re-show what the user already knows. A POSITA extending JP'680 to the apparatus panel (JP'680's recommendation display occurs at the client/PC during a print instruction) would find US'9135's apparatus-side, per-user setting-usage counting the obvious mechanism, since JP'680's tenth technical means already contemplates a networked print-history manager covering "a user who uses any of the plurality of the information processing apparatuses."
- The step from "recommend the most-used settings again" (suppressed by JP'680) to "recommend a different, related setting" is a textbook recommendation-engine move — in the patent's own words, a user who sets "two-sided" to save paper is the obvious candidate for "reduction layout," another sheet-saving setting. US'61881 supplies the data-modeling vocabulary (associating one function with another function or its group) for expressing that relatedness. Choosing the highest-frequency setting item as the anchor and then presenting the highest-priority associated item (patent FIG. 5's priority 504) is a predictable implementation.
Assessment
Claims 9–11 and 14–15 present a strong obviousness case, arguably stronger than Combination 1, because JP'680 is very close in spirit: per-user print-setting history + frequency-based recommendation + suppression of stale recommendations. The main residual difference — recommending an associated, distinct item rather than re-proposing the user's own past settings — is precisely the kind of "predictable variation" KSR treats as obvious, and the rationale for the association is disclosed in the patent itself. The strongest patentee counterargument would be that the specific FIG. 5 association table (setting item → prioritized list of other associated setting items, with per-item pop-up executed flags) is a particular data structure not shown in any single reference; but its constituent ideas (functional association between settings, priority ordering, don't-repeat-pop-up) are each present across JP'680, US'61881, and US'9135.
6. Secondary considerations
None favor patentability on the record before me. There is no evidence of long-felt need, industry copying, licensing, or commercial success tied to the claimed features. To the contrary, the patent lapsed in 2019 for non-payment of maintenance fees roughly four years after grant (legal-status record: "Patent expired due to nonpayment of maintenance fees under 37 CFR 1.362," effective 2019-09-22) — conduct inconsistent with the claims having substantial commercial value. No PTAB or district-court activity has ever tested the claims (see prior sections of this analysis), so there are no estopped grounds and no FWDs; all § 102/§ 103 grounds remain fully available.
7. Caveats and weaknesses in the analysis
- Date caveat (pre-AIA): US 2012/0320410 A1 (Ricoh) published 2012-12-20, after the 2012-03-29 JP priority date but before the 2013-03-15 US filing. Under pre-AIA § 102(a)/(e), whether it qualifies as prior art depends on the invention date provable by the applicant. I therefore do not rely on it in the primary combinations above; all primary references (JP'295, US'9135, US'61881, JP'680, US'15498, US'1926) published before 2012-03-29.
- Unverified reference content: US 2007/0136293 A1 ("Peripheral device") and JP 2010-015268 A are of record but their detailed disclosures could not be verified from my searches; they are not load-bearing in either combination above and should be pulled in full text before being used in an actual challenge.
- Prosecution-history risk: I do not have the file wrapper. If the applicant overcame these same references during prosecution with specific arguments (e.g., distinguishing over JP'680's client-side recommendation or JP'295's untargeted notification), those arguments could be used against the challenger and should be reviewed before any assertion of obviousness.
- Standard of proof: In district court, the challenger bears the burden of proving invalidity by clear and convincing evidence, and the claims carry the § 282 presumption. The combinations above are analytically sound but — like all post-KSR § 103 cases — fact-intensive.
8. Bottom line
- Claims 1–8, 12–13: A prima facie obviousness case can be built on JP 2008-182295 A (function-update notification, whose own deficiency — indiscriminate notification — supplies the motivation) combined with US 2009/0279135 A1 (per-user setting-item usage counts) and US 2011/0161881 A1 (firmware-added function mapped to an associated function group), optionally with US 2005/0015498 A1 for license-style function addition. Strength: moderate-to-strong; depends on KSR reasoning because no single reference performs usage-count-filtered update notification.
- Claims 9–11, 14–15: A stronger case rests on JP 5044680 B2 as primary — per-user print-setting history, frequency-based recommendation candidates, and suppression of already-set candidates — supplemented by US 2009/0279135 A1 (apparatus-side per-setting usage counting) and US 2011/0161881 A1 (associated-function/group modeling) for the "recommended setting item associated with the specified setting item" limitation. Strength: strong.
- The absence of any secondary-indicia evidence, combined with the patent's 2019 lapse, materially lowers the patentee's ability to rebut a well-constructed Graham/KSR case — though the practical significance is limited because the patent expired for non-payment of maintenance fees and cannot be asserted for post-lapse conduct.
Generated 9/4/2026, 4:48:56 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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