Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
2.. Claims 11-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, the recitation “any sheet” in claim 11 is subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Numbered paragraph [0006] of the originally filed specification merely states “The sheet is, for example, paper or a label sheet. The sheet may be any object insofar as the image forming apparatus 100 is capable of forming an image on the surface of the sheet.” As such, the specification provides support for only a limited number of different types of sheets for use in the image forming apparatus. In other words, the specification does not provide support for “any sheet” as currently recited in amended claim 11. Claims 12-18 depend from claim 11, and therefore, have the same lack of written description issue as outlined above with regard to claim 11. Claims 15-16 and 18 each recite “any sheet” also, and therefore have the same issue as outlined above with regard to claim 11.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 5-10, 15-16, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 depends from claim 1 and recites “the sheet”. It is unclear if the recited “the sheet” in claim 5 is the same or different from the previously recited “first sheet”, the previously recited “second sheet” or the previously recited “a sheet” in claim 1.
Claims 6-10 ultimately depend from claim 1 and similarly recite “the sheet”. It is unclear if the recited “the sheet” in any one of the claims 6-10 is the same or different from the previously recited “first sheet”, the previously recited “second sheet” or the previously recited “a sheet” in claim 1.
Claims 15-16 and 18 ultimately depend from claim 11 and each recites “any sheet”. It is unclear if the recited “any sheet” in any one of the claims 15-16 and 18 is the same or different from the previously recited “first sheet”, the previously recited “second sheet” or the previously recited “any sheet” in claim 11.
Allowable Subject Matter
4. Claims 1-4 and 19-20 are allowed.
Conclusion
5. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS A MORRISON whose telephone number is (571)272-7221. The examiner can normally be reached M-F 9am - 5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike McCullough can be reached at 571-272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS A MORRISON/Primary Examiner, Art Unit 3653
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