DETAILED ACTION
1. Claims 1-10 are pending in this application for reissue of US Patent 11,119,434 (“the '434 patent”) issued from application no. 16/705,505. Original patent claims 1-10 were amended for this reissue application. This Office Action is responsive to amendments filed on April 28, 2025 in response (“the Response”) to the Non-Final Rejection issued on January 31, 2025. In the Response, Applicant amended claim 1 and cancelled claim 10. Claims 1-9 are currently pending.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior or Concurrent Proceedings
3. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘337 patents is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
4. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Response to Amendments and Arguments
Claim Objections
5. Claims have been amended to overcome the objection issued in the last Office Action. However, as discussed below, amended claims do not comply with 37 CFR 1.173.
Claim Rejections – 35 U.S.C. 251
6. New declaration with a statement of error that identifies an error has been filed. Corresponding rejection is withdrawn.
7. Claims have been amended to overcome a rejection under 35 USC 251 for claiming subject matter not directed to the invention disclosed in the original patent. Corresponding rejection is withdrawn.
Claim Rejections – 35 U.S.C. 112
8. Amendments to the claims to overcome the rejection under 35 USC 251 also overcomes the rejection under 35 USC 112(a). Corresponding rejection is withdrawn.
Claim Rejections – 35 U.S.C. 102
9. Claims have been amended to overcome anticipation rejection based on Ricoh. However, Applicant’s arguments are moot in view of the new ground of rejection necessitated by amendments.
Claim Objection - 37 C.F.R. 1.173
10. 37 CFR 1.173 (c) states:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims (emphasis added).
Applicant has not provided any explanation of the support in the disclosure of the patent for the changes made to the claims for the amendments to claim 1. As to new claims 60-67, although Applicant cited various paragraphs in the specification as support, there was no explanation as to how the cited paragraphs support the specific limitations of the claims. Applicant must explain how each of the limitations of the new claims are supported in the specification with reference to specific passages in the specification with accompanying explanations. Failure to comply in the next response may result in a notice of non-compliance with no substantive examination. Failure to provide sufficient explanation of support to satisfy the written description requirements under 35 USC 112(a) may result in additional new rejections under that statute.
11. 37 CFR 1.173 (g) states:
g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
Claim amendments are objected to because amendments were not made relative to the patent claims which were in effect as of the date of filing of the reissue application. Appropriate correction is required. All amended claims must be identified as amended, not previously presented.
Claim Rejections - 35 USC § 112
12. 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.
13. Claims 1-9 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 1 recite the limitations “the quantity”, “the distribution”, and “the reflected light emission”. There’s insufficient antecedent basis for these limitations. Dependent claims 2-9 are rejected for the same reason.
Claim Rejections - 35 USC § 103
14. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
15. Claims 1-4 and 7-9 are rejected under pre-AIA 35 U.S.C. 103(a) as being anticipated by JP2012-131593 (“Ricoh”) in view of US Pub. 2019/0079438 (“Iwakoshi”).
16. With respect to claim 1, Ricoh discloses a detection device that detects information corresponding to at least one of the quantity (see paragraph [0076]) and the distribution of the reflected light emission to a recording medium, the detection device comprising:
a controller (FIG. 1, printer control device 2090) that controls a shutter (FIG. 3, holding member 18 and plate 17) to initially bring about an opened state, when the information of the recording medium is to be detected, and to subsequently bring about a closed state, when the information of the recording medium is detected (Abstract or Overview, “When paper type determination process is carried out, an opening of the 16 is opened, and when the paper type determination processing is not carried out, the opening is sealed.”) and a plurality of other recording media (see FIG. 1, sheet feed tray 2060) are sequentially conveyed along a conveyance path (see FIG. 1, paper path through rollers 2056, 2042, 2050, and 2058);
a housing unit (housing 16 for optical sensor 2045) provided with an opening (see FIG. 4, opening covered by 18 and 17) so as to face the conveyance path on which the recording medium and the other recording media are conveyed; and
a light emitting unit (light source 11) and a light receiving unit (light receiver 15) that are accommodated in the housing unit, wherein the light emitting unit emits light toward the recording medium disposed so as to face the opening (see FIG. 15),
wherein the light receiving unit receives light reflected from the recording medium (see FIGs. 15-18), and wherein the housing unit includes the shutter that allows switching between the opened state, where the opening is opened (FIG. 16), and the closed state, where the opening is closed (FIG. 15).
However, Ricoh does not specifically disclose that the detection device is disposed on a downstream side of a conveying roller. On the other hand, Iwakoshi discloses a detection device (Iwakashi, FIG, 2, 10; see also paragraph [0049]) [that] is disposed on a downstream side of a conveying roller, by which the recording medium is conveyed, in a conveyance direction of the recording medium. It would have been obvious to one of ordinary skill in the art at the time of the invention to locate the detection device of Ricoh on a down stream side of a conveying roller as taught by Iwakashi to simplify design of the printer. Having a paper sensor on top of the paper tray may require height adjustment of the sensor depending on the amount of paper in the paper tray. It also may hinder easy access to paper tray area. Iwakashi that paper sensors can be placed on paper paths at various locations (see FIG. 2 and 12). Also, applying a known technique (i.e. locating the detection device on a paper conveyance path) to a known device (i.e., Ricoh’s printer) ready for improvement to yield predicable result is obvious under KSR v. Teleflex.
17. With respect to claim 2, Ricoh disclose the detection device according to claim 1, wherein the shutter has an outer surface (back surface of plate 17) that faces the conveyance path in the closed state, wherein the outer surface is provided with a convex portion that protrudes toward the conveyance path, and
wherein, in the closed state, the convex portion protrudes toward the conveyance path beyond an opening plane of the opening located on a side of the conveyance path (see FIG. 3).
18. With respect to claim 3, Ricoh discloses the detection device according to claim 1, further comprising:
a calibration plate (front surface of standard plate 17) for calibrating the detection device, wherein the shutter has an inner surface that faces an inside of the housing unit in the closed state, and
wherein the calibration plate is disposed on the inner surface such that light emitted from the light emitting unit is reflected toward the light receiving unit in the closed state (see FIG. 14).
19. With respect to claim 4, Ricoh discloses the detection device according to claim 1, further comprising:
an opening-closing mechanism that opens and closes the shutter (FIG. 9) ; and
a pressing member (FIG. 9, 17) that presses the recording medium toward the housing unit from a side opposite to the housing unit with respect to the recording medium, wherein the pressing member is provided to be movable between a light emission position (FIG. 2(A), FIG 16) and a retracted position (FIG. 2(B), FIG. 17),
wherein, at the light emission position, light is emitted from the light emitting unit to the recording medium, and wherein, at the retracted position, the pressing member is retracted from the conveyance path, and
wherein the opening-closing mechanism opens and closes the shutter, in accordance with movement of the pressing member, and brings about the opened state, when the pressing member is located at the light emission position (FIG. 11).
20. With respect to claim 7, Ricoh discloses the detection device according to claim 4, wherein the opening-closing mechanism includes a biasing member (FIG. 9, 31) that exerts biasing force such that the shutter allows switching from the opened state to the closed state (see FIG. 9).
21. With respect to claim 8, Ricoh disclose an image forming apparatus (FIG. 1, color printer 2000), comprising:
the detection device according to claim 1 (see the rejection of claim 1 above); and
wherein the controller sets an image formation condition based on a detection result by the detection device (paragraph [0002], “In an image forming apparatus such as a copying machine or a printer, in order to form a high-quality image on a plurality of types of sheet-like recording media, a type of recording medium is determined before an image is formed, and an image forming condition suitable for the type of the recording medium is et in accordance with the determined result.” ).
22. With respect to claim 9, Ricoh disclose an image forming apparatus according to claim 8, wherein the detection device is disposed to allow light to be emitted toward a central portion (see FIG. 12 and paragraph [0058]) of the recording medium to be conveyed, as seen in a width direction of the recording medium.
Conclusion
23. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Woo H Choi whose telephone number is (571)272-4179. The examiner can normally be reached 9 am - 5 pm.
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, Hetul Patel can be reached on (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Woo H. Choi/
Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights