DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/26/2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: lamination fixing device, height adjustment mechanism, position adjustment mechanism, first and second positioners, vertical adjustment mechanism, parallelism adjustment mechanism in claims 1, 2, 3, 5, 11, 14, 15-18 respectively.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Corresponding U.S PG Pub 20240246329A1 – used for citation herein) - The lamination fixing device is interpreted as device (20) [0044], the height adjustment mechanism is interpreted as reference numeral (50) [0070], the position adjustment mechanism is interpreted as reference numeral (56) [0075], the first and second positioners are interpreted as reference numeral (160) [0105], and the second positioners are interpreted as reference numeral (170) [0105], the vertical adjustment mechanism is interpreted as the height adjustment mechanism [0138], and the parallelism adjustment mechanism is interpreted as reference numeral (60) [0141]. The lamination fixing device is interpreted as a set of heating rollers as in (20) [0044], the height adjustment mechanism is interpreted as a rack and pinion and the position adjustment mechanism is interpreted as a base or rail. Further, the vertical and parallel adjustment mechanism are also interpreted as a rack and pinion and a base or rail, respectively. The first and second positioners are interpreted as plates or supports.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-11, 13-19, 21 is/are rejected under 35 U.S.C. 35 U.S.C. 103 as obvious over Lee (U.S PG Pub 20110073234A1) and Takahashi (U.S PG Pub 20220289512A1).
Regarding claims 1 & 5-9, Lee, drawn also to the art of a sheet laminating and processing device (Title; Abstract), discloses a first (21) and second sheet loader (22) [0032], an ejection tray (sheet ejection roller assembly 33). Lee discloses a sheet separation device (28), a lamination fixing device (laminating module 32), and discloses a conveyor (transfer roller assemblies) [0035].
With regards to the lamination device being on an upper surface of the housing of the sheet separation device, Lee has disclosed this limitation (see below), and Takahashi also discloses this limitation. Takahashi, drawn also to the art of a sheet processing device (Abstract), discloses a vertical arrangement of the laminating fixing device (109) and sheet ejection tray (104) wherein a double ply sheet is loaded from sheet tray 102 & a sheet to be laminated is loaded from tray 103 and the sheet is laminated after separation of the double ply sheet in between the two sheets, and then ejected out (Figures 1, 31-33; [0066]). Takahashi also has disclosed a height adjustment (separation claw and sheet detector sensor [0082 & 0108-0109]) and position adjustment mechanism (claims 4 & 6 – operation panel configured to change a distance), and discloses first and second positioners (i.e. the height and position adjustment mechanism are interpreted as the first and second positioners as they serve the same purpose)
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Lee, with the vertical arrangement of the lamination fixing device and ejection tray, as disclosed by Takahashi, to arrive at the instant invention, in order to have a sheet processing device or laminating device that is detachably attached to an image forming apparatus [0007].
Further, it would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Lee, with the height and position adjustment mechanisms of Takahashi, to arrive at the instant invention, since the height and position adjustment mechanisms of Takahashi are known elements in the sheet processing art, and the combination of known elements according to known methods is likely to be obvious and a product of ordinary skill in the absence of new or unexpected results (MPEP 2143 I(A)).
Regarding the limitation of a housing and the lamination fixing device being mounted on a housing, this is known from both Lee and Takahashi, in specific embodiments and an alternative interpretation, as explained below.
Lee, discloses a laminating module (32) as a separate module, along with a sheet separation device/module (interpreted as module 28 – which includes sheet separation roller assembly 25 [0033]), as well as a separate ejection module (33). Lee discloses these 3 devices as separate modules, as can be seen in figures 3-6). Further, the sheet separation device has a housing (module 28 is enclosed), and the laminating module is placed on the housing (see figures 3-6). While there is no explicit mention of placing/mounting the laminating module on top of or on the upper surface of the sheet separation housing, when looking at the figures 3-6, it can be seen that the laminating module is on top i.e. on an upper surface of the housing of and the ejector module is on top of the laminating module (see annotated figure below for further explanation).
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Thus, Lee, interpreted in this manner, discloses a laminating module on an upper surface of the housing of the sheet separation device, and then an ejector tray also on an upper surface of the housing of the laminating module, with a conveyor that is coupled to the laminating module and conveys the two sheets after separation with a sheet inserted between.
Additionally, Takahashi, also interpreted in an alternate manner, discloses such an embodiment as claimed. In essence, the instant claims are claiming the laminating module being a distinct module from the sheet separation device and being mounted on an upper surface of the sheet separation device. While Takahashi has an integrated sheet separation and lamination device, Takahashi discloses an image forming apparatus, and discloses the laminating device and sheet separating device to be able to be separable from the sheet separation device (see figures 32-33) and discloses a vertical orientation as well for the devices.
Finally, regarding the height adjustment mechanism also being on the housing of the sheet separation device, this would involve a rearrangement of parts, and the courts have held that such a rearrangement of parts is obvious to an ordinarily skilled artisan, in the absence of new or unexpected results (MPEP 2144.04 VI (C)).
Regarding claims 2-3, 16-17, the position and height adjustment mechanism as claimed are disclosed by Takahashi (see claim 1 & 5 rejection above).
Regarding claim 4, Lee has not explicitly disclosed the lamination fixing device being detachably mounted, however, the courts have held that making a structure separable i.e. detachable, is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 V (C)).
Regarding claims 10 -11, as can be seen from figures 31-33, the conveyor can be extendable in the vertical direction and the angle of the ejection port can also be adjusted (see figure 32 specifically and in conjunction with figure 30 & 33).
Regarding claims 13-14, the vertical adjustment mechanism and parallelism adjustment mechanism would fall under the categories of height adjustment and position adjustment, and Takahashi has disclosed such mechanisms (see rejection of claims 1 & 5 above).
Regarding claims 15 & 18, Lee, drawn also to the art of a sheet laminating and processing device (Title; Abstract), discloses a first (21) and second sheet loader (22) [0032], an ejection tray (sheet ejection roller assembly 33). Lee discloses a sheet separation device (28), a lamination fixing device (laminating module 32), and discloses a conveyor (transfer roller assemblies) [0035]. Regarding the limitations of the lamination fixing device being mounted on an upper surface and the ejection tray being mounted on the upper surface and the configuration being a vertically stacked configuration (see explanation and annotated figure in rejection of claim 1).
Regarding claim 19, Lee has not explicitly disclosed the lamination fixing device being detachably mounted, however, the courts have held that making a structure separable i.e. detachable, is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 V (C)).
Regarding claim 21, both Lee and Takahashi disclose a conveyor/roller pair that is able to be reversed i.e. convey in opposite direction (forward and reverse). Lee discloses the roller assembly (26) can be reversed [0017 & 0034], and Takahashi discloses the roller pair (113) that is able to switch direction of conveyance and rotation and can convey in a forward and reverse direction [0067 & 0069]. Both the roller assemblies of Lee and Takahashi are conveyance rollers.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (U.S PG Pub 20110073234A1), Takahashi (U.S PG Pub 20220289512A1), and Kato (U.S PG Pub 20140193175A1).
Regarding claim 12, neither Lee nor Takahashi explicitly disclose the upper housing having a mark for mounting the lamination fixing device, however, in the art of sheet processing devices, it is well-known for a device to have a mark so that another device can be fixed or aligned or mounted relative to another device, as disclosed by Kato.
Kato, drawn also to the art of a sheet processing and image forming apparatus [0003], discloses a mark (68) that is used to guide and position a fixing unit (25) [0041 & 0043].
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Lee and Takahashi, with the mark, as disclosed by Kato, to arrive at the instant invention, in order to be able to guide in positioning a fixing unit and in order to ensure assembly at a proper reference position [0041 & 0043].
Response to Arguments
Applicant's arguments filed 08/26/2026 have been fully considered but they are not persuasive.
Applicant argues that the modification of Lee would modify the operation of the device of Lee.
The examiner disagrees. While it is correct that the modification of Lee with Takahashi would add features to the device of Lee that are not present in Lee prior to the modification, these add to the device of Lee in a way that does not modify the operation of the device of Lee. The device of Lee is still a sheet processing, separating and laminating device. Thus the operations of the device of Lee are not modified, it is merely structural changes that are within the scope of an ordinarily skilled artisan that are undertaken as a modification of Lee by Takahashi.
In response to applicant's argument that the incorporation of features of Takahashi would modify the operation of the device of Lee, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues that Lee as modified by Takahashi does not disclose the lamination fixing device and ejection tray being on an upper surface.
The examiner disagrees. As pointed out above, in the alternative interpretation of Lee, the sheet separation device (28), the laminating module (32), are disclosed as separate module, and as can be seen from the annotated figure 3, the laminating module (32) is on an upper surface of the sheet separation device (28), and specifically, the upper surface of the housing of the sheet separation device. In short, Lee interpreted broadly and in this alternative manner, discloses the orientation of the system as claimed. Further, it is noted that while there may be differences in the orientation or arrangement of the parts, structurally, Lee and Takahashi disclose all of the subject matter or the totality of the invention as claimed. Thus, in order for the instant subject matter to be patentably distinguishable, it must be structurally distinguishable. As is currently claimed, the subject matter of claim 1 is disclosed by Lee as modified by Takahashi, as every structural limitation is disclosed by the combination of the two references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20220282124-A1, US-20210325808-A1, US-20220291620-A1, US-20220288910-A1, US-20210403273-A1, US-20210354948-A1, US-20210347160-A1, US-20200338877-A1, US-20210347589-A1 – all drawn to sheet processing devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-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, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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