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.
Response to Amendment
The Amendment filed 09/17/2025 has been entered. Claims 1-20 remain pending in the application.
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].
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, 13-20 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 lamination fixing device (combination zone 28 and 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, it is noted that such a configuration would merely involve a rearrangement of parts, since Lee has disclosed all structural limitations of the instant claim but in a horizontally stacked fashion. The courts have held that a rearrangement of parts is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 VI (C)).
In the event the applicant disagrees with the above rationale, 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 claims 2-3, 16-17 & 20, 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 lamination fixing device (combination zone 28 and 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, it is noted that such a configuration would merely involve a rearrangement of parts, since Lee has disclosed all structural limitations of the instant claim but in a horizontally stacked fashion. The courts have held that 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 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)).
Allowable Subject Matter
Claim 12 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not reasonably show or suggest the subject matter of instant claim 12.
Response to Arguments
Applicant’s arguments, see Amendment, filed 09/17/2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lee and Takahashi.
Conclusion
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.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746