DETAILED ACTION
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.
Regarding Claim 19, the terms “sheet receiving means”, “first detection means”, “sheet transport means” and “second detection means” are interpreted under 112(f) as being recited in “means for” format.
Specification
A second detector is disclosed in [0056] however no reference number is provided.
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.
Claim 19 is 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.
Claim 19 is rejected under 35 U.S.C. 112(a) for a lack of written description for the “second detection means”, such as to give basis to the 112(f) interpretation. A review of the four corners of the disclosure fails to provide any drawings, details in the specification, abstract support, or original claim language to show that Applicant had possession of any type of “second detection means”. No discussion/depiction of any “second detection means” appears in either the specification or drawings.
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.
Claims 1-19 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.
Regarding Claims 1 and 19, line 8, it is recited that the second detector/detection means “determines” however a detector merely performs the function of detection. Rather it is the controller that “determines”, based on detection results.
Regarding Claim 2, it is recited that the second detector is most upstream at the path. However parent Claim 1 suggests the second detector is 109 (i.e. in front of the image read position) however 109 is not the most upstream, rather 107 is. It is not understood what is being referred to as the second detector (particularly since no reference number is provided) and therefore, the metes and bounds are unclear.
Regarding Claim 6, line 2, the term “simply” is unclear as there is no precise definition (i.e. simple as compared to what?) and appears colloquial.
Regarding Claims 7-12, “a sheet transport member” is recited, however this structure is already introduced in parent Claim 1 (i.e. either a unique name should be selected or proper antecedent basis should be used). However, the claim then incorporates the entire device of Claim 1 as the sheet transport member while utilizing the same name as a component of the device being incorporated (i.e. appears to be circular).
Regarding Claim 19, since the invocation of 35 U.S.C. 112(f) requires “second detection means” to be defined by the specification, the disclosure must sufficiently describe and make clear what structurally comprises the “second detection means”. Neither the drawings nor the specification clearly show or describe any structure which constitutes the claimed “second detection means”. As such, at least claim 19 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to provide clear support for and establishing the necessary metes and bounds for determining the scope of the claimed “second detection means”.
Claims 3-5 and 13-18 are rejected by dependency.
It is noted that any amendments regarding the second detector should be checked against other recitations of this structure (i.e. as in Claim 5), for consistency.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi (US Pub No. 2011/0013240 A1).
Regarding Claim 1, Kobayashi discloses
a sheet receiver (11) that receives a sheet and that includes a first detector (56) that detects a size of the sheet in a transport direction (i.e. right to left in Fig. 4);
a sheet transport member (14) that transports the sheet received on the sheet receiver to an image read position (72B) along a sheet transport path (31); and
a second detector (68 or 69) disposed in front of (i.e. upstream of) the image read position on the sheet transport path to detect whether any sheet is present (i.e. detection by default entails presence),
wherein the second detector determines (at S7 in Fig. 6) whether the sheet received on the sheet receiver has a size smaller than or equal to a predetermined length (i.e. that which is sensed at S3 in Fig. 6) in the transport direction.
Regarding Claim 2, Kobayashi discloses
the second detector is disposed most upstream at the sheet transport path in the sheet transport direction (i.e. in the case of sensor 68). Also see the 112 rejection above.
Regarding Claim 3, Kobayashi discloses
the predetermined length is shorter than a length along the sheet transport path from the second detector to the image read position (i.e. in the case where a sheet is placed that covers only the most downstream sensor 56, this detected length in S3 being shorter than the distance from 68 to 72B, see Fig. 4).
Regarding Claim 4, Kobayashi discloses
the first detector detects that the sheet received on the sheet receiver has a larger size than a length of an A4 size in a longitudinal direction ([0079]).
Regarding Claim 5, Kobayashi discloses
whether the size of the sheet is smaller than or equal to the predetermined length is determined (i.e. at S7 in Fig. 6) based on whether a trailing end of the sheet has passed the second detector before a leading end of the sheet arrives at the image read position (i.e. is based in part on S5, where 68 in part determines sheet length and in the case where a short sheet covering only the downstream most sensor 56 is fed, it can be seen from Fig. 4 that when its trailing end is at 68, its leading end would still be upstream of/before it arrives at 72B).
Regarding Claim 6, Kobayashi discloses
whether the size of the sheet is smaller than or equal to the predetermined length is determined simply when the first detector does not detect the sheet received on the sheet receiver (i.e. in the case of the first detector being taken as the upstream most sensor 56, a shorter sheet is not detected by it but may be detected by 68 at S5). Also see the 112 rejection above.
Regarding Claims 7-12, Kobayashi discloses
an image reading member (70) that reads an image on a sheet; and
a sheet transport member (14) that transports the sheet to a read position (72B) where the image reading member reads the image on the sheet,
wherein the sheet transporting device according to claim (1-6) is used as the sheet transport member.
Also see the 112 rejection above.
Regarding Claims 13-18, Kobayashi discloses
the image reading device according to claim (7-12) that reads an image on a sheet; and
an image recording device (110) that records the image on the sheet read by the image reading device on a recording medium.
Regarding Claim 19, Kobayashi discloses
sheet receiving means (11) for receiving a sheet and including first detection means (56) for detecting a size of the sheet in a transport direction (i.e. right to left in Fig. 4);
sheet transport means (14) for transporting the sheet received on the sheet receiving means to an image read position (72B) along a sheet transport path (31); and
second detection means (68 or 69) disposed in front of (i.e. upstream of) the image read position on the sheet transport path for detecting whether any sheet is present (i.e. detection by default entails presence),
wherein the second detection means determines (at S7 in Fig. 6) whether the sheet received on the sheet receiving means has a size smaller than or equal to a predetermined length (i.e. that which is sensed at S3 in Fig. 6) in the transport direction.
Also see the 112 rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASAD GOKHALE whose telephone number is (571)270-3543. The examiner can normally be reached Monday-Friday, 9am - 5:30pm.
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/PRASAD V GOKHALE/Primary Examiner, Art Unit 3653 March 27, 2026
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