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 .
Response to Arguments
Applicant's arguments filed 04/15/26 have been fully considered but they are not persuasive. In regards to applicant’s argument that the double patenting of claims 2, 8, and 10 is not valid as both applications share the same filing date, the examiner respectfully disagrees. It is noted that although both the instant application and 18593747 share the same filing date, the requirement for a non-statutory double patenting is valid and the only two options to overcome the rejection are to file a terminal disclaimer or show that the claims are patentably distinct, see MPEP 804(I.)(B)(1)(b)(ii). Therefore, since neither of those two options have been provided, the double patenting rejection stands.
Applicant’s arguments, see pages 7-11, filed 04/15/26, with respect to the art rejection of claims 1-10 have been fully considered and are persuasive. The rejection of 01/15/26, with respect to the art rejection has been withdrawn.
It is noted that the double patenting rejection for claim 1 and the objection to the title are moot in view of the amendments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 8, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2, 5, and 7 of copending Application No. 18/593,747 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because although the claims are substantially duplicate from each other, the instant application claims a second reader whereas the copending application claims a determiner and a controller for controlling the first reader and detector. This is an obvious variant of the instant application in that a determiner can function as the second reader and a controller can be used to control the readers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18/593,747
18/593,737
2. An image forming system comprising:
an image former that forms an image on a recording medium;
a detector that is provided upstream of the image former in a conveyance direction of the recording medium and detects a physical property of the recording medium;
a first reader that is provided downstream of the image former in the conveyance direction of the recording medium and reads the recording medium; and
a determiner that determines an abnormality of at least one of the detector or the first reader based on a detection result of the detector and a reading result of the first reader,
a controller for controlling at least one of the first reader or the detector based on the abnormality determination.
5. The image forming system according to claim 2, wherein the first reader is controlled based on the detection result of the detector, and
the detector is controlled based on the reading result of the first reader.
7. A method of controlling an image forming system including an image former that forms an image on a recording medium,
a detector that is provided upstream of the image former in a conveyance direction of the recording medium and detects a physical property of the recording medium,
a first reader that is provided downstream of the image former in the conveyance direction of the recording medium and reads the recording medium, and
a controller for controlling at least one of the first reader or the detector based on an abnormality determination,
the method comprising:
detecting, by the detector, a physical property of a recording medium on which no image is formed;
forming an image on the recording medium by the image former;
reading, by the first reader, the recording medium on which the image is formed;
and determining an abnormality of at least one of the detector or the first reader based on a detection result of the detector and a reading result of the first reader.
2. An image forming system comprising:
an image former that forms an image on a recording medium;
a first reader that is provided upstream of the image former in a conveyance direction of the recording medium and reads the recording medium;
a second reader that is provided downstream of the image former in the conveyance direction of the recording medium and reads the recording medium; and
a determiner that determines an abnormality of at least one of the first reader or the second reader based on a reading result of the first reader and a reading result of the second reader.
8. The image forming system according to claim 2, wherein
the first reader controls the second reader based on the reading result of the first reader, and
the second reader controls the first reader based on the reading result of the second reader.
10. A method of controlling an image forming system including an image former that forms an image on a recording medium,
a first reader that is provided upstream of the image former in a conveyance direction of the recording medium and reads the recording medium, and
a second reader that is provided downstream of the image former in the conveyance direction of the recording medium and reads the recording medium,
the method comprising:
reading a recording medium on which no image is formed by the first reader;
forming an image on the recording medium by the image former;
reading the recording medium on which the image is formed by the second reader;
and determining an abnormality of at least one of the first reader or the second reader based on a reading result of the first reader and a reading result of the second reader.
Allowable Subject Matter
Claims 3-7 and 11-14 are 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 only rejection left is the double patenting rejection. The claims are allowable based on the lack of teaching with respect to the two detectors as described by the applicant in the arguments.
Claim 9 is allowed.
The following is an examiner’s statement of reasons for allowance: The present invention is directed to “an image forming system capable of suppressing an increase in downtime due to complication of a configuration of an image forming system, and a method of controlling the image forming system.” Independent claims 9 identify the uniquely distinct features inter alia “using signals from one reader to control a different reader” as stated in applicants arguments dated 04/15/26. In particular, the concept of having an upstream and downstream reader and being able to control one or the other based on the results of the other reader in the configuration as claimed to determine abnormalities.
The prior art of record fails to anticipate or render the above underlined limitations obvious.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS PACHOL whose telephone number is (571)270-3433. The examiner can normally be reached M-Th: 8-4.
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, George Eng can be reached at 571-272-7495. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS PACHOL/Primary Examiner, Art Unit 2699
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