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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the angles references in claim 1 (“an angle on an acute angle side of the first guide with respect to the portion is smaller than an angle on an acute angle side of the second guide with respect to the portion”) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the following elements:
Angles α1 and α2, as described in the specification (see paragraphs 41-42 and 46-48); and
“Direction U”, as described in the specification (see paragraphs 44 and 49).
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
reference numeral 21 (Figures 2 and 3).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
In paragraph 3, the phrase “wounded in a finger” is a grammatical error.
In paragraph 33, the non-existent element “carriage 8” is referenced, likely intended to refer to “carriage 9”.
In paragraph 36, the word “butter” is likely a typographical error for “cutter”.
In paragraph 46, the non-existent element “guide 31” is referenced, likely intended to refer to “guide 81”.
Appropriate correction is required.
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 limitations are: “a recording device” in claim 1 and “a feeding mechanism” in claims 1-2.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Note the “recording device” structure is defined in paragraph 31 and the “feeding mechanism” is defined in paragraph 18.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 § 112
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 1-9 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 discloses that “a pair of guides defines a portion disposed downstream in the conveying direction of a cutting position…” (emphasis added). The use of the word “portion” is generally narrative and indefinite within the context of the claims, failing to conform with current U.S. practice. Many elements’ positions within the invention are described in relation to the insufficiently defined “portion”. For example, claim 1 states the following features with respect to the insufficiently defined “portion” (emphasis added):
“the pair of guides includes a first guide located upstream of the portion in the feeding direction and a second guide located downstream of the portion in the feeding direction”; and
“an angle on an acute angle side of the first guide with respect to the portion is smaller than an angle on an acute angle side of the second guide with respect to the portion”.
These quoted descriptions, as well as the descriptions referencing the “portion” in claims 2 and 4-7, are indefinite and must be further defined.
Moreover, the claims appear to be a literal translation into English from a foreign document and contain idiomatic errors. For example, claim 4 defines “the portion”, an empty and ambiguously defined space, as being “orthogonal” to an element of the invention.
Dependent claims 5 and 6 also define elements using the word “portion”. Claim 5, which discloses “a portion defined by the wall in the conveyance path” (emphasis added), is generally narrative and indefinite within the context of the claims, due to the same reasoning outlined above for the “portion” in claim 1. Similarly, claim 6, which discloses “a portion defined by the two rollers in the conveyance path” (emphasis added), is generally narrative and indefinite within the context of the claims.
In an effort to advance prosecution of the application, the examiner is interpreting the “portion” specified in claim 1, with respect to the 102 prior art rejection, as follows: the “portion” is interpreted to be the section annotated on Figure 5 (shown below). This annotated space is bounded by the guides 81 and 82 and the conveyance path interposes through the space. It is unclear how far the “portion” was intended to extend and therefore the examiner bounded this space solely where the guides overlap.
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Claims 8 and 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. Note MPEP 2173.05(b)(II) states “A claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined”.
Claims 8 and 9 attempt to define angles by using a “surface” (i.e., the recording medium) as their point of reference. The medium, although used by the claimed image recording apparatus, is not a claimed element of the apparatus. Moreover, as acknowledged in the application, the medium’s position is not fixed once pushed through the roller towards the cutter and require guides to limit its scope of movement. Given the medium is not a defined element of the apparatus and the position of the medium has not been fully defined, angles cannot be specified by referencing a medium.
Given the extreme indefiniteness of claims 8 and 9 (as discussed above), and the examiner’s inability to determine the scope of these claims, examination of these claims relative to the prior art cannot be completed at this time.
Appropriate correction and/or clarification of the above matters is required.
Claim Rejections - 35 USC § 102
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 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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto (EP 2105314 A1). To the extent the claim language is clear in meaning and scope (see the section “Claim Rejections - 35 USC § 112” above), the following rejections are deemed appropriate.
With respect to claim 1, Yamamoto teaches an image forming apparatus for conveying recording images on a paper medium (see Yamamoto, claim 1 and Figures 5-6) comprising:
a tray configured to accommodate a medium in sheet form (i.e., “tray 7”; “P1” and “P2”);
a conveyor configured to convey the medium accommodated in the tray in a conveying direction along a conveyance path (i.e., the “paper conveyance mechanism” depicted in Figure 5 and described in paragraphs 38-43, for example);
a recording unit configured to record an image on the medium conveyed by the conveyor (i.e., “print head H”);
and a cutter unit including at least one cutter configured to cut the medium in the conveyance path (i.e., “Cutter unit U3”), wherein;
the conveyor including:
a feeding mechanism configured to feed the medium accommodated in the tray in a feeding direction toward the conveyance path (i.e., “feed unit U1” and “U5”); and
a pair of guides configured to interpose the conveyance path (i.e., guides “55b” and “56b”; see annotated Figure 6 below),
the pair of guides defines a portion disposed downstream in the conveying direction of a cutting position brought about by the cutter unit in the conveyance path (see Section “Claim Rejections - 35 USC § 112” above),
the pair of guides includes a first guide located upstream of the portion in the feeding direction and a second guide located downstream of the portion in the feeding direction (i.e., guides 55 and 56, respectively; see annotated Figure 6 below; and see Section “Claim Rejections - 35 USC § 112” above), and
an angle on an acute angle side of the first guide with respect to the portion is smaller than an angle on an acute angle side of the second guide with respect to the portion (see defined angles within annotated Figure 6 below; and see Section “Claim Rejections - 35 USC § 112” above).
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With respect to claim 2, Yamamoto teaches the image recording apparatus according to claim 1, wherein:
the tray is configured to accommodate a roll member in which the medium is wound in a roll form (Figure 5: 7, P1, P2, and U1, for example);
the conveyor is configured to convey, along the conveyance path, the medium unwound from the roll member accommodated in the tray (Figure 5: P1, P2, U1, 22, 24, and 25, for example); and
the first guide is located downstream of the portion in a winding direction of the medium for constructing the roll member (Figure 6: 55b, 33, P1, and P2, for example).
With respect to claim 3, Yamamoto teaches the image recording apparatus according to claim 1, wherein:
the tray is configured to accommodate a plurality of sheets of the medium in a stacked state (Figure 5: 7 and P1), and
the feeding mechanism is configured to feed a sheet of the medium disposed on an uppermost layer of the plurality of sheets of the medium accommodated in the tray (Figure 5: 7, P1, 200, 92, 24, and 25, for example).
With respect to claim 4, Yamamoto teaches the image recording apparatus according to claim 1, wherein:
the portion is orthogonal to the at least one cutter (Figure 6: 55b, 56b, P1, P2, U3, 51, and 52, for example; see Section “Claim Rejections - 35 USC § 112” above for the examiner’s interpretation of the “portion” specified in claim 1 and referenced in this claim).
With respect to claim 5, Yamamoto teaches the image recording apparatus according to claim 1, wherein:
the conveyor includes a wall constituting a downstream end in the feeding direction of the tray and defining the conveyance path (Figure 5: 92, for example), and
the portion is parallel to a portion defined by the wall in the conveyance path (see Section “Claim Rejections - 35 USC § 112” above for the examiner’s interpretation of the two portions specified in this claim).
With respect to claim 6, Yamamoto teaches the image recording apparatus according to claim 1, wherein:
the conveyor includes a roller pair including two rollers, the roller pair being arranged downstream, in the conveying direction, of the portion defined by the pair of guides in the conveyance path (Figure 6: 43, 55b, 56b, P1, and P2, for example; see Section “Claim Rejections - 35 USC § 112” above for the examiner’s interpretation of the “portion” specified in claim 1 and referenced in this claim); and
the portion is parallel to a portion defined by the two rollers in the conveyance path (for example, Figure 6: 43, 55b, 56b, P1, and P2; see Section “Claim Rejections - 35 USC § 112” above for the examiner’s interpretation of the “portion” specified in claim 1 and referenced in this claim).
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 2002/0203714 A1) in view of Matsumoto (US 5223940 A).
With respect to claim 1, Sato teaches an image forming apparatus for conveying recording images on a paper medium (see Sato Figure 1) comprising:
a tray configured to accommodate a medium in sheet form (i.e., “feeder tray 210”);
a conveyor configured to convey the medium accommodated in the tray in a conveying direction along a conveyance path (i.e., “conveyance unit 3” and “feed unit 2”);
a recording unit configured to record an image on the medium conveyed by the conveyor (i.e., “print head 6”);
and a cutter unit including at least one cutter configured to cut the medium in the conveyance path (i.e., “cutting unit 5”), wherein;
the conveyor including:
a feeding mechanism configured to feed the medium accommodated in the tray in a feeding direction toward the conveyance path (i.e., “feed unit 21” and “conveyance unit 3”).
However, Sato is silent with respect to a pair of guides interposing the conveyance path having the particular configuration as recited.
Matsumoto teaches the following:
a pair of guides configured to interpose the conveyance path (i.e., Fig. 6A, see annotated figure below);
the pair of guides defines a portion disposed downstream in the conveying direction of a cutting position brought about by the cutter unit in the conveyance path (see Section “Claim Rejections - 35 USC § 112” above);
the pair of guides includes a first guide located upstream of the portion in the feeding direction and a second guide located downstream of the portion in the feeding direction (i.e., Fig. 6A, see annotated figure below; and see Section “Claim Rejections - 35 USC § 112” above); and
an angle on an acute angle side of the first guide with respect to the portion is smaller than an angle on an acute angle side of the second guide with respect to the portion (i.e., Fig. 6A, see annotated figure below; and see Section “Claim Rejections - 35 USC § 112” above).
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In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the guides taught in Matsumoto to the image forming apparatus taught in Sato, as this would enhance the conveying of the cut medium through the apparatus.
With respect to claim 3, Sato teaches a tray (i.e., Figure 1, “feeder tray 210”) and feeding mechanism (i.e., Figure 1, “feed unit 2”).
With respect to claim 6, Sato modified by Matsumoto teaches the image recording apparatus of claim 1, including the claimed conveyer and guides. However, Sato is silent with respect to a roller pair arranged downstream of the guides as recited. Matsumoto teaches a roller pair for conveying arranged downstream of a cutter unit (i.e., Fig. 6A, “22” and “23”). In view of this teaching by Matsumoto, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the roller pair downstream of the guides to the image forming apparatus taught in Sato as modified by Matsumoto, as this would enhance the conveying of the cut medium through the apparatus.
With respect to claim 7, Sato as modified by Masumoto teaches the image recording apparatus of claim 1, including the claimed cutter unit. However, Sato is silent on the arrangement of the cutter with respect to guides.
Matsumoto teaches a cutter (i.e., Fig. 6A, “19”), wherein:
the first cutter is arranged on a same side as that of the first guide with respect to the conveyance path (Fig. 6A, see annotated figure above);
the second cutter is arranged on a same side as that of the second guide with respect to the conveyance path (Fig. 6A, see annotated figure above); and
a downstream end in the conveying direction of the first cutter and an upstream end in the conveying direction of the first guide overlap with each other in a direction orthogonal to the medium extending along the conveyance path (Fig. 6A, see annotated figure above).
In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date to enhance the conveying of the cut medium through the apparatus by using the specified configuration taught in Matsumoto (i.e., the arrangement of the cutter with respect to the guides) within the image recording apparatus of claim 1 taught by Sato as modified by Matsumoto.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Japanese patent JP S59225668 A teaches an image recording apparatus with guides having similarities to the claimed subject matter that are readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHLOMIT CHELST whose telephone number is (571)272-0832. The examiner can normally be reached on M-F from 8:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier, can be reached at telephone number (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHLOMIT CHELST/ Examiner, Art Unit 2853
/Leslie J Evanisko/ Primary Examiner, Art Unit 2853