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
1. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 101
2. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
3. Claim 14 is rejected under 35 U.S.C. 101 because it recites the limitation “A computer-readable storage medium”. The Specification discloses the storage medium may include one or more of a… a random-access memory or a read-only memory, neither of which are non-transitory (see ¶0145 of the Patent Grant Publication). Such disclosed memory is not tangible and is therefore non-statutory.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 4-8 are 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 4 recites “the output unit”; however, the specification does not appear to disclose an output unit.
6. 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.
7. Claims 4-8 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 4 recites the limitation "the output unit". There is insufficient antecedent basis for this limitation in the claim. Furthermore, it is not clear what the output unit is. As best understood by the Examiner, the output unit will be interpreted to be the adhesion unit.
Claim Rejections - 35 USC § 102
8. 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.
9. 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.
10. Claims 1,2,9-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taguchi USP 9,764,582.
Taguchi discloses, regarding claim 1, A sheet processing system comprising:
a conveyance unit (R1-R4; fig.1) configured to convey a sheet with a printed image;
an adhesion unit (101) configured to adhere an edge of a plurality of sheets conveyed by the conveyance unit; and
a control unit configured to apply control to adhere, using the adhesion unit, an additional sheet conveyed by the conveyance unit to a sheet bundle including the plurality of sheets adhered by the adhesion unit (see ACT 110,111 in fig.11, C13/L18-25).
Regarding claim 2, further comprising:
a stacking unit (102) configured to stack a plurality of sheets conveyed by the conveyance unit,
wherein the adhesion unit is configured to adhere an edge of the conveyed plurality of sheets, which are stacked by the stacking unit (see at least fig.13-18).
Regarding claims 9,11, and 12, respectively, wherein the adhesion is performed by applying a recording agent to each sheet and heating and pressurizing the recording agent, wherein the recording agent is additionally used by the printing unit for printing the image, wherein the recording agent is an adhesive recording agent that is not used by the printing unit for printing the image (The Examiner notes that the recording agent is a material used by the apparatus and therefore does not further structurally limit the apparatus claims; however, the invention of Taguchi is fully capable of using a recording agent as recited. The “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims”; see MPEP 2115).
Regarding claim 10, further comprising a printing unit (706) configured to print an image on each sheet (fig.1).
Regarding claim 13, A method for controlling a sheet processing system, the method comprising:
conveying a sheet with a printed image (via conveying unit R1-R4; fig.1);
adhering an edge of a plurality of sheets conveyed in the conveying (via adhesion unit 101); and
applying control to adhere an additional sheet conveyed in the conveying to a sheet bundle including the plurality of sheets adhered in the adhering (see ACT 110,111 in fig.11, C13/L18-25).
Regarding claim 14, A computer-readable storage medium storing a program for causing a computer to execute a method for controlling a sheet processing system (C17/L38-61), the method comprising:
conveying a sheet with a printed image (via conveying unit R1-R4; fig.1);
adhering an edge of a plurality of sheets conveyed in the conveying (via adhesion unit 101); and
applying control to adhere an additional sheet conveyed in the conveying to a sheet bundle including the plurality of sheets adhered in the adhering (see ACT 110,111 in fig.11, C13/L18-25).
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 3-8, as best understood by the Examiner (see ¶4-7 above), are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi USP 9,764,582 in view of Umeda USP 9,713,933.
Taguchi discloses substantially all the limitations of the claims (see ¶10 above), but does not expressly disclose the limitations of claims 3-8.
Umeda teaches wherein [regarding claim 3] the control unit is further configured to perform control to output a sheet bundle generated by a process in a case where a number of sheets of the generated sheet bundle reaches a predetermined number of sheets (X), wherein the process includes the adhesion unit adhering an additional sheet conveyed by the conveyance unit to a sheet bundle including the plurality of sheets (fig.10, C8/L55-63, C9/L24-43), and wherein [regarding claim 4] wherein the predetermined number of sheets (X) is a maximum number of sheets that can be output by the output unit in one batch (C7/L34-38,62-66), wherein [regarding claim 5] the control unit is further configured to determine whether a number of sheets to be printed (N) exceeds the predetermined number of sheets (X) (Act 2 in fig.10), and wherein the control unit is further configured to cause a display unit (55; fig.9) to display a screen for allowing a user to specify a control method based on a determination made by the determination unit that the number of sheets to be printed exceeds the predetermined number of sheets (C8/L3-7), wherein [regarding claim 6] in the screen, an instruction to generate a plurality of sheet bundles generated by the process is selectable as the control method (C7/L27-56), wherein [regarding claim 7], in the screen, an instruction to output the plurality of sheets without performing adhesion is selectable as the control method (C7/L27-56), wherein [regarding claim 8], in the screen, an instruction to cancel a job of printing an image on each sheet is selectable as the control method (C7/L27-56).
Before the effective filing date, it would have been obvious to one having ordinary skill in the art to configure the control unit to perform control to output a sheet bundle generated by a process in a case where a number of sheets of the generated sheet bundle reaches a predetermined number of sheets, wherein the process includes the adhesion unit adhering an additional sheet conveyed by the conveyance unit to a sheet bundle including the plurality of sheets, wherein the predetermined number of sheets is a maximum number of sheets that can be output by the output unit in one batch, wherein the control unit is further configured to determine whether a number of sheets to be printed exceeds the predetermined number of sheets, and wherein the control unit is further configured to cause a display unit to display a screen for allowing a user to specify a control method based on a determination made by the determination unit that the number of sheets to be printed exceeds the predetermined number of sheets, wherein in the screen, an instruction to generate a plurality of sheet bundles generated by the process is selectable as the control method, wherein, in the screen, an instruction to output the plurality of sheets without performing adhesion is selectable as the control method, wherein, in the screen, an instruction to cancel a job of printing an image on each sheet is selectable as the control method, as taught by Umeda, in the device of Taguchi, with a reasonable expectation of success, for the purpose of providing a user with increased control of binding processing so long as the binding limit height of the stack is not exceeded.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Watanabe et al. (USP 9,110,425) discloses the user of a binding unit (300) including heaters (301,302), wherein an adhesive toner is used to bind sheets together (see at least C6/L30-39).
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE A. NICHOLSON III whose telephone number is (571)272-5487. The examiner can normally be reached M-F 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, Michael C McCullough can be reached at 571-272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE A NICHOLSON III/Primary Examiner, Art Unit 3653 2/20/2026