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/Amendments
1. Applicant’s amendment of claim 2 overcomes the Claim Objections of the previous Office Action.
2. The Examiner agrees that the amendments to claims 1-4 and 7-13 do not substantively change the claim scope and that no new matter has been added to claims 14-19. Minor grammatical editing to the previous rejections/reasons for allowance were taken to match the updated language of the claims but do not affect the subject matter of the rejections/reasons for allowance.
3. Applicant argues that the substitution of a guide plate of Furuhashi with the rollers of Oishi would not be obvious as the rollers of Oishi are only directed to a straight conveyance path, and would not be applicable to a curved path of the immediate application. While the Examiner agrees that the rollers of Oishi would not be a suitable substitute for a curved branched conveyance path, such subject matter is not comparable in scope to claim 1. To put simply, the branched conveyance passages of claim 1 are not claimed as curved passages and could be interpreted as straight passages, in which case the rollers of Oishi would be applicable substitutes. In a similar fashion, claim 13 of Furuhashi, which is the source material the Examiner relies upon for the subject matter of the branched conveyance passages in rejection of claim 1, also does not limit the branched conveyance passages to being curved. While the broader disclosure of Furuhashi does teach of curved branched conveyance passages as Applicant suggests, since the previous rejection relies only upon claims, the claims enable a broader disclosure, and such curved branched conveyance passages would thus be a specific embodiment, upon which the Examiner did not rely upon, and the Examiner is not limited thereby. For these reasons this argument is unpersuasive. Since this argument is unpersuasive, the prior art and double patenting rejections of Furuhashi are maintained.
4. Applicant argues that the double patenting rejections of ‘588 (Nozaki et al.), ‘240 (Akiyama et al.), and 18/675,525 (Horita et al.) are improper as the combination of Oishi and these various primary sources are not related art. The Examiner disagrees, as Oishi is solving a similar problem of transportation of thin media (Abstract), which these primary sources are doing, and therefore is relevant art and there is motivation to combine these sources for one of ordinary skill in the art noted in the rejections below. For this reason, this argument is unpersuasive and these double patenting rejections are maintained.
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.
5. 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.
6. Claims 1, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Furuhashi et al. (US 11,845,254; previously presented; hereafter known as Furuhashi) in view of Oishi et al. (US 2023/0312283; previously presented; hereafter known as Oishi).
Regarding claim 1, Furuhashi teaches a sheet processing device (claim 11 line 1) comprising a conveyance passage (claim 13 line 3) configured to convey a two-ply sheet having two sheets overlapped and bonded together at a bonding portion in a conveyance direction (claim 11 lines 1-4) that includes a first branched conveyance passage branched in a first direction and a second branched conveyance passage branched in a second direction different from the first direction (claim 13 lines 5-7) a sheet separation device including a switcher configured to convey a first sheet of the two sheets separated from each other to the first branched conveyance passage and the second sheet of the two sheets to the second branched conveyance passage (claim 13 lines 9-11). The sheet separation device includes a separator to separate a non-bonding portion of the two-ply sheet (Claim 12 lines 7-15).
Furuhashi teaches the use of conveyance guides and provides a non-limiting example of a guide plate in moving the sheets through the branched conveyance passages (col. 5 lines 31-34). Furuhashi does not teach of the conveyance roll as claimed. In a related art, Oishi teaches of a conveyance roller pair (front transport roller- R1F; [0076]-[0077]) having two rollers (driving roller- 121 and driven roller- 122) that are separable from and contactable with each other ([0077]). The advantage of Oishi’s rollers is that the contact pressure can be controlled while moving the material ([0077]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to substitute the guide plate of Furuhashi with the conveyance roller pair of Oishi for the advantage of controlling the contact pressure while moving the material.
Regarding claim 9, Furuhashi further teaches the sheet separation device is configured to perform a sheet inserting operation to insert an inner sheet between the two sheets separated from each other (claim 11 lines 18-29).
Regarding claim 10, Furuhashi further teaches the addition of comprising a sheet lamination device configured to perform a sheet laminating operation on the two-ply sheet with the inner sheet inserted between the two sheets of the two-ply sheet by the sheet separation device (claim 17 lines 1-6).
Regarding claim 11, Furuhashi further teaches an image forming apparatus configured to form an image on an inner sheet to be conveyed to the sheet processing apparatus (claim 15).
Regarding claim 12, Furuhashi teaches the inclusion of a thermal fixer (sheet lamination structure) configured to perform a sheet laminating operation on the two-ply sheet having an inner sheet inserted between the two sheets by the sheet separation device (claim 17 lines 1-2).
Regarding claim 13, Furuhashi teaches the inclusion of an image forming apparatus to form an image on the inner sheet that is conveyed to the sheet separation device (claim 18 lines 1-4) which is then conveyed to the sheet laminator (claim 17 lines 1-6). (depends on claim 12)
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.
7. Claims 1, and 9-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13, 15, and 17-18 of U.S. Patent No. 11,845,254 (Furuhashi) in view of Oishi.
Regarding claims 1 and 9-13, the prior art rejection of these claims above was made using only the claims of US Patent No. 11,845,254 (Furuhashi) as the primary reference. Consequentially, with the incorporation of Oishi the 35 U.S.C. 103 Rejection for these claims above also counts as a valid Double Patenting Rejection.
8. Claims 1, 9-10, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13, 15, and 17-18 of U.S. Patent No. 11,385,588 (noted by Applicant as Nozaki et al.; previously presented; hereafter ‘588) in view of Oishi.
Regarding claim 1, ‘588 teaches of a sheet processing apparatus that includes a sheet separation device to separate a non-bonding portion of the two-ply sheet (claim 1) and then convey the first and second sheets to a first and second branched conveyance passage (claim 7).
‘588 does not teach of the conveyance roller pair. In a related art, Oishi teaches of a conveyance roller pair (front transport roller- R1F; [0076]-[0077]) having two rollers (driving roller- 121 and driven roller- 122) that are separable from and contactable with each other ([0077]). The advantage of Oishi’s rollers is that the contact pressure can be controlled while moving the material ([0077]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the conveyance roller pair of Oishi for the advantage of controlling the contact pressure while moving the material.
Regarding claims 9-10, the subject matter of claims 9 and 10 are taught in claim 1 of ‘588.
Regarding claim 12, ‘588 teaches the use of a thermal fixer to perform the sheet lamination (heat pressure roller pairs- claim 5).
9. Claims 1, and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 11 of U.S. Patent No. 11,292,240 (noted by Applicant as Akiyama et al.; previously presented; hereafter ‘240) in view of Oishi.
Regarding claim 1, ‘240 teaches of a sheet processing apparatus that includes a sheet separation device to separate a non-bonding portion of the two-ply sheet (claim 1), and then convey the first and second sheets to a first and second branched conveyance passage (claim 5).
‘240 does not teach of the conveyance roller pair. In a related art, Oishi teaches of a conveyance roller pair (front transport roller- R1F; [0076]-[0077]) having two rollers (driving roller- 121 and driven roller- 122) that are separable from and contactable with each other ([0077]). The advantage of Oishi’s rollers is that the contact pressure can be controlled while moving the material ([0077]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the conveyance roller pair of Oishi for the advantage of controlling the contact pressure while moving the material.
Regarding claims 9 and 10, the subject matter of claims 9 and 10 are taught in claim 11 of ‘240.
10. Claims 1, and 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/675,525 (noted by Applicant as Horita et al.; previously presented; hereafter ‘525) in view of Oshio.
This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, ‘525 teaches of a sheet processing apparatus that includes a sheet separation device to separate a non-bonding portion of the two-ply sheet and then convey the first and second sheets to a first and second branched conveyance passage (claim 1).
‘525 does not teach of the conveyance roller pair. In a related art, Oishi teaches of a conveyance roller pair (front transport roller- R1F; [0076]-[0077]) having two rollers (driving roller- 121 and driven roller- 122) that are separable from and contactable with each other ([0077]). The advantage of Oishi’s rollers is that the contact pressure can be controlled while moving the material ([0077]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the conveyance roller pair of Oishi for the advantage of controlling the contact pressure while moving the material.
Regarding claims 9 and 10, the subject matter of these claims is taught in claims 11 and 12 of ‘525.
Regarding claim 11, the subject matter of claim 11 is taught in claim 13 of ‘525.
Regarding claim 12, the subject matter of claim 12 is taught in claim 14 of ‘525.
Regarding claim 13, the subject matter of claim 13 is taught in claim 15 of ‘525.
Allowable Subject Matter
11. Claims 2-8 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.
12. Claims 14-19 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 2, in applying Furuhashi as in claim 1, Furuhashi further teaches that the functions of their apparatus can be implemented by circuitry, in which case there would be circuitry configured for conveying the first and/or second sheet to the corresponding branched conveyance pathway (this function noted in claim 13 lines 9-11). Furuhashi, Oishi, and other prior art do not teach or render obvious to changing the state of the rollers in response to a passage of either the first or second sheet to their related branched conveyance passage.
Regarding claim 14, the closest prior art of record is Furuhashi. Furuhashi teaches a sheet processing device (claim 11 line 1) comprising a conveyance passage (claim 13 line 3) to convey a two-ply sheet having two sheets overlapped and bonded together at a bonding portion in a conveyance direction (claim 11 lines 1-4) that includes a first branched conveyance passage branched in a first direction and a second branched conveyance passage branched in a second direction different from the first direction (claim 13 lines 5-7) a sheet separation device including a switcher to convey a first sheet of the two sheets separated from each other to the first branched conveyance passage and the second sheet of the two sheets to the second branched conveyance passage (claim 13 lines 9-11). The apparatus includes a separator to separate a non-bonding portion of the two-ply sheet (Claim 12 lines 7-15).
Furuhashi does not teach of a first conveyance roller pair and related limitations. Furuhashi does not teach or render obvious a first contact and separation mechanism configured, responsive to conveyance of a first leading end of the first sheet in the first branched conveyance passage, to control the first movable roller to change the first fixed roller and the first movable roller from the first separation state to the first contact state to nip the first leading end of the first sheet.
13. 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
14. 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.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745