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 .
DETAILED ACTION
Response to Amendment
The Amendment filed 31 July 2026 has been entered. Claims 1-7 are pending. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Non-Final Office Action mailed 1 May 2026, except for any objection(s) and/or rejection(s) under 35 USC 112 repeated below.
Moreover, the recitation of “a lifting mechanism” as recited in claims 1 and 5 is no longer interpreted under 35 UCS 112(f), since claims 1 and 5 recite sufficient structure of the mechanism to perform the recited function. Further, while “a parallel movement mechanism” as recited in claims 1 and 5 is no longer interpreted under 35 USC 112(f) because the parallel movement mechanism is required to have the structure of ‘a right/left movement mechanism’ and ‘a front/rear movement mechanism’, each of these latter two movement mechanisms is interpreted under 35 USC 112(f) as explained in the Claim Interpretation section below
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under PCT Article 7 as lacking clarity because each of claims 1 and 5-7 requires contact between the blade and the cutting table while the blade is moved by the parallel movement mechanism. No such contact is illustrated in the drawings. Moreover, the nature of this contact in the inventive sheet processing device is unclear as a result of a lack of illustration of the contact. It is known in the art that blade wear resulting from contact between the blade and a table is a problem to be avoided. Some prior art devices provide a table with a recess opposite the blade so that the blade extends into the recess without contacting the table, thus reducing blade wear. Some prior art devices use a table having bristle blocks so that contact between the blade and the bristle blocks does not rapidly wear the blade. Some prior art devices use a sacrificial layer atop a table surface, where the blade contacts the sacrificial layer but not the table surface, and where the softness of the sacrificial layer does not rapidly wear the blade. However, it is unclear which of these solutions, if any, are employed by the present sheet processing device to avoid excessive blade wear. Moreover, if the sheet processing device does employ a sacrificial layer, then that feature is necessary for an understanding of the invention because it is unclear whether a sacrificial layer can be considered part of a table. The examiner suggests resolving this issue by removing the requirement of contact between the blade and the table during movement of the blade from the claim(s).
Specification
The amendment to the specification filed 22 February 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The incorporations by reference of the international patent application PCT/JP2022/023662 and of Japanese Patent Application number 2021-133375 are ineffective as they were added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of the associated PCT, in this case 13 June 2022 (see MPEP 1893.03(b)). Therefore, the specification amendment of 22 February 2024 to include the incorporation by reference is new matter, per MPEP 608.01(p). To remedy the issue, applicant should remove the phrase “the disclosures each of which are incorporated herein by reference in their entirety” from the specification. Applicant is required to cancel the new matter in the reply to this Office Action.
The disclosure is objected to because of the following informalities: Each of claim(s) 1 and 5 recites, “a right/left movement mechanism” and “a front/rear movement mechanism”. Each of “a right/left movement mechanism” and “a front/rear movement mechanism” is interpreted under 35 USC 112(f) as explained in the Claim Interpretation section below. However, the present specification is objected to be the present specification does not explicitly state the corresponding structure for each of “a right/left movement mechanism” and “a front/rear movement mechanism”. The Applicant should amend the specification to explicitly describe the corresponding structure for each of “a right/left movement mechanism” and “a front/rear movement mechanism”. Appropriate correction is required.
Claim Objections
The claims are objected to because of the following informalities:
Claim 1 at line 6 recites, “an up/down movement motor”. The phrase “up/down” in this recitation should be amended to avoid reciting a slash, since a slash has multiple different meanings (in one interpretation, the slash is interpreted as meaning ‘or’, but here the Applicant uses the slash to mean ‘and’). The examiner suggests reciting – an up and down movement motor –.
Claim 5 at line 7 should likewise be amended in this manner.
Claim 1 at lines 12-13 recites, “a right/left movement mechanism”. The phrase “right/left” in this recitation should be amended to avoid reciting a slash, since a slash has multiple different meanings (in one interpretation, the slash is interpreted as meaning ‘or’, but here the Applicant uses the slash to mean ‘and’). The examiner suggests reciting – a right and left movement mechanism –.
Claim 5 at lines 14-15 should likewise be amended in this manner.
Claim 1 at line 13 recites, “a front/rear movement mechanism”. The phrase “front/rear” in this recitation should be amended to avoid reciting a slash, since a slash has multiple different meanings (in one interpretation, the slash is interpreted as meaning ‘or’, but here the Applicant uses the slash to mean ‘and’). The examiner suggests reciting – a front and rear movement mechanism –.
Claim 5 at line 15 should likewise be amended in this manner.
Claim 2 introduces a variety of features having identical names to features already introduced in claim 1. For example, claim 2 recites “an image captured by imaging” at lines 5-6, “a portion of the back surface of the sheet” at line 6, and “a cutting trace” at line 8. Each of these features should be provided with a unique name to distinguish the features from those referred to in claim 2 to make clear that a new image, a new portion of the back sheet, and a new cutting trace are being described. Moreover, the recitation of “the image” at line 7 of claim 2 should be amended to specify that “the image” refers to the newly introduced “image” of claim 2, rather than the “image” previously introduced in claim 1.
Claim 3 recites, “a plurality of cutting blades” and also recites “cutting surfaces”. In view of Fig. 1 of the present drawings, the plurality of cutting blades and the cutting surfaces of claim 3 are intended to include the cutting blade and the cutting surface, respectively, already introduced in claim 1. Claim 3 must be amended to make clear the relationship between the ‘plurality of cutting blades’ of claim 3 and the ‘cutting blade’ of claim 1, and similarly claim 3 must be amended to make clear the relationship between the ‘plurality of cutting surfaces’ of claim 3 and the ‘cutting surface’ of claim 1. The examiner suggests amending claim 3 to require a second cutting blade and a second cutting surface. Alternatively, the examiner suggests amending claim 3 to explicitly state that the plurality of cutting blades include the cutting blade already introduced in claim 1, and likewise for the plurality of cutting surfaces.
Claim 3 at line 7 recites, “cutting surfaces”. These cutting surfaces are already introduced at line 3 of the claim, such that line 7 should be amended to use “the” or “said” when referring to the already introduced cutting surfaces.
Claim 3 at lines 7-9 refers to several features that are previously introduced using the article “a”. All previously introduced features should be referred to with “the” or “said”, including “a cutting surface”.
Claim 4 should be amended to make clear that the pluralities of parallel movement mechanisms and lifting mechanisms are inclusive of the parallel movement mechanism already introduced in claim 1 and the lifting mechanism already introduced in claim 1. The examiner suggests that the device further comprises a second parallel movement mechanism and a second lifting mechanism, as one option (although this suggestion does not overcome the rejection below under 35 USC 112 related to uncertainty regarding which structure corresponds to the front/rear movement mechanism).
Claim 4 recites, “each parallel movement mechanism” and “each lifting mechanism”. These recitations should be rephrased to use “the” or “said” when referring to previously introduced features.
Claim 5 at line 8 recites, “a base for supporting a cutting blade to move a cutting blade”. The second recitation of “a cutting blade” in this passage should read – the cutting blade –.
Claim 5 at line 20 recites, “and shape of the cutting surface”. This recitation should read – and the shape of the cutting surface –.
Claim 7 twice recites, “a sheet”. The second recitation should be amended to refer to “the sheet”.
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.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 limitation(s) is/are:
“a right/left movement mechanism” as recited in claim(s) 1 and 5 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional “being configured to move the cutting blade in parallel with the surface of the table” in claim 1 and “to move the cutting blade in parallel with the surface” in claim 5; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “right/left movement” preceding the generic placeholder describes the function, not the structure, of the mechanism);
“a front/rear movement mechanism” as recited in claim(s) 1 and 5 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional “being configured to move the cutting blade in parallel with the surface of the table” in claim 1 and “to move the cutting blade in parallel with the surface” in claim 5; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “front/rear movement” preceding the generic placeholder describes the function, not the structure, of the mechanism);
“a transportation mechanism” as recited in claim(s) 1, 5, and 6 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “configured to place the sheet on the table” in claim 1 and separating the sheet from the table and moving the sheet in claim 5; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “transportation” preceding the generic placeholder describes the function, not the structure, of the mechanism);
“an imaging device” as recited in claim(s) 1 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “configured to image the back surface of the sheet”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “imaging” preceding the generic placeholder describes the function, not the structure, of the device);
“a cutting blade wear determination device” as required by claim 6 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language the ‘storing’, ‘instructing’, ‘acquiring’, ‘extracting, and ‘determining’ steps; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “cutting blade wear determination” preceding the generic placeholder describes the function, not the structure, of the device, and structures recited in claim 6, such as the lifting mechanism and the table, are not structures of the cutting blade wear determination device);
“a lifting mechanism” as recited in claims 6 and 7 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language including moving the cutting blade; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “lifting” preceding the generic placeholder describes the function, not the structure, of the mechanism); and
“a parallel movement mechanism” as recited in claims 6 and 7 (first, “mechanism” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language moving the cutting blade; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “parallel movement” preceding the generic placeholder describes the function, not the structure, of the mechanism).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 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.
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.
Claim(s) 1-7 is/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.
Regarding claim 1, the claim at lines 36-49 describes a configuration of “a controller”, which configuration requires the controller to perform multiple specific functions. As explained in MPEP 2161.01(I), “claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” MPEP 2161.01(I) further states, “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. ... If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” Regarding claim 1, the claimed controller corresponds to a general purpose computer (see, e.g., paragraph 80 of the present specification). However, the present specification does not include an algorithm or steps/procedure for performing each of the recited computer-implemented functions. As a first example, claim 1 requires that the controller “extracts, from the image, within the region corresponding to where formation of the cutting surface is instructing, a cutting trace”. No algorithm or steps/procedure for performing the ‘extract’ function is described in the present specification. Instead, the present specification merely discloses “a cutting trace extractor 34” that “extracts, from the image, a cutting trace”. (See, e.g., paragraphs 40 and 43.) The mere disclosure of ‘a cutting trace extractor’, however, is insufficient to disclose an algorithm or steps/procedure for extracting a cutting trace from an image. One of ordinary skill in the art, reading the present specification, is not apprised of how the inventor extracts the image. Further, the drawings fail to remedy this issue, since the drawings only generically illustrate “Cutting Trace Extractor” as a box (see Fig. 3) and only include flow charts with a single step of ‘Extract Cutting Trace’ (see Figs. 5 and 8). Thus, the present application as originally filed merely restates the ‘extract’ function recited in the claim. The present application does not explain any algorithm or steps/procedure for performing the ‘extract’ function. Another example, claim 1 requires that the controller determines “when the cutting trace coincides with an assumed line”. No algorithm or steps/procedure for performing a function of determining that the cutting trace coincides with the assumed line is described in the present specification. Instead, the present specification merely discloses, “When the assumed line and the cutting trace coincide with each other, the determiner 35 determines that the cutting blade 10 that is instructed to form the cutting surface is not worn. When the assumed line and the cutting trace do not coincide with each other, the determiner 35 determines that the cutting blade 10 that is instructed to form the cutting surface is worn.” (See, e.g., paragraph 41.) The mere disclosure of ‘a determiner’ that makes a determination is insufficient to disclose an algorithm or steps/procedure for determining whether the assumed line and the cutting trace coincide with each other. One of ordinary skill in the art, reading the present specification, is not apprised of how the inventor determines whether the assumed line and the cutting trace coincide with each other. Further, the drawings fail to remedy this issue, since the drawings only generically illustrate “Determiner” as a box (see Fig. 3) and only include flow charts with a single step of ‘Coincide?’ (see Figs. 5 and 8). Thus, the present application as originally filed merely restates the function of determining when the cutting trace does not coincide with an assumed line recited in the claim. The present application does not explain any algorithm or steps/procedure for performing the required determinizing function. Since the present specification does not disclose any algorithm or steps/procedure for each computer-implement function in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, claim 1 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description.
Claim 1 at lines 39-41 recites that the acquired image is “of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information”. This feature 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 feature. The present specification fails to explicitly disclose that the acquired image is “of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information”. Instead, the present specification only discloses that the image is acquired “where formation of a cutting surface is instructed” (see, e.g., the Abstract and paragraph 13). Acquiring an image where formation of the cutting surface is instructed, however, can be achieved by imaging an entirety of the back surface of the sheet, as one option. The disclosure that the image is acquired “where formation of a cutting surface is instructed” is therefore not commensurate in scope with the image being acquired based on the position and the shape of the cutting surface included in the cutting surface information. For example, consistent with the present specification, some input device can query an operator regarding (1) what position and shape of cutting surface is desired and (2) where the image should be acquired. By obtaining these two pieces of information, the image can be acquired “where formation of a cutting surface is instructed”, without necessarily being “selected based on the position and the shape of the cutting surface included in the cutting surface information”. Therefore, the recitation in claim 1 that the acquired image is “of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information” fails to comply with the written description requirement.
Claim 1 at lines 43 recites that the image is acquired “based on the position and the shape of the cutting surface included in the cutting surface information”. This feature 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 feature.
Regarding claim 5, the claim at lines 4-38 describes a configuration of “a controller”, which configuration requires the controller to perform multiple specific functions. The claimed controller corresponds to a general purpose computer (see, e.g., paragraph 80 of the present specification). However, the present specification does not include an algorithm or steps/procedure for performing each of the recited computer-implemented functions. The same analysis set forth in the preceding paragraph with respect to claim 1 is likewise applicable to claim 5. Since the present specification does not disclose any algorithm or steps/procedure for each computer-implement function recited in claim 5 in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, claim 5 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description.
Claim 5 at lines 39-41 recites that the acquired image is “of a portion of a back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information”. This feature 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 feature for the same reasons discussed above with respect to claim 1. Therefore, the recitation in claim 5 that the acquired image is “of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information” fails to comply with the written description requirement.
Regarding claim 6, the claim recites that the method is performed by “a cutting blade wear determination device”. This device is interpreted under 35 USC 112(f) as explained in the Claim Interpretation section above. The corresponding structure of this device is a general purpose computer (see paragraph 70 of the present application).As explained in MPEP 2181, “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. ... It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) .... If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” In the present case, the specification fails to disclose an algorithm for performing each function recited in claim 6 for the same reasons discussed two paragraph prior to this paragraph with respect to claim 1. Since the present specification only discloses a general computer that can perform functions required by claim 6, without disclosing any algorithm for performing each function required by claim 6, claim 6 is rejected for failing to comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Claim 6 at lines 18-22 recites that the acquired image is “of a portion of a back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information”. This feature 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 feature for the same reasons discussed above with respect to claim 1. Therefore, the recitation in claim 6 that the acquired image is “of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information” fails to comply with the written description requirement.
Regarding claim 7, the claim at lines 4-35 describe computer-implemented functional limitations (see line 2 of the claim, requiring that the instructions must be “executed by a computer”). However, the present specification does not include an algorithm or steps/procedure for performing each of the recited computer-implemented functions. The same analysis set forth above with respect to claim 1 is likewise applicable to claim 7. Since the present specification does not disclose any algorithm or steps/procedure for each computer-implement function recited in claim 7 in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, claim 7 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description.
Claim 7 at lines 19-25 recites that the acquired image is “of a portion of a back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information”. This feature 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 feature for the same reasons discussed above with respect to claim 1. Therefore, the recitation in claim 7 that the acquired image is “of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information” fails to comply with the written description requirement.
Claim(s) 1-7 is/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 recites, “a front/rear movement mechanism”. This limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as explained in the Claim Interpretation section above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. First, the specification only describes “a front/rear movement mechanism” without explicitly describing any corresponding structure of the front/rear movement mechanism. Thus, the specification does not disclose and clearly link the corresponding structure of the ‘front/rear movement mechanism’. Still, the drawings (in particular, Fig. 1) indicate the ‘front/rear movement mechanism’ with reference character ‘14’. Considering claim 1 and Fig. 1 in and of themselves, the front/rear movement mechanism appears to include a pair of rails, although potentially the front/rear movement mechanism also includes one or more actuators for moving one or more of the ‘right/left movement mechanisms 13’. Regarding the number of rails required by ‘a front/rear movement mechanism’, although only a single reference character ‘14’ is provided, one of ordinary skill in the art considering Fig. 1 appreciates that each ‘right/left movement mechanism 13’ is supported at two opposing ends, which suggests that the front/rear movement mechanism corresponds to a pair of rails. It is not clear that the Applicant has possession of a sheet processing device where a right/left movement mechanism is supported by a single rail, which suggests that the ‘front/rear movement mechanism’ must include two rails. However, claim 4 requires “a plurality of parallel movement mechanisms”. Since each parallel movement mechanism includes a front/rear movement mechanism, claim 4 describes the sheet processing device as including a plurality of the front/rear movement mechanisms. In order for the Applicant to have illustrated a sheet processing device as encompassed by claim 4, ‘a front/rear movement mechanism’ must be a single rail (e.g., Fig. 1 only illustrates two rails). Thus, the corresponding structure required by a front/rear movement mechanism is unclear, rendering claim 1 indefinite. Thus, it is unclear how many rails are required by the ‘front/rear movement mechanism’. Moreover, since the front/rear movement mechanism is response for movement in the front and rear directions, it is further unclear whether the front/rear movement mechanism is required to include a motor, pneumatic cylinder, or some other structure for producing front and rear movement of the right/left movement mechanism. Since the present application does not disclose and clearly link the corresponding structure for the ‘front/rear movement mechanism’, the recitation is indefinite. The examiner suggests resolving this issue by explicitly stating in the written description what structure(s) corresponds to the front/rear movement mechanism, without introducing new matter.
Claim 1 at line 43 recites, “the region corresponding to where formation of the cutting surface is instructed”. There is insufficient antecedent basis for “the region” in this recitation, rendering claim 1 indefinite. A ‘region’ can be an arbitrary area, such that as best understood there is not inherently any single ‘region’ corresponding to where formation of a cutting surface is instructed. As such, the particular region that Applicant intends “the region” to refer to is unclear. Can “the region” be a region that includes a portion of the area “where formation of the cutting surface is instructed”? Must “the region” include an entirety of the area “where formation of the cutting surface is instructed”? Can “the region” be an entirety of the back surface of the sheet, since the back surface of the sheet will necessarily include the cutting surface? Since it is unclear what particular region Applicant intends “the region” to refer to, the lack of antecedent basis for “the region” renders claim 1 indefinite.
Claim 5 recites, “a front/rear movement mechanism”. This limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as explained in the Claim Interpretation section above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function for the same reasons discussed above with respect to claim 1. Therefore, claim 5 is indefinite because the corresponding structure of the ‘front/rear movement mechanism’ is unclear.
Claim 5 at lines 28-29 recites, “the region corresponding to where formation of the cutting surface is instructed”. There is insufficient antecedent basis for “the region” in this recitation, rendering claim 5 indefinite. A ‘region’ can be an arbitrary area, such that as best understood there is not inherently any single ‘region’ corresponding to where formation of a cutting surface is instructed. As such, the particular region that Applicant intends “the region” to refer to is unclear. Can “the region” be a region that includes only a portion of the area “where formation of the cutting surface is instructed”? Must “the region” include an entirety of the area “where formation of the cutting surface is instructed”? Can “the region” be an entirety of the back surface of the sheet, since the back surface of the sheet will necessarily include the cutting surface? Since it is unclear what particular region Applicant intends “the region” to refer to, the lack of antecedent basis for “the region” renders claim 5 indefinite.
Regarding claim 6, claim limitation “lifting mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification fails to explicitly link any corresponding structure to the “lifting mechanism”. Although the specification notes that Fig. 2 illustrates a cross-sectional view of the lifting mechanism; there is no clear link between the particular structures shown in Fig. 2 and the lifting mechanism. For example, there is no explicit description of which components shown in Fig. 2 constitute the lifting mechanism. As two examples, it is unclear whether housing ‘55’ and ‘spring 65’ are required components of the lifting mechanism. Since there is no clear link between disclosed structures and the recited “lifting mechanism”, claim 6 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. It is unclear why Applicant amended claims 1 and 5 to recite structure of the ‘lifting mechanism’ of each of those claims, without also amending claim 6 in a similar manner. The fact that claim 6 has not been amended may indicate that Applicant intends “lifting mechanism” as recited in claim 6 to have a different scope than the lifting mechanisms of claims 1 and 5, which raises uncertainty regarding what structure(s) is/are required by the lifting mechanism of claim 6.
Claim 6 recites, “a parallel movement mechanism”. This limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as explained in the Claim Interpretation section above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The present specification merely discloses that the parallel movement mechanism includes two additional mechanisms (in particular, right/left movement mechanism 13 and front/rear movement mechanism 14 per paragraph 21), each of which itself invokes 35 USC 112(f). However, as explained above with respect to claim 1, the present specification fails to disclose and clearly link the corresponding structure of the ‘front/rear movement mechanism’. Since the ‘parallel movement mechanism’ necessarily includes the structure of the ‘front/rear movement mechanism’, and since the present specification fails to disclose and clearly link the corresponding structure of the ‘front/rear movement mechanism’ as explained above with respect to claim 1, the present specification also fails to disclose and clearly link the corresponding structure of the ‘parallel movement mechanism’. Therefore, claim 6 is indefinite because the corresponding structure of the ‘parallel movement mechanism’ is unclear.
Claim 6 at lines 26-27 recites, “the region corresponding to where formation of the cutting surface is instructed”. There is insufficient antecedent basis for “the region” in this recitation, rendering claim 6 indefinite. A ‘region’ can be an arbitrary area, such that as best understood there is not inherently any single ‘region’ corresponding to where formation of a cutting surface is instructed. As such, the particular region that Applicant intends “the region” to refer to is unclear. Can “the region” be a region that includes only a portion of the area “where formation of the cutting surface is instructed”? Must “the region” include an entirety of the area “where formation of the cutting surface is instructed”? Can “the region” be an entirety of the back surface of the sheet, since the back surface of the sheet will necessarily include the cutting surface? Since it is unclear what particular region Applicant intends “the region” to refer to, the lack of antecedent basis for “the region” renders claim 6 indefinite.
Regarding claim 7, claim limitation “lifting mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification fails to explicitly link any corresponding structure to the “lifting mechanism”. Although the specification notes that Fig. 2 illustrates a cross-sectional view of the lifting mechanism; there is no clear link between the particular structures shown in Fig. 2 and the lifting mechanism. For example, there is no explicit description of which components shown in Fig. 2 constitute the lifting mechanism. As two examples, it is unclear whether housing ‘55’ and ‘spring 65’ are required components of the lifting mechanism. Since there is no clear link between disclosed structures and the recited “lifting mechanism”, claim 7 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. It is unclear why Applicant amended claims 1 and 5 to recite structure of the ‘lifting mechanism’ of each of those claims, without also amending claim 7 in a similar manner. The fact that claim 7 has not been amended may indicate that Applicant intends “lifting mechanism” as recited in claim 7 to have a different scope than the lifting mechanisms of claims 1 and 5, which raises uncertainty regarding what structure(s) is/are required by the lifting mechanism of claim 7.
Claim 7 recites, “a parallel movement mechanism”. This limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as explained in the Claim Interpretation section above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The present specification merely discloses that the parallel movement mechanism includes two additional mechanisms (in particular, right/left movement mechanism 13 and front/rear movement mechanism 14 per paragraph 21), each of which itself invokes 35 USC 112(f). However, as explained above with respect to claim 1, the present specification fails to disclose and clearly link the corresponding structure of the ‘front/rear movement mechanism’. Since the ‘parallel movement mechanism’ necessarily includes the structure of the ‘front/rear movement mechanism’, and since the present specification fails to disclose and clearly link the corresponding structure of the ‘front/rear movement mechanism’ as explained above with respect to claim 1, the present specification also fails to disclose and clearly link the corresponding structure of the ‘parallel movement mechanism’. Therefore, claim 7 is indefinite because the corresponding structure of the ‘parallel movement mechanism’ is unclear.
Claim 7 at lines 27-28 recites, “the region corresponding to where formation of the cutting surface is instructed”. There is insufficient antecedent basis for “the region” in this recitation, rendering claim 7 indefinite. A ‘region’ can be an arbitrary area, such that as best understood there is not inherently any single ‘region’ corresponding to where formation of a cutting surface is instructed. As such, the particular region that Applicant intends “the region” to refer to is unclear. Can “the region” be a region that includes only a portion of the area “where formation of the cutting surface is instructed”? Must “the region” include an entirety of the area “where formation of the cutting surface is instructed”? Can “the region” be an entirety of the back surface of the sheet, since the back surface of the sheet will necessarily include the cutting surface? Since it is unclear what particular region Applicant intends “the region” to refer to, the lack of antecedent basis for “the region” renders claim 7 indefinite.
[Note that no rejection under 35 USC 112(a) is included for various limitations interpreted under 35 USC 112(f), even for some such limitations that are rejected under 35 USC 112(b) above, in view of the potential that the specification discloses, but does not clearly link, the corresponding structure of each limitation interpreted under 35 USC 112(f).]
Claims Not Subject to Prior Art Rejection
Claims 1-7 are not subject to any prior art rejection under 35 USC 102 and/or 35 USC 103. However, no determination of allowability can be made for these claims in view of the issues raised above, especially the issues under 35 USC 112 raised above. As discussed in the Response to Arguments section below, each of claims 1 and 5-7 requires that the acquired image is of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information, and the best known prior art (WO 2005/108027 A1 to Alsten et al. in view of US Pub. No. 2020/0048024 A1 to Nasu and US Pub. No. 2022/0371297 A1 to De Franceschi et al.) only discloses imaging an entire portion of the sheet. Imaging an entire portion of a sheet is insufficient to disclose imaging a portion of the back surface of the sheet based on the position and shape of the cutting surface included in the cutting surface information, since imaging the entire portion of the sheet produces a same image area regardless of the position and the shape of the cutting surface of the sheet. Still, each of claims 1 and 5-7 raises an issue under 35 USC 112(a) resulting from the requirement that the acquired image is of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information as explained above in the Claim Rejections – 35 USC 112.
Response to Arguments
Applicant's arguments filed 31 July 2026 have been fully considered but they are not persuasive. The examiner only addresses arguments that remain relevant following Applicant’s amendments. Arguments related to issues resolved by Applicant’s amendments are moot.
Regarding the drawing objection related to the drawings failing to illustrate contact between the blade and table, the Applicant argues under paragraph II of the Drawing Objections header that the drawings enable one of ordinary skill in the art to understand the invention. The Applicant’s argument is not persuasive. First, the Applicant does not dispute that the drawings fail to illustrate contact between the blade and the table. Second, the Applicant fails to address the lack of clarity regarding the contact between the blade and table. For example, in view of a failure to illustrate contact between the blade and the table, it is unclear whether the claims encompass a table having a sacrificial layer thereon, where the sacrificial layer is a layer distinct from and applied to the table. As noted in the drawing object, the prior art is replete with references describing strategies to avoid contact between the blade and table. Thus, the relationship between the Applicant’s invention, which requires contact between the blade and the table, and the prior art is unclear. Therefore, the drawing objection is maintained because an illustration of the contact between the blade and table would aid in an understanding of the invention, including whether or not the claims encompass a sacrificial layer atop a table being contacted by the blade. The objection is maintained.
Next, regarding the objection to the specification, the Applicant under the Specification Objections header argues that adding an incorporation by reference after the effective filing date is not new matter because “the identify of these related applications was already part of the application record, and the amendment did not add previously undisclosed technical subject matter to the application.” This argument is not persuasive. First, the argument cites no legal source for the assertion that adding an incorporation by reference after the filing date is not new matter if the newly incorporated reference “was part of the application record”. To the contrary, 37 CFR 1.57(b) requires an incorporation by reference to be ‘present on the filing date of the application’. Given the Applicant asserts that the incorporation by reference does not change the disclosure and is not relied upon to provide support for the present amended claims, the examiner advises the Applicant to delete the phrase “the disclosures each of which are incorporated herein by reference in their entirety”. The problem is not that the Applicant has identified the relationship to related applications, but instead that the Applicant has added an incorporation by reference after the effective filing date. The objection is maintained.
Turning to claims rejected under 35 USC 112, the Applicant under paragraph I of the 35 USC 112 Rejections header argues in relation to the ‘extracting’ step that the tying the extracting step to the stored cutting-surface information resolves the indefiniteness issue. This argument is not persuasive because it remains that case that there is no disclosure of an algorithm for performing the extracting step. There is no disclosure regarding how the computer extracts a cutting trace from the image. Specifying some portion of the image from which the cutting trace is extracted fails to disclose any steps that the computer takes when performing the extraction. Therefore, Applicant’s arguments are not persuasive, and the claims remain indefinite.
Turning to the rejections of claims 1-2 and 5-7 under 35 USC 103, the Applicant under paragraph I of the 35 USC 103 Rejections header argues that WO 2005/108027 A1 to Alsten et al. in view of US Pub. No. 2020/0048024 A1 to Nasu and US Pub. No. 2022/0371297 A1 to De Franceschi et al. fails to disclose that the acquired image is of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information. This argument is persuasive, since De Franceschi teaches positioning the camera “perpendicular to the cardboard in a point in which the entire inspected object/cardboard is visible” and “so that the entire cardboard is visible to the video camera and when the cardboard is captured it should be the object which occupies most of the captured frame” (see paragraph 69). Thus, one of ordinary skill in the art understands De Franceschi as positioning the camera to image the entire inspected object, regardless of the exact position and shape of the cutting surface. Since De Franceschi does not teach adapting the area imaged by the camera based on the position and the shape of the cutting surface, claims 1 and 5-7 distinguish over the combination of prior art applied in the most recent Non-Final Office Action. It cannot be said that imaging an entire sheet is imaging a portion of the sheet selected based on the position and the shape of the cutting surface, since imaging the entire sheet acquires the same image regardless of the position and the shape of the cutting surface. As such, claims 1 and 5-7, each of which requires that the acquired image is of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information, avoid the best known prior art. The rejection of claims 1 and 5-7 under 35 USC 103 has been withdrawn as a result of Applicant’s amendments to the claims to require that the acquired image is of a portion of the back surface of the sheet selected based on the position and the shape of the cutting surface included in the cutting surface information. (As such, rejections of claims 2-4 under 35 USC 103 have likewise been withdrawn, given that these claims depend from claim 1.)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
