CTNF 18/769,660 CTNF 89702 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 06-11 AIA The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. 06-11-01 AIA The following title is suggested: Feed Tray Accommodating Both Rolled And Stacked Sheets And Image Recording Apparatus . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima (US Publication 2011/0187803) With regards to claim 1, Tajima discloses a feed tray (FIG. 1-4) configured to accommodate a first sheet-shaped medium (P1) and a second sheet-shaped medium (P4) , the feed tray comprising: a first accommodation part (3) configured to accommodate a roll body, in which the first sheet-shaped medium (P4) is rolled in a roll shape ([0063-0064]; FIG. 4) ; and a second accommodation part (23) configured to accommodate a plurality of the second sheet-shaped medium (P1) in a stacked state ([50-0051]; FIG. 4) , wherein the first accommodation part (3) and the second accommodation part (23) are arranged in the feed tray in a first direction (Y-direction as in FIG. 4) orthogonal to a rotational axis of the roll body (X-direction as in FIG. 4) . However, Tajima does not explicitly teach wherein the second accommodation part is configured to accommodate the second sheet-shaped medium in an orientation in which a short side of the second sheet-shaped medium is aligned in the first direction. It has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"). In re Williams , 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.") In this particular case, Tajima teaches the second accommodation part (23) holding a generic-sized medium with one side aligned (the medium aligned at 26) in the first direction (Y-direction as in FIG. 4) . Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to find the optimum sized medium as taught by Tajima including the size as claimed with reasonable expectation of storing within the second accommodation part as originally intended. With regards to claim 2, Tajima teaches the feed tray according to claim 1, wherein the second accommodation part (23) is arranged at a position downstream with respect to the first accommodation part (3; FIG. 4 shows 23 is downstream from 3 in the Y-direction) in a second direction (left direction) in which the first sheet-shaped medium is unrolled from the roll body (FIG. 4) . With regards to claim 3, Tajima teaches the feed tray according to claim 1, further comprising: a first sidewall (front side of the housing 2; [0050]) that extends in the first direction and defines a first side edge of the first accommodation part and the second accommodation part (FIG. 3-4) ; and a second sidewall (back side of housing 2; [0050]) that extends in the first direction and defines a second side edge of the first accommodation part and the second accommodation part, the second side edge facing the first side edge (FIG. 3-4) . With regards to claim 4, Tajima teaches an image recording apparatus (1; FIG. 1) comprising: a housing (2; FIG. 1) ; the feed tray (including 3 and 23; FIG. 4) according to claim 1 (see above) , the feed tray being configured to be capable of being inserted into and pulled out from the housing (it is noted that 3 and 23 are capable of being removable from housing of 2) ; a feed roller (35) configured to feed one of the first sheet-shaped medium (P4) and the second sheet-shaped medium (P1; [0084, 0086, 0181]) ; and a recording unit (30) configured to record an image on one of the first sheet-shaped medium and the second sheet-shaped medium fed by the feed roller ([0076, 0100]) . With regards to claim 5, Tajima teaches the image recording apparatus according to claim 4, wherein the second accommodation part (23) of the feed tray is located within the housing in a state where the feed tray is inserted into the housing (2; FIG. 4) . With regards to claim 7, Tajima teaches image recording apparatus according to claim 4, wherein the second sheet-shaped medium (P1) is fed by the feed roller (35; [0051]) in a third direction (Y-direction) in which the first sheet-shaped medium (P4) is fed by the feed roller (35; [0105]) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 6 is 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The prior arts on record fail to anticipate and/or suggest the combination of the claimed invention. Specifically, the prior arts fail to teach, inter alia, the limitation of “wherein the first accommodation part of the feed tray is located within the housing in a state where the feed tray is inserted into the housing” as required by claim 6. The closest prior art, Tajima (US Publication 2011/0187803) , teaches the feed tray and image recording apparatus according to claims 1 and 4, respectively. However, Tajima teaches the first accommodation part (3) is located outside of the housing 2 (FIG. 3-4) . It is also noted that modification of Tajima to include the first accommodation part to be within the housing would be against the teaching of setting the rolled medium without opening the housing ([0150]). Thus, Tajima does not teach the claimed limitation as required by claim 6 . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANG X.L NGUYEN whose telephone number is (571)272-1585. The examiner can normally be reached Monday-Friday 9AM-5PM. 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, STEPHEN D. MEIER can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /QXN/ Examiner, Art Unit 2853 /STEPHEN D MEIER/ Supervisory Patent Examiner, Art Unit 2853 Application/Control Number: 18/769,660 Page 2 Art Unit: 2853 Application/Control Number: 18/769,660 Page 3 Art Unit: 2853 Application/Control Number: 18/769,660 Page 4 Art Unit: 2853 Application/Control Number: 18/769,660 Page 5 Art Unit: 2853 Application/Control Number: 18/769,660 Page 6 Art Unit: 2853