DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Species A, Figures 1-10, claims 1, 2, 5 and 13 in the reply filed on June 1, 2026 is acknowledged. The traversal is on the ground(s) that the Office has not established a serious search and/or examination burden because the Office has not shown what different searching strategies/queries would be required for searching the alleged species. This is not found persuasive because the restriction requirement pointed out how the species had mutually exclusive characteristics such as the different functions performed by the test processing portion as summarized by the description of the different species groups. For example, Species A requires the test processing portion to create different pattern configurations and testing of the image when the number of read sheets reaches a predetermined number while Species B requires test processing that changes a mode of the test image in sync with a timing at which an attribute of the sheet changes. Note Species Groups C and D also have distinct operation with respect to the test processing portion. These distinctions regarding the operation of the test processing portion would require the use of differing search queries to find relevant art and therefore create a serious search and/or examination burden for the Examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-4 and 6-12 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 1, 2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an image forming portion,” “an image reading portion,” and “a test processing portion” as recited in claims 1-2 and 5 and “a sheet conveying device” as recited in claim 5.
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. Note the structure of the image forming portion is described in paragraphs [0038]-[0039], the structure of the image reading portion is described in paragraph [0042], the structure of the test processing portion is described in paragraphs [0044]-[0046], and the structure of the sheet conveying device is described in paragraph [0035] of the specification.
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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uno (JP 2014-050060 A).
With respect to claim 1, Uno teaches an image forming apparatus 1, comprising:
an image forming portion 12 which forms an image on a sheet P using a plurality of recording elements (i.e., nozzles--see paragraph [0025]);
an image reading portion 13 (see paragraph [0027]) which reads the image on the sheet P; and
a test processing portion 14, 142 (see paragraphs [0031]-[0033]) which causes the image forming portion to form a test image in a marginal region of the sheet P (Figs. 8, 10), and causes the image reading portion to read the test image, wherein
the test processing portion 14 is capable of executing a divisional test in which only some of the plurality of recording elements (i.e., nozzles) are used for forming a single test image to be formed on a single sheet and all of the plurality of recording elements are used for forming a test image group constituted of a plurality of the test images to be formed on a plurality of the sheets (paragraphs [0044], [0064], and [0070]-[0071]. See, in particular, the entire English language translation and Figures 1-10.
With respect to claim 2, Uno teaches wherein the test processing portion is capable of changing a number of the test images to be included in the test image group as described, for example, in paragraphs [0054], [0058], [0072] of the English language abstract.
With respect to claim 5, Uno teaches a sheet conveying device 11 which conveys the sheet P, wherein
the image reading portion 13 is arranged more on a downstream side of a conveying direction (see arrow in Figure 1) of the sheet P than the image forming portion 12. See Figure 1 and paragraph [0023] of the English translation.
With respect to claim 13, Uno teaches an image forming method, comprising:
image forming processing for causing an image forming portion 12 which forms an image on a sheet P using a plurality of recording elements (i.e., nozzles) to form a test image in a marginal region of the sheet P (see Figures 8, 10 for example); and
image reading processing for reading the test image (via unit 13), wherein
in the image forming processing, only some of the plurality of recording elements are used for forming a single test image to be formed on a single sheet, and all of the plurality of recording elements are used for forming a test image group constituted of a plurality of the test images to be formed on a plurality of the sheets (as described in paragraphs [0044], [0064], and [0070]-[0071]). See, in particular, the entire English language translation and Figures 1-10.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Imanishi (US 9,649,867 B2) teaches an image forming apparatus executing a divisional test print having similarities to the claimed subject matter that are readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE J THOMPSON whose telephone number is (571) 272-2161. The examiner can normally be reached M-W 8:30-5:00 pm.
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 571-272-7149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leslie J Thompson/Primary Examiner, Art Unit 2853
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