CTNF 18/834,359 CTNF 78253 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. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non- statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to “ A non-transitory computer-readable recording medium that records a program…” which under its broadest reasonable interpretation can be interpreted as software per se. Moreover, software per se has been held to be non-statutory subject matter (MPEP 2106.03). 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 of this title, 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 Claims 1 and 6- 10 are reject ed under 35 U.S.C. 103 as being unpatentable over Kobaya shi et al. (“Kobayashi”)(JP 2004145385)(with text citations to English translation attached hereto) in view of Hall et al. (“Hall”)(US 2020/0084331). Kobaya shi teaches a business sheet processing system and method comprising: (re: certain elements of claim 1) at least one memory configured to store instructions (para. 20-22 teaching that business sheet/form processing system 1 includes a controlling element configured to sort a form into a pocket near 10 based “on an instruction from the form identification unit 5”, wherein memory and processor for executing functions/instructions are inherent from discussion of database and form identification functions); and at least one processor configured to execute the instructions to (Id.): recognize a business sheet placed in a first area (fig. 1 showing image scanner 2 and form identification unit 5, wherein first area is regarded as scanner and identification area; para. 23 teaching form identification unit 5 that reads information from form/sheet and then “controlling the document sorting unit based on the discrimination result”; see generally para. 23-50 for form identification and image data analysis steps for recognizing a business sheet and whether business sheet is a type capable of being sorted or of an “unspecified” type); determine whether the business sheet is sortable (Id.); control, based on the recognition result, extraction of the business sheet from the first area of the basket by a sheet moving element (fig. 1 showing sensing elements such as scanner 2, thickness sensor and identification element 5 configured to input sorting unit 4—thus it is inherent that the business sheet is extracted from a first area--where imaging and sensing is performed—for further processing/sorting via a sheet moving element); control the sheet moving element to move a business sheet extracted by the sheet processing element and determined to be sortable to a sorting process (fig. 1 near 4 and para. 22, 50 teaching sorting unit configured to sort form into pocket based on “type of the specified form” identified or if the form could not be identified, i.e., “form could not be specified”, into an “unsorted pocket” area); and control the sheet moving element to move a business sheet extracted by the sheet processing element and determined to be unsortable to a second area of the basket (Id.); (re: claim 6) wherein the business sheets that are unsortable are unreadable business sheets business sheets with fasteners or; (re: certain elements of claim 7) wherein the at least one processor is further configured to execute the instructions to: determine whether the business sheet is sortable based on an image obtained by photographing an inside of the first area (fig. 1 near 2; para. 20-21, 37, 50 teaching image scanner 2 and--based on the scanning data—determining whether form is identifiable and sortable or if form is “not specified” and thus sent to the “unsorted pocket”); (re: certain elements of claim 8) wherein the at least one processor is further configured to execute the instructions to: determine whether the business sheet is sortable based on an image obtained by photographing a business sheet (Id.). (re: claims 9 and 10) The claimed processing method and related program instructions are taught in the combined system described below. Kobayashi as set forth above teaches all that is claimed except for expressly teaching (re: certain elements of claims 1 and 7) wherein the first area is a basket area; and wherein the sheet moving element is a robot; (re: certain elements of claim 6) wherein the business sheets that are unsortable are business sheets with fasteners; (re: certain elements of claim 8) wherein the business sheet is lifted from the basket area for imaging. Here, it is noted that Kobayashi as cited above already teaches the concepts of recognizing a business sheet and sorting said business sheet based on the determination and is merely silent on the specific structural elements for implementing the scanning and sorting processes. Hall teaches that it is well-known in the sheet handling/sorting arts to configure- (re: certain elements of claims 1 and 7) - the sheet movement element as a robot within a basket area including scanning and sorting areas as this configuration allows for easier movement and manipulation of a variety of sheet--or stacks of sheet--types to the various positions within the basket area after the scanning step (fig. 2 showing basket area with sheet positioning/scanning areas near 250, 260, 270 and movement element near 240; para. 121, 128-132 teaching configuration of movement tool as a robot arm with various end-effector tools allows handling/positioning of a variety of sheet/stack types to the various sheet scanning/positioning areas; see also para. 132-135 teaching that sheet positioning areas—as well as the amounts-- are movable and adaptable to a variety of different sheet types; para. 90-92, 122 teaching controller configured with a processor and memory with executable instructions to implement the control steps in an automated manner); and (re: certain elements of claims 6 and 8) -the sheet handling system to identify and remove sheets with fasteners, such as staples, by vacuum lifting tools attached to the robot arm to allow image analysis of the additional sheets after separation (para. 44, 53, 56, 112, 125, 129, 141-142 teaching identifying and isolating sheet including one or more fasteners by image analysis of shadow profiles and then removal of said fasteners using vacuum lifting means and fastener removals to allow further analysis of sheets after separation). It would thus be obvious to one with ordinary skill in the art to modify the base reference by configuring the sorting and scanning areas within a basket area with a robot arm as a movement tool as taught by the secondary reference—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in the prior art itself as cited above and from an analysis of the prior art teachings that demonstrates that the modification to arrive at the claimed invention would merely involve the substitution/addition of well-known elements (e.g., robot arm and lifting tools as well as fastener identification and removal elements) with no change in their respective functions. Moreover, the use of prior art elements according to their known functions is a predictable variation that would yield predictable results (e.g., benefit produced by known function), and thus cannot be regarded as a non-obvious modification when the modification is already commonly implemented in the relevant prior art. See also MPEP 2143.I (teaching that simple substitution of one known element for another to obtain predictable results is known to one with ordinary skill in the art); 2144.06, 2144.07 (teaching as obvious the use of art recognized equivalences). Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Kobayashi for the reasons set forth above . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 2-5 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. Conclusion Any references not explicitly discussed above but made of record are regarded as helpful in establishing the state of the prior art and are thus considered relevant to the prosecution of the instant application. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805. Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov . Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”. Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/ /JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655 Jcr --- June 2, 2026 Application/Control Number: 18/834,359 Page 2 Art Unit: 3653 Application/Control Number: 18/834,359 Page 3 Art Unit: 3653 Application/Control Number: 18/834,359 Page 4 Art Unit: 3653 Application/Control Number: 18/834,359 Page 5 Art Unit: 3653 Application/Control Number: 18/834,359 Page 6 Art Unit: 3653 Application/Control Number: 18/834,359 Page 7 Art Unit: 3653
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