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 .
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.
Claims 12-13, 15-16, 18 and 23 rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, 9-10, and 12 of U.S. Patent No. 12,115,778. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Claims 12-13, 15-16, 18 and 23 are included in and/or can be gleaned from Claims 1, 3, 9-10, and 12 of U.S. Patent No. 12,115,778.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “third guide which is located away from the second guide in the direction parallel to the rotation axis of the roll and configured to guide the sheet supplied from the roll held on the holding member, wherein the second guide is located between the first guide and the third guide” as set forth in Claim 17 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112, 1st Paragraph
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.
Claim 17 is 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. The specification fails to show/describe “a third guide which is located away from the second guide in the direction parallel to the rotation axis of the roll and configured to guide the sheet supplied from the roll held on the holding member, wherein the second guide is located between the first guide and the third guide.”
Claim Rejections - 35 USC § 112, 2nd Paragraph
Claim 16 is 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 16 is vague and indefinite. On lines 1-2, the phrase “wherein a second detection unit capable of detecting the leading end of the sheet is not provided at the first guide” is unclear. If the detection unit is not provided on the first guide, then where is it provided?
Claim Rejections - 35 USC § 102
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.
Claim(s) 12-16 and 18-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al (U.S. Patent Application Publication No. 2016/0136981), hereinafter “Suzuki”.
With respect to Claim 12, Suzuki, Figures 1-24, teaches a sheet supplying apparatus comprising:
a holding member (See Paragraph [0041], lines 1-3) configured to hold a roll in which a sheet is wound around a rotation axis;
a driving unit (See Paragraph [0041], line 4) configured to rotate the holding member in a first direction to supply the sheet and in a second direction opposite to the first direction;
a first guide 8 (top) configured to guide the sheet supplied from the roll held on the holding member and to move in accordance with an outer diameter of the roll;
a second guide 8 (bottom) which is located away from the first guide in a direction parallel to the rotation axis of the roll and configured to guide the sheet supplied from the roll held on the holding member and to move in accordance with the outer diameter of the roll;
a detection unit 301 which is provided at the second guide and configured to detect a leading end of the sheet of the roll held on the holding member; and
a control unit 201 configured to cause the driving unit to start rotation of the roll in the first direction based on the detection result obtained by the detection unit while the roll is rotated in the second direction by the driving unit.
With respect to Claim 13, Suzuki further teaches wherein the control unit causes the driving unit to rotate the holding member in the first direction, after the leading end is detected by the detection unit by causing the driving unit to rotate the holding member in the second direction. See Claims 5 and 6.
With respect to Claim 14, Suzuki further teaches wherein a plurality of rotating bodies 6,7 contacting the roll are mounted on the second guide.
With respect to Claim 15, Suzuki further teaches wherein the holding member includes a flange and the second guide is located between the flange and the first guide. See Paragraphs [0051]-[0054].
With respect to Claim 16, Suzuki further teaches wherein a detection unit capable of detecting the leading end of the sheet is not located on the first guide.
With respect to Claim 18, Suzuki further teaches 18. (New) The sheet supplying apparatus according to claim 12, further comprising a driving motor configured to drive the holding member.
With respect to Claim 19, Suzuki further teaches a manipulation panel 20 through which information is input to the control unit.
With respect to Claim 20, Suzuki further teaches a spring 46 configured to press the second guide.
With respect to Claim 21, Suzuki further teaches wherein the holding member is capable of holding rolls of different widths.
With respect to Claim 22, Suzuki further teaches wherein one side of the holding member is a reference for rolls of different widths, and the first guide is located near the reference side.
With respect to Claim 23, Suzuki further teaches a printing apparatus comprising: the sheet supplying apparatus according to the sheet supplying apparatus according to a printing unit 15 which ejects ink to print an image on the sheet supplied from the sheet supplying apparatus.
No Art Rejection
With respect to Claim 17, no art rejection can be advanced since any such rejection would require improper reliance on speculative assumptions as to the meaning of the terms in the claim. An absence of a rejection should not be construed as indicating allowable subject matter by the examiner. Note the rejection under 35 USC § 112, 1st Paragraph above.
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive.
With respect to applicants’ remarks regarding the drawings and the 35 USC § 112, 1st Paragraph, it is applicants’ position that Figure 12A shows six guides. In the instant case, there are only 11 references to the term “guide” in the Specification. The paragraphs are [0034], [0035], [0035], [0042], and [0045]. Figure 12A only shows swing member 7, driving rotating bodies 8 and 9, and three sensor units 6 (6(1), 6(2), and 6(3)); and leading end changes as indicated by T1, T2, and T3. Therefore, a third guide is not shown nor supported by the Specification.
With respect to applicants’ remarks regarding Claim 16, it is the examiner’s position that the claim is still vague and indefinite. The claim should positively set forth the location or where the second detection unit is located or provided at.
With respect to applicants’ remarks regarding the Double Patenting rejection, it is the examiner’s position that the current claims are included in and/or can be gleaned from Claims 1, 3, 9-10, and 12 of U.S. Patent No. 12,115,778. Note that the phrase “based on the detection result obtained by the detection unit” is a broader recitation of the limitation “wherein, in a case in which the detection unit cannot detect a leading end of a sheet”.
With respect to applicants’ remarks regarding the Suzuki reference, it is the examiner’s position that the independent claims reads on the Suzuki reference as advanced above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM ARAUZ RIVERA whose telephone number is (571)272-6953. The examiner can normally be reached Monday to Friday 9:00 AM to 8:00 PM MDT.
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, Victoria P. Augustine can be reached at 313-446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM A. RIVERA/Primary Examiner, Art Unit 3654
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