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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 25 March 2026 has been considered by the examiner.
Claim Objections
Claims 2-7 are objected to because of the following informalities: “one or more processors is” should be replaced by -- one or more processors are -- to be grammatically correct. 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.
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 [e.g., claim 9] 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.
Claim Rejections - 35 USC § 112
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.
Claims 1-9 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 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: a sensor or user interface that outputs information that the one or more processors use to determine whether a recording medium is a predetermined specific recording medium or not, a conveyance mechanism that transports the recording medium to a first or second destination, and a sensor that inspects the recording medium and outputs information that the one or more processors use to determine if the recording medium satisfies a predetermined condition or not. Please note that the one or more processors cause the omitted elements to perform their intended functions but are not capable to perform said functions by themselves. Claim 9 contains similar limitations and claims 2-8 depend on claim 1, and are therefore rejected the same way.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tsue (US 2017/0082963.)
Regarding claim 1,
Tsue discloses a recording medium processing apparatus comprising:
one or more processors [33 in fig. 2] configured to:
determine a recording medium [K in figs. 7A-7F] is a predetermined specific recording medium [a sheet where images have been reformed] or not [paragraphs 0096-0097; see steps S16-S17 in fig. 9];
transport the recording medium to a first destination [T1 in figs. 3A-8D] if the recording medium is the predetermined specific recording medium [a sheet having reformed images; paragraphs 0109, 0122, and 0181; as seen in figs. 3F-3G and 9];
transport the recording medium to the first destination if the recording medium is not the predetermined specific recording medium [a sheet with an image that has not been reformed] and a result of inspection of the recording medium satisfies a predetermined condition [images formed on it are determined as ‘normal’ (i.e., the images were never determined as abnormal and therefore never had to be reformed); paragraphs 0108, and 0117; as seen in figs. 3A-3C];
transport the recording medium to a second destination [T2 in figs. 3A-8D] if the recording medium is not the predetermined specific recording medium [a sheet with an image that has not been reformed] and a result of inspection of the recording medium does not satisfy the predetermined condition [images formed on it are determined as ‘abnormal’; paragraphs 0108-0109 and 0118; as seen in figs. 3B-3D.]
Regarding claim 2,
Tsue further discloses wherein the one or more processors is further configured to:
read an image on the recording medium [paragraph 0099-0102; see flowchart in fig. 9]; and
determine the recording medium is the predetermined specific recording medium or not based on the image on the recording medium [paragraphs 0109 and 0179; see flowchart in fig. 9.]
Regarding claim 3,
Tsue further discloses wherein the one or more processors is further configured to:
determine the recording medium is the predetermined specific recording medium if a similarity between the image on the recording medium and a registered image registered in advance exceeds a predetermined threshold value [paragraph 0102; please note that since the claim is defined by a conditional limitation (by "when / if"), the claim requirements are met at least when the condition is not satisfied.]
Regarding claim 4,
Tsue further discloses wherein the one or more processors is further configured to:
determine the recording medium is the predetermined specific recording medium if a predetermined image is formed on the recording medium [please note that since the claim is defined by a conditional limitation (by "when / if"), the claim requirements are met at least when the condition is not satisfied.]
Regarding claim 5,
Tsue further discloses wherein the one or more processors is further configured to:
acquire image data which is used to form an image on the recording medium [paragraph 0101-0102];
determine the recording medium is the predetermined specific recording medium if the image data indicates that the recording medium is the predetermined specific recording medium [paragraphs 0101-0102; please note that since the claim is defined by a conditional limitation (by "when / if"), the claim requirements are met at least when the condition is not satisfied.]
Regarding claim 6,
Tsue further discloses wherein:
a product is produced from recording mediums transported to the first destination [a printed document or image may be considered a “product”];
the one or more processors is further configured to determine a recording medium that is removed before completion of the product as the predetermined specific recording medium [the reformed sheet transported to tray T1 being removed before the print job is completed does not affect/change its determination as the specific recording medium.]
Regarding claim 7,
Tsue further discloses wherein the one or more processors is further configured to:
determine the recording medium is the predetermined specific recording medium or not based on information on what number the specific recording medium is in an order of transport in the recording medium processing apparatus [as seen in figs. 3A-8M; paragraphs 0105-0109.]
Regarding claim 8,
Tsue further discloses an image formation system [G in fig. 1] comprising:
an image forming apparatus [1 in figs. 1-2; including image forming unit 20] that forms an image on a recording medium [paragraphs 0072, 0075 and 0090]; and
a recording medium processing apparatus [2 in figs. 1-2] that performs processing on a recording medium on which an image has been formed by the image forming apparatus paragraphs 0072 and 0098-0101],
wherein the recording medium processing apparatus includes the recording medium processing apparatus according to Claim 1 [see rejection above.]
Regarding claim 9,
Tsue further discloses a recording medium processing apparatus comprising:
means [33 in fig. 2] for determining a recording medium [K in figs. 7A-7F] is a predetermined specific recording medium [a sheet where images have been reformed] or not [paragraphs 0096-0097; see steps S16-S17 in fig. 9];
wherein
if the recording medium is the predetermined specific recording medium [a sheet having reformed images; paragraphs 0109, 0122, and 0181], transport the recording medium to a first destination [T1 in figs. 3A-8D; ; as seen in figs. 3F-3G and 9];
if the recording medium is not the predetermined specific recording medium [a sheet with an image that has not been reformed] and a result of inspection of the recording medium satisfies a predetermined condition [images formed on it are determined as ‘normal’ (i.e., the images were never determined as abnormal and therefore never had to be reformed)], transport the recording medium to the first destination [paragraphs 0108, and 0117; as seen in figs. 3A-3C];
if the recording medium is not the predetermined specific recording medium [a sheet with an image that has not been reformed] and a result of inspection of the recording medium does not satisfy the predetermined condition [images formed on it are determined as ‘abnormal’], transport the recording medium to a second destination [T2 in figs. 3A-8D; paragraphs 0108-0109 and 0118; as seen in figs. 3B-3D.]
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANNELLE M LEBRON whose telephone number is (571) 272-2729. The examiner can normally be reached Monday-Friday: 9:00am - 5:00pm.
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, Douglas X Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANNELLE M LEBRON/Primary Examiner, Art Unit 2853
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