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 .
DETAILED ACTION
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 2-11, drawn to a subcombination medium conveying unit, necessitating searches of various sheet conveying classifications depending on the feature(s) at issue, (e.g., searching under B65H 7 for the controller of claim 2).
II. Claim 12, drawn to a medium processing system including a medium processing unit, necessitating searches of various cutting classifications, such as with cutting plotters in B26D 2007/2678.
Claim 1 link(s) the subcombination Invention I and combination Invention II, and claim 1 will be examined along with the claims of whichever of Inventions I and II is elected. The restriction requirement between the linked inventions is subject to the nonallowance of the linking claim(s), claim 1. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.
Applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
The inventions are independent or distinct, each from the other because: Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination as claimed does not require the features of claims 2-11. For example, claim 2 requires a controller that is comprised by the medium conveying unit, whereas claim 12 requires an arithmetic unit that is in addition to the medium conveying unit. The subcombination has separate utility such as to convey medium to and from a copy machine, rather than to and from a medium processing unit having a medium processing portion as recited in claim 12.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification (e.g., cutting plotters as recited in claim 12 are classified in cutting areas such as B26D, whereas sheet conveyors are classified in B65H;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Applicant’s representative Paul Esatto on 8 July 2026 a provisional election was made without traverse to prosecute Invention II, claims 1 and 12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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:
“a medium processing unit” as recited in claim 1 (first, “unit” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language of processing the medium at lines 5-6; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “medium processing” preceding the generic placeholder describes the function, not the structure, of the unit);
“a first conveying portion” as recited in claim 1 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to convey a medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “first conveying” preceding the generic placeholder describes the function, not the structure, of the portion);
“a receiving portion” as recited in claim 1 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to receive the medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “receiving” preceding the generic placeholder describes the function, not the structure, of the portion);
“a second conveying portion” as recited in claim 1 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to convey the medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “second conveying” preceding the generic placeholder describes the function, not the structure, of the portion);
“a first conveying portion” as recited in claim 12 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to convey a medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “first conveying” preceding the generic placeholder describes the function, not the structure, of the portion);
“a second conveying portion” as recited in claim 12 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to convey the medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the phrase “second conveying” preceding the generic placeholder describes the function, not the structure, of the portion);
“a receiving portion” as recited in claim 12 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to receive the medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “receiving” preceding the generic placeholder describes the function, not the structure, of the portion);
“a third conveying portion” as recited in claim 12 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to convey the medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “conveying” preceding the generic placeholder describes the function, not the structure, of the portion); and
“a medium processing portion” as recited in claim 12 (first, “portion” is a generic placeholder for “means” because a “portion” is not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for any particular structure – here, “portion” is used to refer to some subset of a “unit”, which is not any particular structure; second, the generic placeholder is modified by the functional language “configured to process the medium”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “processing” preceding the generic placeholder describes the function, not the structure, of the portion).
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.
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
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) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 5,788,227 to Hendrix et al.
Regarding claim 1, Hendrix discloses a medium conveying unit 101 configured to be attached to a medium processing unit (see Fig. 3, where the medium processing unit includes bed 301, and where the medium processing unit processes the medium by scanning the medium; note also that the medium processing unit is not part of the claimed structure, and the particular type of machine with which the claimed medium conveying unit is attached is merely an intended use recitation that does not structurally limit the claimed medium conveying unit, and note further that the medium conveying unit 101 of Hendrix is attachable to alternative machines that process the medium, such as a printer or a cutting plotter), the medium conveying unit 101 comprising:
a first conveying portion (including roller 305, motor 119, and transmission 122, and optionally further including rollers 311 and 315) configured to convey a medium toward the medium processing unit along an upstream path (see the annotated Fig. 3 below);
a receiving portion 131 configured to receive the medium processed by the medium processing unit (see Fig. 3 and col. 6, lines 23-31); and
a second conveying portion (including rollers 323 and 323’, motor 127, and transmission 129, and optionally further including rollers 329, and further optionally including rollers 311 when rollers 311 are not considered as being included in the first conveying portion) configured to convey the medium toward the receiving portion 131 along a downstream path different from the upstream path (see the annotated Fig. 3 below and col. 6, lines 4-22).
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Claim Rejections - 35 USC § 103
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.
Claim(s) 1 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Auto Sheet Feeder | Getting Started” screenshots from YouTube by Silhouette (hereinafter “Auto Sheet Feeder”) in view of US Pat. No. 5,788,227 to Hendrix et al.
Regarding claim 1, Auto Sheet Feeder discloses a medium conveying unit (shown as the center component in the 0:05 screenshot) configured to be attached to a medium processing unit (see the 0:05 and 2:39 screenshots, where the medium processing unit is the cutter plotter that is on the left in the 0:05 screenshot), the medium conveying unit comprising:
an ability to convey a medium toward the medium processing unit along an upstream path (see the two screenshots taken at 0:13 showing conveyance of the medium toward the cutting plotter, where conveyance toward the cutting plotter is conveyance in the upstream path);
a receiving portion configured to receive the medium processed by the medium processing unit (see the 2:47 screenshot; see also the transcript at 5:44-6:07); and
an ability to convey the medium toward the receiving portion along a downstream path different from the upstream path (see the 2:47 screenshot; see also the transcript at 5:44-6:07, which discloses ejecting the medium into the receiving portion, which includes a movement in a direction opposite the upstream path relative to the 0:13 screenshots – the ejection of the medium in the direction opposite the upstream path is the conveyance along the downstream path).
Regarding claim 12, Auto Sheet Feeder discloses medium processing system (see the 5:54 screenshot) comprising:
a medium conveying unit (see the auto sheet feeder in the 5:54 screenshot) comprising:
an ability to convey a medium along an upstream path (see the two screenshots taken at 0:13 showing conveyance of the medium toward the cutting plotter, where conveyance toward the cutting plotter is conveyance in the upstream path);
an ability to convey the medium along a downstream path different from the upstream path (see the 2:47 screenshot; see also the transcript at 5:44-6:07, which discloses ejecting the medium into the receiving portion, which includes a movement in a direction opposite the upstream path relative to the 0:13 screenshots – the ejection of the medium in the direction opposite the upstream path is the conveyance along the downstream path); and
a receiving portion configured to receive the medium when ejected (see the 2:47 screenshot; see also the transcript at 5:44-6:07);
a medium processing unit (see the cutting plotter in the 5:48 screenshot) configured to allow the medium conveying unit to be attached thereto (see the attachment in the process of taking place in the 2:39 screenshot), the medium processing unit comprising:
a third conveying portion configured to convey the medium along a merging path (the third conveying portion being the shaft including the two white rollers in the 5:48 screenshot); and
a medium processing portion configured to process the medium conveyed by the third conveying portion at a processing position provided in the merging path (the medium processing portion being the cutting portion of the plotter shown performing a cutting operation in the 5:48 screenshot); and
an arithmetic unit comprising a controller (see the laptop PC in the 5:54 screenshot, where the laptop PC is an arithmetic unit and where the laptop PC includes a CPU corresponding to the claimed controller),
wherein the controller is configured to execute (the controller executes instructions to inform the medium processing unit how many pages to produce per the transcript at 5:24-5:44, and each page requires an operation of each of the first conveying operation, second conveying operation, and medium processing operation identified below; also, see the 5:39 screenshot illustrating that the user clicks ‘SEND’ on the arithmetic unit to activate the medium conveying unit and the medium processing unit, such that the controller is configured to execute the operations of these units):
a first conveying operation to cause conveyance of the medium along the upstream path toward the merging path in a direction including a first direction component (see the two screenshots at 0:13, where the first direction component is from the medium conveying unit toward the medium processing unit; see also the screenshot at 4:08, showing that the controller of the arithmetic unit executes a control function to cause the first conveying operation when the auto sheet feeder is made active; also, the controller executes instructions to inform the medium processing unit how many pages to produce per the transcript at 5:24-5:44, and each page requires operation of the first conveying operation, and see also the 5:39 screenshot showing the operator clicking ‘SEND” to execute the first conveying operation);
a second conveying operation to cause, after the first conveying operation, to cause conveyance of the medium from the merging path toward the downstream path in a direction including a second direction component opposite to the first direction component (this feature is evident from the 0:53 and 2:47 screenshots, along with the transcript at 5:44-6:07; the second conveying operation is ejection of the medium from the cutting plotter to the receiving portion ta the bottom of the medium conveying unit, and the second direction component is from the medium processing unit toward the medium conveying unit; see also the screenshot at 4:08, showing that the controller of the arithmetic unit executes a control function to cause the second conveying operation when the auto sheet feeder is made active; also, the controller executes instructions to inform the medium processing unit how many pages to produce per the transcript at 5:24-5:44, and each page requires operation of the second conveying operation, and see also the 5:39 screenshot showing the operator clicking ‘SEND” to execute the second conveying operation), to allow the receiving portion to receive the medium (see the 2:47 screenshot and the transcript at 5:44-6:07); and
a medium processing operation to cause the medium processing portion to process the medium while the third conveying portion conveys the medium in a state in which the medium is positioned over the merging path and the downstream path (see the screenshots at 1:09 and 5:48 and the transcript at 5:44-6:07; e.g., the controller executes instructions to inform the medium processing unit how many pages to produce per the transcript at 5:24-5:44, and see also the 5:39 screenshot showing the operator clicking ‘SEND” to execute the medium processing operation).
Auto Sheet Feeder is silent regarding the exact structure that conveys the medium to the cutting plotter and the exact structure that conveys the medium away from the cutting plotter. Therefore, Auto Sheet Feeder fails to disclose a first conveying portion configured to convey the medium toward the medium processing unit along the upstream path; and a second conveying portion configured to convey the medium toward the receiving portion along the downstream path as required by claim 1 (even though Auto Sheet Feeder discloses the conveying functions performed by the conveying portions). Similarly, Auto Sheet Feeder fails to disclose a first conveying portion configured to convey the medium along the upstream path; a second conveying portion configured to convey the medium along the downstream path; and that the receiving portion receives the medium conveyed by the second conveying portion as required by claim 12. Also, even though the Auto Sheet Feeder conveys the medium into the merging path from the upstream path and receives the medium from the merging path into the downstream path, for purposes of this rejection Auto Sheet Feeder is considered as failing to disclose that the merging path is a path in which the upstream path and the downstream path are to be merged as required by claim 12. Also, even though Auto Sheet Feeder discloses the arithmetic unit including the controller being coupled to the medium conveying unit and the medium processing unit, Auto Sheet Feeder does not explicitly state the controller is configured to control the first conveying portion and the second conveying portion (since Auto Sheet Feeder does not expressly contemplate the conveying portions), and that the controller executes the first conveying operation by causing the first conveying portion to convey the medium and the second conveying operation by causing the second conveying portion to convey the medium, as required by claim 12.
Hendrix teaches a medium conveying unit 101 configured to be attached to a medium processing unit (see Fig. 3, where the medium processing unit includes bed 301, and where the medium processing unit processes the medium by scanning the medium), the medium conveying unit 101 comprising: a first conveying portion (including roller 305, motor 119, and transmission 122, and optionally further including rollers 311 and 315) configured to convey a medium toward the medium processing unit along an upstream path (see the annotated Fig. 3 above); and a second conveying portion (including rollers 323 and 323’, motor 127, and transmission 129, and optionally further including rollers 329, and further optionally including rollers 311 when rollers 311 are not considered as being included in the first conveying portion) configured to convey the medium toward a receiving portion 131, which receives the medium conveyed by the second conveying unit, along a downstream path different from the upstream path (see the annotated Fig. 3 below and col. 6, lines 4-22). Hendrix further teaches a merging path (a path above bend 301 relative to Fig. 3) in which the upstream path and the downstream path are to be merged (see Fig. 3; the upstream and downstream paths merge at the merging path because the upstream path conveys medium to the merging path, and the merging path conveys medium to the receiving portion, and the upstream and downstream paths merge adjacent to the rollers 311, which rollers 311 are at a right end of the merging path). Hendrix teaches that the first conveying portion and second conveying portion are advantageous in order to deliver the medium from the medium conveying unit to the medium processing unit (see col. 5, lines 32-50) and from the medium processing unit to the receiving portion (see col. 6, lines 4-23), respectively. Hendrix further teaches that having the merging path merge the upstream path and the downstream path is advantageous to transport medium from the upstream path, into the medium processing unit, and then to the receiving portion – i.e., this feature produces a series of paths in which the medium can travel from the first conveying portion to the receiving portion.
Therefore, since Auto Sheet Feeder performs conveyance of the medium along the upstream paths and the downstream path but fails to explicitly disclose any structure for achieving these conveyances, it would have been obvious to one of ordinary skill in the art to modify the medium conveying unit of Auto Sheet Feeder to include a first conveying portion that conveys the medium along the upstream path, to include a second conveying portion that conveys the medium along the downstream path, and for the receiving portion to receive the medium from the second conveying portion in view of the teachings of Hendrix. These modifications are advantageous because the modifications provide structure for performing the function already desired by Auto Sheet Feeder. These modification are further obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. First, the prior art, taken together, discloses each claimed feature as noted above. Second, one of ordinary skill in the art could have combined the elements as claimed by known methods (i.e., using the first and second conveying portions of Hendrix to perform the first and second conveying operations as disclosed by Auto Sheet Feeder), and in combination each element would merely have performs the same function as it did separately (the function of Auto Sheet Feeder is unchanged; moreover, the conveying portions of Hendrix continue to convey medium toward and away from a medium processing unit). Finally, one of ordinary skill in the art would have recognized that the results of this combination were predictable because Auto Sheet Feeder requires some structures for performing the first and second conveying operations, and Hendrix’s first and second conveying portions are disclosed as performing these exact functions.
Furthermore, it would have been obvious to one of ordinary skill in the art to provide the merging path of Auto Sheet Feeder as a path in which the upstream path and downstream path are to be merged, which is advantageous to allow fully automatic operation of sheet feeding, sheet processing, and then sheet discarding (i.e., by merging the upstream and downstream path, a sheet is able to be transport to the medium processing unit for processing, and then transported from the medium processing unit to the receiving portion after processing).
Finally, in providing Auto Sheet Feeder with the first and second conveying portions as taught by Hendrix, it would have been obvious to one of ordinary skill in the art to configure the controller of Auto Sheet Feeder to execute the first conveying operation by causing the first conveying portion to convey the medium and to execute the second conveying operation by causing the second conveying portion to convey the medium because the first and second conveying portions are provided for the purpose of conveying the medium. That is, the combined teachings of the references render this feature obvious because the controller of Auto Sheet Feeder is configured to execute first and second conveying operations, whereas the first and second conveying portions of Hendrix must be activated to provide conveying operations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
Prosecution Insights