CTNF 18/959,751 CTNF 94557 Detailed Action The communications received 11/26/2024 have been filed and considered by the Examiner. Claims 1-7 are pending. 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. 07-30-03-h AIA Claim Interpretation The Examiner notes that the transport units including the upstream and downstream transport units include the sufficient structure of the transport rollers and therefore are not interpreted under 35 U.S.C. 112(f): 07-30-03 AIA 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. 07-30-05 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: “sheet forming unit” in claims 1-2 and 6-7 tied to rollers and functional equivalents [see 0057 of the instant specification], “sheet retraction portion” in claim 2 which is tied to a space and functional equivalents [see 0090 of the instant specification], “opening mechanism” in claims 1 and 3 which is tied to a shaft and pin and functional equivalents [see 0080 of the instant specification], “movable unit” in claims 3-4 which is tied to a trapezoidal body and functional equivalents [see 0082 of the instant specification], 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 § 103 07-06 AIA 15-10-15 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. 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, 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikaze (WO2018043066A1 refer to the supplied English translation) hereinafter NIS . As for claim 1, NIS teaches a sheet manufacturing apparatus [1-2] comprising: a sheet forming unit that forms a sheet by accumulating a material containing fibers and then compressing the material [Fig. 1 #60, 79-80; 4; 33; 68]; and a transport unit (conveying rollers) including a plurality of transport rollers arranged in a transport direction of the sheet to transport the sheet [Fig. 5 #10; 83], wherein the transport unit includes an upstream transport unit including a first transport roller group including some of the plurality of transport rollers [Fig. 4-5 roller pairs from #502C to 503F], a downstream transport unit including a second transport roller group including, among the plurality of transport rollers, a plurality of transport rollers installed downstream of the first transport roller group in the transport direction [Fig. 4-5 pair at #503D], and an abnormality detection sensor that detects an abnormality in transport of the sheet in the transport unit (jam detection unit) [Fig. 4-5 #502E; 96], and the upstream transport unit includes an opening mechanism that performs an opening operation when the abnormality detection sensor detects the abnormality [Fig. 4-5 #503A; 96; 105]. The Examiner notes that the transport unit of NIS is primarily applied as a supply of waste paper, however it is understood that there is nothing that is used to transport the sheets once they are produced. In accordance with the MPEP, an exemplary rationale of obviousness is the combination of prior art elements according to known methods to yield predictable results [MPEP 2143(I)(A)]. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added the transport unit of NIS to the end of the unit of NIS in order to supply the produced sheets to a further downstream process automatically. As the transport unit of NIS transports sheets it is understood to be capable of working upon the produced sheets. As for claim 2, NIS teaches claim 1 and further that there is a sheet retraction portion wherein, the upstream transport unit is brought into an open state by the opening operation, and in the open state, the sheet formed by the sheet forming unit deviates from a transport path in the transport direction and moves towards the sheet retraction portion (as the lower and upper rollers which can serve as sheet retraction portion elements can be activated to deviate the sheet when the upstream transport unit is brought into an open state) [Fig. 4-5 #503C]. In the claim, the deviation of the sheet in the transport path is further claiming the apparatus via the method of its operation. In accordance with the MPEP, the manner of operating the device does not differentiate the claimed limitations from the prior art [MPEP 2114]. As for claim 3, NIS teaches claim 2 and wherein the opening mechanism includes a movable unit that rotates around a rotating shaft as the opening operation, and the upstream transport unit is brought into the open state by rotation of the movable unit [Fig. 4-5 #503K with 503A; 96] As for claim 4, NIS teaches claim 3 and wherein the first transport roller group includes a first transport roller which includes a pair of an upper and lower roller with the upper roller being installed in the movable unit (as it pivots upwards with the upper guide portion) [Fig. 4-5 #502C]. As for claim 5, NIS teaches claim 1 and although the cutter would be before the transport unit in the combination, the purpose of the cutting section is to cut the sheets into the appropriate size and that multiple cutting sections can be used to further trim the sheet [71]. In accordance with the MPEP, an exemplary rationale of obviousness is the combination of prior art elements according to known methods to yield predictable results [MPEP 2143(I)(A)]. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added an additional cutter of NIS to the end of combination of the overall unit of NIS as taught in the rejection of claim 1 in order to further cut the sheets into a desired size. As for claims 6-7, NIS teaches claim 1 and both claims 6-7 further claim the apparatus via the method of its operation. In accordance with the MPEP, the manner of operating the device does not differentiate the claimed limitations from the prior art [MPEP 2114] . Double Patenting 08-33 AIA 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. 08-35 Claim s 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-2 and 5-6 of copending Application No. 19/183,976 hereinafter ‘976 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because : Claim 1 is taught by claims 1 and 5 of ‘976. Claim 2 is taught by claims 1 and 5-6 of ‘976 (as the rollers can serve as the sheet retraction portion). In the claim, the deviation of the sheet in the transport path is further claiming the apparatus via the method of its operation. In accordance with the MPEP, the manner of operating the device does not differentiate the claimed limitations from the prior art [MPEP 2114]. Claim 3 is taught by claims 2 and 5 of ‘976 (the rotatable cover is the movable unit). Claim 4 is taught by claims 5-6 of ‘976. As for claims 6-7, ‘976 teaches claim 1 and both claims 6-7 further claim the apparatus via the method of its operation. In accordance with the MPEP, the manner of operating the device does not differentiate the claimed limitations from the prior art [MPEP 2114] . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of copending Application ‘976 in view of NIS. As for claim 5, ‘976 teaches claim 1 but fails to teach a cutter. NIS teaches a sheet manufacturing apparatus [1-10] in which there is a cutting section used to cut the manufactured sheets into the appropriate size [71]. In accordance with the MPEP, an exemplary rationale of obviousness is the combination of prior art elements according to known methods to yield predictable results [MPEP 2143(I)(A)]. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added the cutter of NIS to ‘976 in order to cut the paper into the appropriate size. In addition, this would have amounted to a combination of prior art elements of a sheet cutter to an apparatus that produces sheets according to known methods (by adding downstream to the line) in order to achieve a cutting of the sheet into the appropriate size. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30. 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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /E.V./ Examiner, Art Unit 1748 /Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748 Application/Control Number: 18/959,751 Page 2 Art Unit: 1748 Application/Control Number: 18/959,751 Page 3 Art Unit: 1748 Application/Control Number: 18/959,751 Page 4 Art Unit: 1748 Application/Control Number: 18/959,751 Page 5 Art Unit: 1748 Application/Control Number: 18/959,751 Page 6 Art Unit: 1748 Application/Control Number: 18/959,751 Page 7 Art Unit: 1748 Application/Control Number: 18/959,751 Page 8 Art Unit: 1748 Application/Control Number: 18/959,751 Page 9 Art Unit: 1748 Application/Control Number: 18/959,751 Page 10 Art Unit: 1748 Application/Control Number: 18/959,751 Page 11 Art Unit: 1748 Application/Control Number: 18/959,751 Page 12 Art Unit: 1748 Application/Control Number: 18/959,751 Page 13 Art Unit: 1748
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