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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election with traverse of Invention I (directed to claims 1-20) in the reply filed on 08/24/2026 is acknowledged. The traversal is on the ground(s) that it is less effort, for the U.S. Patent and Trademark Office, to not proceed with a restriction as it would be a burden to otherwise such that there may be a substantially same search.
Applicants election with traverse of Group 1 (directed to Fig. 1-4 and 5B; claims 2-5 reading on the species) in the reply filed on 08/24/2026 is acknowledged. The traversal is on the ground(s) that the embodiments are closely related and do not require separate fields of search.
These traversals are not found persuasive. The criteria for determining restriction of separate inventions are based on (A) the inventions being independent or distinct and (B) a search/examination burden if the inventions were not restricted. See MPEP 802 and 803. Inventions may be related, but if they are distinct, they may be subject to restriction.
As stated previously, Inventions I and II are distinct for having materially different modes of operation, and as a result, each would require different searches that would result in a burden. Invention I requires a search related to determining start timing while Invention II requires a search related to a predetermined distance and a predetermined timing, the predetermined timing based on timing, and the predetermined timing based on distance.
Further, Groups 1 and 2 are distinct as Group 1 does not require the post printing operation and details thereof, such as including a die cut mechanism, and as a result, Group 2 would further require a completely different searches that would result in a burden. Through related, Group 2 would require a completely separate search such as one for modification units that would otherwise not be required for Group 1.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
Figures 5A and 9A should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “400” in Figures 4-5B.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The disclosure is objected to because of the following informalities:
at para. 0018, 0019, 0021, 0026, 0029, 0043, and 0046 each appear to have “appartus115” rather than “apparatus 115” with a space between;
at para. 0036, “spot color color printing” should have second “color” removed.
Appropriate correction is required.
Further, it is suggested by the examiner to amend “Mth” to “M-th” or “(M)th” in various paragraphs and add “a” before “roll sheet” in para. 0017, 0018 (first instance), and 0040 for grammatical clarity.
Claim Objections
Claims 5 and 13-16 are objected to because of the following informalities:
in claim 5, “a basic color” is recited twice;
in claim 13, “the number of times” has no antecedent basis and “a mark detected before the failure” is already recited in claim 1;
in claim 14, “the number of times” has no antecedent basis;
in claim 15, “the cumulative number” has no antecedent basis; and
in claim 16, “the consecutive number” has no antecedent basis.
Appropriate correction is required.
Claim Suggestions
The examiner suggests amending claims 13-16 such that “N” is clarified as a threshold value as recited in the specification (at para. 0030). For example, in claim 13, amending “… less than N, start…” to “… less than N, N being a threshold value, start…”.
The examiner suggests amending claim 17 by adding “a” before “roll sheet” for grammatical clarity.
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 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) include at least “detection unit”, “determination unit”, and “control unit” in at least claim 1.
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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 14 aborts, in case of detection failure, processing of printing and thereby eliminates the determination of start timing for printing. This contradicts/changes claim 1 of which claim 14 depends on wherein in a case of detection failure, start timing is determined in accordance with a mark detected before failure.
The examiner understands that the purpose of the claim 14 is to further alter processing in the case of excessive failure, therefore the examiner will still proceed to examine the claim as best understood from the specification and drawings.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-4, 13-15, 17, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoki (US 20110002699 A1).
Regarding claims 1, 19, and 20, Aoki discloses a printing apparatus (image forming system 10; Fig. 1) performing printing while conveying a printing medium (continuous paper 21; Fig. 1), a control method of the printing apparatus (mark reading processing routine; Fig. 9; second image forming processing routine; at para. 0089; Fig. 13), and a non-transitory computer readable storage medium (ROM 52, RAM 54, NVM 56; at para. 0035-0037; Fig. 2) storing a program (routine as described before; “pre-established programs”; at para. 0037) for causing a computer (system controller 50 (with CPU) as computing device; at para. 0037; Fig. 2) to perform the control method, the printing apparatus comprising:
a detection unit (mark reading device 38 and mark detection section 82; Fig. 1, 7) configured to detect a mark (mark 21A / sheet ID; Fig. 6, 8, 12) on the printing medium for determining start timing to perform the printing or start timing to perform post printing of the printing (mark detection section 82 detects mark 21A / sheet ID for timing/interval; at para. 0045; Fig. 5, 6);
a determination unit configured to determine whether or not the detection unit has succeeded in detecting the mark (sheet ID verification section 84 compares and verifies sheet ID; at para. 0046, 0076; Fig. 7); and
a control unit configured to control start timing of the printing or the post printing, wherein the control unit (system controller 50 controls second image forming processing routine related to mark detection; at para. 0089; Fig. 2, 13):
determines, in a case where the detection has succeeded, the start timing based on results of the detection (success: step 126, sheet ID matches (Yes), continue printing process with current variable designation; at para. 0096; Fig. 13); and
determines, in a case where the detection has failed, the start timing in accordance with a mark detected before the failure (fail: step 126, sheet ID does not match (No), proceed with alternate processing, such as based off previous mark and from rule set (step 306); at para. 0092-0094; Fig. 13; e.g. previous sheet ID is N-2, next sheet ID may be N-1; Fig. 3, 6, 11).
Regarding claim 2, Aoki further discloses wherein the printing apparatus comprises a first printing unit configured to perform first printing for the printing medium (image forming device 20 with printing/image forming mechanism 24; at para. 0026; Fig. 1; alternative: first/upstream drum 26 of printing/image forming mechanism 30; Fig. 1) and
a second printing unit configured to perform second printing for the printing medium for which the first printing has been performed (image forming device 32 with printing/image forming mechanism 30; at para. 0030; Fig. 1; alternative: last three/downstream drums 26 printing/image forming mechanism 30; Fig. 1).
Regarding claim 3, Aoki further discloses wherein the first printing unit prints the mark on the printing medium (if first printing unit is image forming device 20, mark images 21A are formed by printing mechanism 24; at para. 0042; Fig. 1, 2, 5).
Regarding claim 4, Aoki further discloses wherein the mark is pasted to the printing medium or printed on the printing medium before the first printing (if first printing unit is first/upstream drum 26 of printing/image forming mechanism 30, mark images 21A are formed before the first printing by image forming mechanism 24; at para. 0045; Fig. 1, 2, 5) .
Further, the examiner notes claim 4 is an intended use claim (intended use for the medium). The method of making of the mark in this claim does not further limit the apparatus itself, and therefore does not carry any patentable weight. (See MPEP 2111.02.)
Regarding claim 13, Aoki further discloses wherein the control unit determines, in a case where a number of times the detection unit has failed to detect the mark is less than N, N being a threshold value, start timing of processing of the printing or the post printing in accordance with the mark detected before the failure (step 304: number of verification failures NG is less than prescribed number of verification failures Z (NG<Z is yes), variable i for sheet ID is adjusted based off previous and following rule (i.e. step 306: set to j based off what it should be compared to previous j) then proceeds; at para. 0093-0043; Fig. 13).
Regarding claim 14, Aoki further discloses wherein the control unit aborts, in a case where a number of times the detection unit has failed to detect the mark is N or more, execution of processing of the printing or the post printing (step 304: number of verification failures NG is at or above prescribed number of verification failures Z (NG<Z is no), printing is stopped (step 128); at para. 0093; Fig. 13).
Regarding claim 15, Aoki further discloses wherein the N is a cumulative number of times of failure (step 302: NG=NG+1; at para. 0093; Fig. 13).
Regarding claim 17, Aoki further discloses wherein the printing medium is roll sheet (continuous paper 21 rolls; at para. 0038; Fig. 1).
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) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki.
Regarding claim 5, Aoki does not explicitly teach wherein the first printing is printing using a spot color other than a basic color and the second printing is printing using the basic color, however Aoki does teach wherein one printing may be performed using a single photoreceptor drum (“an image forming device that is provided with one photoreceptor drum 26 and that carries out monochrome image forming may be used”; at para. 0027). Therefore, it may be understood that in a case where the first printing uses monochrome printing (e.g. black), the second printing may use the remaining colors other than black.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the first printing is printing using a spot color other than a basic color and the second printing is printing using the basic color. This may be done, for example, for the purpose of performing single sided printing wherein the second printing is superposed on the first printing, as taught by Aoki (at para. 0106).
Regarding claim 16, Aoki does not explicitly teach wherein the N is a consecutive number of times of failure, however Aoki does teach the N as counted number (at para. 0093), and the marks are made and detected in a consecutive matter (at para. 0039, 0055, 0059). Therefore, in a case the failures happen in a to consecutive marks, the N could also be a consecutive number.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the N as a consecutive number of times of failure. This may have been for the purpose of stopping improper processing from consecutive mismatches/failures.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki as applied to claim 1 above, and further in view of Hattori (US 20150170011 A1).
Regarding claim 18, Aoki teaches wherein the printing medium is a roll sheet with multiple sheets (at para. 0039), however Aoki does not explicitly teach wherein the printing medium is a cut sheet.
Hattori teaches a printing apparatus (printing system 100; Fig. 1), similar to that of Aoki, wherein other than using a roll sheet, printing may be performed on other kinds of printing mediums, including a cut sheet (at para. 0047).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the printing apparatus such that the printing medium used may be a cut sheet for the purpose of printing on alternate kinds of media other than just a roll sheet as taught by Hattori.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sakurai (US 9042743 B2) is relevant to at least claim 1.
Buthrath et al. (US 20240123743 A1) is relevant to at least claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYRA M VAN KREUNINGEN whose telephone number is (571)272-9423. The examiner can normally be reached Mon-Thur 9:00am-6:00pm and Fri 9:00am-1:00pm.
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.
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.
/KYRA MELOR VAN KREUNINGEN/ Examiner, Art Unit 2853
/SHELBY L FIDLER/ Primary Examiner, Art Unit 2853
