Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
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 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.
2. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,856,785 (Schwenk et al.) (hereinafter “Schwenk”) in view of U.S. Patent No. 5,772,202 (Singer et al.) (hereinafter “Singer”), and further in view of U.S. Patent No. 7,631,868 (Dunham) (hereinafter “Dunham”).
Regarding claim 1, Figs. 1-4 of Schwenk show a sheet bundle transport apparatus (Fig. 2) comprising:
a first transport unit (one element 431) formed extending in a transport direction and configured to transport a plurality of sheet bundles in the transport direction (right in Fig. 2);
a second transport unit (other element 431) arranged spaced apart from the first transport unit (one element 431) in a width direction orthogonal to the transport direction (right), formed extending in the transport direction (right), and configured to transport the plurality of sheet bundles in the transport direction (right);
an abutment unit (including 415) configured to vertically move an abutment member (415) to perform switching between an abutment state (closed) and a non-abutment state (open), the abutment state (closed) being a state where an end of a sheet bundle of the sheet bundles is abutted against the abutment member (415) at a predetermined position in the transport direction (right), and the non-abutment state (open) being a state where the end of the sheet bundle is not abutted against the abutment member (415) at the predetermined position;
a first press unit (including one element 429) arranged above the first transport unit (one element 431) with the sheet bundle being interposed between the first transport unit (one element 431) and the first press unit (including one element 429) and configured to press the sheet bundle against the first transport unit (one element 431) via a first rotating member (422) that is rotatable about a first rotary shaft (434) extending in the width direction;
a second press unit (including other element 429) arranged above the second transport unit (other element 431) with the sheet bundle being interposed between the second transport unit (other element 431) and the second press unit (including other element 429) and configured to press the sheet bundle against the second transport unit (other element 431) via a second rotating member (438) that is rotatable about a second rotary shaft (unnumbered shaft on element 438 connected to element 425 by dotted lines in Fig. 5) extending in the width direction. Schwenk teaches most of the limitations of this claim including the abutment unit (including 415), but does not show that the abutment unit is arranged between the first transport unit and the second transport unit with respect to the width direction, as claimed. Also, Schwenk does not show a press switching unit or a control unit, as claimed.
Singer shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 2) with an abutment unit (including 32) arranged between a first transport unit (21) and a second transport unit (21) with respect to a width direction and configured to vertically move an abutment member (32) to perform switching between an abutment state (up) and a non-abutment state (down), the abutment state (up) being a state where an end of a sheet is abutted against the abutment member (32) at a predetermined position in a transport direction, and the non-abutment state (down) being a state where the end of the sheet is not abutted against the abutment member (32) at the predetermined position. Because both Singer and Schwenk teach abutment units that act as controlled stops, it would have been obvious to one having ordinary skill in the art before the effective filing date to substitute the abutment arrangement between the first and second transport units for the abutment unit of Schwenk to achieve the predictable result of stopping sheets.
Dunham shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 1) with a press switching unit (Figs. 6 and 9) configured to perform switching between a first press state (Fig. 7) and a second press state (Fig. 9), the first press state (Fig. 7) being a state where a first press unit (right element 129 in Fig. 9) and a second press unit (left element 129 in Fig. 9) press a sheet bundle in a predetermined region (at 190) located upstream from a predetermined position in a transport direction (right in Fig. 2), and the second press state (Fig. 9) being a state where the first press unit (right element 129) does not press the sheet bundle in the predetermined region (at 190) and the second press unit (left element 129) presses the sheet bundle in the predetermined region (at 190); and
a control unit (Lines 45-61 in column 2) configured to control an abutment unit (115) and the press switching unit (Figs. 6 and 9) to switch the non-abutment state (open) to the abutment state (closed) and switch the first press state (Fig. 7) to the second press state (Fig. 9) so as to change an angle relative to the width direction of a predetermined sheet bundle out of the plurality of sheet bundles being continuously transported. The abstract explains that this arrangement allows independent pivoting of parts of the press switching unit (Figs. 6 and 9) to ensure even drive force on sheets. It would have been obvious to one having ordinary skill in the art before the effective filing date to provide the apparatus of Schwenk in view of Singer with a press switching unit and controller, for the purpose of ensuring even drive force on sheets, as taught by Dunham.
Regarding claim 2, Figs. 5-6 of Dunham show that the first press unit (including one element 429) has a pair of first press rollers (429 and one roller on 137) and a first press belt (132) stretched around the pair of first press rollers (429 and one roller on 137), and wherein the second press unit (including other element 429) has a pair of second press rollers (429 and other roller on 137) and a second press belt (132) stretched around the pair of second press rollers (429 and other roller on 137).
Regarding claim 3, as best understood, Figs. 7 and 9 of Dunham show that in the first press state (Fig. 7), the press switching unit (Figs. 6 and 9) forms a state where both of the pair of first press rollers (429 and one roller on 137) press the sheet bundle via the first press belt (132), and in the second press state (Fig. 9), the press switching unit (Figs. 6 and 9) forms a state where the first press roller (including one roller 129) arranged upstream in the transport direction does not press the sheet bundle and the second press roller (including other roller 129) presses, via the second press belt (132), the sheet bundle located upstream from the predetermined position in the transport direction at which an abutment member (115) is arranged.
3. Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 7,959,146 (Gerlier et al.) (hereinafter “Gerlier”) in view of Singer, and further in view of Dunham.
Regarding claim 1, Figs. 1-7C of Gerlier show a sheet bundle transport apparatus (Fig. 4A) comprising:
a first transport unit (including 120, 120 and 120) formed extending in a transport direction and configured to transport a plurality of sheet bundles in the transport direction (left in Fig. 6B);
a second transport unit (122, 122 and 122) arranged spaced apart from the first transport unit (120, 120 and 120) in a width direction orthogonal to the transport direction (left), formed extending in the transport direction (left), and configured to transport the plurality of sheet bundles in the transport direction (left);
an abutment unit (including 150) configured to vertically move an abutment member (150) to perform switching between an abutment state (closed) and a non-abutment state (open), the abutment state (closed) being a state where an end of a sheet bundle of the sheet bundles is abutted against the abutment member (150) at a predetermined position in the transport direction (left), and the non-abutment state (open) being a state where the end of the sheet bundle is not abutted against the abutment member (150) at the predetermined position;
a first press unit (including 72a-72d and 76) arranged above the first transport unit (including 120, 120 and 120) with the sheet bundle being interposed between the first transport unit (including 120, 120 and 120) and the first press unit (including 72a-72d and 76) and configured to press the sheet bundle against the first transport unit (including 120, 120 and 120) via a first rotating member (84) that is rotatable about a first rotary shaft (90) extending in the width direction;
a second press unit (including 74a-74d and 78) arranged above the second transport unit (122, 122 and 122) with the sheet bundle being interposed between the second transport unit (122, 122 and 122) and the second press unit (including 74a-74d and 78) and configured to press the sheet bundle against the second transport unit (122, 122 and 122) via a second rotating member (82) that is rotatable about a second rotary shaft (94) extending in the width direction. Gerlier teaches most of the limitations of this claim including the abutment unit (including 150), but does not show that the abutment unit is arranged between the first transport unit and the second transport unit with respect to the width direction, as claimed. Also, Gerlier does not show a press switching unit or a control unit, as claimed.
Singer shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 2) with an abutment unit (including 32) arranged between a first transport unit (21) and a second transport unit (21) with respect to a width direction and configured to vertically move an abutment member (32) to perform switching between an abutment state (up) and a non-abutment state (down), the abutment state (up) being a state where an end of a sheet is abutted against the abutment member (32) at a predetermined position in a transport direction, and the non-abutment state (down) being a state where the end of the sheet is not abutted against the abutment member (32) at the predetermined position. Because both Singer and Gerlier teach abutment units that act as controlled stops, it would have been obvious to one having ordinary skill in the art before the effective filing date to substitute the abutment arrangement between the first and second transport units for the abutment unit of Gerlier to achieve the predictable result of stopping sheets.
Dunham shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 1) with a press switching unit (Figs. 6 and 9) configured to perform switching between a first press state (Fig. 7) and a second press state (Fig. 9), the first press state (Fig. 7) being a state where a first press unit (right element 129 in Fig. 9) and a second press unit (left element 129 in Fig. 9) press a sheet bundle in a predetermined region (at 190) located upstream from a predetermined position in a transport direction (right in Fig. 2), and the second press state (Fig. 9) being a state where the first press unit (right element 129) does not press the sheet bundle in the predetermined region (at 190) and the second press unit (left element 129) presses the sheet bundle in the predetermined region (at 190); and
a control unit (Lines 45-61 in column 2) configured to control an abutment unit (115) and the press switching unit (Figs. 6 and 9) to switch the non-abutment state (up) to the abutment state (down) and switch the first press state (Fig. 7) to the second press state (Fig. 9) so as to change an angle relative to the width direction of a predetermined sheet bundle out of the plurality of sheet bundles being continuously transported. The abstract explains that this arrangement allows independent pivoting of parts of the press switching unit (Figs. 6 and 9) to ensure even drive force on sheets. It would have been obvious to one having ordinary skill in the art before the effective filing date to provide the apparatus of Gerlier in view of Singer with a press switching unit and controller, for the purpose of ensuring even drive force on sheets, as taught by Dunham.
Regarding claim 2, Figs. 2 and 5 of Gerlier show that the first press unit (including 72a-d and 76) has a pair of first press rollers (72b and 72d) and a first press belt (76) stretched around the pair of first press rollers (72b and 72d), and wherein the second press unit (including 74a-74d and 78) has a pair of second press rollers (74b and 74d) and a second press belt (78) stretched around the pair of second press rollers (74b and 74d).
Regarding claim 3, as best understood, Figs. 7 and 9 of Dunham show that in the first press state (Fig. 7), the press switching unit (Figs. 6 and 9) forms a state where both of a pair of first press rollers (429 and one roller on 137) press the sheet bundle via a first press belt (132), and in the second press state (Fig. 9), the press switching unit (Figs. 6 and 9) forms a state where a first press roller (one roller 129) arranged upstream in the transport direction does not press the sheet bundle and a second press roller (other roller 129) presses, via a second press belt (132), the sheet bundle located upstream from the predetermined position in the transport direction at which an abutment member (115) is arranged. This same operation would be utilized on the apparatus of Gerlier in view of Singer, according to the teachings of Dunham.
Regarding claim 5, Figs. 1-7C of Gerlier disclose a control method of a sheet bundle transport apparatus (Fig. 4A), wherein the sheet bundle transport apparatus (Fig. 4A) has
a first transport unit (including 120, 120 and 120) formed extending in a transport direction and configured to transport a plurality of sheet bundles in the transport direction (left in Fig. 6B);
a second transport unit (122, 122 and 122) arranged spaced apart from the first transport unit (120, 120 and 120) in a width direction orthogonal to the transport direction (left), formed extending in the transport direction (left), and configured to transport the plurality of sheet bundles in the transport direction (left);
an abutment unit (including 150) configured to vertically move an abutment member (150) to perform switching between an abutment state (closed) and a non-abutment state (open), the abutment state (closed) being a state where an end of a sheet bundle of the sheet bundles is abutted against the abutment member (150) at a predetermined position in the transport direction (left), and the non-abutment state (open) being a state where the end of the sheet bundle is not abutted against the abutment member (150) at the predetermined position;
a first press unit (including 72a-72d and 76) arranged above the first transport unit (including 120, 120 and 120) with the sheet bundle being interposed between the first transport unit (including 120, 120 and 120) and the first press unit (including 72a-72d and 76) and configured to press the sheet bundle against the first transport unit (including 120, 120 and 120) via a first rotating member (84) that is rotatable about a first rotary shaft (90) extending in the width direction;
a second press unit (including 74a-74d and 78) arranged above the second transport unit (122, 122 and 122) with the sheet bundle being interposed between the second transport unit (122, 122 and 122) and the second press unit (including 74a-74d and 78) and configured to press the sheet bundle against the second transport unit (122, 122 and 122) via a second rotating member (82) that is rotatable about a second rotary shaft (94) extending in the width direction. Gerlier teaches most of the limitations of this claim including the abutment unit (including 150), but does not show that the abutment unit is arranged between the first transport unit and the second transport unit with respect to the width direction, as claimed. Also, Gerlier does not teach a press switching unit, a first switching step or a second switching step, as claimed.
Singer shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 2) with an abutment unit (including 32) arranged between a first transport unit (21) and a second transport unit (21) with respect to a width direction and configured to vertically move an abutment member (32) to perform switching between an abutment state (up) and a non-abutment state (down), the abutment state (up) being a state where an end of a sheet is abutted against the abutment member (32) at a predetermined position in a transport direction, and the non-abutment state (down) being a state where the end of the sheet is not abutted against the abutment member (32) at the predetermined position. Because both Singer and Gerlier teach abutment units that act as controlled stops, it would have been obvious to one having ordinary skill in the art before the effective filing date to substitute the abutment arrangement between the first and second transport units for the abutment unit of Gerlier to achieve the predictable result of stopping sheets.
Dunham shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 1) with a press switching unit (Figs. 6 and 9) configured to perform switching between a first press state (Fig. 7) and a second press state (Fig. 9), the first press state (Fig. 7) being a state where a first press unit (right element 129 in Fig. 9) and a second press unit (left element 129 in Fig. 9) press a sheet in a predetermined region (at 190) located upstream from a predetermined position in a transport direction (right in Fig. 2), and the second press state (Fig. 9) being a state where the first press unit (right element 129) does not press the sheet in the predetermined region (at 190) and the second press unit (left element 129) presses the sheet in the predetermined region (at 190); and a control unit (Lines 45-61 in column 2) configured to control an abutment unit (115) and the press switching unit (Figs. 6 and 9) to perform a control method comprising:
a first switching step of controlling the abutment unit (115) and the press switching unit (Figs. 6 and 9) to switch the non-abutment state (open) to the abutment state (closed) and switch the first press state (Fig. 7) to the second press state (Fig. 9) so as to change an angle relative to the width direction of a predetermined sheet out of the plurality of sheets being continuously transported; and
a second switching step of controlling the abutment unit (115) and the press switching unit (Figs. 6 and 9) to switch the abutment state (closed) to the non-abutment state (open) and switch the second press state (Fig. 9) to the first press state (Fig. 7). The abstract explains that this arrangement allows independent pivoting of parts of the press switching unit (Figs. 6 and 9) to ensure even drive force on sheets. It would have been obvious to one having ordinary skill in the art before the effective filing date to provide the apparatus of Gerlier in view of Singer with a press switching unit and control the operation of the press switching unit to perform the first and second switching steps, for the purpose of ensuring even drive force on sheets, as taught by Dunham.
Regarding claim 6, Figs. 2 and 5 of Gerlier show that the first press unit (including 72a-d and 76) has a pair of first press rollers (72b and 72d) and a first press belt (76) stretched around the pair of first press rollers (72b and 72d), and wherein the second press unit (including 74a-74d and 78) has a pair of second press rollers (74b and 74d) and a second press belt (78) stretched around the pair of second press rollers (74b and 74d).
Regarding claim 7, as best understood, Figs. 7 and 9 of Dunham show that in the first press state (Fig. 7), the press switching unit (Figs. 6 and 9) forms a state where both of a pair of first press rollers (429 and one roller on 137) press the sheet via a first press belt (132), and in the second press state (Fig. 9), the press switching unit (Figs. 6 and 9) forms a state where a first press roller (one roller 129) arranged upstream in the transport direction does not press the sheet and a second press roller (other roller 129) presses, via a second press belt (132), the sheet located upstream from the predetermined position in the transport direction at which an abutment member (115) is arranged. This same operation would be utilized on the apparatus of Gerlier in view of Singer to feed bundles, according to the teachings of Dunham.
Response to Arguments
4. Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicant argues
Singer's Gate 30/32 Differs Structurally and Functionally from the Claimed Abutment Unit
Claim 1 recites an abutment unit "arranged between the first transport unit and the second transport unit with respect to the width direction" that vertically moves a single abutment member (specification element 23a; see specification [0034] and Figs. 1, 5, 6). The abutment member acts on only a localized portion of the leading edge of the sheet bundle in the width direction.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a single abutment member that acts on a localized portion of a leading edge of a sheet bundle) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Next, applicant argues
…The claimed abutment unit cooperates with the claimed press switching unit so that, when a sheet bundle is brought into the abutment state and the press switching unit is brought into the second press state, only the second transport unit continues to apply transport force in the predetermined region. This causes the sheet bundle (for example, B4 in FIG. 8 below) to intentionally rotate about the abutment member, thereby changing its inclination relative to the width direction (see specification [0009], [0043]; Fig. 8). This deliberate skewing is the very purpose of the claimed abutment unit and is essential for separating (kubun-wake) successive sheet bundles in the downstream stacking operation.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the abutment unit cooperates with the press switching unit to rotate the sheet bundle about the abutment member) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Next, applicant argues
…The Office alleges that the projecting portions 32 in Singer corresponds to the abutment unit of claim 1. (Office Action, page 4). Singer's gate 30 includes a plurality of projecting portions 32 distributed across the width direction, projecting upward between the multiple conveyor belts 21 (Singer Fig. 4; col. 4, 11. 49-56). Singer's gate is designed to contact the leading edge of the sheet across substantially the entire width of the sheet. Thus, Singer's gate is a full-width stop, not a single, localized abutment member.
The relevant portion of claim 1 recites “an abutment unit arranged between the fist transport unit and the second transport unit with respect to the width direction and configured to vertically move an abutment member to performed switching between an abutment state and a non-abutment state” (emphasis added). The terms “abutment unit” and “abutment member” are NOT limited to a single element. Rather, the terms “abutment unit” or “abutment member” are broad enough to encompass multiple different elements that make up the abutment unit or abutment member.
Next, applicant argues
…In addition, Singer's gate 30/32 is designed for a different purpose from the claimed invention. As Singer expressly states, when a sheet arrives at the gate skewed (i.e., with its leading edge at an acute angle to the gate), the soft rollers and the gate cooperate "until the entire leading edge of the sheet is contacting or flush with the gate" (Singer, col. 4, 11. 67 - col. 5, 11. 8; see also col. 5, 11. 9-22). Singer's gate squares (de-skews) the sheet so that its leading edge becomes perpendicular to the transport direction -- the precise opposite of the claimed operation, which introduces a controlled skew. The notion of intentionally skewing a sheet (let alone a sheet bundle) is absent from Singer.
In response to applicant’s argument that the prior art Singer gate is designed for a different purpose from the claimed invention, the fact that Applicant uses an abutment member for a different purpose does not alter the conclusion that the use of the Singer abutment member in the prior art device would be prima facie obvious from the purpose disclosed in the reference. See, e.g., MPEP2144, IV.
Next, applicant argue
Because Singer teaches a full-width squaring gate that removes skew, applying Singer's gate to Schwenk (or Gerlier) does not lead the skilled artisan to the claimed abutment unit, which introduces skew by means of a single localized abutment member. The examiner’s proposed combination would, at best, place a full-width squaring gate between Schwenk’s (or Gerlier’s) first and second transport units — it would not produce the structure or function recited in claim 1.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a single localized abutment member) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also, the fact that applicant uses an abutment member for a different purpose does not alter the conclusion that the use of the Singer abutment member in the prior art device would be prima facie obvious from the purpose disclosed in the reference. See, e.g., MPEP2144, IV.
Next, applicant argues
Dunham does not Teach the Claimed Press Switching Unit
Dunham's mechanism is directed to ensuring even drive force across the width of a single sheet by allowing two independently suspended drive wheels to take up unevenness on the contact surface (Dunham, col. 7, 11. 12-25; col. 8, 11. 14-25). Both of Dunham's drive wheels remain engaged with the sheet during scuffing, and they simply pivot independently to accommodate surface irregularities. This is fundamentally different from the claimed press switching unit, which performs a selective release of one of the two press units. Specifically, in the second press state, the first press unit does not press the sheet bundle in the predetermined region while the second press unit does press the sheet bundle. Dunham contains no teaching of selectively disengaging one press unit while keeping the other engaged in the same region of the sheet path.
In response, Dunham shows that it is well-known in the art to provide a sheet transport apparatus (Fig. 1) with a press switching unit (Figs. 6 and 9) configured to perform switching between a first press state (Fig. 7) and a second press state (Fig. 9), the first press state (Fig. 7) being a state where a first press unit (right element 129 in Fig. 9) and a second press unit (left element 129 in Fig. 9) press a sheet bundle in a predetermined region (at 190) located upstream from a predetermined position in a transport direction (right in Fig. 2), and the second press state (Fig. 9) being a state where the first press unit (right element 129) does not press the sheet bundle in the predetermined region (at 190) and the second press unit (left element 129) presses the sheet bundle in the predetermined region (at 190). All of the press switching unit limitations are met by Dunham.
Next, applicant argues
The Examiner's articulated motivation, stated as "ensuring even drive force on sheets, " is inconsistent with the claimed operation, which deliberately creates an uneven drive force between the first and second sides of the sheet bundle in order to rotate it about the abutment member. Dunham therefore neither teaches the claimed structure nor supplies a motivation that would lead to it.
In response to applicant’s argument that the prior art press switching unit (Figs. 6 and 9) of Dunham is designed for a different purpose from the claimed invention, the fact that applicant uses a press switching unit for a different purpose does not alter the conclusion that the use of the press switching unit in the prior art device would be prima facie obvious from the purpose disclosed in the reference. See, e.g., MPEP2144, IV.
Next, applicant argue
The Claimed Coordinated Control is not Taught or Suggested by any of the Cited References
Claim 1 requires a control unit that switches both (i) the non-abutment state to the abutment state and (ii) the first press state to the second press state, in coordination, so as to change the angle of a selected sheet bundle relative to the width direction. Claim 5 recites a corresponding first switching step.
None of Schwenk, Gerlier, Singer, or Dunham discloses or suggests such coordinated control. Schwenk's and Gerlier's controllers operate their respective scuffer/registration mechanisms for sheet alignment. Singer's controller sequences a gate, soft rollers, and hard rollers11
for registration (i.e. de-skewing). Dunham's controller operates the lead screw and drive wheels for scuffer extension/retraction. None of them coordinate an abutment operation with a selective release of one press unit to deliberately rotate a sheet or sheet bundle. Even if the references were combined, the combination would not produce the recited coordinated control.
The relevant portion of claim 1 recites “a control unit configured to control the abutment unit and the press switching unit to switch the non-abutment state to the abutment state and switch the first press state to the second press state so as to change an angle relative to the width direction of a predetermined sheet bundle out of the plurality of sheet bundles being continuously transported.” Dunham teaches a control unit (Lines 45-61 in column 2) configured to control an abutment unit (115) and the press switching unit (Figs. 6 and 9) to switch the non-abutment state (up) to the abutment state (down) and switch the first press state (Fig. 7) to the second press state (Fig. 9) so as to change an angle relative to the width direction of a predetermined sheet bundle out of the plurality of sheet bundles being continuously transported. The control unit controls the press switching unit (Figs. 6 and 9) to perform the different first and second press states, as claimed.
With regard to the recitation “so as to change an angle relative to the width direction of a predetermined sheet bundle out of the plurality of sheet bundles being continuously transported” in claim 1, this is a function of the claimed apparatus. According to MPEP 2114, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The cited combinations of references meet all of the structural limitations set forth in the apparatus claims. All of the claim limitations are met by the cited combinations of references.
Next, applicant argues
The Examiner has not Articulated a Sufficient Motivation to Combine
All of the cited references are directed to aligning or registering individual sheets. Schwenk, Gerlier, and Dunham are directed to xerographic finishing/scuffing where sheets are pulled into a registration gate. Singer is directed to a laminator infeed where skewed sheets are squared against a gate. None of the references address or even contemplate the very different problem solved by the present application, which is separating successive sheet bundles in a shingled stream by intentionally skewing a selected bundle so that it can be distinguished from the others downstream (see specification [0004]-[0005], [0009]).
The Examiner's stated motivations, which are "to achieve the predictable result of stopping sheets" (for Singer) and "for the purpose of ensuring even drive force on sheets" (for Dunham), are both directed to alignment-type objectives and provide no reason to arrive at a mechanism that intentionally misaligns a sheet bundle. The Examiner has not pointed to anything in the references that would suggest combining their respective alignment teachings to produce a skewing mechanism, and respectfully such suggestion cannot be found in the references themselves.
The examiner disagrees with this argument. MPEP 2115 states that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). The fact that applicants apparatus operates on bundles of sheets rather than other types of media (e.g., single sheets) does not patentably distinguish the apparatus claims from the cited combinations of prior art references, particularly in view of MPEP2115.
With regard to the method claims 5-7, the Gerlier apparatus operates on sheet bundles, as claimed. Also, Singer operates on multiple overlapped sheets, as shown in Fig. 6. Moreover, Dunham operates on sheets compiled on platform 114 (i.e., sheet stacks or bundles).
Allowable Subject Matter
5. Claims 4 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
6. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS A MORRISON whose telephone number is (571)272-7221. The examiner can normally be reached M-F 9am - 5pm.
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, Mike McCullough can be reached at 571-272-7805. 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.
/THOMAS A MORRISON/Primary Examiner, Art Unit 3653
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