CTNF 19/036,549 CTNF 101320 DETAILED ACTION 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. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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. Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following claims of copending Application No. 19/218,071 (reference application): Instant Application (19/036,549) Reference Application (19/218,071) Claim 1 Claim 1 Claim 2 Claim 5 Claim 3 Claim 5 Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations within Claim 1 of the Applicant’s instant application are claimed in the reference application. These are all provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented. Claim Objections Claim 4 is objected to because of the following minor informality : “the acquisition processing portion acquires” is written in methodological language and should be reworded given Applicant is claiming a device and not claiming a method. For example, applicant has previously used the phrase “the acquisition processing portion configured to acquire” in Claim 3, which would be suitable rephrasing. Appropriate correction is required. Claim Rejections - 35 USC § 102 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-2 are rejected under 35 U.S.C. 102( a)(1) and 35 U.S.C. 102 (a)(2 ) as being anticipated by Tada et al. (US 20040188929 A1; herein referred to as “Tada”) . With respect to Claim 1 , Tada teaches a sheet conveying device (i.e., “sheet transporting apparatus”; ¶0016) comprising: a first conveying portion configured to convey a sheet (i.e., “secondary transfer roll 50” configured to convey “sheet S”; ¶0068; Fig. 2-3); a correcting portion (i.e., “side guide 310”; ¶0092-0093; Fig. 2-3 & 18A-B) provided on an upstream side of the first conveying portion in a conveyance direction of the sheet by the first conveying portion (i.e., “310” upstream of “50” in a conveyance direction shown by the horizontal arrow in Fig. 3), the correcting portion having an opposed surface (i.e., “reference face 311” is an opposed surface of the correction portion “310”; ¶0094; Fig. 3) that is opposed to a side end of the sheet in a first direction orthogonal to the conveyance direction (i.e., “311” opposes a side end of the sheet “S” in a first direction shown by the vertical arrow in Fig. 3); a second conveying portion provided on an upstream side of the correcting portion in the conveyance direction (i.e., "paired transportation rolls 81” upstream of “310” in the conveyance direction shown by the horizontal arrow in Fig. 3; ¶0076; Fig. 2-3), the second conveying portion being configured to convey the sheet in a second direction toward the opposed surface (i.e., “81” conveys sheet “S” in a second direction as shown in Fig. 2 towards the opposed surface as shown in Fig. 3; ¶0076; Fig. 2-3); and an angle changing portion (i.e., “first adjusting mechanism 350” including “a swing fulcrum (pivot) 351 on the unit base 342, and a swing operating mechanism 352” as well as “a guide motor 353” and “a transmission system 354”; ¶0100-0101; Fig. 3, see arched arrow by “311”) configured to change an inclination angle of the opposed surface with respect to the conveyance direction (i.e., the “first adjusting mechanism 350” uses the “guide motor 353” to swing the “side guide 310” in an arch as shown in Fig. 3, changing the inclination angle of “311” with respect to the conveyance direction; ¶0094 & 0101-0103; Fig. 3, see arched arrow by “311” and horizontal conveyance direction arrow). With respect to Claim 2 , Tada teaches an image forming apparatus (i.e., “sheet processing apparatus” such as a printer; ¶0016 & ¶0004) comprising: the sheet conveying device (i.e., “sheet transporting apparatus”; ¶0016) according to claim 1; and an image forming portion configured to form an image on the sheet conveyed by the first conveying portion (i.e., “image formation unit 21”; ¶0068; Fig. 2) . 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. 07-21-aia AIA Claim s 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tada in view of Cho (US 20110135362 A1) . With respect to Claim 3, Tada teaches the image forming apparatus (i.e., “sheet processing apparatus” such as a printer; ¶0016 & ¶0004) according to claim 2, comprising: a reading processing portion (i.e., “side shift sensor 410”; Tada: ¶0016 & Fig. 3). Note that Tada teaches that “410” is downstream of the correcting portion “300” (Tada: ¶0016 & Fig. 3). Tada also teaches that “410” is used to “detect the sheet passing state” (Tada: ¶0116 & Fig. 3) and this sensor’s reading(s) are used in a process which ultimately adjusts the correcting portion “side guide 310” (Tada: ¶0130 & 0123-0124; Fig. 17). an adjustment processing portion configured to adjust the inclination angle of the opposed surface with respect to the conveyance direction (i.e., “controlling device 500” configured to adjust “first adjusting mechanism 350”; Tada: ¶0123-0126; Fig. 17, “ST5”-“ST8”). Tada teaches “500” determines the rotation directions and driving pules of the motors “353” and “373” (Tada: ¶0123-0127; Fig. 17, “ST5”), which therefore adjusts the inclination angle of the opposed surface with respect to the conveyance direction by rotating the correcting portion “310” in an arch as shown in Fig. 3, changing the inclination angle of “311” with respect to the conveyance direction shown in Fig. 3 as the horizontal arrow; Tada: ¶0094 & 0101-0103; Fig. 3 & Fig. 18A). Tada is silent on a reading processing portion configured to read an outer shape of the sheet having passed through the correcting portion; an acquisition processing portion configured to acquire an inclination angle of a side end of the sheet with respect to the conveyance direction on a basis of a result of reading by the reading processing portion, the sheet having passed through the correcting portion; and an adjustment processing portion configured to adjust the inclination angle of the opposed surface with respect to the conveyance direction on a basis of a result of acquisition by the acquisition processing portion. Cho teaches a reading processing portion configured to read an outer shape of the sheet (i.e., a “charge-coupled device (CCD)” or a “constant image sensor (CIS) type image sensor” [herein referred to as “image sensor”] used to read “an outline of the print media sheet”; Cho: ¶0040 & 0045; Fig. 4) having passed through the correcting portion (i.e., this “image sensor” taught by Cho can replace the “side shift sensor 410” taught by Tada, which is positioned downstream of the correcting portion “300”; Tada: ¶0016 & Fig. 3; Cho: ¶0040 & 0045; Fig. 4) ; an acquisition processing portion configured to acquire an inclination angle of a side end of the sheet with respect to the conveyance direction (i.e., “computing unit 150” which “computes a skew level of the input image”, such as “a skew angle”; Cho: ¶0045-0046; Fig. 4) on a basis of a result of reading by the reading processing portion (i.e., the “skew angle” is based on a result of reading by the “image sensor”; Cho: ¶0045-0046; Fig. 4), the sheet having passed through the correcting portion (i.e., this “image sensor” taught by Cho can replace the “side shift sensor 410” taught by Tada, which is positioned downstream of the correcting portion “300”; Tada: ¶0016 & Fig. 3; Cho: ¶0040 & 0045; Fig. 4) ; and an adjustment processing portion configured to adjust the inclination angle of the opposed surface with respect to the conveyance direction (i.e., “controlling device 500” configured to adjust “first adjusting mechanism 350”; Tada: ¶0123-0126; Fig. 17, “ST5”-“ST8” & Fig. 3, see arched arrow showing adjustment of “311” and horizontal conveyance direction arrow) on a basis of a result of acquisition by the acquisition processing portion (i.e., “skew level”, computed by acquisition processing portion “150”, is used to perform de-skewing; Cho: ¶0048 & 0046; Fig. 4) . In other words, Cho teaches that a result of acquisition by the acquisition processing portion (i.e., “skew level”, such as an inclination angle/“skew angle”; Cho: ¶0048 & 0046; Fig. 4) can be used as the basis for conducting a de-skewing process. Therefore, it would be obvious that the adjustment processing portion “500” taught by Tada could operate “S5” (Tada: ¶0123-0126; Fig. 17, “ST5”) based on the “skew angle” in Cho’s acquisition processing portion “150” (Cho: ¶0045-0046; Fig. 4) for the purpose of de-skewing (Cho: ¶0048 & 0046), such as by de-skewing “Sheet S” using Tada’s adjustment processing portion “500” (Tada: ¶0123-0126; Fig. 17, “ST5”-“ST8”). 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 reading processing portion taught by Tada (i.e., “410”; Tada: ¶0016 & Fig. 3) with the one taught by Cho (i.e., “image sensor”; Cho: ¶0040 & 0045; Fig. 4), because Cho’s sensor gathers detailed data, such as the “outline of the print media sheet”, which is beneficial to determine if skew is occurring and to thereby calculate specific values to assess the level of skew (Cho: ¶0045-0046; Fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to enhance the image forming apparatus taught by Tada (i.e., “sheet processing apparatus”; Tada: ¶0016 & ¶0004) by incorporating the acquisition processing portion taught by Cho (i.e., “150”; Cho: ¶0045-0046), because Cho’s acquisition processing portion is able to calculate specific values to assess the level of skew, such as a “skew angle”, which beneficially provides precise information to be used in a de-skewing process (Cho: ¶0045-0048; Fig. 4). 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 adjustment processing portion taught by Tada (i.e., “500”; Tada: ¶0123-0126; Fig. 17, “ST5”-“ST8”) to conduct adjusting based on results from the acquisition processing portion taught by Cho (i.e., “skew level”, computed by “150”; Cho: ¶0048 & 0046; Fig. 4), because, Cho’s acquisition processing portion is able to calculate specific values to assess the level of skew, such as a “skew angle”, and it is beneficial to provide the precise information from Cho’s acquisition processing portion to enhance the de-skewing process conducted by Tada’s adjustment processing portion (Cho: ¶0045-0048; Fig. 4). With respect to Claim 4 , Tada as modified by Cho teaches the image forming apparatus according to claim 3. Tada is silent on the acquisition processing portion acquires an inclination angle of the side end of the sheet in the first direction with respect to the conveyance direction on the basis of the result of the reading by the reading processing portion, the sheet having passed through the correcting portion. Cho teaches the acquisition processing portion (i.e., “computing unit 150” which “computes a skew level of the input image”, such as “a skew angle”; Cho: ¶0045-0046; Fig. 4) acquires an inclination angle of the side end of the sheet in the first direction with respect to the conveyance direction (“a skew angle”; Cho: ¶0045-0046; Fig. 4) on the basis of the result of the reading by the reading processing portion (i.e., the “a skew angle” is based on a result of reading by the “image sensor”; Cho: ¶0045-0046; Fig. 4). It would have been obvious that, given Cho teaches a reading processing portion configured to read an outline of the sheet, that the sheet’s “skew angles” from any direction can be acquired (Cho: ¶0040 & 0045; Fig. 4). the sheet having passed through the correcting portion (i.e., this “image sensor” taught by Cho can replace the “side shift sensor 410” taught by Tada, which is positioned downstream of the correcting portion “300”; Tada: ¶0016 & Fig. 3; Cho: ¶0040 & 0045; Fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to enhance the image forming apparatus taught by Tada (i.e., “sheet processing apparatus”; Tada: ¶0016 & ¶0004) by incorporating the acquisition processing portion taught by Cho (i.e., “150”; Cho: ¶0045-0046), because Cho’s acquisition processing portion is able to calculate specific values to assess the level of skew, such as “skew angle”s in the first direction with respect to the conveyance direction, which beneficially provides precise information to be used in a de-skewing process for a sheet when it is skewed in the first direction (Cho: ¶0045-0048; Fig. 4) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Okamoto et al. (JP 2007153470 A) teaches: “<P>PROBLEM TO BE SOLVED: To provide an image forming device capable of registering positions of images formed on both surfaces of transfer paper at high accuracy. <P>SOLUTION: The transfer paper P is conveyed in a direction of a conveying direction A before the image is transferred to a surface of the transfer paper P by an image formation part 60 and inclination to the conveying direction is corrected by abutting a side (first side) of a leading end on a register roller 43A. After the image is formed on the surface, the transfer paper P is reversed by an inversion passage 87 and an inversion conveying passage 88 and is conveyed in a direction of a conveying direction B. Inclination is corrected by abutting the side (first side) of the leading end on a register roller 43B. Thereafter, the transfer paper P is conveyed in a direction of the conveying direction A and the image is formed on the back surface without performing correction of inclination by the register roller 43A that time. The positions of the images formed on both surfaces can be aligned at high accuracy by correcting the inclination by abutting the same sides on the register roller 43A, 43B on the front surface side and the back surface side.” Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHLOMIT CHELST whose telephone number is (571)272-0832. The examiner can normally be reached on M-F from 8:30 am to 5:00 pm. 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, Ricardo Magallanes, can be reached at telephone number 571-272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice. /SHLOMIT CHELST/ Examiner, Art Unit 2853 /Manish S Shah/ Primary Examiner, Art Unit 2853 Application/Control Number: 19/036,549 Page 2 Art Unit: 2853 Application/Control Number: 19/036,549 Page 3 Art Unit: 2853 Application/Control Number: 19/036,549 Page 4 Art Unit: 2853 Application/Control Number: 19/036,549 Page 5 Art Unit: 2853 Application/Control Number: 19/036,549 Page 6 Art Unit: 2853 Application/Control Number: 19/036,549 Page 7 Art Unit: 2853 Application/Control Number: 19/036,549 Page 8 Art Unit: 2853 Application/Control Number: 19/036,549 Page 9 Art Unit: 2853 Application/Control Number: 19/036,549 Page 10 Art Unit: 2853 Application/Control Number: 19/036,549 Page 11 Art Unit: 2853
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