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 .
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) is/are: a first conveyance processing portion, a first acquisition processing portion, a second conveyance processing portion, a second acquisition processing portion, a determination processing portion and an expansion/contraction processing portion in claim 1 and claim 4.
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(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In the alternative, to the extent the “processing portion” limitations are interpreted under 35 U.S.C. § 112(f), the claims fail to particularly point out and distinctly claim the subject matter regarded as the invention because the specification does not clearly identify corresponding structure for each recited function with sufficient definiteness.
Claim 1 recites, inter alia:
a first conveyance processing portion;
a first acquisition processing portion;
a second conveyance processing portion;
a second acquisition processing portion;
a determination processing portion; and
an expansion/contraction processing portion.
These limitations are recited in functional terms without reciting sufficient structure for performing the claimed functions. The terms are not standard structural terms of art, and in the context of the claim they merely describe what the portions do rather than what they are. Accordingly, the claim language raises a question as to whether the recited “processing portion” limitations invoke 35 U.S.C. § 112(f).
If the above limitations are construed under § 112(f), the claim must be limited to the corresponding structure disclosed in the specification and equivalents thereof. However, the specification does not clearly and unambiguously disclose sufficient corresponding structure for each of the recited functions.
For example:
The first conveyance processing portion is recited as configured to convey the sheet along a conveying path including a conveying section by the conveying belt.
The first acquisition processing portion is recited as configured to use the imaging portion to acquire a size in the conveying direction and a size in the width direction.
The second conveyance processing portion and second acquisition processing portion recite similar functional language.
The determination processing portion is recited as determining whether the same sheet has been conveyed in a different orientation.
The expansion/contraction processing portion is recited as expanding or contracting the size along the conveying direction of an image to be formed based on the acquisition results.
Although the specification states that these portions may be implemented by the CPU 61 executing control programs stored in the ROM 62, the disclosure is largely at the level of a desired result and does not identify corresponding algorithmic structure with sufficient specificity for the claimed functional limitations. Merely identifying a general-purpose processor or control portion, without a clearly disclosed algorithm for the claimed functions, is insufficient to satisfy § 112(f) where the claim recites computer-implemented functional language.
Accordingly, to the extent § 112(f) applies, the claim is indefinite because the specification fails to clearly link the disclosed structure to each recited function with sufficient particularity.
Even if § 112(f) is not applied, claim 1 remains indefinite because the claim language fails to particularly point out and distinctly claim the invention.
1. “same sheet”
The phrase “same sheet” lacks objective boundaries in the claim. The claim does not recite any structural or physical identifier by which the apparatus determines that the sheet conveyed in the second conveyance is the “same” sheet as the one conveyed in the first conveyance, other than the results of the acquisition comparisons. The claim therefore leaves unclear the scope of determination.
2. “in an orientation different from that when the sheet was conveyed”
The phrase “in an orientation different from that when the sheet was conveyed by the first conveyance processing portion” is ambiguous because the claim does not define the relevant orientation reference point with sufficient clarity. It is unclear whether the orientation refers to portrait/landscape orientation, sheet rotation, leading-edge position, or some other orientation condition.
3. “expand or contract a size along the conveying direction of an image”
The phrase “expand or contract a size along the conveying direction of an image” is also indefinite because the claim does not specify the manner, magnitude, or reference of the expansion/contraction. It is unclear what portion of the image is expanded or contracted, how the amount of expansion/contraction is determined, and whether the change applies to pixel pitch, ejection timing, image scaling, or another parameter.
4. “based on the acquisition result”
The phrase “based on the acquisition result” is broad and functional. The claim does not specify the manner of using the acquisition results, the computation performed, or the relationship between the measured values and the resulting adjustment. This renders the scope of the claim uncertain.
Claim 2 depends from claim 1 and adds that the expansion/contraction processing portion changes an ejection cycle of the ink by the ejection portion.
This additional limitation does not cure the indefiniteness of claim 1. The phrase “ejection cycle” is itself functional and lacks clear boundaries in the claim. The claim does not define whether the ejection cycle refers to nozzle firing frequency, print timing, droplet ejection intervals, line-head timing, or another control parameter. Accordingly, claim 2 remains indefinite.
Further, if the “expansion/contraction processing portion” is interpreted under § 112(f), claim 2 also fails for the same reasons as claim 1 because the specification does not clearly disclose corresponding structure and algorithm for changing the ejection cycle based on the acquisition results with sufficient particularity.
Claim 3 depends from claim 1 and adds that the expansion/contraction processing portion expands or contracts the size along the conveying direction of the image to be formed using the ejection portion based on larger one of the two sizes acquired by the first acquisition processing portion and larger one of the two sizes acquired by the second acquisition processing portion.
This limitation is also indefinite. The phrase “larger one of the two sizes” is grammatically awkward and unclear in scope because it is not immediately apparent which two sizes are being compared in each instance and how the larger value is selected for the claimed adjustment. In addition, the claim does not specify how the selected larger size is mathematically used to determine the amount of expansion or contraction.
Thus, claim 3 fails to particularly point out and distinctly claim the invention.
Claim 4 recites method steps corresponding to the apparatus of claim 1, including:
a first conveyance step;
a first acquisition step;
a second conveyance step;
a second acquisition step;
a determination step; and
an expansion/contraction step.
Claim 4 suffers from the same indefiniteness as claim 1 because the recited steps are expressed in broad functional language without clear boundaries. In particular:
the determination step leaves unclear the standard for identifying the “same sheet”;
the orientation requirement is ambiguous;
the expansion/contraction step lacks clarity as to the nature and amount of the claimed adjustment; and
the claim does not specify the computational relationship between the acquisition results and the adjusted image size.
Accordingly, claim 4 also fails to particularly point out and distinctly claim the subject matter regarded as the invention.
Conclusion
For the reasons set forth above, claims 1–4 are rejected under 35 U.S.C. § 112(b) as indefinite.
In the alternative, to the extent the “processing portion” limitations invoke 35 U.S.C. § 112(f), the claims are indefinite because the specification does not clearly disclose corresponding structure sufficient to perform the recited functions with the required definiteness.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4 are rejected under 35 U.S.C. 101 because they are directed to a judicial exception without significantly more.
Under the USPTO’s subject matter eligibility framework, the claims are analyzed under the two-step Alice/Mayo test as implemented in the 2019 Revised Patent Subject Matter Eligibility Guidance:
Step 2A, Prong One — determine whether the claim recites a judicial exception;
Step 2A, Prong Two — determine whether the claim integrates the exception into a practical application; and
Step 2B — if not integrated into a practical application, determine whether the claim includes additional elements amounting to significantly more than the exception itself.
See MPEP §§ 2106, 2106.04, 2106.05.
Step 2A, Prong One: Whether the Claims Recite a Judicial Exception
Claims 1–4 recite the abstract idea of collecting information, analyzing the information, making a determination based on the analysis, and adjusting a result based on that determination.
Claim 1 recites, in relevant part:
using an imaging portion to acquire a first size in the conveying direction and a first width size of a sheet;
using the imaging portion again to acquire a second size in the conveying direction and a second width size of the sheet;
determining whether the same sheet has been conveyed in a different orientation based on the first and second acquisition results; and
expanding or contracting a size along the conveying direction of an image to be formed based on that determination.
These limitations amount to information gathering, comparison, and decision-making, which fall within recognized abstract idea categories. In particular, the claim is directed to evaluating measured sheet dimensions and determining a control action based on that evaluation. Such subject matter is a form of mental process and abstract data analysis. See MPEP § 2106.04(a).
Claim 2 depends from claim 1 and further recites that the expansion/contraction processing portion changes an ejection cycle of ink.
This limitation merely adds a further control action based on the same abstract determination. It does not change the fundamental character of the claim, which remains directed to collecting and comparing information and then adjusting a printing parameter based on the result.
Claim 3 depends from claim 1 and further recites that the expansion/contraction processing portion adjusts the image based on the larger one of the two sizes acquired by the first acquisition processing portion and the larger one of the two sizes acquired by the second acquisition processing portion.
This limitation merely recites a particular rule for selecting measured values and performing the same adjustment logic. It remains part of the abstract process of evaluating measurements and controlling output based on that evaluation.
Claim 4 recites a method corresponding to the apparatus of claim 1, including:
a first conveyance step;
a first acquisition step;
a second conveyance step;
a second acquisition step;
a determination step; and
an expansion/contraction step.
These method steps likewise recite the abstract idea of collecting information, comparing the information, making a determination, and adjusting output based on that determination.
Conclusion for Step 2A, Prong One
Accordingly, claims 1–4 recite a judicial exception in the form of an abstract idea.
Step 2A, Prong Two: Whether the Judicial Exception Is Integrated Into a Practical Application
Claims 1–4 do not integrate the abstract idea into a practical application.
Although the claims recite a conveying belt, an ejection portion, and an imaging portion, these are generic image forming components that are used only as the environment in which the abstract idea is performed. The claims do not recite a specific improvement to the functioning of the machine, a particular machine architecture, or a technological improvement in imaging, sensing, or printing hardware.
Rather, the claims use conventional printing components to perform the abstract steps of:
imaging a sheet;
comparing first and second measurement results;
determining whether the same sheet has been conveyed in a different orientation; and
adjusting image formation parameters accordingly.
The claims therefore amount to using generic printer components as tools to carry out the abstract idea, rather than reciting a technological improvement to the printer itself. See MPEP § 2106.05(a), (f).
The specification describes the objective as suppressing image expansion or contraction in the sheet conveying direction without consuming ink. However, the claims themselves do not recite a specific technological mechanism that achieves this improvement beyond the abstract comparison and adjustment steps. The claimed limitations are functional and result-oriented, rather than directed to a specific technical implementation.
Conclusion for Step 2A, Prong Two
The claims do not integrate the abstract idea into a practical application.
Step 2B: Whether the Claims Include Significantly More
Because the claims do not integrate the abstract idea into a practical application, the analysis proceeds to Step 2B. The additional claim elements do not amount to significantly more than the judicial exception itself.
The additional elements in claims 1–4 include:
a conveying belt;
an ejection portion;
an imaging portion;
a first conveyance processing portion;
a first acquisition processing portion;
a second conveyance processing portion;
a second acquisition processing portion;
a determination processing portion; and
an expansion/contraction processing portion.
These elements are recited at a high level of generality and perform only their ordinary and conventional functions:
the conveying belt conveys the sheet;
the imaging portion images the sheet;
the ejection portion ejects ink;
the processing portions convey, acquire, determine, and adjust.
The claims do not recite any unconventional arrangement of components, any special-purpose hardware, or any non-routine technical modification of the apparatus. Instead, they merely instruct the use of generic components to carry out the abstract idea. This is not enough to amount to an inventive concept or significantly more. See MPEP § 2106.05(d), (e), (h).
The dependent limitations of claims 2 and 3 also do not add significantly more. Claim 2 merely specifies that the ejection cycle is changed and claim 3 merely specifies a particular selection rule based on measured values. These limitations still reside within the same abstract control scheme and do not add a meaningful technological improvement.
Conclusion for Step 2B
The claims as a whole do not include additional elements amounting to significantly more than the abstract idea itself.
Conclusion
For the reasons set forth above, claims 1–4 are rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2003/0189615 A1 — Print Engine Mechanism
This reference discloses a high-performance inkjet printing system using a page-width printhead, including single-sided and double-sided printer configurations, master/slave controller coordination, page buffering, image compression and expansion, and synchronized printhead timing and control for printing on media surfaces.
US 2017/0100949 A1 — Print Position Correction
This reference discloses a printing system and method for correcting print position drift on labels or other printed media by observing printed output, evaluating whether printing is aligned with a target position, and adjusting the print mechanism so subsequent printouts remain centered or properly positioned.
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/BENNY Q TIEU/ Supervisory Patent Examiner, Art Unit 2682
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