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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claims 1-23 are objected to because of the following informalities:
In claims 1, 8, 22, and 23, line 2, the term “first recording material” implies that there is another recording material, but no other recording material is contained in the language of the claim. The term “first recording material” could be changed to “recording material”.
In claims 1 and 8, line 2 and claims 22-23, line 7, the term “first mode” implies that there is another mode, but no other mode is contained in the language of the claim. The term “first mode” could be changed to “mode”.
Appropriate correction is required.
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: selector, image former in claims 1, 8, 20-23, input unit in claim 2, conveyance unit in claims 4-6 and 21.
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 § 102
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 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.
Claims 1-3 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyahara (US9,288,352).
Regarding claims 1 and 22, Miyahara discloses an image forming apparatus and an information processing device comprising: a selector 602 configured to select a first mode for forming an image (col. 5, lines 53-58) on a first recording material (i.e. envelope, col. 6, lines 13-18) including a first side(bottom side, fig. 17B) which is closed, a second side (top side, fig. 17B) which is closed, a third side (right side, fig. 17B) which is open, and a fourth side (left side, fig. 17B) which is open ; a tray 315 on which the first recording material is to be placed (col. 6, line 23, fig. 4); an image former 320, configured to form an image on the first recording material conveyed from the tray (col. 3, lines 45-49, fig. 1); a display 170 (fig. 3); and a controller 120 (col. 6, lines 48-50) configured to control, in a case where the first mode is selected by the selector, an orientation of an image to be formed in accordance with an orientation in which the first recording material is placed on the tray (col. 8, line 60 – col. 9, line 4, fig. 11).
Regarding claim 2, Miyahara discloses an input unit configured to receive, as input, the orientation of a side and the orientation of a surface of the first recording material placed on the tray, wherein the controller is configured to control the orientation of the image to be formed in accordance with the orientation of the side and the orientation of the surface of the first recording material acquired from the input unit (col. 8, line 60 – col. 9, line 4, fig. 11).
Regarding claim 3, Miyahara discloses wherein the first side is formed by folding a sheet material of the first recording material, and wherein the second side is formed by closing sides which overlap in a case where the sheet material is folded (i.e. envelope, col. 1, lines 28-38).
Allowable Subject Matter
Claims 8-17, 19, 21, and 23 are allowed.
Claims 4-7, 18, and 20 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.
The following is a statement of reasons for the indication of allowable subject matter:
As to claims 4 and 5, the prior art of record neither disclose or suggest the image forming apparatus comprising all the features of claim 1 and wherein the display is configured to display, in a case where the first mode is selected by the selector, a message prompting a user to place the first recording material on the tray so that a printing surface of the first recording material faces downward or upward.
As to claims 6-7, the prior art of record neither disclose or suggest the image forming apparatus comprising all the features of claim 1 and wherein the conveyance unit is configured to deliver, in a case where the first mode is selected by the selector and duplex printing is set, after the image former prints an image on the first surface of the first recording material, the first recording material to the placement portion without guiding the first recording material along the duplex-printing conveyance path.
Regarding claims 8-17, 19, 21, and 23, the prior art of record neither disclose or suggest the image forming apparatus or an image processing device comprising a controller configured to perform, in a case where the first mode is selected by the selector and duplex printing is performed, conversion processing of reversing an orientation of a first image to be formed on a first surface of the first recording material or an orientation of a second image to be formed on a second surface of the first recording material opposite to the first surface in combination with the remaining claim elements.
Regarding claims 18 and 20, the prior art of record neither disclose or suggest the image forming apparatus comprising all the features of claim 1 and wherein the first recording material is a document folder formed into a bag shape by folding a plastic sheet material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hoang Ngo whose telephone number is (571)272-2138. The examiner can normally be reached M-F 7:30 am - 4:00 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, Stephanie Bloss can be reached at 571-272-3555. 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.
/HOANG X NGO/Primary Examiner, Art Unit 2852
Prosecution Insights