DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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: “the control unit” in claims 16-20 and “the basis weight detection unit” in claim 16.
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. Note the structure of the detection unit and basis weight detection unit is described in paragraphs [0028]-[0030] and the structure of the control unit is described in paragraph [0031].
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 Objections
Claims 17-20 are objected to because of the following informalities:
With respect to claim 17, it appears that some language may be missing from the last three lines of the claim. From the context of the claim language, it appears that the phrase --to perform-- should be inserted after the term “not” in line 4.
With respect to claim 18, again it appears that some language may be missing from the claim and it is suggested that the phrase --to perform-- be inserted after the term “not” in line 2.
Appropriate correction and/or clarification is required.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Monden (US 2022/0146977 A1) in view of Matsumoto (US 2019/0146393 A1).
With respect to claim 16, note Monden teaches an image forming system (Fig. 1) including an image forming apparatus 1, and a post- processing apparatus 4 which is connected to a downstream side of the image forming apparatus in a conveyance direction of a sheet P and which performs punching processing of forming a punch hole in a sheet conveyed along a conveyance path from the image forming apparatus, the image forming system comprising:
a punch unit 62, provided in the post-processing apparatus, which includes a punch member 202 that performs the punching processing on the sheet P conveyed from the image forming apparatus while the punch member rotates;
a control unit 101 configured to control rotation of the punch member such that the punch member performs the punching processing on the sheet P conveyed from the image forming apparatus while the punch member 202 rotates at a rotation speed corresponding to a conveyance speed of the sheet (see paragraph [0024]); and
a basis weight detection unit 111 configured to detect a basis weight of the sheet conveyed along the conveyance path toward the punch unit (see paragraph [0045]),
wherein the control unit further controls the punching processing on the sheet P based on the basis weight detected by the basis weight detection unit (see paragraph [0045]. Particular attention is invited to Figures 1-3D and paragraphs [0044]-[0051] of Monden. However, Monden does not explicitly teach that the control unit controls whether or not to perform the punching processing based on the basis weight detected by the basis weight detection unit. Matsumoto teaches an image forming system including a basis weight detecting unit and a post-processing device such as a cutter, wherein the system determines whether a post-processing activity should occur or not based on the detected basis weight of the paper. See, in particular, paragraphs [0034], [0036], [0042], [0054]-[0055], [0079], [0083][0127]-and [0130] of Matsumoto. In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow the control unit of Monden to also control whether or not the punching processing is performed based on the basis weight detected to prevent unnecessary motion of the punching unit when undesired paper types are fed through the system.
Double Patenting
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 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-13 of U.S. Patent No. 12,298,699 B2 (hereafter referred to as US ‘699). Although the claims at issue are not identical, they are not patentably distinct from each other because they each encompass an image forming system including a punch unit, control unit, and basis weight detection unit as recited.
With respect to claim 16, note claims 1 and 11 of US ‘699 each teach an image forming system including an image forming apparatus, and a post- processing apparatus which is connected to a downstream side of the image forming apparatus in a conveyance direction of a sheet and which performs punching processing of forming a punch hole in a sheet conveyed along a conveyance path from the image forming apparatus (see column 21, lines 22-29 and column 22, line 64-column 23, line 3), the image forming system comprising:
a punch unit, provided in the post-processing apparatus, which includes a punch member that performs the punching processing on the sheet conveyed from the image forming apparatus while the punch member rotates (column 21, lines 30-34 and column 23, lines 4-8);
a control unit configured to control rotation of the punch member such that the punch member performs the punching processing on the sheet conveyed from the image forming apparatus while the punch member rotates at a rotation speed corresponding to a conveyance speed of the sheet (see column 21, lines 46-50 and column 23, lines 15-20); and
a basis weight detection unit configured to detect a basis weight of the sheet conveyed along the conveyance path toward the punch unit (see column 21, lines 38-40 and column 23, lines 9-11),
wherein the control unit further controls whether or not to perform the punching processing on the sheet based on the basis weight detected by the basis weight detection unit (see column 21, lines 51-55 and column 23, line 21-column 24, line 5.
With respect to claim 17, claims 8 and 11 of US ‘699 each teach a temperature and humidity sensor configured to detect a temperature and a humidity in an installation environment of the image forming system, wherein the control unit controls whether or not the punching processing on the sheet based on the basis weight detected by the basis weight detection unit and an absolute moisture content in air obtained based on information output from the temperature and humidity sensor (see column 22, lines 35-47 and column 23, lines 12-14 and column 23, line 21-column 24, line 5).
With respect to claim 18, claims 8 and 11 of US ‘699 each teach wherein the control unit controls whether or not the punching processing on the sheet based on the basis weight detected by the basis weight detection unit and a total number of times the punching processing is performed by the punch unit (see column 22, lines 35-47 and column 23, lines 12-14 and column 23, line 21-column 24, line 5).
With respect to claim 19, claims 9 and 12 of US ‘699 each teach wherein the control unit controls the post-processing apparatus to discharge the sheet without performing the punching processing on the sheet in a case where the basis weight detected by the basis weight detection unit is greater than a basis weight threshold, and wherein the basis weight threshold is set to a lower value the higher the absolute moisture content is (see column 22, lines 49-55 and column 24, lines 7-13).
With respect to claim 20, claims 10 and 13 of US ‘699 each teach wherein the control unit controls the post-processing apparatus to discharge the sheet without performing the punching processing on the sheet in a case where the basis weight detected by the basis weight detection unit is greater than a basis weight threshold, and wherein the basis weight threshold is set to a lower value as the total number of times increases (see column 22, lines 57-63 and column 24, lines 15-21).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nishikata et al. (US 2017/0052498 A1) teaches an image forming system including a punch unit having similarities to the claimed subject matter that are readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE J THOMPSON whose telephone number is (571) 272-2161. The examiner can normally be reached M-F 8:30-6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen D Meier can be reached at 571-272-7149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leslie J Thompson/Primary Examiner, Art Unit 2853