CTNF 19/191,444 CTNF 90688 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. 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. Specification 06-11 AIA TITLE - 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. 06-31 AIA “JUMBO CASE” - 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. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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. 07-30-06 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 rotary, a storage unit, a developing member, a moving device, a reading unit, in claim 1; a document transporter in claim 6. 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 § 103 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 1-3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0226663 to Takashima in view of US 6,879,790 to Phillips et al . (claim 1) An image forming apparatus (100) to which a cartridge (40) that stores developer is removably attachable, the image forming apparatus comprising: a photosensitive member (10) on which an electrostatic latent image is formed; a rotary (31) including a storage unit (32) that stores the developer supplied from the cartridge, and a developing member (35) that forms a developer image by developing the electrostatic latent image on the photosensitive member using the developer stored in the storage unit; and a reading unit (2) that reads an image formed on a recording material [0027], wherein the reading unit is positioned such that the reading unit does not overlap a trajectory of the cartridge along which the cartridge moves from the attachment position to the displaced position (reading unit 2 is above the cartridge trajectory in a front-rear direction, see Figs 1, 6, 7). (claim 2) The image forming apparatus according to claim 1, wherein the reading unit is above the cartridge attached to the image forming apparatus (Fig.1). (claim 7) The image forming apparatus according to Claim 1, further comprising: a frame that accommodates the cartridge, wherein the reading unit is above the frame (Fig.1). Takashima appears silent about a moving device , as claimed. Phillips teaches an image forming apparatus (Fig.6) to which a cartridge (84) that stores developer is removably attachable, the image forming apparatus comprising a rotary (86) including a storage unit that stores the developer supplied from the cartridge, a moving device (80) that moves the cartridge between an attachment position at which the cartridge is inside the rotary and a displaced position at which the cartridge is outside the rotary, and a controller (94, 98) that controls the moving device (col. 4 lines 27-67). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Takashima to further comprise a moving device that moves the cartridge between an attachment position at which the cartridge is inside the rotary and a displaced position at which the cartridge is outside the rotary; and a controller that controls the moving device for at least the purpose of facilitating securing and loading of the cartridge into the apparatus. The resulting image forming apparatus further renders obvious: (claim 3) The image forming apparatus according to claim 2, wherein the moving device includes a tray (Phillips: 82) that holds the cartridge, wherein the tray is movable between an accommodation position at which the cartridge is at the attachment position and a removal position at which the cartridge is at the displaced position (Phillips: col. 3 lines 51-67), and wherein the reading unit is positioned such that the reading unit does not overlap a trajectory of the tray along which the tray moves from the accommodation position to the removal position (Takashima: Fig.1 in view of Phillips: Fig.6) . 07-22-aia AIA Claim (s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0226663 to Takashima in view of US 6,879,790 to Phillips et al ., as applied to claim 3 above, and further in view of US 2013/0028617 to Fukuoka et al . Regarding claims 4 & 5, Takashima does not explicitly disclose a rotational axis of the reading unit. Fukuoka discloses an image forming apparatus including a photosensitive members (3), cartridges (130) that store developer and are removably attachable, a storage units (2) that store the developer supplied from the cartridges, a developing members that form a developer image by developing electrostatic latent images on the photosensitive members using the developer stored in the storage units, and a reading unit (90+120) that reads an image formed on a recording material [0070]. The reading unit is configured so as to rotate so that a document is able to be placed by hands by opening the top of a platen glass 92 (Fig.1, 120 rotates in the direction of an arrow M, [0072]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to configure the reading unit of Takeshima to be rotatable, for a similar purpose of allowing manual loading of a sheet on the reading unit. The modified apparatus would then render obvious: (claim 4) The image forming apparatus according to claim 3, wherein a rotational axis of the reading unit extends in a direction of a rotational axis of the rotary (Takashima: Fig.1 in view of Fukuoka: Fig,1). (claim 5) The image forming apparatus according to claim 4, wherein a position of the tray and a position of the reading unit at least partially overlap in the direction of the rotational axis of the rotary (Takashima: Fig.1 in view of Phillips: Fig.6) . 07-22-aia AIA Claim (s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0226663 to Takashima in view of US 6,879,790 to Phillips et al ., as applied to claim 3 above, and further in view of US 2012/0099160 to Ohgi et al . Regarding claims 4-6, Takashima does not explicitly disclose a rotational axis of the reading unit. Ohgi discloses an image forming apparatus comprising a document reading device (16) to read a document and rotatable about a rotational axis (112, Fig.2). The document reading device includes a document conveyance device (104), a transport direction of a document in the document conveyance device is in the same direction of the rotational axis of a photoreceptor drum (52) and a developing device (58) of an image forming part (40) of the image forming apparatus (Figs.1-4). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Takashima, Phillips, and Ohgi to arrive at an image forming apparatus according to claim 3 (claim 4) wherein a rotational axis of the reading unit extends in a direction of a rotational axis of the rotary; (claim 5) wherein a position of the tray and a position of the reading unit at least partially overlap in the direction of the rotational axis of the rotary; and (claim 6) wherein the reading unit includes a document transporter that transports a document sheet, and wherein the document transporter transports the document sheet in the direction of the rotational axis of the rotary for a at least the purpose of facilitating user access to the different part of the apparatus . 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. 08-35 Claim 1-4 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 4-6, 9, and 10 of copending Application No. 19/191,623 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application includes all the structure and configuration of the conflicting instant application’s claims . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 Claim 1-4 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 3-6 of copending Application No. 19/191,276 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application includes all the structure and configuration of the conflicting instant application’s claims . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARLENE HEREDIA whose telephone number is (571)272-8393. The examiner can normally be reached M-F: 9:30-5:30. 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. /Arlene Heredia Ocasio/Primary Examiner, Art Unit 2852 Application/Control Number: 19/191,444 Page 2 Art Unit: 2852 Application/Control Number: 19/191,444 Page 3 Art Unit: 2852 Application/Control Number: 19/191,444 Page 4 Art Unit: 2852 Application/Control Number: 19/191,444 Page 5 Art Unit: 2852 Application/Control Number: 19/191,444 Page 6 Art Unit: 2852 Application/Control Number: 19/191,444 Page 7 Art Unit: 2852 Application/Control Number: 19/191,444 Page 8 Art Unit: 2852 Application/Control Number: 19/191,444 Page 9 Art Unit: 2852 Application/Control Number: 19/191,444 Page 10 Art Unit: 2852 Application/Control Number: 19/191,444 Page 11 Art Unit: 2852 Application/Control Number: 19/191,444 Page 12 Art Unit: 2852
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