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 .
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
ABSTRACT - The abstract of the disclosure is objected to because it merely consists of a single run-on sentence without regard for proper grammatical form. Correction is required. See MPEP § 608.01(b).
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: an image former, an inspector, a first ejector in claim 1; a second ejector in claim 2.
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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites the passage “a hardware processor that functions as a controller causing a recording medium on which an image identical to an image on an abnormal recording medium is formed to be ejected to a first ejector”. For improved clarity and readability, the usage of commas, as shown below, is suggested:
a hardware processor that functions as a controller causing a recording medium, on which an image identical to an image on an abnormal recording medium is formed, to be ejected to a first ejector
Appropriate correction is required.
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 2 and 3-5 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.
Claim 2 recites the limitation "a second ejector" in the 5th line. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the following recording medium" in the 3rd line. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination over prior art, this limitation is interpreted as the recording medium following the abnormal recording medium having an image identical to the image on the abnormal recording medium.
Claim 3 recites “a recovery recording medium that is a reprint of the abnormal recording medium to be ejected to the first ejector”. It is unclear if the recovery recording medium is the same or different from “a recording medium on which an image identical to an image on an abnormal recording medium is formed” recited in claim 1. Additionally, the passage the abnormal recording medium to be ejected to the first ejector, contradicts the specification as evidenced by, for example, paragraph [0044] which states “The purge tray 402 ejects, for example, a sheet for which a quality abnormality has been detected as a result of reading of the sheet by the inspecting device 500”. For the purpose of examination over prior art, the recited passage of claim 3 is interpreted as: a recovery recording medium, that is a reprint of the abnormal recording medium, to be ejected to the first ejector.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 10,747,165 to Asakawa.
Asakawa teaches:
(claim 1) An image forming system (1, Fig.1), comprising:
an image former (20) that forms images on a plurality of recording media;
an inspector (30) that detects a quality abnormality of at least one of the recording media on which at least one of the images is formed; and
a hardware processor (400) that functions as a controller causing a recording medium (e.g. S5, Fig.7B), on which an image (third page) identical to an image on an abnormal recording medium (e.g. S3, Fig.7B) is formed, to be ejected to a first ejector (580), the abnormal recording medium being a recording medium in which the quality abnormality is detected.
(claim 2) The image forming system according to claim 1, wherein (Fig.7B)
in a case where at least one of the recording media on which at least one of the images is formed is ejected to the first ejector and the abnormal recording medium is ejected to a second ejector (460, Fig,1),
the controller causes, when an image on a recording medium following the abnormal recording medium is identical (e.g., page 2-3) to the image on the abnormal recording medium, the following recording medium to be ejected to the first ejector, and
the controller causes, when the image on the following recording medium is different (e.g., page 1-5) from the image on the abnormal recording medium, the following recording medium to be ejected to the second ejector.
(claim 3) The image forming system according to claim 1, wherein the controller causes a recovery recording medium (S1, Fig.7C) that is a reprint of the abnormal recording medium to be ejected to the first ejector.
(claim 4) The image forming system according to claim 3, wherein the controller causes a recording medium following the abnormal recording medium (S3) to be ejected to either the first ejector (e.g. 3-2, Fig.7B) or the second ejector (e.g. 2-1, Fig.7B) according to an insertion position of the recovery recording medium.
(claim 6) The image forming system according to claim 1, wherein the controller stops, when an image (e.g. page 4) on a recording medium following the abnormal recording medium is different from the image (page 3) on the abnormal recording medium (S3), forming the image (Fig.6: S41).
(claim 7) A recording medium ejection method, comprising: forming images on a plurality of recording media; detecting a quality abnormality of at least one of the recording media on which at least one of the images is formed; and causing a recording medium on which an image identical to an image on an abnormal recording medium is formed to be ejected to a first ejector, the abnormal recording medium being a recording medium in which the quality abnormality is detected (Fig.6). Asakawa teaches the claimed method, since it has been held that when the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
(claim 8) A non-transitory computer-readable storage medium (450, Fig.2) storing a program for causing a computer to execute the recording medium ejection method according to claim 7.
Allowable Subject Matter
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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.
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/Arlene Heredia Ocasio/Primary Examiner, Art Unit 2852
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