DETAILED ACTION
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,365,555. Although the independent claims at issue are not identical, they are not patentably distinct from each other because they are broader versions of the allowed claims. It is noted the dependent claims are either identical to or have the same scope as the allowed dependent claims.
Claim Objections
Claim 7 is objected to because of the following informalities: The term “senor” in line 11 should be recited as --sensor--. 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 1-20 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.
Regarding Claims 1, 10 and 16, it is recited that one motor (i.e. “a motor”/”the motor”) performs the functions of generating drive force for the separation roller and stopping the feed roller. However, Applicant’s specification discloses the separation roller to be driven by motor 142 ([0073]) and the feed roller to be driven by motor 141 ([0086]). Therefore, there appears to be an inconsistency, wherein the metes and bounds of the claims are not understood.
Claims 2-9, 11-15 and 17-20 are rejected by dependency.
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, 6, 10 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawarada (US Pub No. 2021/0284472 A1).
Regarding Claim 1, Kawarada discloses
a feed roller (55) configured to feed a medium;
a separation roller (56) located facing the feed roller (Fig. 3);
a motor (59) configured to generate a drive force for rotating the separation roller in an opposite direction to a medium feed direction (Fig. 3, [0095]);
a rotation detection sensor (90) configured to detect rotation of the separation roller ([0125]); and
a processor (100) to rotate the feed roller in the medium feed direction to feed the medium, wherein
the processor
puts the separation roller on hold from when starting the feed of the medium and then controls the motor to generate the drive force (i.e. ‘hold’ is not defined, wherein it may be taken that the forward rotation of 56 during S1 in [0104] is “held”, from starting feed by 54/55 and then the motor generates the drive force in S2 per [0105], also see Fig. 5), and
controls the motor to stop the feed roller while generating the drive force if the rotation detection sensor detects rotation of the separation roller in the opposite direction to the medium feed direction during feed of the medium (i.e. per [0116], when multiple sheets are fed, 56 rotates in the reverse direction, which would be detected by its encoder 90 and subsequently the driving of 55 is stopped. Therefore, the motor 59 is controlled to stop with the intended use/effect of eventually stopping 55 after the trailing end of the sheet leaves the nip. In other words the motor is controlled to put 55 in a state in which it can stop/not being actively driven).
Regarding Claim 10, Kawarada discloses
rotating a feed roller (55) in a medium feed direction (Fig. 3) to feed a medium;
putting a separation roller (56) located facing the feed roller (Fig. 3) on hold from
when starting the feed of the medium and then controlling a motor (59) to generate a drive force for rotating the separation roller in an opposite direction to the medium feed direction (i.e. ‘hold’ is not defined, wherein it may be taken that the forward rotation of 56 during S1 in [0104] is “held”, from starting feed by 54/55 and then the motor generates the drive force in S2 per [0105], also see Fig. 5); and
controlling the motor to stop the feed roller while generating the drive force if a
rotation detection sensor detects rotation of the separation roller in the opposite direction to the medium feed direction during feed of the medium (i.e. per [0116], when multiple sheets are fed, 56 rotates in the reverse direction, which would be detected by its encoder 90 and subsequently the driving of 55 is stopped. Therefore, the motor 59 is controlled to stop with the intended use/effect of eventually stopping 55 after the trailing end of the sheet leaves the nip. In other words the motor is controlled to put 55 in a state in which it can stop/not being actively driven).
Regarding Claims 6 and 15, Kawarada discloses
a stacking tray (51); and
a pick roller (54) located at an upstream side from the feed roller and separation roller in the medium conveyance direction (Fig. 3) and provided movably between a first position contacting the medium (i.e. in solid lines) stacked on the stacking tray and a second position separated from the medium stacked on the stacking tray (i.e. in dotted lines), wherein
the processor locates the pick roller at the second position if the rotation detection sensor detects rotation of the separation roller in the opposite direction to the medium feed direction during feed of the medium (56 rotates reversely, which would be detected by 90 then 54 is separated from the sheet at a later time, thereby meeting the ‘if’ condition, see [0086]-[0087]).
Claim Rejections - 35 USC § 103
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(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawarada (US Pub No. 2021/0284472 A1) in view of Gillier et al. (US Patent No. 10,106,352 B2).
Regarding Claim 16, Kawarada discloses
rotating a feed roller (55) in a medium feed direction (Fig. 3) to feed the medium;
putting a separation roller (56) located facing the feed roller (Fig. 3) on hold from when starting the feed of the medium-and then controlling a motor (59) to generate a drive force for rotating the separation roller in an opposite direction to the medium feed direction (i.e. ‘hold’ is not defined, wherein it may be taken that the forward rotation of 56 during S1 in [0104] is “held”, from starting feed by 54/55 and then the motor generates the drive force in S2 per [0105], also see Fig. 5); and
controlling the motor to stop the feed roller while generating the drive force if a rotation detection sensor detects rotation of the separation roller in the opposite direction to the medium feed direction during feed of the medium (i.e. per [0116], when multiple sheets are fed, 56 rotates in the reverse direction, which would be detected by its encoder 90 and subsequently the driving of 55 is stopped. Therefore, the motor 59 is controlled to stop with the intended use/effect of eventually stopping 55 after the trailing end of the sheet leaves the nip. In other words the motor is controlled to put 55 in a state in which it can stop/not being actively driven).
Kawarada does not disclose a computer readable, non-transitory medium.
Gillier et al. discloses a computer-readable, non-transitory medium (i.e. memory), for the purpose of storing executable instructions for feeding a medium (i.e. lines 61-65 of Column 6).
It would have been obvious to one of ordinary skill in the art before the effective
filing date to modify the invention of Kawarada by including the computer readable non-
transitory medium as disclosed by Gillier et al., for the purpose of storing executable
instructions for feeding a medium.
Allowable Subject Matter
Claims 2-5, 7-9, 11-14 and 17-20 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: None of the prior art of record shows rotating the feed roller again after stopping it, if the rotation detection sensor detects stopping of the separation roller (Claims 2, 4, 11, 13, 17 and 19), rotating the feed roller again if a predetermined time has elapsed after stopping it (Claims 3, 12 and 18), stops the pick roller if the rotation detection sensor detects rotation of the separation roller in the opposite direction (Claims 5, 14 and 20), stops the feed roller as claimed (Claim 7), first and second projecting parts as claimed (Claim 8) or a plurality of feed rollers that correct skew as claimed (Claim 9)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/PRASAD V GOKHALE/Primary Examiner, Art Unit 3653 March 31, 2026