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 .
Claim Status
This Office action is in response to the filing of 9/11/2025. Claims 1-10 are currently pending.
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 “guide of claim 1” and corresponding to inclined wall 3a;
the “pressing portion” of claim 2 and corresponding to upper wall 3b;
the “changer” of claim 5 and corresponding to the holding shaft 120;
the “first member” of claim 9 and corresponding to the combination of inclined wall 3a and upper wall 3b;
the “second member” of claim 9 and corresponding to side wall 3c; and
the “holder” of claim 9 and corresponding to holding shaft 120. Note that in claim 9, “changer” no longer, invokes 112(f) because “holder” invokes 112(f) and provides the structure.
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 § 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 1-10 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 claim 1, the limitation “a pair of gears to rotate” in line 2 is vague and indefinite because it is not clear if the limitation is reciting that the gears themselves are configured to rotate or if they rotate something else. If it is something else, what do they rotate? In order to further prosecution, the limitation has been interpreted to recite “a pair of gears configured to rotate.” Claims 2-10 are rejected based on their dependence from claim 1.
Regarding claim 1, the limitation “the pair of gears crimping a plurality of media to be bound while conveying the plurality of media to be bound entering an engagement portion of the pair of gears that are rotating” in lines 2-4 is vague and indefinite for several reasons. 1) The grammar is awkward with the limitation being written as if the gears are performing the action as the limitation is being read making it inconsistent with an apparatus claim which describes the apparatus. 2) If the gears are crimping, then how is the media “to be bound?” It is binding the media in the moment that it is crimping. The media can’t be bound and unbound at the same time. 3) Similar to above, if the media is being crimped by the gears, it must be between the gears. How can the media be between the gears while also being conveyed to the gears? 4) In general, the grammar makes the limitation confusing. In order to further prosecution, the limitation has been interpreted to recite “the pair of gears configured to bind a plurality of media by crimping the plurality of media while conveying the plurality of media through an engagement portion of the pair of gears.”
Regarding claim 1, the limitation “a guide unit on one side in a rotation-axis direction of the pair of gears with respect to the pair of gears, the guide unit extending from one side to another side with respect to the engagement portion in a conveyance direction in which the plurality of media to be bound is conveyed by the pair of gears” in lines 5-8 is vague and indefinite because it is not clear because of the poor grammar and awkward phrasing. In line 5, on one side of what is the guide unit? What does it mean to be “in a rotation-axis direction of the pair of gears?” Does it mean the guide unit is on an upstream or downstream side of the pair of gears or does it mean the guide unit is laterally to one side of the pair of gears and extends in a direction parallel to the rotation axes of the gears? Do the pair of gears rotate about one axis or does each gear have its own separate axis that it rotates around? Is the second recitation of “one side” different from the first recitation of “one side?” What structure comprises the sides that the guide unit extends from? Is it the “engagement portion?” The grammar makes the meaning unclear. In order to further prosecution, the limitation is being interpreted consistent with applicant’s disclosure. The guide unit extends parallel to the conveyance direction of the plurality of media and a portion of the guide unit is on one side of the engagement portion of the pair of gears and a portion of the guide unit is on another side of the engagement portion of the pair of gears.
Regarding claim 1, the limitation “the guide unit including a guide to guide a bound end of the plurality of media to be bound” in lines 8-9 is indefinite because it is not clear how the media can be “to be bound” and also have a “bound edge.” In order to further prosecution, the limitation has been interpreted to mean that the guide unit guides a bound end.
Regarding claim 4, the limitation “one side and another side of the guide with respect to the engagement portion in the conveyance direction are include with respect to the conveyance direction to be disposed closer to the pair of gears as each of the one side and said another side moves away from the engagement portion” is vague and indefinite because it is not clear how to understand this limitation due to the poor grammar. Furthermore, are both sides movable? The claim appears to recite that the guide is movable though it is not clear if this is what is intended to be claimed. In order to further prosecution, the limitation has been interpreted to mean that the guide is inclined in a manner where the guide in angled such that the downstream end is closer to a longitudinal line which runs through the gears than the upstream end.
Allowable Subject Matter
Claims 1-10 would be allowable if rewritten or amended 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. Note: Due to the significant number of indefiniteness issues with claim 1, this indication of allowable subject matter is directed more toward the invention disclosed in the specification which is how the claims have been interpreted. Accordingly, if applicant amends the claims in a manner not consistent with how the claims have been interpreted, the examiner reserves the right to apply an appropriate reference and make the next action final.
The following is a statement of reasons for the indication of allowable subject matter: The major difference between applicant’s invention and the prior art is the inclusion of a guide that is angled from an upstream direction to a downstream direction toward a line running longitudinally through the center of the pair of gears.
One close reference, Armington (US 8683777 B2), discloses a guide unit (at 28 – Fig. 2) and a pair of gears (at 32 – Fig. 2) for binding sheets. However, only the portion of the guide unit upstream of and at the pair of gears is angled. The portion of the guide unit downstream of the pair of gears is straight.
Another reference, Thode (US 1954965), discloses a guide unit (7a – Fig. 4) extending upstream to downstream with a pressing portion (the upper horizontal portion of 7a – Fig. 4). However, the guide unit is not angled toward a longitudinal line running through the center of a pair of gears. The guide unit simply runs parallel to a longitudinal line running through the center of the pair of gears.
Therefore, the invention as disclosed and interpreted is novel and non-obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Another reference, Ottaviano (US 4717613), discloses a pair of gears that bind sheets together and a guide unit, though this guide unit is not angled.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
10/9/2026
