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 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: “separation pad holder” in claim 5.
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
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (US 5,697,604) in view of Kawamura (US 7,588,246).
Regarding claim 1, Tanaka discloses a sheet conveying apparatus comprising: a separation pad 44; a separation roller 43 which holds at least one sheet fed between itself and the separation pad and conveys the at least one sheet in the conveying direction; and at least one groove C1 which is provided on a surface of the separation pad with which the at least one sheet comes into contact. Tanaka lacks the disclosure of an upstream feed roller which feeds at least one sheet from a sheet feeding tray in a predetermined conveying direction. Kawamura teaches the use of an upstream feed roller 12 which feeds at least one sheet from a sheet feeding tray 6 in a predetermined conveying direction, in order to pick up sheets from a tray. Kawamura, col. 5, lines 35-50. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the effective filing date to use an upstream feed roller which feeds at least one sheet from a sheet feeding tray in a predetermined conveying direction, in the device of Tanaka, as taught by Kawamura, in order to pick up sheets from a tray.
Regarding claim 2, the device of Tanaka as modified by Kawamura comprises the sheet conveying apparatus according to claim 1, wherein the at least one groove includes a first groove (Tanaka, C2) formed in a straight line along the conveying direction. See Tanaka, Fig. 4.
Regarding claim 3, the device of Tanaka as modified by Kawamura comprises the sheet conveying apparatus according to claim 2, wherein on the surface of the separation pad, the first groove and at least one of the second groove (Tanaka,C1), the third groove, or the fourth groove are formed in a direction orthogonal to the conveying direction according to a predetermined rule or irregularly. See Tanaka, Fig. 5.
Regarding claim 6, the device of Tanaka as modified by Kawamura comprises the sheet conveying apparatus according to claim 1, wherein the at least one sheet includes a first sheet and a second sheet, a plurality of grooves (Tanaka, C2) are provided on the surface of the separation pad, a specification including at least one of a width, a depth, an interval, or a number of the plurality of grooves is such that when the first sheet and the second sheet are fed by the feed roller in an overlapping state, a friction coefficient between the first sheet and the surface of the separation pad is larger than a friction coefficient between the first sheet and the second sheet. See Tanaka, col. 11, lines 6-20: the friction between the sheets is less than the friction between the sheet and the pad, which allows for separation of sheets.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Kawamura and Inoue (JP 2002-114391).
Regarding claim 4, the device of Tanaka as modified by Kawamura comprises the sheet conveying apparatus according to claim 1. Tanaka lacks the disclosure of a plurality of kinds of the separation pads having different specifications of the at least one groove being interchangeable. Inoue teaches the use of interchangeable separation pads in a sheet feeder, in order to adjust the friction coefficient for different types of sheets. Inoue, par. 11. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the effective filing date to have a plurality of kinds of the separation pads having different specifications of the at least one groove be interchangeable, in the device of Tanaka, as taught by Inoue, in order to adjust the friction coefficient for different types of sheets.
Allowable Subject Matter
Claim 5 is 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: the nearest prior art does not teach or suggest the claimed subject matter. For example, Tanaka does not teach everything claimed, including a separation pad holder which holds the separation pad, and a conveying guide member which guides a conveyance of the at least one sheet and detachably supports the separation pad holder, in combination with the rest of the claimed elements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Bokelman (US 7,866,658) discloses a sheet separation device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeremy R. Severson, whose telephone number is (571)272-2209. The examiner can normally be reached Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes, can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMY R SEVERSON/Primary Examiner, Art Unit 1759
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