DETAILED ACTION
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: “a displacement mechanism” and “a return mechanism” in claim 1. It is noted that these correspond to (211, 212) and (280-282, 28a), respectively, as per Applicant’s specification. It is noted that since these are claimed/indented separately from the “a feeding mechanism”, these all are interpreted to be distinct structures such that one structure does not serve dual functions, particularly under 112(f).
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, line 9, it is recited that the “displacement mechanism” may displace the feeding rotating body. Claim 1 is rejected under 35 U.S.C. 112(a) for a lack of written description for the “displacement mechanism”. A review of the four corners of the disclosure fails to provide any drawings, details in the specification, abstract support, or original claim language to show that Applicant had possession of the “displacement mechanism” (i.e. that displaces the feeding rotating body). No discussion/depiction of such a mechanism appears in either the specification or drawings.
Claims 2-7 are rejected by dependency.
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 1-7 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, line 9, it is recited that the “displacement mechanism” may displace the feeding rotating body. Since the invocation of 35 U.S.C. 112(f) requires the “displacement mechanism” to be defined by the specification, the disclosure must sufficiently describe and make clear what structurally comprises the “displacement mechanism”. Neither the drawings nor the specification clearly show or describe any structure which constitutes the claimed “displacement mechanism” (i.e. that displaces the feeding rotating body). As such, at least claim 1 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to provide clear support for and establishing the necessary metes and bounds for determining the scope of the claimed “displacement mechanism”. Therefore, it is the Examiner’s position that the “displacement mechanism” be treated as displacing the stack of sheets.
Claim 1 recites the limitation "the sheet feeding direction" in line 13. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 4, it is recited that the feeding mechanism also serves as the return mechanism. However, in parent Claim 1, these are recited/indented separately and are therefore established to be distinct structures. Furthermore, the scope of a 112(f) term and its equivalents is determined by reference to the specification to show what structure comprises it. [0293] of Applicant’s specification suggests that Claim 4 is achieved by removing the 112(f) structure, which is required in parent Claim 1. Therefore, the metes and bounds are unclear. It is the Examiner’s position that the return mechanism is as required by Claim 1.
Claims 2, 3 and 5-7 are rejected by dependency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 effectively removes the limitation of a distinct return mechanism and merely adds function to an existing structure (i.e. the feeding mechanism). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 6 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murakami et al. (US Pub No. 2019/0193964 A1).
Regarding Claim 1, Murakami et al. discloses
a feeding mechanism (202, 203, 211) having a feeding rotating body (202) that contacts an upper surface of a topmost sheet of a stack of sheets, and configured to execute a feeding process of feeding each sheet from the stack of sheets to a conveying path (from 202 to 109/110) by rotating the feeding rotating body;
a displacement mechanism (208, 209) configured to be able to switch between a contact state in which the stack of sheets contacts the feeding rotating body and a separation state in which the stack of sheets is separated from the feeding rotating body by displacing the stack of sheets or the feeding rotating body; and
a return mechanism (241, 242, 213, 231) configured to execute a sheet return process to return, when the displacement mechanism switches from the contact state to the separation state, a positionally deviated sheet among the stack of sheets that has been positionally deviated to a downstream side in the sheet feeding direction with respect to a reference initial position to an upstream side in the sheet feeding direction (Fig. 11B to 11C).
Regarding Claim 2, Murakami et al. discloses
the feeding mechanism has
a feed-out rotating body (203) arranged on a downstream side of the feeding rotating body in the sheet feeding direction and that rotates together with the feeding rotating body, and
a separating member (211) arranged below the feed-out rotating body, biased (via 214) toward the feed-out rotating body, and configured to separate accompanying sheets fed out along with each of the sheets from each of the sheets; and
the return mechanism includes a bias adjustment mechanism (213, 245, 231) configured to reduce a bias of the separating member toward the feed-out rotating body or releases a bias of the separating member toward the feed-out rotating body when the sheet return process is executed ([0046]).
Regarding Claim 3, Murakami et al. discloses
the return mechanism has
a repelling member (241) supported rotatably around a shaft portion (242, Fig. 7A) arranged above or below a path from the reference initial position to the conveying path (Fig. 11B-11C), and
a drive mechanism (231) configured to rotate the repelling member; and
the repelling member, by repelling the positionally deviated sheet toward the upstream side in the sheet feeding direction, returns the positionally deviated sheet to the upstream side in the sheet feeding direction (Fig. 11B-11C).
Regarding Claim 4, Murakami et al. discloses
the feeding mechanism also serves as the return mechanism (see 112 rejections above), and
the feeding mechanism, before the displacement mechanism switches from the contact state to the separation state, returns the positionally deviated sheet to the upstream side in the sheet feeding direction by rotating the feeding rotating body by a predetermined rotation amount in a direction opposite to the rotation direction when the feeding process is executed.
Regarding Claim 6, Murakami et al. discloses
the displacement mechanism is a lift mechanism (208, 209) that switches between the contact state and the separation state by lifting and lowering the stack of sheets.
Regarding Claim 7, Murakami et al. discloses
a printing device (comprising 111-114, 130) configured to form an image on each sheet fed by the sheet feeding device.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murakami et al. (US Pub No. 2019/0193964 A1) in view of Sata (US Pub No. 2018/0099825 A1).
Regarding Claim 5, Murakami et al. does not explicitly disclose a control device or return condition.
Sata discloses a control device (100) configured to cause the return mechanism to execute the sheet return process when a predetermined return condition is met; wherein
the return condition includes one or both of
a feeding count condition that the number of times the feeding process is executed reaches a preset target count, and
an instruction input condition (i.e. S202=YES) that an instruction to execute the sheet return process (S204) has been input, for the purpose of initializing the return projection.
It would have been obvious to one of ordinary skill in the art before the effective
filing date to modify the invention of Murakami et al. by including the control device and
condition as disclosed by Sata, for the purpose of initializing the return projection.
It is noted that ‘input’ is not defined by the claim and that the return process is
executed, whether a deviated sheet is present or not.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Komuro (US Patent No. 7,905,484) discloses returning a sheet by reverse rotation of rollers as in Fig. 3.
Ohshima et al. (US Pub No. 2007/0262511) discloses a return mechanism 65 as in Fig. 4.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASAD GOKHALE whose telephone number is (571)270-3543. The examiner can normally be reached Monday-Friday, 9am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael McCullough can be reached at (571) 272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PRASAD V GOKHALE/Primary Examiner, Art Unit 3653 October 8, 2026
