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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/12/2025 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation
“the second region is lighter in color than the first region and comprises a protruding shape relative to the first region” in claim 11
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
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.
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.
Claims 11, 13-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Andoh (US 2006/0176537) in view of Ohachi (JPH0592657).
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Regarding claim 11, Andoh teaches a scanning optical apparatus (scanning apparatus 10) configured to form an electrostatic latent image by irradiating a photosensitive member with laser light, the scanning optical apparatus (scanning apparatus 10) comprising:
a light source (laser light source 12) configured to emit the laser light (see fig.8 and para.[0046] “The laser light source 12 includes a selected one of a single semiconductor and a plurality of semiconductors, and emits laser light”);
a deflector (polygon scanner unit 14) configured to deflect the laser light emitted from the light source (see fig.8), the deflector including a polygon mirror (polygon mirror 17) deflecting the laser light (see fig.8);
a scanning lens (optical element 115) configured to image the laser light deflected by the deflector (polygon scanner unit 14) onto the photosensitive member [Examiner’s note: optical element 115 is capable to image laser light.]; and
an optical box (housing 111) configured to accommodate the deflector (polygon scanner unit 14) and the scanning lens (optical element 115) (See fig.8),
wherein at least one portion of the optical box (housing 111) is formed of a resin (See para.[0046] “The housing 111 serves as a platform of the optical scanning apparatus 10, and is formed of a resin material.”),
wherein, in the at least one portion formed of the resin, the optical box comprises:
a first region of the optical box (a first portion of housing 111) having a resin surface that has been melted or carbonized by a laser marking apparatus,
a second region disposed within the first region and subjected to engraving processing by the laser marking apparatus[Examiner note: The claimed limitation is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Since the optical box is taught by Andoh, the process of making the optical box does not impart distinctive structural characteristics to the final product. Therefore, the product-by-process limitation does not distinguish from the prior art reference.], and
wherein the second region is lighter in color than the first region [Examiner’s note: The color of the optical box is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir.2004) (Claim at issue was a kit requiring instructions and a buffer agent. The
Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ( "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and unobvious relationship between a measuring cup and writing showing how to "half" a recipe); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art); In re Xiao, 462 Fed. App'x 947, 950-51 (Fed. Cir. 2011) (non-precedential) (affirming an obviousness rejection of claims directed to a tumbler lock that used letters instead of numbers and had a wild-card label instead of one of the letters); In re Bryan, 323 Fed. App'x 898, 901 (Fed. Cir. 2009) (non-precedential) (printed matter on game cards bears no new and unobvious functional relationship to game board. Therefore, the color of the optical box does not distinguish the claimed product from the reference Andoh.].
Andoh does no explicitly teach the second region comprises a protruding shape relative to the first region.
However, Ohachi teaches in the same field of endeavor of laser marking technology, comprising a resin molded product having a darker region and a lighter region with protruding shape (See para.[0004] of Ohachi or [0002] of the specification of this application)
It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the apparatus of Andoh with a portion of the resin with protruding shape, in order to obtain clear markings (para.[0004] of Ohachi)
Regarding claim 16, Andoh teaches a scanning optical apparatus (scanning apparatus 10) configured to form an electrostatic latent image by irradiating a photosensitive member with laser light, the scanning optical apparatus (scanning apparatus 10) comprising:
a light source (laser light source 12) configured to emit the laser light (see fig.8 and para.[0046] “The laser light source 12 includes a selected one of a single semiconductor and a plurality of semiconductors, and emits laser light”);
a deflector (polygon scanner unit 14) configured to deflect the laser light emitted from the light source (see fig.8), the deflector including a polygon mirror (polygon mirror 17) deflecting the laser light (see fig.8);
a scanning lens (optical element 115) configured to image the laser light deflected by the deflector (polygon scanner unit 14) onto the photosensitive member [Examiner’s note: optical element 115 is capable to image laser light.]; and
an optical box (optical element 115) configured to accommodate the deflector (polygon scanner unit 14) and the scanning lens (optical element 115) (See fig.8),
wherein at least one portion of the optical box (housing 111) is formed of a resin (See para.[0046] “The housing 111 serves as a platform of the optical scanning apparatus 10, and is formed of a resin material.”),
wherein, in the at least one portion formed of the resin, the optical box comprises:
a first region of the optical box (a first portion of housing 111) having a resin surface that has been melted or carbonized by a laser marking apparatus,
a second region disposed within the first region and subjected to engraving processing by the laser marking apparatus[Examiner note: The claimed limitation is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Since the optical box is taught by Andoh, the process of making the optical box does not impart distinctive structural characteristics to the final product. Therefore, the product-by-process limitation does not distinguish from the prior art reference.], and
wherein the second region is lighter in color than the first region [Examiner’s note: The color of the optical box is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir.2004) (Claim at issue was a kit requiring instructions and a buffer agent. The
Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ( "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and unobvious relationship between a measuring cup and writing showing how to "half" a recipe); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art); In re Xiao, 462 Fed. App'x 947, 950-51 (Fed. Cir. 2011) (non-precedential) (affirming an obviousness rejection of claims directed to a tumbler lock that used letters instead of numbers and had a wild-card label instead of one of the letters); In re Bryan, 323 Fed. App'x 898, 901 (Fed. Cir. 2009) (non-precedential) (printed matter on game cards bears no new and unobvious functional relationship to game board. Therefore, the color of the optical box does not distinguish the claimed product from the reference Andoh.].
Andoh does no explicitly teach the second region comprises a protruding shape relative to the first region.
However, Ohachi teaches in the same field of endeavor of laser marking technology, comprising a resin molded product having a darker region and a lighter region with protruding shape (See para.[0004] of Ohachi or [0002] of the specification of this application)
It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the apparatus of Andoh with a portion of the resin with protruding shape, in order to obtain clear markings (para.[0004] of Ohachi)
Regarding claims 13 and 18, Andoh teaches the casing optical box is molded by fine foam molding [Examiner note: The claimed limitation is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Since the apparatus is taught by Andoh, the process of making the product does not impact distinctive structural characteristics to the final product. Therefore, the product-by-process limitation does not distinguish from the prior art references.].
Regarding claims 14-15 and 19-20, Andoh teaches a mark representing information relating to the scanning optical apparatus is formed in the second region by the engraving processing, wherein the mark includes at least one of a one-dimensional bar code, a two-dimensional bar code, a number, and a character [Examiner’s note: The mark is a printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ( "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and unobvious relationship between a measuring cup and writing showing how to "half" a recipe); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art); In re Xiao, 462 Fed. App'x 947, 950-51 (Fed. Cir. 2011) (non-precedential) (affirming an obviousness rejection of claims directed to a tumbler lock that used letters instead of numbers and had a wild-card label instead of one of the letters); In re Bryan, 323 Fed. App'x 898, 901 (Fed. Cir. 2009) (non-precedential) (printed matter on game cards bears no new and unobvious functional relationship to game board. Therefore, the mark including at least one of a one-dimensional bar code, a two-dimensional bar code, a number, and a character are not distinguishing the claimed product from the reference Addington.]
Claim Rejections - 35 USC § 103
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.
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.
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Andoh and Ohachi in view of Addington (US 7,005,603).
Regarding claims 12 and 17, Andoh does not explicitly teach the resin is mixed with an inorganic reinforcing material including at least one of glass fibers, glass beads, mica, and carbon fibers.
However, Addington teaches in the same field of endeavor of a scanning optical apparatus, comprising a resin optical box (product 110) is mixed with an inorganic reinforcing material including at least one of glass fibers, glass beads, mica, and carbon fibers (See col.3,lines 27-30 “Examples of such additives include, but are not limited to, carbon black, graphite, calcium silicates, zirconium silicates, zeolite, mica, kaolin, talc and cordierite, which comprise laser energy absorbing additives.”).
It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the material of the optical box of Andoh with adding additive material into the resin as taught by Addington, in order to color desired portion of the optical box (See col.3, lines 15-34 of Addington)
Response to Arguments
With respect to the claim rejection under 35 U.S.C. 112(b), applicant’s argument is persuasive. Therefore the claim rejection under 35 U.S.C. 112(b) is withdrawn.
Applicant’s arguments with respect to claims 11, 13-16, and 18-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS Q LIU whose telephone number is (571)272-8241. The examiner can normally be reached Mon-Fri 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRIS Q LIU/ Primary Examiner, Art Unit 3761