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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/12/2025 has been entered.
Response to Arguments
Applicant's arguments filed 9/12/2025 have been fully considered, and will be addressed individually.
Applicant argues that neither Kobayashi nor Koike disclose the claim feature that “the external pressure source is adjustable and/or regulated and is able to generate an overpressure as well as a negative pressure, compared to the ambient air pressure, depending on the actual pre-defined set value” (pages 13-15 of remarks). Specifically, Applicant argues that Kobayashi’s pressure pump 74 can only generate an overpressure (pages 13-14), and that Koike either (i) generates an overpressure or (ii) releases air to atmospheric pressure (page 14).
While Examiner agrees that neither reference expressly generates an overpressure, it is noted that the external pressure source is claimed as being “adjusted or regulated to generate an overpressure or a negative pressure depending on the actual pre-defined set value.” In other words, the claimed pressure source generates one of an overpressure or a negative pressure, in the alternative. Insofar as the external pressure source is “adjustable” to also generate a negative pressure, it is not clear how such adjustability manipulatively affects the claimed method steps, especially if the claim is read such that the external pressure source only need to generate the overpressure.
Moreover, the claims fail to define “the actual pre-defined set value” upon which the external pressure source is supposedly adjusted/regulated. What is this pre-defined set value?
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 21-36 and 42 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 21 and 42:
Various aspects of these claims raise question as to the scope of coverage, including the alternative nature of the preamble, the lack of express steps in the claim body, and antecedent basis issues.
Regarding the preamble, six alternative methods are posited. Specifically, the claims are directed to “a method for operating and/or cleaning an ink or ink-jet printer head” (Examiner’s emphasis). Therefore, the claims may be directed towards: (i) a method of operating an ink, (ii) a method of operating an ink-jet printer head, (iii) a method of operating and cleaning an ink, (iv) a method of operating and cleaning an ink-jet printer head, (v) a method of cleaning an ink, or (vi) a method of cleaning an ink-jet printer head. While the particular method is nonetheless defined the claim body, the alternative nature of the preamble does raise some questions as to the life and meaning given to the claim. See MPEP 2111.02. For example, if the claim is directed towards a method of operating an ink (and not an ink-jet printer head), how much weight is given to the claimed structure of the ink-jet printer head?
The claimed method also lacks any express steps. While various features of the claim recite elements that may be considered “steps,” these features are intermixed with structural configurations and presented in the form of “wherein clauses” as opposed to being clearly presented as steps of the claimed method. For example, the claim feature of:
“wherein, by means of an external pressure source … an external pressure is exerted on at least one area of the damper film…” (lines 14-18 of the claim)
is presented within a “wherein clause.” Is this feature meant to present a step of the claimed method, or a process that may otherwise be performed in conjunction with the claimed method? Or, is this feature simply meant to define the capabilities of the recited structure – i.e. the external pressure source and controllable device?
In another example, the claim seemingly sets forth the structure of the opening and damper film, but appears to transition into possible steps:
“wherein, in the entire area (A) of the opening (37), the damper film is only in contact with a movable part of the refill valve (5), so that an entire force (F) exerted by the control chamber … the resulting force (F) is transferred to the movable part of the refill valve (5) in order to: (a) exert an adjustable pretensioning … and/or (b) open the refill valve” (lines 43-58 of the claim).
This feature is also presented within a “wherein clause,” and is not clearly part of the claimed method. Further, because this feature transitions from a structural configuration into alternative uses for the force that results from the structural configuration, it is not clear whether (a) or (b) are meant to present alternative steps within the claimed method, or are meant to further define the possible uses of the force, and thus indirectly defining the structure of the ink-jet printer head.
The newly amended claim language also presents the feature:
“wherein the external pressure source is adjustable … and is adjusted or regulated to generate an overpressure or a negative pressure” (lines 59-64 of the claim).
Again, because the limitation is presented as a “wherein clause,” it is not clear whether the claimed method is meant to include a step of adjusting or regulating the external pressure source, or if this feature is simply meant to further define the capabilities (and thus the structure) of the external pressure source
The claim also includes multiple antecedent basis issues. Recent amendments include a limitation “wherein, by means of (i) an external pressure source for generation of a pressure (ps)” (lines 14-15 of the claim). However, the claim also has a recitation to “an external pressure source with a pressure (ps)” (lines 31-32 of the claim). Because Applicant has amended the claim to include another external pressure source, it is not clear whether the two claimed “external pressure sources” are meant to refer the same external pressure source, or if they are meant to refer to different external pressure sources. If different, please use differentiating nomenclature for the two pressure sources. If the same, please refer back to the already claimed pressure source (i.e. lines 31-32 should read “the external pressure source with the pressure (ps).” This also leads to some confusion regarding the recited formula on line 48 of the claim. If the external pressure sources are different, then which pressure ps is being referenced in the formula? The claim also presents a limitation regarding the uses (a) and (b), in which the external pressure is adjusted “depending on the actual pre-defined set value.” However, there is insufficient antecedent basis for “the actual pre-defined set value” limitation in the claim.
Because the claim, as a whole, unclearly defines the method, an artisan would not be able to determine the point of infringement over this claim.
Regarding claim 22-36:
These claims fail to remedy the deficiencies of claim 21, and therefore also fail to meet the requirements of this statute.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ito (US 2010/0053283 A1) disclose a method of applying negative pressure to a control chamber (89), an opening of which faces a damper film (88b). While Ito do also disclose a refill valve, Ito’s control chamber is not arranged to face a damper film (88b) of the refill valve (Fig. 6).
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shelby L Fidler whose telephone number is (571)272-8455. The examiner can normally be reached Monday-Friday, 8:30am - 5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHELBY L. FIDLER
Primary Examiner
Art Unit 2853
/SHELBY L FIDLER/Primary Examiner, Art Unit 2853