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 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.
Claims 1, 3, 5, 13, 15 and 17–19 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo, US 2014/0321878 A1 in view of Pall, US 3,795,288.
Regarding claim 1, Kondo teaches an exhaust part 16 of an image forming apparatus. See Kondo Fig. 3, [0017], [0026]. The exhaust part reads on the claimed “particulate capturing device.”
The exhaust part 16 comprises an exhaust duct 33 having a flow path space through which air comprising particles flows. See Kondo Fig. 3, [0027]. The exhaust duct 33 reads on the “vent pipe.”
The exhaust part 16 also comprises a fan 32 configured to generate an air flow flowing in a direction in which the air is to be sent in the flow space of the exhaust duct 33. See Kondo [0027]. The fan 32 reads on the “air flow generating fan.”
The exhaust part 16 further comprises a filter 34 disposed in a state crossing the flow path space of the exhaust duct 33 in a direction intersecting the air flow, and configured to collect the particles contained in the air. See Kondo Fig. 3, [0028], [0033]. The filter 34 reads on the “collecting portion.”
The filter 34 is formed of a vent plate, because it has a generally plate-like structure, as seen in Fig. 3.
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Kondo differs from claim 1 because it is silent as to the structural details of the filter 34 (the “vent plate”). Therefore, the reference fails to provide enough information to teach the filter 34 has a plurality of vent portions with an opening size between 0.01 to 0.07 mm and an opening ratio of 10 to 20%, as claimed. But Kondo is concerned with reducing the noise generated by the image forming apparatus. See Kondo [0049].
With this in mind, Pall teaches a knitted wire mesh material that can be used for air filtration and acoustic absorption in a ventilation duct. See Pall col. 3, ll. 4–13, 44–63, col. 5, ll. 10–18. The mesh material has an average pore diameter of 50 microns or less, which converts to 0.05 mm or less. Id. at col. 7, ll. 20–23. The mesh material also has a voids volume (i.e., opening ratio) of 10 to 90%. Id. at col. 3, l. 64–col. 4, l. 2. The mesh material is beneficial because it has relatively low flow resistance, while having a relatively high strength and dirt capacity. Id. at col. 3, ll. 48–63.
It would have been obvious for the filter 34 of Kondo to be manufactured from the mesh material of Pall in order to reduce sound produced by the image forming device, while also providing a filter material having relatively low flow resistance, while having a relatively high strength and dirt capacity.
With this modification, the filter 34 (the “vent plate”) of Kondo would have an average pore diameter of 0.05 mm or less, which is within the claimed range of 0.01 to 0.07 mm.
The limitation requiring that the vent plate has—“an opening ratio of 10% or more and 20% or less, and wherein the opening ratio is a ratio of a total opening area of the plurality of vent portions to a flow path area of the vent pipe”—is now addressed. When Kondo is modified such that the filter 34 is made of the mesh material of Pall, the mesh material will cover a flow path area of the exhaust duct 33 of Kondo, as seen in Fig. 3 of Kondo where the filter 34 covers a flow path area of the duct 33. Also, Pall teaches that the voids volume of the material ranges from 10 to 90%. See Pall col. 3, l. 64–col. 4, l. 2. The voids volume is the percentage of the material that is occupied by empty space. Therefore, because the material of Pall covers the entire flow path area of the duct 33 of Kondo, and 10 to 90% of the material comprises empty space—this reads on the mesh material (the “vent plate”) having an opening ratio of 10 to 90% wherein the opening ratio is a ratio of a total opening area of the plurality of vent portions (the open space of the mesh material) to a flow path area of the vent pipe (the area of the duct 33 covered by the material). The prior art range 10 to 90% overlaps with the claimed range of 10% or more and 20% or less, establishing a prima facie case of obviousness. See MPEP 2144.05(I).
Regarding claims 3 and 5, Kondo in view of Pall teaches that the filter 34 (the “vent plate”) would be formed of a porous, mesh plate when the filter 34 is manufactured from the mesh material of Pall, because the filter 34 has a generally plate-like shape while the mesh material of Pall is a porous mesh. See Pall col. 3, l. 64–col. 4, l. 19.
Regarding claim 13, Kondo in view of Pall teaches that the filter 34 (the “vent plate”) would be a mesh plate made of a metal selected from stainless steel, iron, copper, aluminum, zinc, titanium, tungsten or molybdenum, when the filter 34 is manufactured from the mesh material of Pall. See Pall col. 7, ll. 51–62.
Regarding claim 15, Kondo in view of Pall teaches that the filter 34 would be a porous plate made of a metal including nickel, titanium, stainless steel, aluminum, iron or copper, when the filter 34 is manufactured from the mesh material of Pall. See Pall col. 7, ll. 51–62.
Regarding claims 17–19, Kondo teaches an image forming device 1 (the claimed “image forming device”) comprising an exhaust part 16 (the “exhaust portion”) having an exhaust duct 33 (the “collecting duct”) and an “exhaust port” (the port downstream of filter 34, with the exhaust part 16 configured to collect and exhaust air exiting a printer main body 2 (the “apparatus body”). See Kondo Fig 1, [0020], [002], [0026]. The exhaust part 16 comprises the “particulate capturing device” according to claims 1, 3 and 5, as explained in the rejection of claims 1, 3 and 5 above.
Claims 7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo, US 2014/0321878 A1 in view of Pall, US 3,795,288 and in further view of Kumagai, US 2012/0007916 A1.
Regarding claims 7, 9 and 11, Kondo in view of Pall teaches the limitations of claims 1, 3 and 5, as explained above.
Kondo in view of Pall differs from claims 7, 9 and 11 because Kondo illustrates the filter 34 (the “vent plate”) as being disposed on a downstream side of the fan 32 (the “air flow generating portion”), instead of the upstream side, as claimed.
But Kumagai teaches a printer comprising an exhaust duct 15 where a filter 18 is provided upstream of a fan 17. See Kumagai Fig. 2, [0038]. Therefore, it would have been obvious for the filter 34 of Kondo to be located on the upstream side of the fan 32 because this would merely represent reversing the order of the parts of the device with no significant change in function. See MPEP 2144.04(VI)(A).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kondo, US 2014/0321878 A1 in view of Pall, US 3,795,288 and in further view of Yamashita et al., US 2017/0255136 A1.
Regarding claim 20, Kondo teaches that the image forming device 1 comprises an intermediate part of printer body 2 that uses ink heads 22 to fix a toner image to a sheet. See Kondo Fig. 1, [0035]. Also, the exhaust part 16 comprises a sucking part 15 (the claimed “suction port”) configured to collect air exiting the intermediate part, and an “exhaust port” (downstream from filter 34) configured to exhaust the collected air to the outside. Id. at Fig. 1, [0043].
Kondo differs from claim 20 because it is silent as to the intermediate part of the printer body 2 comprising a fixing portion configured to thermally fix an unfixed toner image to a recording medium, with the same or equivalent structure as the fixing device described in the specification.
But Yamashita teaches an inkjet printing apparatus 100 with an embodiment that uses a print head 12 (Fig. 1) and another embodiment that uses an electrophotographic unit 22 (Fig. 7) to print an image on paper. See Yamashita Figs. 1, 7, [0100]. In the Fig. 7 embodiment, the paper travels to a fixing unit 23 after the image is applied to the paper, with the heating unit using a heating roller for melting and fixing toner on the surface of the paper. Id. at Fig. 7, [0103]. The structure of the fixing unit 23 is either the same or equivalent to the fixing device described in the specification.
It would have been obvious for the intermediate part of the printer body 2 of Kondo to utilize the electrophotographic technique of Yamashita instead of the using ink heads, because this would merely represent the using a known, equivalent printing technique with the image forming device of Kondo. With this modification, the fixing unit 23 of Yamashita would read on the “fixing portion” of claim 20.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5, 7, 9, 11, 13, 15 and 17–20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–20 of copending Application No. 17/698,058 in view of Pall, US 3,795,288.
Regarding instant claim 1, claim 1 of the ’058 application teaches all of the limitations of instant claim 1, except the vent plate being manufactured from metal and having an opening ratio of 10 to 20%, wherein the opening ratio is a ratio of a total opening area of the plurality of vent portions to a flow path area of the vent pipe. But Pall teaches a metallic knitted mesh material that can be used for air filtration where the material has a voids volume (i.e., opening ratio) of 10 to 90%. See Pall col. 3, l. 64–col. 4, l. 2. The mesh material also has a an average pore diameter less than 100 microns, which converts to less than 0.1 mm. Id. at col. 4, ll. 2–10. This satisfies the claim 1 requirement of a plurality of vent portions with an opening size between 0.01 to 0.07 mm. Pall teaches that its mesh material is beneficial because it has relatively low flow resistance, while having a relatively high strength and dirt capacity. Id. at col. 3, ll. 48–63. It would have been obvious for the vent plate of claim 1 of the ’058 application to be manufactured from the mesh material of Pall to provide these benefits.
Regarding instant claim 3, claim 3 of the ’058 application teaches that the vent plate is a mesh plate.
Regarding instant claim 5, claim 5 of the ’058 application teaches that the vent plate is a porous plate.
Regarding instant claim 7, claim 7 of the ’058 application teaches that the vent plate is disposed on an upstream side of the air flow generating portion in a direction in which the air is sent.
Regarding instant claims 13 and 15, Pall teaches that its mesh material can be fabricated from a metal selected from stainless steel, iron, copper, aluminum, zinc, titanium, tungsten or molybdenum. See Pall col. 7, ll. 51–62.
Regarding instant claims 17–19, claims 13–19 of the ’058 application teach an image forming device having substantially the same structure as the image forming device described in claims 17–19.
Regarding instant claim 20, claim 20 of the ’058 application teaches an image forming device having the same structure as described in instant claim 20.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Arguments
35 U.S.C. 112(f) Interpretations
The Examiner withdraws the previous 35 U.S.C. 112(f) interpretation of the “fixing portion” limitation of claim 20 because a person of ordinary skill in the art would have understood the “fixing portion” as being a structural term that takes its name from the function it performs.
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejection of claim 20 in light of the amendments.
35 U.S.C. 103 Rejections
The Applicant argues that the voids volume of Pall describes the internal porosity of the mesh material and not the ratio of the open area to the flow path area of a pipe or duct. See Applicant Rem. dated July 07, 2025 (“Applicant Rem.”) 6–7.
The Examiner respectfully disagrees. The voids volume of the mesh material of Pall is the percentage of the material itself that is occupied by empty space. Therefore, when Pall says that the voids volume of the material is 10 to 90%, this means that 10 to 90% of the mesh material comprises empty space. Also, the filter 34 of Kondo spans a flow path area of the duct 33, as seen in Fig. 3. When the filter 34 is made from the mesh material of Pall, 10 to 90% of the volume of the area of the duct 33 occupied by the filter 34 will comprise open space. This reads on an opening ratio of 10 to 90% wherein the opening ratio is a ratio of a total opening area of the plurality of vent portions (the open space of the mesh material) to a flow path area of the vent pipe (the area of the duct 33 occupied by the filter 34). The prior art range 10 to 90% overlaps with the claimed range of 10% or more and 20% or less, establishing a prima facie case of obviousness.
Double Patenting
The Examiner maintains the double patenting rejections for the reasons stated above. The Examiner strongly encourages the Applicant to submit a terminal disclaimer to overcome the rejections to advance prosecution.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Behlen, US 2,423,547, which teaches a metal mesh filter material comprising openings 16 having a size of 0.003 inch (0.076 mm), which could be reduced to 0.07 mm (by flattening the material to further reduce the opening size), where the material would have an opening ratio of around 7.6% when the openings 16 are 0.07 mm (0.002755 inch) (as the openings are roughly square and the material has 10,000 openings per square inch).
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 T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
Prosecution Insights