DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
2. This office action is a response to Applicant's election filed on 03/02/2026 without traverse of Group I, claims 1 & 3-8 for further examination. Claims 2 & 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on 09/30/2022 & 11/08/2022 are being considered by the examiner.
Drawings
5. 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 “substrate” recited in claim 7 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 Interpretation
6. 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-AlA 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: “rotating member” in claim 1; “rotating member main portion” in claims 1, 3-4 & 7; “processing member” in claims 1, 3-4 & 6-8; “supporting member” in claims 4-6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 7-8 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 7, lines 4 (twice) & 6 (twice) recite “HRC hardness”, wherein it is unclear what HRC is an acronym/abbreviation for. For examination purposes, examiner is interpreting HRC hardness as any hardness that can be the same or different. To correct this problem, amend claim 7 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 8, lines 1-3 recite “wherein a center of gravity of the processing member is positioned on a protrusion direction side of the projecting parts further than a center of gravity of the protruding portion”, however claim 1 recites “the processing member constitutes a part of the protruding portion or an entirety of the protruding portion”, wherein if the processing member constitutes an entirety of the protruding portion, it is unclear how a center of gravity of the processing member (entirety of the protruding portion) is positioned further than a center of gravity of the protruding portion (entirety of the protruding portion). For examination purposes, examiner is interpreting the recitation as the center of gravity can be the same or different. To correct this problem, amend claim 8 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim Rejections
9. 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 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.
10. 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.
Claim Rejections - 35 USC § 102
11. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
12. Claims 1 & 3-8 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Tobler (US 20040213082 A1) hereinafter Tobler (the terminology of the claims in the application is used, but the references of Tobler are included between parentheses).
As regards to claim 1, Tobler discloses a toner processing apparatus for processing an object to be processed comprising a toner particle and an external additive (abs; fig 1-4), comprising:
a processing chamber (25) in which the object to be processed is accommodated ([0016]; fig 2);
a drive shaft (45) rotatably provided at a bottom portion (see fig 2) of the processing chamber (25) ([0016]-[0017]; [0020]-[0021]; fig 2-4); and
a rotating member (32) pivotally supported on the drive shaft (45) ([0016]-[0022; fig 2-4);
wherein the rotating member (32) comprises: a rotating member main portion (38); and a protruding portion (40) protruding outward in a radial direction (see fig 2-4) from an outer peripheral portion of the rotating member main portion (38); the rotating member (32) comprises a processing member (40) processing the object to be processed by colliding against the object to be processed at the protruding portion (40); the processing member (40) constitutes a part of the protruding portion (40) or an entirety of the protruding portion (40); the rotating member main portion (38) and the processing member (40) can be separated; the rotating member main portion (38) comprises a projecting parts (36) protruding in a radial direction in which the rotating member (32) rotates; and the processing member (40) fits with the projecting parts (36) ([0016]-[0022; fig 2-4).
As regards to claim 3, Tobler discloses the apparatus (abs; fig 1-4), wherein the processing member (40) fits with the rotating member main portion (38) in a manner so as to pinch the projecting parts (36) in the radial direction ([0016]-[0022; fig 2-4).
As regards to claim 4, Tobler discloses the apparatus (abs; fig 1-4), wherein the rotating member main portion (38) has a supporting member (43) protruding from the rotating member main portion (38) towards the protruding portion (40), and the supporting member (43) supports the processing member (40) from a starting point end side of a protrusion (see fig 2-4) of the projecting parts (36) ([0016]-[0022; fig 2-4).
As regards to claim 5, Tobler discloses the apparatus (abs; fig 1-4), wherein the supporting member (43) has the projecting parts (36) ([0016]-[0022; fig 2-4).
As regards to claim 6, Tobler discloses the apparatus (abs; fig 1-4), wherein a surface of the supporting member (43) on a protrusion side of the projecting parts (36) has a surface parallel (see fig 2-4, connecting surface) to a surface of the processing member (40) on the protrusion side of the projecting parts (36) ([0016]-[0022; fig 2-4).
As regards to claim 7, Tobler discloses the apparatus (abs; fig 1-4), wherein the processing member (40) has a substrate and a coating layer of a surface of the substrate; a hardness of the substrate can be higher than a hardness of the rotating member main portion (38); and a hardness of the coating layer can be higher than the hardness of the substrate ([0016]-[0022; fig 2-4).
As regards to claim 8, Tobler discloses the apparatus (abs; fig 1-4), wherein a center of gravity of the processing member (40 (entirety of the protruding portion)) can positioned on a protrusion direction side (see fig 2-4) of the projecting parts (36) further than a center of gravity of the protruding portion (40) ([0016]-[0022; fig 2-4).
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights