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 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:
In Claim 1:
"depositing device" = (generic placeholder: “device,” functional language: “depositing . . . to deposit a print fluid”) [0022]
"sublimation device" = (generic placeholder: “device,” functional language: “sublimation . . . to sublimate the sublimation agent”), associated with a light source, (e.g. infrared, UV), heat radiator, rotary press [0025-26,0040,0065-0066,0068,0071]
In Claims 1-2:
“auxiliary heating device” = (generic placeholder: “device,” functional language: “heating . . . to provide heat to the print medium …”), associated with a light source (e.g. infrared, UV), plate, roller, hot oil and circuit, thermal exchanger, steam, hot air, hot steam, hot oil, ventilator, fan, or blower [0049-0051]
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 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.
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.
Claims 2-3 and 11-12 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.
Claim 2 recites the limitation “the auxiliary heating device comprises a first heating process.” The limitation is indefinite, because it makes unclear what a reasonable interpretation of “auxiliary heating device” for every claim which includes the term; it is not clear what is meant by a device being a process. The claims are directed to an apparatus, and the term “auxiliary heating device” in Claim 1 has been interpreted as a means plus function term for a component of the apparatus. However, now Claim 2 says the “device” is a process instead of a structure. Because the limitation creates confusion as to whether a term is meant to refer to a structural feature of the claimed apparatus or to some intended use of an apparatus, the claim is considered indefinite. For purposes of examination, Examiner continues to interpret the “auxiliary heating device” not as a process, but as a means-plus-function term associated with structure in the specification as explained under “Claim Interpretation.”
Claim 11 recites the limitation “wherein the pre-heating process is executed before depositing the print fluid on the print medium.” The limitation is indefinite, because it depends from Claim 9, which has been amended to require that “the preheating process is performed simultaneously with depositing operations.” It is not clear how a “preheating process” and “depositing operations” (i.e. depositing a print fluid) can be performed simultaneously and also a “pre-heating process is executed before depositing the print fluid.” Because the requirements are inconsistent, Claim 11 is considered to improperly depend from Claim 9. Since Claim 9 requires simultaneity and dependent claims must include every limitation of a claim from which it depends, that requirement of Claim 9 governs.
Claim 12 recites the limitation “wherein the pre-heating process is executed after depositing the print fluid on the print medium.” The limitation is indefinite, because it depends from Claim 9, which has been amended to require that “the preheating process is performed simultaneously with depositing operations.” It is not clear how a “preheating process” and “depositing operations” (i.e. depositing a print fluid) can be performed simultaneously and also a “pre-heating process is executed after depositing the print fluid.” Because the requirements are inconsistent, Claim 12 is considered to improperly depend from Claim 9. Since Claim 9 requires simultaneity and dependent claims must include every limitation of a claim from which it depends, that requirement of Claim 9 governs.
Claim 3 is rejected as depending from rejected Claim 2.
Claims 11-12 are 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 9 requires that “the pre-heating process is performed simultaneously with depositing operations.” The only limitation concerning “depositing operations” is “depositing a print fluid.” Dependent claims must include every limitation of a claim from which it depends. Since Claims 11 and 12 depend from Claim 9, they also require that “the pre-heating process is performed simultaneously with depositing operations.” Because Claims 11-12 require that the preheating process and depositing occur sequentially, they do not require that “the pre-heating process is performed simultaneously with depositing operations,” and therefore do not require every limitation of Claim 9 from which they depend. 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
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 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) 1-12 and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2012/0038723).
Regarding Claims 1 and 4, Wang et al. (US’723) teach a printing apparatus, comprising: a depositing device (“print head” and “ink jet printing,” which include nozzles) capable of depositing a print fluid on a first surface of a print medium (intended use, not given significant patentable weight for the claimed apparatus, which does not include either the print fluid or the print medium) [0033,0036.0072], wherein the print fluid comprises a sublimation agent to sublimate at a sublimation temperature (intended use, not given significant patentable weight for the apparatus as claimed, but nevertheless taught in US’723); and a sublimation device (“hot plate,” which is inherently a source of infrared light and also a heat radiator) to sublimate the sublimation agent deposited on the print medium by generating heat radiation in a direction from a second surface of the print medium towards the first surface, the second surface being opposite to the first surface [0098,0102,0106-107]. US’723 also teaches “an auxiliary heating device capable of providing heat to the print medium to heat the print medium to a first temperature below the sublimation temperature, wherein the auxiliary heating device is capable of providing heat to print medium simultaneously with operation of the depositing device (standard PHASER® 860 drum at a temperature of 32 C: Example 7, Table 7 for ink composition and [0101]). The auxiliary device (drum) is placed upstream of the hot plate in the process, since the drum aids in depositing the ink on a substrate before the substrate with ink is placed on the hot plate.
Regarding Claim 2, in US’723 the auxiliary heating device (heated drum) provides heat differently from the sublimation device (hot plate) [0105-0106].
Regarding Claim 3, US’723 teaches the auxiliary heating device is to provide heat downstream of the depositing device. [0104-0106]
Regarding Claim 5, US’723 teaches that the sublimation device is capable of sublimating the sublimation agent through a transition between a solid phase and a gas phase (definition of “sublimating”) at a temperature of about 190 0C [0106].
Regarding Claim 6, US’723 teaches a printing apparatus, comprising: a depositing device (“print head” and “ink jet printing,” which include nozzles) capable of depositing a print fluid on a substrate(intended use, not given significant patentable weight for the claimed apparatus, which does not include either the print fluid or the print medium) [0033,0036.0072], wherein the print fluid comprises a sublimation agent to sublimate at a sublimation temperature (intended use, not given significant patentable weight for the apparatus as claimed, but nevertheless taught in US’723); a first heating device (e.g. printer providing substrate preheating temperature in a range of 75-85 C and/ or UV light) capable of heating the substrate to a first temperature below the sublimation temperature [0104-0105]; and a second heating device (“hot plate,” which is inherently a source of infrared light and also a heat radiator), capable of heating the substrate to a second temperature at or above the sublimation temperature, the second heating device arranged downstream of the depositing device [0105-106].
Regarding Claims 7-8, US’723 teaches a second heating device capable of generating and applying heat radiation (“hot plate,” also both a heat radiator and a heat conductor), capable of generating and applying heat radiation to the substrate.
Regarding Claims 9 and 14, US’723 teaches a method, comprising: depositing a print fluid (ink) on a surface of a print medium [0104], the print medium containing a sublimation agent (by virtue of the deposition of a print fluid, containing a sublimation agent; see Applicant’s written description, which describes only the deposition of print fluid to introduce the sublimation agent onto a print medium) to sublimate at a sublimation temperature [0103-0104]; applying a preheating process of increasing temperature of the print medium to a temperature below the sublimation temperature prior to sublimation, wherein the pre-heating process is performed simultaneously with depositing operations (standard PHASER® 860 drum at a temperature of 32 C (which is about 40 C) (Example 7, Table 7 for ink composition and [0101], since transfusion can be considered an aspect of deposition), and applying sublimation heat to the print medium to sublimate the sublimation agent deposited thereon, wherein the sublimation heat is applied by both a) heat radiation propagating through a backside opposite to the surface of the print medium towards the surface of the print medium [0106]; and b) a pre-heating process of increasing temperature of the print medium to a temperature below the sublimation temperature (75-85 C) [104-105], and a subsequent main heating process of increasing the temperature of the print medium with the print fluid deposited thereon at or above the sublimation temperature (190 C) of the print fluid [106], wherein the pre-heating and the main heating processes differ from each other in all of: mechanism (by printer, including drum vs. hot plate), intensity (hot plate at 190 C vs. printer at 75-85 C and drum at 32 C)), and power of heating (hot plate at 190 C vs. printer at 75-85 C vs. drum at 32 C).
Regarding Claim 10, US’723 teaches that the main heating process generates the heat radiation at the backside such that the heat radiation propagates towards the surface of the print medium, since print medium with the ink on it is placed on a hotplate with the side with the ink facing up [0098,0106].
Regarding Claims 11-12, US’723 teaches that the pre-heating process is executed before depositing the print fluid on the print medium (equivalent to “the preheating process is executed prior to depositing the print fluid on the surface of the print medium”) and also UV pre-heating after, since the print medium is preheated relative to the depositing (printing) process [0101,0104].
Regarding Claim 15, because US’723 teaches the print medium placed on a hot plate, some of the heat transfer (a first portion) to the sublimation agent would necessarily be transferred by radiant heat from the hot plate, while some of the heat transfer to the sublimation agent would necessarily occur via conduction.
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.
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(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2012/0038723).
Regarding Claim 13, US’723 teaches variously performing a preheating process, including transfuse rates of with a heated drum at transfuse rates of 20 inches/second and the application of UV (UV preheats relative to the sublimation step) in, for example 2-3 seconds [0101,0105] or 10 to 50 milliseconds [0091] and a main heating step of variously 150 seconds at 190 C and at least 10 seconds at 145 C [0092]. US’723 fails to teach a range of time for heating of 1 millisecond to 10 seconds. However, time is a result-effective variable, known in the prior art to affect the rate of heating (which is itself a function of time), the total heat transferred, the extent of curing, completion of sublimation, and damage done to a substrate (see, for example, [0092]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’723 by choosing preheating and main heating times within the recited range by routine optimization to achieve adequate ink deposition and transfer of sublimated colorant in the least time to avoid damage to a substrate.
Response to Arguments
Applicant’s amendment to the claims, filed 27 January 2026, with respect to the objection to Claim 12 has been fully considered and overcomes this objection to Claim 12. The objection to Claim 12 has been withdrawn.
Applicant’s amendment to the claims, filed 27 January 2026, with respect to the rejection of Claims 9-10 and 13-15 under 35 USC 112(b) has been fully considered and overcomes the previous rejection under this paragraph. The rejection of Claims 9-10 and 13-15 under 35 USC 112(b) has been withdrawn.
Applicant's arguments filed 27 January 2026, with respect to the rejection of Claims 11-12 under 35 USC 112(b) and with respect to the rejections of Claims 1-15 under 35 USC 102 and 103 have been fully considered but they are not persuasive.
While the amendment of Claim 9 resolved an issue under 35 USC 112(b), it raised additional issues of indefiniteness under 35 USC 112(b) for Claims 11-12, since they require sequential steps, while Claim 9 requires simultaneous steps.
In response to Applicant’s argument that US’723 fails to teach an auxiliary heating device positioned upstream of the sublimation device and capable of providing heat to print medium simultaneously with operation of the depositing device. The PHASER 860 drum is capable of performing this intended use.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xerox. “PHASER 840/850/860 Network Color Printer Service Manual.” pp. 1-270. <<https://www.manualslib.com/manual/701480/Xerox-Phaser-840.html#manual>> (last viewed 27 May 2026) (2002).
Hale (US 5,302,223) (transfer printing with thermal printer, including ribbon which contacts preheated medium followed by sublimation)
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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