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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 July 2026 has been entered.
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]
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.
Claims 1-15 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.
Claims 1 and 6 recite the limitation “light source to switch between different wavelength ranges . . . wherein the different wavelength ranges comprise two or more of the following ranges: ultraviolet, infrared, near-infrared or visible,” and Claim 9 recites the limitation “light source switching between different wavelength ranges . . . wherein the different wavelength ranges comprise two or more of the following ranges: ultraviolet, infrared, near-infrared or visible.” The limitations are indefinite, because the range includes one range (near-infrared) which is a subset of another range (infrared), making it unclear what is required when the claim permits switching between a set and a subset of that set. Specifically, because near-infrared light includes wavelengths in the range of 780 nm to 2500 nm, and infrared light includes wavelengths in the range of 700 nm to 1 mm, “switching” from near-infrared to infrared would not require any switch at all, since near-infrared is also infrared. Thus, it is not clear what “switching” is required when those two categories, permitted by the claim, are selected. For purposes of compact prosecution, Examiner considers the limitation to include a light source which can be tuned from one near-infrared wavelength to another near-infrared wavelength, since that includes switching from infrared to near-infrared or near-infrared to infrared.
Claims 2-5, 7-8, and 10-15 are indefinite as depending from rejected Claims 1,6, and 9.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2012/0038723) in view of Mitsuhata et al. (US 5,358,923).
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 (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.
US’723 fails to teach a light source capable of switching between infrared and near-infrared (a range within infrared). Mitsuhata et al. (US’923) is analogous art in the field of color transfer of a sublimation dye sublimation thermal transfer using a semiconductor laser having an oscillating wavelength of 780 or 830 nm (infrared and also near infrared) (Fig. 4; col. 4, lines 37-51; col. 5, lines 24-40; col. 2, lines 23-32). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’723 with a light source, capable of switching between IR and near IR, including switching between one near IR wavelength and another near IR wavelength, since one of those wavelengths can also be considered IR (e.g. a light source, which comprises single laser with oscillating wavelengths of 780 and 830 nm; a light source, which comprises a combination of two lasers, one with an oscillating wavelength of 780 nm and another with an oscillating wavelength of 830 nm; or a light source, which comprises a combination of one or more near infrared lasers with a hotplate, which inherently emits infrared light as in US’723), because US’923 suggests an optical laser beam, such as a semiconductor laser beam, with an oscillating wavelength in a range of 780 to 830 nm to provide heat for sublimating a dye for thermal transfer of the dye.
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].
US’723 fails to teach a light source capable of switching between infrared and near-infrared (a range within infrared). Mitsuhata et al. (US’923) is analogous art in the field of color transfer of a sublimation dye sublimation thermal transfer using a semiconductor laser having an oscillating wavelength of 780 or 830 nm (infrared and also near infrared) (Fig. 4; col. 4, lines 37-51; col. 5, lines 24-40; col. 2, lines 23-32). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’723 with a light source, capable of switching between IR and near IR, including switching between one near IR wavelength and another near IR wavelength, since one of those wavelengths can also be considered IR (e.g. a light source, which comprises single laser with oscillating wavelengths of 780 and 830 nm; a light source, which comprises a combination of two lasers, one with an oscillating wavelength of 780 nm and another with an oscillating wavelength of 830 nm; or a light source, which comprises a combination of one or more near infrared lasers with a hotplate, which inherently emits infrared light as in US’723), because US’923 suggests an optical laser beam, such as a semiconductor laser beam, with an oscillating wavelength in a range of 780 to 830 nm to provide heat for sublimating a dye for thermal transfer of the dye.
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 (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).
US’723 fails to teach applying heat by a light source switching between infrared and near-infrared (a range within infrared). Mitsuhata et al. (US’923) is analogous art in the field of color transfer of a sublimation dye sublimation thermal transfer using a semiconductor laser having an oscillating wavelength of 780 or 830 nm (infrared and also near infrared) (Fig. 4; col. 4, lines 37-51; col. 5, lines 24-40; col. 2, lines 23-32). Thus, 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 applying heat with a light source, switching between IR and near IR, including switching between one near IR wavelength and another near IR wavelength, since one of those wavelengths can also be considered IR (e.g. a light source, which comprises single laser with oscillating wavelengths of 780 and 830 nm; a light source, which comprises a combination of two lasers, one with an oscillating wavelength of 780 nm and another with an oscillating wavelength of 830 nm; or a light source, which comprises a combination of one or more near infrared lasers with a hotplate, which inherently emits infrared light as in US’723), because US’923 suggests providing heat for sublimating a dye for thermal transfer of the dye with an optical laser beam, such as a semiconductor laser beam, with an oscillating wavelength in a range of 780 to 830 nm (NIR).
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]. Moreover, it is obvious to perform such a step in any order or simultaneously in order to provide heat as needed. MPEP 2144.04.
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]. The combination of US’723 in view of US’923 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 the combination of US’723 in view of US’923 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.
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. Moreover, US’723 teaches a hot plate, which inherently emits infrared radiation, and US’923 suggests a laser which emits near infrared radiation (radiation).
Response to Arguments
Applicant’s amendment to the claims, filed 17 July 2026, with respect to the rejection of Claims 11-12 under 35 USC 112(d) has been fully considered and overcomes the previous rejection under this paragraph. The rejection of Claims 11-12 under 35 USC 112(d) has been withdrawn.
Applicant’s amendment to the claims, filed 17 July 2026, with respect to the rejections of Claims 1-12 and 14-15 under 35 USC 102 has been fully considered and overcomes the previous rejection under this paragraph. The rejections of Claims 1-12 and 14-15 under 35 USC 102 have been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of the amendment to the claims, which necessitates rejections of Claims 1-15 under 35 USC 103.
Applicant's arguments filed 17 July 2026, with respect to the rejections of Claims 2-3 and 11-12 under 35 USC 112(b) and with respect to the rejections of Claims 1-15 (now under 35 USC 103) have been fully considered but they are not persuasive.
While an amendment to Claim 9 resolved an issue under 35 USC 112(b), it raises additional issues of indefiniteness under 35 USC 112(b).
In response to Applicant’s argument that US’723 fails to teach a light source capable of switching between different wavelength ranges depending on the print fluid that has been deposited on the print medium (Remarks, p. 8), Examiner cites Mitsuhata et al. (US 5,358,923) to show the obviousness of including a light source (e.g. laser, lasers, or combination of laser and hot plate), capable of switching between IR and NIR wavelengths.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Weeks (US 4,063,878) (IR lamp to raise the temperature of a dye source or sublimation temperature of a dye)
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.
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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
Prosecution Insights