Detailed Notice
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 .
Response to Amendment
Applicant’s amendment filed 8/10/2026 has entered prosecution.
The amendment to Claims 1-3, and 9 have entered the record.
Claims 1-8, 14-20 remain withdrawn.
Claims 9-13 are pending examination.
Claim Rejections - 35 USC § 102
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) 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taylor-Brown (US4060648A).
Regarding Claim 9-11 and 13, Taylor-Brown teaches a surface coating process [abstract]. Below is provided Fig. 1 and 2 of Taylor-Brown.
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Taylor-Brown teaches that the system comprises:
A rigid substrate (Col. 4, Lines 36-48) which may be used in place of the plastic web used as the deposition substrate corresponding to #19 of Fig. 1 and 2, as per Claim 10, wherein the surface to be coated may comprise a metal, such as copper, aluminum, nickel or stainless steel [Col. 2 Lines 14-15] which are understood to be a conductive materials, and where the surface of the material to be coated itself is a second electrode [Col. 4, Lines 48-57] such that it is understood the rigid substrate comprises a first and second surface; and,
A roller (#1, Fig. 2) coated with a dielectric material (#2, Fig. 2) which serves as a discharge electrode that is coupled to an AC power source (Col. 3, 41-68 and Col. 4, Lines 1-14) which is in contact with a first surface of the rigid substrate and would therefore cause electrical charge accumulation on both the first and second surface of the rigid substrate [Col. 4, lines 59-67 and Col. 5, Lines 1-4]; and,
A hopper (#7, Fig. 1 & 2), which is understood to be a source, containing electrically chargeable particles (#8, Fig. 1 & 2), understood to be a printing material, where the hopper is adjacent to the substrate as seen in Fig. 1 and 2. It is understood that the hopper provides a renewed supply of printing material, as per Claim 13; and,
A pair of nip rollers (#18, Fig. 2; and Col. 3, Lines 26-30) which function as a conveyor belt for the substrate (#19), where it is understood the pair of nip rollers comprise one or more rollers, as per Claim 11.
It is emphasized that Taylor-Brown teaches both a version for printing on a non-conductive tackified surface and also a conductive surface, as shown above [and in Col. 1, Lines 60-68 and Col. 2, Lines 1-4], where in both methods, the surface of the substrate is in contract with an electrode. The courts have held broadly that prior art may be used for all the contents of the disclosure, including non-preferred embodiments (see 2123 I and II). Further, as apparatus’ are examined based upon what they are and not what they do, it is understood that Taylor-Brown anticipates the amended claims (see MPEP 2114 I and II), as Taylor-Brown recites all the structural components of Claims 9-11 and 13.
Regarding Claim 12, Taylor-Brown teaches that it is possible to use a second electrode in order to deposit material on both sides of a substrate (Col. 4, Lines 59-68 and Col. 5, Lines 1-10).
Response to Arguments
Applicant's arguments filed 8/10/2026 have been fully considered but they are not persuasive. Applicant argues that the amended claim overcomes the rejection owing to the opinion that Taylor-Brown does not teach a system that applies an electrical charge to a substrate to be coated with a printed material, but only teaches the use of a tackified substrate which passes through an electric field where particles are moved through that field without respect to charge accumulation on the surface of the substrate. As shown above, Taylor-Brown explicitly discloses the use of conductive substrates which themselves become an electrode [Col. 4, Lines 48-57] as a consequence of being in contact with a roller (#1, Fig. 2) coated with a dielectric material (#2, Fig. 2) which serves as a discharge electrode. Accordingly, all arguments articulating Taylor-Brown as failing to disclose that a second surface electrically accumulates charge, which causes the printed material to attract to the second surface and form a printed substrate, are not compelling.
Conclusion
THIS ACTION IS MADE FINAL. 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 NATHANAEL J DOWNES whose telephone number is (571)272-1141. The examiner can normally be reached 8am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
