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:
Claim(s)
Generic Placeholder or “means for”
Functional Language
Corresponding Structure
18
a sliding “member”
[configured to] form the coating body on the outer peripheral surface of the intermediate transfer belt by rubbing the solid lubricant onto the surface of the intermediate transfer belt
No corresponding structure exists for “a sliding member”. This component is discussed in the specification in [0069] and [0091], but no mention of structure is made, only function and the component’s placement relative to other components. The drawing depict element 73 as a generic box. See the 112(a) and 112(b) rejections below.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The sliding member is discussed in the specification in [0069] and [0091], but no mention of structure is made, only function and the component’s placement relative to other components. Furthermore, figure 1 depicts sliding member 73 as a generic box. Therefore, the specification with regards to “a sliding member” (Claims 19) does not demonstrate that the application has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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.
Claim limitation “a sliding member” (Claim 19) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1, 5, and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito USPG Pub. No.: US 2012/0301191 in view of Dojo et al. USPG Pub. No.: US 2009/0047043 and in further view of Nakai et al. USPG Pub. No.: US 2015/0283609.
Regarding Claim 1, Ito teaches an intermediate transfer belt comprising (figures 1 and 3A-3B, 21), on an outer peripheral surface, a coating body (figure 3A, 110) of a solid lubricant (see [0196] in which the surface layer is comprised of a solid lubricant, zinc stearate, which is an organic layered, spray-coated, compound).
Ito is silent in explicitly disclosing that the solid lubricant has an average particle diameter of 1.0 µm or more and 3.0 µm or less. However, Dojo teaches in [0064] that the average particle diameter of the solid lubricant being too low impacts having sufficient lubricity, and conversely that the average particle diameter of the solid lubricant being too high causes worse surface roughness, and therefore a such a range is therefore a result effective variable that may be optimized by the person of ordinary skill. See MPEP 2144.05(II)(B). It would have been obvious to the person of ordinary skill before the time of filing to include this teaching of a range of average particle diameter with the various considerations laid forth by Dojo.
Ito and Dojo are silent in teaching wherein the solid lubricant is melamine cyanurate. However, Nakai teaches that the solid lubricant is melamine cyanurate (see Nakai [0044] and [0051], which teaches that the use of melamine cyanurate as a solid lubricant having an average particle diameter of 0.1 μm to 3 μm, which, like Ito above, encompasses the claims range; see [0035] which teaches that the melamine cyanurate lubricant was used as a surface lubricant). It would have been obvious to one of ordinary skill in the art at the time of filing to have modified Ito’s teachings of a surface layer with melamine cyanurate, such as in Nakai in order to provide flame retardant properties to the surface and generally as “a lubricant for a magnetic recording medium” (as discussed in Nakai [0045], which lists a multitude of benefits of using melamine cyanurate, including those mentioned).
Regarding Claim 5, Ito, Dojo, and Nakai teach the intermediate transfer belt according to claim 1, but are silent in explicitly teaching wherein the average particle diameter of the solid lubricant is 2.0 µm or more and 3.0 µm or less. However, Dojo teaches in [0064] that the average particle diameter of the solid lubricant being too low impacts having sufficient lubricity, and conversely that the average particle diameter of the solid lubricant being too high causes worse surface roughness, and therefore a such a range is therefore a result effective variable that may be optimized by the person of ordinary skill. See MPEP 2144.05(II)(B). It would have been obvious to the person of ordinary skill before the time of filing to include this teaching of a range of average particle diameter with the various considerations laid forth by Dojo.
Regarding Claim 8, Ito, Dojo, and Nakai teach a transfer device comprising: an intermediate transfer belt (Ito figure 1, 21) having an outer peripheral surface onto which a toner image is transferred, the intermediate transfer belt according to claim 1 (refer to rejection of claim 1 above, under 35 USC 103);
a primary transfer device (Ito, the set of rollers 25 serve as the primary transfer device) including a primary transfer member that primarily transfers a toner image formed on a surface of an image holding body onto the outer peripheral surface of the intermediate transfer belt (seen in Ito figure 1 in which the photoconductors 11 transfer the latent image to the intermediate transfer belt at the nip portions between the primary transfer rollers 25 and the photoconductors 11);
a secondary transfer device including a secondary transfer member (Ito, figure 1, secondary transfer roller 26 and see [0040]) that is disposed in contact with the outer peripheral surface of the intermediate transfer belt and secondarily transfers the toner image transferred onto the outer peripheral surface of the intermediate transfer belt onto a surface of a recording medium (see Ito figure 1 and [0040] describing the secondary transfer process in which the image is transferred from the intermediate transfer belt to a recording medium via secondary transfer member 26); and
a cleaning device including a cleaning member includes at least one of a cleaning blade or a cleaning brush that cleans the outer peripheral surface of the intermediate transfer belt (figure 1, cleaning device 27 that cleans intermediate transfer belt 21).
Regarding Claim 9, Ito and Dojo teach an image forming apparatus comprising:
a toner image forming device that includes an image holding body and forms a toner image on a surface of the image holding body (Ito [0029] and figure 1, 3 CKYM, including photoconductor 11 for each unit, in which a latent image is formed on the image holding body via exposure unit 13, discussed in [0034]); and
a transfer device that transfers the toner image formed on the surface of the image holding body onto a surface of a recording medium, the transfer device according to claim 8 (refer to the rejection of Claim 8 above, under 35 USC 103).
Claim(s) 6-7 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito USPG Pub. No.: US 2012/0301191 in view of Dojo et al. USPG Pub. No.: US 2009/0047043 and in further view of Nakai et al. USPG Pub. No.: US 2015/0283609 in further view of Sugino et al. USPG Pub No.: US 2011/0286777.
Regarding Claims 6 and 7, Ito, Dojo, and Nakai do not explicitly teach that the coating body has a coverage of 40% or more and 70% or less. However, in analogous art, Sugino teaches in [0016] that the coverage of lubricant is directly affects abrasion, image blur, and interaction between the lubricant and the latent image bearing member onto which the lubricant is applied, and is therefore a result effective variable that may be optimized by the person of ordinary skill. See MPEP 2144.05(II)(B). It would have been obvious to the person of ordinary skill before the time of filing to include this teaching of Sugino in order to properly balance the lubrication coverage of the belt with the various considerations laid forth by Sugino.
Regarding Claim 19, Ito, Dojo, Nakai, and Sugino teach the intermediate transfer belt according to claim 1, but are silent in explicitly teaching wherein the average particle diameter of the solid lubricant is 2.0 µm. However, Dojo teaches in [0064] that the average particle diameter of the solid lubricant being too low impacts having sufficient lubricity, and conversely that the average particle diameter, a size, of the solid lubricant being too high causes worse surface roughness, and therefore a such a range is therefore a result effective variable that may be optimized by the person of ordinary skill. See MPEP 2144.05(II)(B). It would have been obvious to the person of ordinary skill before the time of filing to include this teaching of a range of average particle diameter with the various considerations laid forth by Dojo.
Allowable Subject Matter
Claim 10 and 14-18 allowed. The following is an examiner’s statement of reasons for allowance:
RE Claim 10, the prior art of record does not disclose or suggest “the solid lubricant has an average particle diameter of 1.0 pm or more and 3.0 pm or less, wherein the solid lubricant is melamine cyanurate,” in combination with the other claim limitations. Claims 14-18 depend from base Claim 10, and therefore these claims are also allowed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see Remarks p.9-10, filed 12/29/2025, with respect to Claim 10 have been fully considered and are persuasive. The rejection of Claim 10 under 35 USC 103 has been withdrawn.
However, Applicant's arguments filed regarding the rejection of Claim 1 under 35 USC 103 have been fully considered but they are not persuasive.
Regarding Claim 1, Applicant argues (p.8): “Nakai limits its disclosure to raw material powder for powder metallurgy using melamine cyanurate as a lubricant, and its application is limited to "producing a sintered body by mixing with metal powder". That is, this is a technical disclosure directed to a use specific to the particular industrial field of "powder metallurgy", and there is no teaching or suggestion therein relating to an intermediate transfer belt or a transfer member”
Contrary to Applicant’s argument, Examiner contends that the manner in which Nakai implements melamine cyanurate in their teaching is applicable across a broad range of industrial applications in which high heat is a factor. Electrophotography and metallurgy share this commonality, as either may, at times, require the application of a flame-retardant compound such as melamine cyanurate. Melamine Cyanurate, as Nakai clearly states, is a well-known flame retardant, and thus the applicability as such would apply broadly. Therefore, the implementation of melamine cyanurate in the teaching is analogous to the implementation in the present application, in so far as the breadth of the claims require.
Regarding Claim 1, Applicant argues (p.8-9): “Further, although the Office asserts that the use of melamine cyanurate in a "magnetic recording medium" is described, Ito and Dojo are not inventions regarding a magnetic recording medium, and Nakai specializes in an industrial application (technical field) that is completely different from Ito and Dojo; thus, there is no suggestion or disclosure regarding the function, characteristics, or combination as a transfer member as claimed.”
Contrary to Applicant’s argument, Examiner contends that (1) lubrication would broadly apply to both magnetic and nonmagnetic recording mediums and (2) that multiple motivations were given for why one of ordinary skill in the art would have implemented melamine cyanurate, specifically that the compound is a flame retardant.
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 MICHAEL A HARRISON whose telephone number is (571)272-3573. The examiner can normally be reached Monday-Friday 9:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHANIE BLOSS can be reached at (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A HARRISON/Examiner, Art Unit 2852
/STEPHANIE E BLOSS/Supervisory Primary Examiner, Art Unit 2852