CTNF 18/355,851 CTNF 90688 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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. Specification 06-14 AIA ABSTRACT – Applicant is reminded of the proper content of an abstract of the disclosure. A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives. Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts. The abstract of the disclosure is objected to because it does not indicate the art to which the invention pertains nor mentions by way of example any preferred modifications or alternatives. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). TITLE - The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. “JUMBO CASE” - The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Claim Objections 07-36 AIA 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. 06-18 AIA A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(n). 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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. 07-30-06 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: a rotating body, a heat dissipator introduced in claim 1; a heating rotating body, a pressing rotating body introduced in claims 8-14; a rotating body in claims 15-18; an image forming section introduced in claim 19; a medium adjusting device introduced in claim 20. 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(a) 07-30-01 AIA 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. Claims 1-7 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a rotating-body cooling structure for a fixing device or a medium adjustment device in an image forming apparatus, does not reasonably provide enablement for a rotating-body cooling structure that is, for example: a cooling structure for a turbogenerator, high-speed aerospace equipment, a superconducting rotating machine, a high-speed spindle, a satellite, the Moon; a rocket; a tire; one of an entangled pair of atoms in a quantum computer; a hard disk platter; or a magnetic bearing (hereinafter “the unenabled”). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims. The level of ordinary skill of one having ordinary skill in the art of electrophotography, to which the Specification pertains, at the time of effective filing is that of one having a Bachelor’s degree in engineering. However, the level of ordinary skill of one having ordinary skill in the art of the unenabled, to which the enormously broad claims pertain, at the time of effective filing is as advanced as that of one having an advanced Doctoral degree. Nonetheless, due to the broad claimed applicability, the state of the prior art is largely undeveloped for vast swaths of the claims’ scope. The predictability thus cannot be said to have any degree of certainty. Applicant has provided no guidance to those having ordinary skill in the art of the unenabled at the time of effective filing for making or using the claimed invention. There are no working examples in the art of the unenabled. Applicant has left the entire onus of experimentation on those who wish to make or use the claimed invention in the art of the unenabled. Applicant did not possess of the full scope of the claimed invention at the time of effective filing. 07-31-01 Claims 8-20 are 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. Claim 8 recites inter alia “a fixing device comprising (…) a pressing rotating body (…) wherein a structure that cools the pressing rotating body includes the rotating-body cooling structure according to claim 1”. Since claim 1 recites “a rotating body”, a configuration in which the newly recited pressing rotating body and the previously recited rotating body are two distinct elements, as the claim construction permits, is not described in the specification. The same issue prompts the rejection of claims 9-14 and 19. Claim 15 recites inter alia “a medium adjustment device comprising (…) a rotating body (…) wherein a structure that cools the rotating body includes the rotating-body cooling structure according to claim 1”. Since claim 1 also recites “a rotating body”, a configuration in which the newly recited rotating body and the previously recited rotating body are two distinct elements, as the claim construction permits, is not described in the specification. The same issue prompts the rejection of claims 16-18 and 20. Claim Rejections - 35 USC § 112(b) 07-30-02 AIA 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. 07-34-01 Claims 8-20 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 8 recites inter alia “a fixing device comprising (…) a pressing rotating body (…) wherein a structure that cools the pressing rotating body includes the rotating-body cooling structure according to claim 1”. Since claim 1 recites “a rotating body”, it is unclear if these rotating bodies are distinct or a same element. The same issue prompts the rejection of claims 9-14 and 19. For the purpose of examination over prior art, this limitation is interpreted as referring to a same rotating body. Claim 15 recites inter alia “a medium adjustment device comprising (…) a rotating body (…) wherein a structure that cools the rotating body includes the rotating-body cooling structure according to claim 1”. Since claim 1 also recites “a rotating body”, there is insufficient antecedent basis for this limitation in the claim. The same issue prompts the rejection of claims 16-18 and 20. For the purpose of examination over prior art, this limitation is interpreted as referring to a same rotating body. 07-34-05 AIA Claim 19 recites the limitation “ the fixing device ” in the first-to-last line . There is insufficient antecedent basis for this limitation in the claim. 07-34-05 AIA Claim 20 recites the limitation “ the medium adjustment device ” in the first-to-last line . There is insufficient antecedent basis for this limitation in the claim. Claim 20 recites inter alia, “a medium adjustment device that allows a recording medium increased in temperature to pass through a rotating body”. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp. , 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “through” in claim 20 is used by the claim to mean “by, near”, while the accepted meaning is “across”. The term is indefinite because the specification does not clearly redefine the term. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-14 and 19 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by JP 2008-152045 to Kakishima et al . Kakishima teaches: (claim 1) A rotating-body cooling structure (Fig.2) comprising: a rotating body (62) that increases in temperature as a result of receiving heat from an outside; and a heat dissipator (81Pa, Fig.5) that is in contact with an outer peripheral surface of the rotating body with a sliding member (81B) interposed therebetween. (claim 2) The rotating-body cooling structure according to claim 1, wherein the heat dissipator has a circular-arc-shaped curved portion (81Pd) and allows the curved portion to be in contact with the outer peripheral surface of the rotating body [0037]. (claim 3) The rotating-body cooling structure according to claim 2, wherein the curved portion has a curvature radius that is equal to a radius of the rotating body or that is slightly larger than the radius (Fig.2, [0035]). (claim 4) The rotating-body cooling structure according to claim 1, wherein the heat dissipator has a tabular base and a plurality of radiator plates (81F) arranged at one face of the base, and wherein the plurality of radiator plates are each provided to extend in a direction intersecting an axial direction of the rotating body (at least due to being three-dimensional, Fig.5). (claim 5) The rotating-body cooling structure according to claim 1, further comprising: an air blower (84) that blows air, wherein the air blower blows the air onto the heat dissipator (Fig.5). (claim 6) The rotating-body cooling structure according to claim 5, wherein the heat dissipator has a tabular base and a plurality of radiator plates (81F) arranged at one face of the base, and wherein the plurality of radiator plates are each provided to extend in a direction intersecting an axial direction of the rotating body (at least due to being three-dimensional, Fig.5). (claim 7) The rotating-body cooling structure according to claim 5, wherein the air blower (84) blows the air onto an area of the outer peripheral surface of the rotating body, the area being adjacent to the heat dissipator (Fig.5). (claims 8-14) A fixing device (60, Fig.2) comprising: a heating rotating body (61) that has a heater (616a); and a pressing rotating body (62) that is in contact with the heating rotating body while applying pressure thereto and that forms a fixing section (N) through which a recording medium (P) retaining an unfixed image passes, wherein a structure that cools the pressing rotating body includes the rotating-body cooling structure according to any of claims 1-7. (claim 19) An image forming apparatus (1, Fig.1) comprising: an image forming section that forms an unfixed image and transfers the unfixed image onto a recording medium (P); and a fixing device (60) that fixes the unfixed image transferred at the image forming section onto the recording medium, wherein the fixing device includes the fixing device according to claim 8 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-152045 to Kakishima et al. in view of US 2012/0328323 to Murooka . Regarding claims 15-18, Examiner assumes arguendo that Kakishima does not disclose a medium adjusting device (e,g., decurler, glosser). Murooka discloses rotating-body cooling structure (51+40) used in an image heating device for an image forming apparatus and further discloses the invention is applicable to a fixing unit or a gloss imparting unit [0098]. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the include the rotating-body cooling structure according to claims 1-4 above, in a medium adjustment device comprising: a rotating body that allows a recording medium increased in temperature to pass while being in contact therewith so as to adjust the recording medium, as a structure that cools the rotating body, as a as art recognized application of the disclosed invention. Regarding claim 20, the resulting configuration also renders obvious an image forming apparatus comprising: a medium adjustment device that allows a recording medium increased in temperature to pass through a rotating body while being in contact therewith so as to adjust the recording medium, wherein the medium adjustment device includes the medium adjustment device according to claim 15. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARLENE HEREDIA whose telephone number is (571)272-8393. The examiner can normally be reached M-F: 9:30-5:30. 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, 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Arlene Heredia Ocasio/Primary Examiner, Art Unit 2852 Application/Control Number: 18/355,851 Page 2 Art Unit: 2852 Application/Control Number: 18/355,851 Page 3 Art Unit: 2852 Application/Control Number: 18/355,851 Page 4 Art Unit: 2852 Application/Control Number: 18/355,851 Page 5 Art Unit: 2852 Application/Control Number: 18/355,851 Page 6 Art Unit: 2852 Application/Control Number: 18/355,851 Page 7 Art Unit: 2852 Application/Control Number: 18/355,851 Page 8 Art Unit: 2852 Application/Control Number: 18/355,851 Page 9 Art Unit: 2852 Application/Control Number: 18/355,851 Page 10 Art Unit: 2852 Application/Control Number: 18/355,851 Page 11 Art Unit: 2852 Application/Control Number: 18/355,851 Page 12 Art Unit: 2852 Application/Control Number: 18/355,851 Page 13 Art Unit: 2852 Application/Control Number: 18/355,851 Page 14 Art Unit: 2852
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