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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/02/2026 has been entered.
Drawings
The drawings are objected to because the direction of arrow C in Fig.2 appears to contradict paragraph [0045] of the disclosure: “The endless belt 72 is provided between the heating roll 66 and the pressurizing unit 76 and follows the rotation of the heating roll 66 to travel in an arrow C direction”. The direction shown in the figure appears to contradict the direction of rotation A of the heating roller 66 and the transport direction B of the recording medium. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 1 includes the limitation “a press”. The originally filed specification mentions a pressing member 140, a first pressurizing portion 112, a pressurizing unit 76, a second pressurizing portion 130, but not a press. Therefore, proper antecedent basis for the term has not been established.
Claim Objections
Claim 1 is objected to because of the following informalities: In the passage, “a second body that is attached to the notch portion, that is provided in the notch portion”, it appears the appropriate form would be provided on the notch portion. The passage also appears redundant since attached to does not seem to be further limited by also stating provided on. Appropriate correction is required.
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.
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 1-8, 10-18, are 20-22 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 1 recites inter alia, “wherein no pressing member is positioned outward from the second body in the radial direction”. The term “pressing member” is generic. Applicant’s invention discloses pressurizing unit 76 (i.e. a pressing member) presses second pressurizing portion 130 (the second body) to the heating roll 66 [0037-0038]. Thus, in the absence of specific structure, the claimed feature quoted above constitutes new matter.
Claims 1-8, 10-18, are 20-22 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 1 recites inter alia,
the thickness of the second body extending in a radial direction from the axis of the heating roll, from a bottommost surface of the second body and to a topmost surface of the second body, in a direction intersecting the curved surface,
wherein the direction intersecting the curved surface extends in a radial direction from the axis of the heating roll and is orthogonal to the axial direction of the heating roll,
wherein no pressing member is positioned outward from the second body in the radial direction
A. The thickness extending in “a radial direction from the axis of the heating roll” (understood as radially outwards from the axis) in combination with “from a bottommost surface of the second body and to a topmost surface” (“top” and “bottom” are conventionally interpreted vertically), appears to designate opposite directions, making the claim unclear.
B. The second instance of the limitation "a radial direction from the axis of the heating roll " in the passage above lacks sufficient antecedent basis.
Claims 1-8, 10-18, are 20-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: structure and/or functional language to construe the term “pressing member”.
The issues exposed above are so severe that they preclude a reasonable search over prior art as one skilled in the art cannot determine the metes and bounds of the claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 10-18, and 20-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claim(s) 1-8, 10-18, and 20-22 are not currently subject to a prior art rejection, but allowable subject matter cannot be determined due to the impact that possible amendments relating to rejections under 35 U.S.C. 112 may have on the claim meaning and scope.
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.
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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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/Arlene Heredia Ocasio/Primary Examiner, Art Unit 2852
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