Prosecution Insights
Last updated: April 19, 2026
Application No. 18/451,549

POLYMER FILM, LAMINATED FILM, TUBULAR FIXING MEMBER, FIXING DEVICE, AND IMAGE FORMING APPARATUS

Non-Final OA §102§103
Filed
Aug 17, 2023
Examiner
KAUCHER, MARK S
Art Unit
1764
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Fujifilm Business Innovation Corp.
OA Round
1 (Non-Final)
72%
Grant Probability
Favorable
1-2
OA Rounds
2y 10m
To Grant
86%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
702 granted / 976 resolved
+6.9% vs TC avg
Moderate +14% lift
Without
With
+14.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
38 currently pending
Career history
1014
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
41.0%
+1.0% vs TC avg
§102
25.5%
-14.5% vs TC avg
§112
19.8%
-20.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 976 resolved cases

Office Action

§102 §103
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 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) 1, 9 and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 2007/0218227 (herein Nishizawa) . As to claim 1, Nishizawa discloses layer/film that comprises polypropylene (a polymer selected from a resin, also see paragraph 26) Dispersed therein with calcium carbonate (filler, see paragraph 57) with an average particle diameter of 5 µm, thus having an average maximum length of the filler of less than 10 µm as claimed. The density of the film is 1.02 g/cm 3 . Specifically, see production example 4 in paragraphs 169-170. As to claim s 9-10 the calcium carbonate is 46% by weight, so would be within the claimed range of 10% to 70% by volume given that the densities are similar. As to claims 9 the calcium carbonate is 46% by weight, so would be within the claimed range of 10% to 70% by volume given that the densities are similar. As to claims 13, laminate films comprising the film are taught. See paragraph 62 and examples. Claim(s) 1 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 2008/0305256 (herein Kimble). As to claim 1, Kimble discloses layer/film that comprises PVDP (polymer resin ) Dispersed therein with graphite powder (filler, see paragraph 57) with an average particle diameter of less than 8 µm, thus having an average maximum length of the filler of less than 10 µm as claimed. The density of the film is about 2 g/cm 3 (g/cc). See specifically the example in paragraph 62. Claim(s) 1 , 3, 5, 9, 11 and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 2021/0166844 (herein Ishikawa) as evidenced by US 2018/0113086 (herein Oliver) and US 2007/0213446 (herein Feeney). As to claim s 1 , 3, 9 , Ishikawa discloses layer/film that comprises polyimide resin (polymer resin , see table 1 and example 1 ) Dispersed therein with alpha alumina (filler) with an average particle diameter of less than 0.7 µm, thus having an average maximum length of the filler of less than 10 µm as claimed. See paragraph 103 and table 1. The density of alpha alumina is 3.89 g/cm 3 and the density of the polyimide is 1.4 g/cm 3 . See table 1. The volume% of the alpha alumina is 8 vol%, thus 92 vol% polyimide (example 1). Moreover, alpha alumina is reported as 10 vol% (example 2), 20 vol% (example 3), etc. See table 1. Using the “Rule of mixtures”, the density can be deduced for the upper and lower limits using the Voigt Model (upper limit; D T = V 1 D 1 + V 2 D 2 ) and the Reuss Model (lower limit, 1 D T = V 1 D 1 + V 2 D 2 ). See paragraph 31 of Oliver and paragraph 111 of Feeney for evidence. Therefore, the density is between 1.48-1.60 g/cm 3 for example 1, 1.50-1.65 g/cm 3 for example 2, 1.61-1.90 g/cm 3 for example 3, etc., which is within the claimed range. As to claim 5, the filler are ceramic particles such as boron nitride and aluminum nitride. See paragraph 74. As to claim 11, the thermal conductivity in example 4 is 1.4 W/mK and the density is deduced to be about 1.80 g/cm 3 . See table 1. As to claim 13, laminates are taught. See paragraph 69-70 and 29. Claim(s) 1, 3, 4, 7, 9, 11 and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 2010/0055365 (herein Nakajima ) as evidenced by US 2018/0113086 (herein Oliver) , US 2007/0213446 (herein Feeney) and US 20 13 /00 8 2369 (herein Kokubo). As to claim s 1 , 3, 4, 7, and 9 , Nakajima discloses a film comprising polyimide, boron nitride and carbon nanotube. See abstract, table 1 and examples. The polyimide has a specific gravity (density) of 1.446 g/cm 3 , the boron nitride (MBN-010T) has a specific gravity (density) of 2.27 g /cm 3 and the carbon nanotube (VGCF) has a specific gravity of 2.0 g /cm 3 . See paragraph 116. The volume% of the boron nitride is 10 vol%, carbon nanotube is 5 vol% and the remainder is polyimide (example 1 table 1 ). Using the “Rule of mixtures”, the density can be deduced for the upper and lower limits using the Voigt Model (upper limit; D T = V 1 D 1 + V 2 D 2 ) and the Reuss Model (lower limit, 1 D T = V 1 D 1 + V 2 D 2 ). See paragraph 31 of Oliver and paragraph 111 of Feeney for evidence. Therefore, the density is between 1.52-1.55 g/cm 3 for example 1. The average particle length of the carbon nanotube is 8 µm. Boron Nitride ( MBN-010T ) has an average particle size of 1 µm. See table 9 of Kokubo for evidence. Since the average lengths of the fillers are less than 10 µm, the average maximum length of the fillers in a cross section of the polymer film must also be 10 µm or less. As to claim 13, a film comprising several layers (films) is taught, thus reading on a laminate. See examples and paragraph 101-108. 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) 1-3 and 5-10 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2022-150510 (herein Kawahara). In setting forth the instant rejection, a machine translation has been relied upon. As to claim s 1 - 3 and 5-8 , Kawahara discloses a film comprising a conductive carbon material (A, reading on fillers dispersed therein, see paragraph 4 and 99) and a binder resin (B, reading on polymer resin). See paragraph 10. The carbon material comprises graphite, carbon nanotubes, carbon fibers, carbon black, etc. See paragraph 41. The filler may also comprise boron nitride. See paragraph 58. The density of the polymer film is 1.2 to 2.0 g/cc (g/cm 3 ). See paragraph 12. The polymer may be rubber, polymer resin, and mixtures thereof. See paragraph 80 and 85. The average particle diameter of graphite is 2 to 500 µm. See paragraph 22. The average particle diameter of carbon black is 0.005 to 1 µm. See paragraph 27. Also see examples. Therefore, it is clear that the average maximum length of the fillers overlaps the claimed of 10 µm or less. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore , it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. As to claims 9-10, the mass ratio of resin/polymer to filler is taught as 40:60 to 10:90 (see paragraph 60) and exemplified within the claimed range. See paragraph 60. While this is mass% and vol%, given that 40/60 is about 50%, the volume % would also obviously be within the claimed range given the densities. As to claims 13-14, the film may be laminated. See paragraph 94. Claim(s) 15 , 17 and 19 /are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0055365 (herein Nakajima) in view of US 2022/0404751 (herein Asaka) as evidenced by US 2018/0113086 (herein Oliver), US 2007/0213446 (herein Feeney) and US 2013/0082369 (herein Kokubo). The discussion with respect to Nakajima set-forth above is incorporated herein by reference. As to claim 15, a fixing belt tube (tubular fixing member, see paragraph 13-20, examples and abstract) comprising a substrate layer (polyimide composition as disclosed above ) and a release layer ( fluorocarbon resin layer , see paragraph 101-108) as taught. See abstract and examples. Nakajima is silent on an elastic layer. Asaka discloses similar films for fixing members. See abstract and examples. Asaka discloses that an elastic layer is used between the substrate and release layer, in that order to suppress hardness (paragraph 46) for imparting elasticity to the fixing member and applying a uniform pressure on the toner image (paragraph 47). It would have been obvious at the time of the invention to have utilized the intermediate elastic rubber layer of Asaka in the films and fixing member of Nakajima because one would want to impart elasticity and apply a uniform pressure on the toner image (see paragraph 47 of Asaka). As to claim 17, a fixing device having a first rotating body and a second rotating body (see paragraph 4, figure 1, paragraph 31 and examples. The first tubular rotating body is the fixing member comprising the polymer film. A recording sheet (medium) having a surface of which a toner image is formed passes through a contact portion between the two rotating bodies to fix the toner image. See paragraph 103, 31, figures and examples. Also see figures 2-3, paragraphs 59-64 and examples of Asaka which discloses the same device and one would have been motivated to include it with the polymer films of Nakajima because they are both taught for the use of similar polymer films. As to claim 19, an image forming apparatus is disclosed comprising an image holding body (paragraph 10 and examples). A charging device that charges a surface of the image holding body (see paragraph 2-10), an electrostatic latent image forming device that forms an electrostatic latent image on the charged surface, a developing device that develops the electrostatic latent image, a transfer device that transfers the toner image to a surface of a recording medium and the fixing device discussed above. See paragraphs 2-10 and examples, describing an image forming apparatus (e.g. laser beam printer, copy machine etc.) that has the parts by design. Also see figures 2-3, paragraphs 59-64 and examples of Asaka which discloses the same apparatus and one would have been motivated to include it with the polymer films of Nakajima because they are both taught for the use of similar polymer films. Claim(s) 2, 4 , 6, 8, 10, 12, 14, 16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0404751 (herein Asaka) in view and US 3,952,696 (herein Saupe) as evidenced by US 2018/0113086 (herein Oliver), US 2007/0213446 (herein Feeney) , and US 2010/0055365 (herein Nakajima) . As to claim s 2 , 6 , and 10, Asaka discloses a film ( elastic layer ) compris ing silicone rubber (polymer) and the filler such as boron nitride. See paragraphs 49-53 . Boron nitride has an average particle diameter of 1 µm or more (see paragraph 53 of Asaka) . Specifically t he boron nitride is taught as MBN-010T . See paragraph 100 and table 1, which has a particle size of 0.9 µm. See abstract, figures and examples. Specifically, Thus, would have an average maximum length lower than 10 µm within the claimed range. Saupe discloses similar films for fixing members. See abstract, figures and examples. Saupe discloses that silicone rubber for the elastic layers of fixing members may have a density of 1.2 g/cm 3 . See col. 4, lines 17-30 of Saupe. B oron nitride ( MBN-010T ) has a specific gravity (density) of 2.27 g/cm 3 . See paragraph 115 of Nakajima for evidence. It would have been obvious at the time of the invention to have modified the film of Asaka with the silicone rubber of Saupe with the density of 1.2 g/cm 3 because one would want to utilize silicone rubbers explicitly taught and exemplified to be utilized with the same films for fixing members. The volume% of the boron nitride is exemplified as 15 vol%, and generally taught in that amount. See examples and abstract (while for the polyimide layer, would be applicable to apply the same amount absent any other teaching). Using the “Rule of mixtures”, the density can be deduced for the upper and lower limits using the Voigt Model (upper limit; D T = V 1 D 1 + V 2 D 2 ) and the Reuss Model (lower limit, 1 D T = V 1 D 1 + V 2 D 2 ). See paragraph 31 of Oliver and paragraph 111 of Feeney for evidence. Therefore, the density is between 1. 29-1.36 g/cm 3 and within the claimed range. As to claim 4, the storage elastic modulus is not taught. However, the film utilizes the same polymer (silicone rubber) and filler (boron nitride) utilized in the instant examples and thus must have the same properties. Therefore, the property is inherent to the compositions taught in Asaka. As to claim 8, carbon fibers are taught as fillers as well. See paragraph 70. As to claim 12, the thermal conductivity of the film is not taught for the elastic layer. However, the film utilizes the same polymer (silicone rubber) and filler (boron nitride) utilized in the instant examples and thus must have the same properties. Therefore, the property is inherent to the compositions taught in Asaka. As to claims 14 and 16, tubular (roller) fixing members comprising a substrate layer, elastic layer and release (fluororesin) layer are taught wherein the elastic layer comprises the film. See figures 2-3, paragraphs 59-64 and examples. As to claim 18, a first rotating and second rotating body are taught which are in contact that comprise the elastic layer disclosed above. A recording medium (material) having a surface on which a toner image is formed passes between contact between these two to fix the toner image. See figures 2-3, paragraphs 59-6 4 and examples. As to claim 20, an image forming apparatus comprising an image holding body, a charging device, an electrostatic latent image forming device, a developing device a transfer device and a fixing device as claimed is taught. See figures 2-3, paragraphs 59-64 and examples. Allowable Subject Matter Claims 4, 11-12 and 15-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MARK S KAUCHER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7340 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8-6 PM EST . 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, FILLIN "SPE Name?" \* MERGEFORMAT Arrie Lanee Reuther can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 270-7026 . 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. /MARK S KAUCHER/ Primary Examiner, Art Unit 1764
Read full office action

Prosecution Timeline

Aug 17, 2023
Application Filed
Mar 10, 2026
Non-Final Rejection — §102, §103
Apr 15, 2026
Applicant Interview (Telephonic)
Apr 15, 2026
Examiner Interview Summary

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Prosecution Projections

1-2
Expected OA Rounds
72%
Grant Probability
86%
With Interview (+14.2%)
2y 10m
Median Time to Grant
Low
PTA Risk
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