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 § 112
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.
Claims 1, 5, 9, 10, and 12-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1, from which the remaining claims depend, recites the limitation “wherein the protective layer … has a Vickers hardness of 150 or more e in a case where a test load in a Vickers hardness test is 0.98 newton”
There is insufficient antecedent basis for this limitation in the claim. It is unclear what the “more e” is referring to, as no prior “e” has been mentioned in the claim or the specification. As such, there is no reasonable certainty as to the metes and bounds of the claims.
For the purpose of examination, Examiner shall construe the term “more e” as though the “e” were a typographical error.
Claims 1, 5, 9, 10, and 12-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1, from which the remaining claims depend, recites the limitation “wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion”.
The term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, there is no reasonable certainty as to the metes and bounds of the term “substantially identical”.
For the purpose of examination, Examiner shall construe the term “substantially identical” as best as one is able to do so.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Applicants have newly added to claim 1 “wherein the protective layer is formed on the entire surface of the main-body, has a thickness of 10 µm or more”. Suzuki, previously cited, plainly teaches a range of thickness of between 5 and 15 µm, and provides reasons for such limits, ¶ 36.
Applicants have also newly added “the entire surface [of the main-body portion] including a heat receiving surface that faces the heating element and receives radiant heat from the heating element, and a rubbed surface that is rubbed against the inner circumferential surface of the first rotary member, and
wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion”.
To the extent that both the heat receiving surface and the rubbed surface are different surfaces of the same main-body portion, they will inherently have identical coefficients of thermal expansion, because the materials of both surfaces are the same. However, Examiner shall also assume that such is not the case, and will provide reasons for providing identical coefficients of thermal expansion of mated surfaces in a heat fixing device.
The remaining limitations added to claim 1 have been incorporated from rejected former dependent claims. To the extent that Applicant has not specifically and particularly pointed out any alleged errors in such former rejections, Applicant has admitted that such former rejections are proper. The reasons why such constitute an admission are detailed in the “Response to Arguments” in the Office Action, dated 7/8/25, which section is incorporated herein.
Claims 1, 5, 10, 12, 13, 14 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,422,489, in view of Suzuki, U.S.P.G. Pub. No. 201/0163886, and admitted prior art.
The claims of the present application differ from that of the respective claims of U.S. Pat. No. 11,422,489, in that the present claims omit several elements, and add the coloring agent is black, a reflective plate disposed so as to cover the heating element and configured to reflect radiant heat, from the heating element, toward the nip member (which is also in patented claim 7) and
a supporting member disposed along an outer surface of the reflective plate and configured to support the nip member;
and as presently amended from former dependent claim 8 includes:
wherein the organic dye is a chromium complex salt dye;
and, added from former rejected dependent claim 3:
wherein the anodic oxidation treatment is a treatment of electrolyzing the main-body portion serving as an anode in a diluted acid solution, then of forming an aluminum-oxide film as the oxide film on the surface of main-body portion with oxygen produced from the diluted acid solution.
Applicants newly add to claim 1:
a protective layer formed on an entire surface of the main-body portion,
the entire surface including a heat receiving surface that faces the heating element and receives radiant heat from the heating element, and a rubbed surface that is rubbed against the inner circumferential surface of the first rotary member, and
wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion; and,
wherein the protective layer is formed on the entire surface of the main-body, has a thickness of 10 pm or more.
Applicants incorporate into claim 1 from rejected former independent claims:
wherein the protective layer … has a Vickers hardness of 150 or more e in a case where a test load in a Vickers hardness test is 0.98 newton, and has an emissivity of 0.85 or more and 1.0 or less.
Patented claim 4 teaches wherein the organic dye is a chromium complex salt dye.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to omit undesired elements without retaining the functions of those elements. MPEP 2144.04 (II)(A). Here, there is no indication that the functions of the omitted elements are retained.
A “product by process” claim is directed to the product per se, no matter how the product is actually made. See In re Thorpe et al., 227 USPG 964, 777 F. 2d 695 (CAFC, 1985) and the related case law cited therein, which makes clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe,
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459, F.2d, 531, 535, 173 USPG 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPG 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPG 57, 61 (2d. Cir. 1935).
Note that Applicant has burden of proof in such cases.
The processes of “by performing and anodic oxidation treatment” and “by performing coloring treatment” of the present claims do not impart any patentable distinction in the claimed structures, and are merely intermediate steps that do not affect the structure of the final device.
Suzuki teaches a reflective plate disposed (140) so as to cover the heating element and configured to reflect radiant heat, from the heating element, toward the nip member and a supporting member (160) disposed along an outer surface of the reflective plate and configured to support the nip member. Suzuki teaches the reflective plate to efficiently concentrate heat onto the nip plate (¶ 39). Suzuki teaches the supporting member to maintain rigidity of the nip plate (¶ 45).
It would have been obvious to one having ordinary skill at the time of effective filing to one having ordinary skill in the art at the time of effective filing to provide the claimed reflective plate and supporting member. One having ordinary skill in the art at the time of effective filing would have done so to efficiently concentrate heat onto the nip plate while maintaining rigidity of the nip plate.
Examiner had taken official notice that increasing emissivity of surfaces that intercept light from radiant heaters through blackening and/or roughening is well known in the art of electrophotography in the Office Action dated 5/31/24 at pp 8-9. See, e.g., Yamamoto et al., U.S.P.G. Pub. No. 2016/0349675, ¶ 66; Ishii et al., JP 2016-009008; Tokuda, U.S.P.G. Pub. No. 2013/0330111, ¶ 63; Yamaguchi et al., U.S.P.G. Pub. No. 2012/0155936, ¶ 87; Yamaguchi et al., U.S.P.G. Pub. No. 2012/0148303, ¶ 91; Tokuda et al., U.S.P.G. Pub. No. 2012/0121304, ¶ 53; and, Yoshikawa et al., U.S.P.G. Pub. No. 2012/0121305, ¶ 85. Such is done in order to increase the efficiency of radiant heaters by permitting the surfaces to absorb the radiant energy rather than reflecting it away. Applicants have failed to specifically point out the supposed errors in the Examiner’s action, including stating why the noticed fact is not considered to be common knowledge or well-known in the art. As such, Applicants have admitted the above noticed facts. MPEP 2144.03 (C).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to provide the protective layer containing a coloring agent in micropores of the oxide film by performing a coloring treatment. Such would have been a mere application of a well known technigue from the same field of endeavor to improve similar devices in the same way. MPEP 2143 (I)(C). The results would have been entirely predictable to one having ordinary skill in the art at the time of effective filing because the intended purpose and manner of improvement is the same. Here, the base device of the patented claim and Suzuki is merely blackened as taught by the well known prior art technigue.
Regarding the elements incorporated into claim 1 from rejected claim 3:
Suzuki teaches alumite (¶ 63), noting that wherein the anodic oxidation treatment is a treatment of electrolyzing the main-body portion serving as an anode in a diluted acid solution, then of forming an aluminum-oxide film as the oxide film on the surface of main- body portion with oxygen produced from the diluted acid solution is a product by process limitation does not impart any patentable distinction. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Regarding the elements incorporated into claim 1 from rejected claim 2, namely “wherein the protective layer has an emissivity of 0.85 or more and 1.0 or less”:
Examiner had taken official notice that an emissivity around 0.9 is commonly used in fixing apparatus of image forming apparatus in the Office Action dated 5/31/24 at p 10. See, e.g., Kubota, U.S.P.G. Pub. No. 2015/0063413; Ito et al., U.S.P.G. Pub. No. 2011/0299898; Isogai et al., U.S. Pat. No. 5,724,638; and, Maeda, U.S.P.G. Pub. No. 2021/0223729. Applicants have failed to specifically point out the supposed errors in the Examiner’s action, including stating why the noticed fact is not considered to be common knowledge or well-known in the art. As such, Applicants have admitted the above noticed facts. MPEP 2144.03 (C).
It is much more likely than not that one having ordinary skill in the art at the time of effective filing would have chosen a protective layer that contains the coloring agent having an emissivity of 0.85 or more and 1.0 or less. Such a choice would have been suggested by the commonly used emissivity of parts of a fixing apparatus.
Regarding the elements incorporated into claim 1 from rejected claim 4, namely “wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton”:
Suzuki teaches wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton (¶ 34). Suzuki teaches providing an adequate hardness so as to prolong the life of the members (¶ 5, 6, 53).
It would have been obvious to one having ordinary skill at the time of effective filing to provide wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton. One having ordinary skill in the art at the time of effective filing would have done so to prolong the life of the members.
Suzuki further teaches all the newly added limitations, namely “a protective layer formed on an entire surface of the main-body portion (¶ 31, 53, doing so to restrain wear of the nip plate),
the entire surface including a heat receiving surface that faces the heating element and receives radiant heat from the heating element, and a rubbed surface that is rubbed against the inner circumferential surface of the first rotary member, wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion (showing both surfaces in the respective drawings, noting that they are made of the same material and thus have substantially identical coefficients of thermal expansion, and noting that such surfaces are necessarily present to both receive the heat from the heater, and heat the nip as intended); and,
wherein the protective layer is formed on the entire surface of the main-body, has a thickness of 10 µm or more (¶ 36, teaching a range of 5-15 µm, so as to balance durability with maintaining productivity and stability or uniformly of the protection layer).”
It would have been obvious to one having ordinary skill at the time of effective filing to provide the newly added limitations. One having ordinary skill in the art at the time of effective filing would have done so to restrain wear of the nip, and balance durability with maintaining productivity and stability or uniformly of the protection layer, while also utilizing the known property that solid body materials have the same coefficients of thermal expansion at all of their surfaces.
Regarding claim 5, the admitted prior art teaches blackening, noting that wherein the coloring treatment is a treatment of soaking the main-body portion, on which the protective layer has formed, in an aqueous solution that contains chromium complex salt dye while stirring the aqueous solution, then pulling up the main-body portion from the aqueous solution and washing the main-body portion with water is a product by process limitation that does not impart any patentable distinction. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Regarding claim 10, Suzuki further teaches wherein the heating element is a halogen lamp (120).
Regarding claim 12, Suzuki further teaches wherein the first rotary member is a fixing belt (¶ 27).
Regarding claim 13, Suzuki further teaches image forming apparatus comprising:
a toner image forming unit (fig 1) configured to form a toner image on a sheet; and
the fixing apparatus according to claim 1 (supra, as combined) and configured to fix the toner image formed by the toner image forming unit, to the sheet.
Regarding claim 14, Suzuki further teaches wherein the reflective plate, the supporting member, and the nip member form a barrier between the heating element and the first rotary member, thereby preventing the heating element from directly heating the first rotary member (fig 2), and wherein the main-body portion of the nip member transmits the radiant heat received from the heating element to the first rotary member, thereby heating the first rotary member (fig 2, through contact).
Regarding claim 15, Suzuki further teaches wherein the nip member does not rotate with the endless rotary member (¶ 45, the stay holds the nip member and maintains its rigidity, while the nip member is in sliding contact with the endless rotary member, ¶ 30), and
wherein the protective layer suppresses wearing of the main-body portion due to the rubbing of the non-rotating nip member against the inner circumferential surface of the first rotary member (¶ 53).
Claims 1, 2, 4, 5, 9, 10, 12, 13, 14, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,609,516, in view of Suzuki, U.S.P.G. Pub. No. 201/0163886, and admitted prior art.
The claims of the present application differ from that of the respective claims of U.S. Pat. No. 11,609,516, in that the present claims omit several elements, and add a reflective plate disposed so as to cover the heating element and configured to reflect radiant heat, from the heating element, toward the nip member (which is also in patented claim 8) and
a supporting member disposed along an outer surface of the reflective plate and configured to support the nip member;
and as presently amended from former dependent claim 8 includes:
wherein the organic dye is a chromium complex salt dye;
and, added from former rejected dependent claim 3:
wherein the anodic oxidation treatment is a treatment of electrolyzing the main-body portion serving as an anode in a diluted acid solution, then of forming an aluminum-oxide film as the oxide film on the surface of main-body portion with oxygen produced from the diluted acid solution.
Applicants newly add to claim 1:
a protective layer formed on an entire surface of the main-body portion,
the entire surface including a heat receiving surface that faces the heating element and receives radiant heat from the heating element, and a rubbed surface that is rubbed against the inner circumferential surface of the first rotary member, and
wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion; and,
wherein the protective layer is formed on the entire surface of the main-body, has a thickness of 10 pm or more.
Applicants incorporate into claim 1 from rejected former independent claims:
wherein the protective layer … has a Vickers hardness of 150 or more e in a case where a test load in a Vickers hardness test is 0.98 newton, and has an emissivity of 0.85 or more and 1.0 or less.
Patented claim 5 teaches wherein the organic dye is a chromium complex salt dye.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to omit undesired elements without retaining the functions of those elements. MPEP 2144.04 (II)(A). Here, there is no indication that the functions of the omitted elements are retained.
A “product by process” claim is directed to the product per se, no matter how the product is actually made. See In re Thorpe et al., 227 USPG 964, 777 F. 2d 695 (CAFC, 1985) and the related case law cited therein, which makes clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe,
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459, F.2d, 531, 535, 173 USPG 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPG 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPG 57, 61 (2d. Cir. 1935).
Note that Applicant has burden of proof in such cases.
The processes of “by performing and anodic oxidation treatment” and “by performing coloring treatment” of the present claims do not impart any patentable distinction in the claimed structures, and are merely intermediate steps that do not affect the structure of the final device.
Suzuki teaches a reflective plate disposed (140) so as to cover the heating element and configured to reflect radiant heat, from the heating element, toward the nip member and a supporting member (160) disposed along an outer surface of the reflective plate and configured to support the nip member. Suzuki teaches the reflective plate to efficiently concentrate heat onto the nip plate (¶ 39). Suzuki teaches the supporting member to maintain rigidity of the nip plate (¶ 45).
It would have been obvious to one having ordinary skill at the time of effective filing to one having ordinary skill in the art at the time of effective filing to provide the claimed reflective plate and supporting member. One having ordinary skill in the art at the time of effective filing would have done so to efficiently concentrate heat onto the nip plate while maintaining rigidity of the nip plate. Regarding the elements incorporated into claim 1 from rejected claim 3:
Suzuki teaches alumite (¶ 63), noting that wherein the anodic oxidation treatment is a treatment of electrolyzing the main-body portion serving as an anode in a diluted acid solution, then of forming an aluminum-oxide film as the oxide film on the surface of main- body portion with oxygen produced from the diluted acid solution is a product by process limitation does not impart any patentable distinction. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Regarding the elements incorporated into claim 1 from rejected claim 2, namely “wherein the protective layer has an emissivity of 0.85 or more and 1.0 or less”:
Examiner had taken official notice that an emissivity around 0.9 is commonly used in fixing apparatus of image forming apparatus in the Office Action dated 5/31/24 at p 10. See, e.g., Kubota, U.S.P.G. Pub. No. 2015/0063413; Ito et al., U.S.P.G. Pub. No. 2011/0299898; Isogai et al., U.S. Pat. No. 5,724,638; and, Maeda, U.S.P.G. Pub. No. 2021/0223729. Applicants have failed to specifically point out the supposed errors in the Examiner’s action, including stating why the noticed fact is not considered to be common knowledge or well-known in the art. As such, Applicants have admitted the above noticed facts. MPEP 2144.03 (C).
It is much more likely than not that one having ordinary skill in the art at the time of effective filing would have chosen a protective layer that contains the coloring agent having an emissivity of 0.85 or more and 1.0 or less. Such a choice would have been suggested by the commonly used emissivity of parts of a fixing apparatus.
Regarding the elements incorporated into claim 1 from rejected claim 4, namely “wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton”:
Suzuki teaches wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton (¶ 34). Suzuki teaches providing an adequate hardness so as to prolong the life of the members (¶ 5, 6, 53).
It would have been obvious to one having ordinary skill at the time of effective filing to provide wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton. One having ordinary skill in the art at the time of effective filing would have done so to prolong the life of the members.
Suzuki further teaches all the newly added limitations, namely “a protective layer formed on an entire surface of the main-body portion (¶ 31, 53, doing so to restrain wear of the nip plate),
the entire surface including a heat receiving surface that faces the heating element and receives radiant heat from the heating element, and a rubbed surface that is rubbed against the inner circumferential surface of the first rotary member, wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion (showing both surfaces in the respective drawings, noting that they are made of the same material and thus have substantially identical coefficients of thermal expansion, and noting that such surfaces are necessarily present to both receive the heat from the heater, and heat the nip as intended); and,
wherein the protective layer is formed on the entire surface of the main-body, has a thickness of 10 µm or more (¶ 36, teaching a range of 5-15 µm, so as to balance durability with maintaining productivity and stability or uniformly of the protection layer).”
It would have been obvious to one having ordinary skill at the time of effective filing to provide the newly added limitations. One having ordinary skill in the art at the time of effective filing would have done so to restrain wear of the nip, and balance durability with maintaining productivity and stability or uniformly of the protection layer, while also utilizing the known property that solid body materials have the same coefficients of thermal expansion at all of their surfaces.
Regarding claim 5, the admitted prior art teaches blackening, noting that wherein the coloring treatment is a treatment of soaking the main-body portion, on which the protective layer has formed, in an aqueous solution that contains chromium complex salt dye while stirring the aqueous solution, then pulling up the main-body portion from the aqueous solution and washing the main-body portion with water is a product by process limitation that does not impart any patentable distinction. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Regarding claim 9, patented claim 1, from which patented claim 5 depends, teaches wherein the main-body portion is made of an Al-Mn based aluminum alloy.
Regarding claim 10, Suzuki further teaches wherein the heating element is a halogen lamp (120).
Regarding claim 12, Suzuki further teaches wherein the first rotary member is a fixing belt (¶ 27).
Regarding claim 13, Suzuki further teaches image forming apparatus comprising:
a toner image forming unit (fig 1) configured to form a toner image on a sheet; and
the fixing apparatus according to claim 1 (supra, as combined) and configured to fix the toner image formed by the toner image forming unit, to the sheet.
Regarding claim 14, Suzuki further teaches wherein the reflective plate, the supporting member, and the nip member form a barrier between the heating element and the first rotary member, thereby preventing the heating element from directly heating the first rotary member (fig 2), and wherein the main-body portion of the nip member transmits the radiant heat received from the heating element to the first rotary member, thereby heating the first rotary member (fig 2, through contact).
Regarding claim 15, Suzuki further teaches wherein the nip member does not rotate with the endless rotary member (¶ 45, the stay holds the nip member and maintains its rigidity, while the nip member is in sliding contact with the endless rotary member, ¶ 30), and
wherein the protective layer suppresses wearing of the main-body portion due to the rubbing of the non-rotating nip member against the inner circumferential surface of the first rotary member (¶ 53).
Claims 1, 2, 4, 5, 10, 12, 13, 14, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3, of U.S. Patent No. 11,829,089, in view of Suzuki, U.S.P.G. Pub. No. 201/0163886, and admitted prior art.
The claims of the present application differ from that of the respective claims of U.S. Pat. No. 11,829,089, in that the present claims omit several elements, and add the coloring agent is black, a reflective plate disposed so as to cover the heating element and configured to reflect radiant heat, from the heating element, toward the nip member (which is also in patented claim 7) and
a supporting member disposed along an outer surface of the reflective plate and configured to support the nip member;
and as amended from former dependent claim 8 includes:
wherein the organic dye is a chromium complex salt dye;
and, added from former rejected dependent claim 3:
wherein the anodic oxidation treatment is a treatment of electrolyzing the main-body portion serving as an anode in a diluted acid solution, then of forming an aluminum-oxide film as the oxide film on the surface of main-body portion with oxygen produced from the diluted acid solution.
Patented claim 3 teaches wherein the organic dye is a chromium complex salt dye.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to omit undesired elements without retaining the functions of those elements. MPEP 2144.04 (II)(A). Here, there is no indication that the functions of the omitted elements are retained.
A “product by process” claim is directed to the product per se, no matter how the product is actually made. See In re Thorpe et al., 227 USPG 964, 777 F. 2d 695 (CAFC, 1985) and the related case law cited therein, which makes clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe,
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459, F.2d, 531, 535, 173 USPG 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPG 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPG 57, 61 (2d. Cir. 1935).
Note that Applicant has burden of proof in such cases.
The processes of “by performing and anodic oxidation treatment” and “by performing coloring treatment” of the present claims do not impart any patentable distinction in the claimed structures, and are merely intermediate steps that do not affect the structure of the final device. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Suzuki teaches a reflective plate disposed (140) so as to cover the heating element and configured to reflect radiant heat, from the heating element, toward the nip member and a supporting member (160) disposed along an outer surface of the reflective plate and configured to support the nip member. Suzuki teaches the reflective plate to efficiently concentrate heat onto the nip plate (¶ 39). Suzuki teaches the supporting member to maintain rigidity of the nip plate (¶ 45).
It would have been obvious to one having ordinary skill at the time of effective filing to one having ordinary skill in the art at the time of effective filing to provide the claimed reflective plate and supporting member. One having ordinary skill in the art at the time of effective filing would have done so to efficiently concentrate heat onto the nip plate while maintaining rigidity of the nip plate.
Examiner had taken official notice that increasing emissivity of surfaces that intercept light from radiant heaters through blackening and/or roughening is well known in the art of electrophotography in the Office Action dated 5/31/24 at pp 8-9. See, e.g., Yamamoto et al., U.S.P.G. Pub. No. 2016/0349675, ¶ 66; Ishii et al., JP 2016-009008; Tokuda, U.S.P.G. Pub. No. 2013/0330111, ¶ 63; Yamaguchi et al., U.S.P.G. Pub. No. 2012/0155936, ¶ 87; Yamaguchi et al., U.S.P.G. Pub. No. 2012/0148303, ¶ 91; Tokuda et al., U.S.P.G. Pub. No. 2012/0121304, ¶ 53; and, Yoshikawa et al., U.S.P.G. Pub. No. 2012/0121305, ¶ 85. Such is done in order to increase the efficiency of radiant heaters by permitting the surfaces to absorb the radiant energy rather than reflecting it away. Applicants have failed to specifically point out the supposed errors in the Examiner’s action, including stating why the noticed fact is not considered to be common knowledge or well-known in the art. As such, Applicants have admitted the above noticed facts. MPEP 2144.03 (C).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to provide the protective layer containing a coloring agent in micropores of the oxide film by performing a coloring treatment. Such would have been a mere application of a well known technigue from the same field of endeavor to improve similar devices in the same way. MPEP 2143 (I)(C). The results would have been entirely predictable to one having ordinary skill in the art at the time of effective filing because the intended purpose and manner of improvement is the same. Here, the base device of the patented claim and Suzuki is merely blackened as taught by the well known prior art technigue.
Regarding the elements incorporated into claim 1 from rejected claim 3:
Suzuki teaches alumite (¶ 63), noting that wherein the anodic oxidation treatment is a treatment of electrolyzing the main-body portion serving as an anode in a diluted acid solution, then of forming an aluminum-oxide film as the oxide film on the surface of main- body portion with oxygen produced from the diluted acid solution is a product by process limitation does not impart any patentable distinction. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Regarding the elements incorporated into claim 1 from rejected claim 2, namely “wherein the protective layer has an emissivity of 0.85 or more and 1.0 or less”:
Examiner had taken official notice that an emissivity around 0.9 is commonly used in fixing apparatus of image forming apparatus in the Office Action dated 5/31/24 at p 10. See, e.g., Kubota, U.S.P.G. Pub. No. 2015/0063413; Ito et al., U.S.P.G. Pub. No. 2011/0299898; Isogai et al., U.S. Pat. No. 5,724,638; and, Maeda, U.S.P.G. Pub. No. 2021/0223729. Applicants have failed to specifically point out the supposed errors in the Examiner’s action, including stating why the noticed fact is not considered to be common knowledge or well-known in the art. As such, Applicants have admitted the above noticed facts. MPEP 2144.03 (C).
It is much more likely than not that one having ordinary skill in the art at the time of effective filing would have chosen a protective layer that contains the coloring agent having an emissivity of 0.85 or more and 1.0 or less. Such a choice would have been suggested by the commonly used emissivity of parts of a fixing apparatus.
Regarding the elements incorporated into claim 1 from rejected claim 4, namely “wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton”:
Suzuki teaches wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton (¶ 34). Suzuki teaches providing an adequate hardness so as to prolong the life of the members (¶ 5, 6, 53).
It would have been obvious to one having ordinary skill at the time of effective filing to provide wherein the protective layer has a Vickers hardness of 150 or more in a case where a test load in a Vickers hardness test is 0.98 newton. One having ordinary skill in the art at the time of effective filing would have done so to prolong the life of the members.
Suzuki further teaches all the newly added limitations, namely “a protective layer formed on an entire surface of the main-body portion (¶ 31, 53, doing so to restrain wear of the nip plate),
the entire surface including a heat receiving surface that faces the heating element and receives radiant heat from the heating element, and a rubbed surface that is rubbed against the inner circumferential surface of the first rotary member, wherein the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion (showing both surfaces in the respective drawings, noting that they are made of the same material and thus have substantially identical coefficients of thermal expansion, and noting that such surfaces are necessarily present to both receive the heat from the heater, and heat the nip as intended); and,
wherein the protective layer is formed on the entire surface of the main-body, has a thickness of 10 µm or more (¶ 36, teaching a range of 5-15 µm, so as to balance durability with maintaining productivity and stability or uniformly of the protection layer).”
It would have been obvious to one having ordinary skill at the time of effective filing to provide the newly added limitations. One having ordinary skill in the art at the time of effective filing would have done so to restrain wear of the nip, and balance durability with maintaining productivity and stability or uniformly of the protection layer, while also utilizing the known property that solid body materials have the same coefficients of thermal expansion at all of their surfaces.
Regarding claim 5, the admitted prior art teaches blackening, noting that wherein the coloring treatment is a treatment of soaking the main-body portion, on which the protective layer has formed, in an agueous solution that contains chromium complex salt dye while stirring the agueous solution, then pulling up the main-body portion from the agueous solution and washing the main-body portion with water is a product by process limitation that does not impart any patentable distinction. Applicants have failed to meet their burden with respect to the product by process limitations, and have thus admitted the above.
Regarding claim 10, Suzuki further teaches wherein the heating element is a halogen lamp (120).
Regarding claim 12, Suzuki further teaches wherein the first rotary member is a fixing belt (¶ 27).
Regarding claim 13, Suzuki further teaches image forming apparatus comprising:
a toner image forming unit (fig 1) configured to form a toner image on a sheet; and
the fixing apparatus according to claim 1 (supra, as combined) and configured to fix the toner image formed by the toner image forming unit, to the sheet.
Regarding claim 14, Suzuki further teaches wherein the reflective plate, the supporting member, and the nip member form a barrier between the heating element and the first rotary member, thereby preventing the heating element from directly heating the first rotary member (fig 2), and wherein the main-body portion of the nip member transmits the radiant heat received from the heating element to the first rotary member, thereby heating the first rotary member (fig 2, through contact).
Regarding claim 15, Suzuki further teaches wherein the nip member does not rotate with the endless rotary member (¶ 45, the stay holds the nip member and maintains its rigidity, while the nip member is in sliding contact with the endless rotary member, ¶ 30), and
wherein the protective layer suppresses wearing of the main-body portion due to the rubbing of the non-rotating nip member against the inner circumferential surface of the first rotary member (¶ 53).
Claims 1, 5, 10, 12, 13, 14 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,422,489, in view of Suzuki, U.S.P.G. Pub. No. 201/0163886, and admitted prior art, and further in view of well known prior art.
Claims 1, 2, 4, 5, 9, 10, 12, 13, 14, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,609,516, in view of Suzuki, U.S.P.G. Pub. No. 201/0163886, and admitted prior art, and further in view of well known prior art.
Claims 1, 2, 4, 5, 10, 12, 13, 14, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3, of U.S. Patent No. 11,829,089, in view of Suzuki, U.S.P.G. Pub. No. 201/0163886, and admitted prior art, and admitted prior art, and further in view of well known prior art.
The reasoning of the rejections above are repeated herein in their entirety with the following modifications:
Examiner assumes arguendo, without conceding, that the same solid body material of Suzuki somehow has different coefficients of thermal expansion at two of its surfaces, rather than the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion.
Examiner takes official notice that it is well known in the art of electrophotography to provide substantially identical coefficients of thermal expansion to mated surfaces in fixing unit to prevent warping as the temperature changes. See, e.g.: Nakamura et al., U.S.P.G. Pub. No. 2016/0363485, ¶ 40; Koroishi et al., U.S.P.G. Pub. No. 2009/0102911, ¶ 14, 75; Okuno, U.S.P.G. Pub. No. 2009/0052956, ¶ 41; and, Yokota et al., U.S.P.G. Pub. No. 2006/0049175, ¶ 19. See MPEP 2144.03 (C) for guidance.
It would have been obvious to one having ordinary skill at the time of effective filing to provide the heat receiving surface and the rubbed surface have substantially identical coefficients of thermal expansion. One having ordinary skill in the art at the time of effective filing would have done so to prevent warping as the temperature changes.
Response to Argument
Applicants argue: the former rejections are moot because several previously rejected claims were pieced together to form a newly presented independent claim, and a few new limitations were added.
Initially, Examiner notes that even if these claims were allowable over the prior art, Examiner is prohibited from allowing them. MPEP 714.04 prohibits allowing claims “where no attempt is made to point out the patentable novelty”. The reason is simple - there is no mootness exception to either 37 C.F.R. 1.111(b)’s requirement that a reply “must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action,” and “must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references”. Even when claims are allowable over the prior art, Applicants must still respond in accordance with 37 C.F.R. 1.111(b). The word “moot” or its derivates simply do not appear in 1.111(b). Moreover, 37 C.F.R. 1.111(c) requires that Applicants “must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. [Applicants] must also show how the amendments avoid such references or objections.”
Here, Applicants’ submission that the rejections are now moot is much more than a “general allegation that the claims define a patentable invention”, Id. Applicants argue that there is a mootness exception to the requirements of 1.111(b), and that that exception applies here. Conclusory arguments are arguments nonetheless. However, conclusory arguments are never persuasive. There is no requirement under 1.111(b) that arguments be persuasive to be more than a general allegation. Applicants presented unsupported arguments, rising above a mere general allegation of patentability, and those arguments happen to be unpersuasive. The reply is thus complete, even though its argument is based on an unsupported submission that there is a mootness exception to the requirements of 1.111(b), and that the mootness exception applies here. Moreover, none of the previous claims were indicated as allowable. However, the rejections of the rejected claims Applicants pieced together each shifted the burden to Applicants to present evidence and argument. Although the rejections shifted the burden, Applicants have responded with deafening silence. That silence is an admission. Applicants’ response is thus far more than a “general allegation” for yet another reason - it contains admissions. Examiner finds neither a mootness exception, nor that such would apply here even if there were.
Applicants have amalgamated pieces of several rejected claims into a newly presented independent claim. Even if Applicants had not done so, 1.111(b) applies to old claims just as it does to “newly presented claims”. Neither does 1.111(b) limit “patentable over any applied references” to rejections over prior art under 35 U.S.C. 102 or 103. As such, the requirement to “present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references” applies equally to new claims as it does to old claims, and equally to rejections over applied references other than under 35 U.S.C. 102 or 103, such as the Double Patenting rejections here. Nothing about piecing together rejected claims makes the rejection of the pieces moot, but rather, maintains each piece live as applied to the whole. Applicants have merely presented an unsupported conclusory argument that piecing together several rejected claims renders each of the rejections moot. The conclusory argument is not persuasive.
Each of the pieced together rejections shifted the burden of production to Applicants as well. As such, the shifting burdens remain live as well, rather than moot as submitted. Each of the former dependent claims were rejected under 35 U.S.C. 103. Applicants have not asserted that such rejections failed to present a prima facie case of obviousness, let alone presenting evidence and argument in support of such an assertion. Applicants had a burden to present such evidence and argument, and failed to do so. Applicants have thus admitted both that the limitations of former claims 2 and 4 are in fact prima facie obvious. Such admissions are now evidence of record. Any subsequently proffered evidence must be weighed against the evidence of record.
Applicants make no mention of the newly added limitations to claim 1. As noted above in the rejections, Suzuki teaches all of the newly added limitations and provides reasons for doing so. To the extent that the same solid body material of Suzuki somehow has different coefficients of thermal expansion at two of its surfaces, well known prior art renders such limitations obvious.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/SEVAN A AYDIN/Primary Examiner, Art Unit 2852