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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,429,803 B2 to Kojima.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets recite sufficiently similar image formation apparatuses that fall within the same scope of one another.
For instance, both claim sets recite an image formation apparatus comprising a first image formation unit including a storage part in which a glitter developer is stored and configured to form a glitter developer image with the glitter developer; and a controller configured to control an operation of the first image formation unit according to print data received, wherein the controller is configured to perform operations comprising operations to control, upon forming a glitter image on a medium based on predetermined print data when the amount of the glitter developer stored in the storage part is a first remaining amount, the first image formation unit to form the glitter developer image in which a ratio of the glitter image formed per unit area is a first area ratio, and upon forming the glitter image on the medium based on the predetermined print data when the amount of the glitter developer stored in the storage part is a second remaining amount less than the first remaining amount, the first image formation unit to form the glitter developer image in which the ratio of the glitter image formed per unit area is a second area ratio that is adjusted with respect to the first area ratio (claims 1-3 of the instant application and claim 1 of the ‘803 patent).
Both claim sets recite that the image formation apparatus further comprises a detector configured to detect an amount of the glitter developer stored in the storage part (claim 9 of the instant application and claim 1 of the ‘803 patent). Both claim sets also recite that the image formation apparatus further comprises a second image formation unit that includes at least one or more image formation units and is configured to form a black developer image with a black developer (claims 4-7 of the instant application and claim 2 of the ‘803 patent).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a controller configured to control” in claims 1-6, and 8-10 and “a detector configured to detect” in claim 9.
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.
While the claims recite some structural limitations of the image formation apparatus (e.g., the first image formation unit and the controller), they are generally directed toward the configuration of the controller and its intended operation. Applicant is kindly reminded that the manner of operating a device does not differentiate an apparatus claim from prior art.
According to MPEP § 2114, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).” . . . However, “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).”
In other words, “[a] claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”.
MPEP § 2114 further states that “[f]unctional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258, 84 USPQ2d 1929, 1935-1936 (Fed. Cir. 2007)”.
However, “computer-implemented functional claim limitations may narrow the functionality of the device, by limiting the specific structure capable of performing the recited function. Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 1345, 109 USPQ2d 1258, 1262 (Fed. Cir. 2014)”.
Accordingly, it is recommended to amend the claims to recite the structural features related to the control configuration of the image formation apparatus which is capable of carrying out the intended operation of the controller, in order to differentiate the claimed apparatus from prior art which would otherwise be capable of performing the same function.
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.
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 1-13 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Specific limitations which are deemed to be indefinite/unclear include limitations directed toward the configuration of the controller:Claim 1, lines 7-16
Claim 2, lines 2-10
Claim 3, lines 2-9
Claim 8, lines 2-9
Claim 10, lines 5-15
Claims 4-7, 9, and 11-13 are indefinite because they fully incorporate the subject matter of a rejected claim.
Specification
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
Claim 13 is objected to because of the following informalities:
Claim 13, line 2, recites “gritter pigment” instead of “glitter pigment”.
Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto (US PGP 2020/0341397 A1).
Matsumoto teaches an image forming apparatus including a brilliant image forming part that forms a brilliant toner image using a brilliant toner wherein the brilliant toner is used at a brilliant deposition amount (MS) for forming the brilliant toner, the brilliant deposition amount being defined by a used weight of the brilliant toner per unit area, a color image forming part that forms a color toner image using a color toner wherein the color toner is used at a color deposition amount (ML) for forming the color toner image, the color deposition amount being defined by a used weight of the color toner per unit area, a transfer part that transfers the brilliant toner image and the color toner image to a medium, and a controller that controls the brilliant deposition amount of the brilliant toner and the color deposition amount of the color toner on the medium, wherein when the brilliant toner image is to be superimposed over the color toner image on the medium, the controller adjusts the brilliant deposition amount for the brilliant toner image in correspondence with a color type and the color deposition amount ML of the color toner that has been used for the color toner image ([0008]). In other words, the color toner image is printed between the brilliant toner image and the medium, but the color toner image may also be printed outside of the area where the brilliant toner image is formed (which reads on the corresponding limitation recited in instant claim 5 and claim 6).
The image forming apparatus is taught to include a toner container that accommodates the brilliant toner and is configured to form a brilliant image with the brilliant toner ([0043]-[0050], Fig. 3) (which reads on the corresponding limitation recited in instant claim 1 and claim 10). The toner is taught to be combined with a carrier for two-component development ([0245]) (which reads on the corresponding limitation recited in instant claim 11). The image forming apparatus is taught to further include a density sensor DS in the lower back side of the driven roller, which detects the toner densities in the toner images transferred to the surface of the intermediate transfer belt, and notifies the controller of the obtained detection results. The controller then performs density corrections to correct the toner densities in the individual color toner images formed in the image forming units, where feedback controls of the bias voltages etc. of the individual parts are performed so that the toner densities become desired values ([0073]) (which reads on the corresponding limitation recited in instant claim 9). In other words, the controller is configured to control an operation of the image formation unit based on print data received (which reads on the corresponding limitation recited in instant claim 1 and claim 10), and adjusts the deposition amounts of the brilliant toner and color toner based on feedback provided by the sensor.
The image forming apparatus is taught to be used in an image forming method for superimposing a brilliant toner image using a brilliant toner over a color toner image using a color toner on a medium and includes an acquisition step that acquires a color type of the color toner and a color deposition amount (ML) defined by a used weight of the color toner per unit area, which has been used on the medium, and a determination step that determines a brilliant deposition amount (MS) that is defined by a used weight of the brilliant toner per unit area, which is to be used on the medium in consideration of the color type of the color toner and the color deposition amount, an adjustment step that adjusts an absolute value of bias voltage to be applied to form the brilliant toner image, and a forming step that forms the brilliant toner image over the color toner image using the bias voltage, which is adjusted as the adjustment step, such that the brilliant deposition amount of the brilliant toner over the color toner either increases or decrease based on the bias voltage ([0010]) (which reads on the corresponding limitations recited in instant claims 1-4 and 8-10). The adjustments in depositions of the brilliant toner and the color toner by the controller is taught to prevent too much color toner from being used, which causes the brilliant toner to get buried in the color toner, resulting in a decrease in brilliance, and to prevent too little color toner from being used, resulting in a decrease in color reproducibility ([0011]).
In the examples, the brilliant pigment was taught to contain tiny thin pieces of aluminum, thus resulting in a brilliant silver toner ([0088]). The brilliant pigment was taught to have an average particle size of 5 µm or more and 20 µm or less, in view of achieving a desirable toner brilliance ([0089]) (which reads on the corresponding range recited in instant claim 13). Other suitable materials for the brilliant toner are taught to include any metallic materials like gold, silver, platinum, iron, iron oxide, and mica ([0131]).
The color toner is taught to contain organic pigments including yellow, cyan, magenta, and carbon black, in order to respectively form yellow toners, cyan toners, magenta toners, and black toners ([0044]) (which reads on the corresponding limitation recited in instant claim 7).
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (US PGP 2020/0341397 A1), in view of Hara et al. (US PGP 2017/0285518 A1).
The teachings of Matsumoto are discussed above and incorporated herein. Matsumoto appears to be silent to teach the volume average particle diameter of the brilliant toner.
Hara teaches a brilliant toner including a brilliant pigment (Abstract). The brilliant toner is taught to include an aluminum pigment as the brilliant pigment ([0313]) and preferably has an average length of 5 µm to 15 µm ([0108]). In order to accommodate the brilliant pigment, the volume average particle diameter of the brilliant toner is taught to preferably be from 1 µm to 30 µm, and more preferably from 3 µm to 20 µm ([0169]) (which reads on the corresponding range recited in instant claim 12).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted the volume average particle size of Matsumoto’s brilliant toner, to fall within the range taught by Hara, in view of accommodating a brilliant pigment exhibiting sufficiently similar size(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
06/09/2026
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