DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 21-29 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,975,546 (App. No. 17/247,591).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of USP 1197546 recites that the second enclosure is isolated from the first enclosure; and independent claim 21 of the instant application recites “the second enclosure is sealed”.
Claims 30-38 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,975,546 (App. No. 17/247,591) in view of Somekh (US 20100201749, already of record).
Claim 10 of USP 1197546 discloses every limitation of independent claim 30 of the instant application except for using a printhead assembly to deposit a liquid on a substrate supported on a substrate support of an inkjet printer, the printhead assembly and substrate support located within a first enclosure of the inkjet printer.
However, Somekh teaches using a printhead assembly to deposit a liquid on a substrate (450) supported on air bearings (substrate support) of an inkjet printer, the printhead assembly and air bearings (substrate support) located within a first enclosure (420) of the inkjet printer, for the benefit of purification of the printing environment (para 0031; see for example Fig. 4). Thus, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the printing (deposition) step of Somekh with claim 10 of USP 1197546, as taught by Somekh, for the benefit of purification of the printing environment.
Claims 39 and 40 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,975,546 (App. No. 17/247,591) in view of Somekh (US 20100201749, already of record).
Claim 19 of USP 1197546 discloses every limitation of independent claim 39 of the instant application except for using a printhead assembly to deposit a liquid on a substrate supported on a substrate support of an inkjet printer, the printhead assembly and substrate support located within a first enclosure of the inkjet printer.
However, Somekh teaches using a printhead assembly to deposit a liquid on a substrate (450) supported on air bearings (substrate support) of an inkjet printer, the printhead assembly and air bearings (substrate support) located within a first enclosure (420) of the inkjet printer, for the benefit of purification of the printing environment (para 0031; see for example Fig. 4). Thus, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the printing (deposition) step of Somekh with claim 19 of USP 1197546, as taught by Somekh, for the benefit of purification of the printing environment.
Claims 21-29 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,034,176 (App. No. 16/362,595).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of USP 11034176 discloses every method step recited in independent claim 21 of the instant application.
Claims 30-38 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,034,176 (App. No. 16/362,595) in view of Somekh (US 20100201749, already of record).
Claim 1 of USP 11034176 discloses every limitation of independent claim 30 of the instant application except for using a printhead assembly to deposit a liquid on a substrate supported on a substrate support of an inkjet printer, the printhead assembly and substrate support located within a first enclosure of the inkjet printer.
However, Somekh teaches using a printhead assembly to deposit a liquid on a substrate (450) supported on air bearings (substrate support) of an inkjet printer, the printhead assembly and air bearings (substrate support) located within a first enclosure (420) of the inkjet printer, for the benefit of purification of the printing environment (para 0031; see for example Fig. 4). Thus, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the printing (deposition) step of Somekh with claim 1 of USP 11034176, as taught by Somekh, for the benefit of purification of the printing environment.
Claims 21-29 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 9,387,709 (App. No. 14/637,301).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of USP 9387709 discloses every method step recited in independent claim 21 of the instant application.
Claims 30-40 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 9,387,709 (App. No. 14/637,301) in view of Somekh (US 20100201749, already of record).
Claim 16 of USP 9387709 discloses every limitation of independent claim 30 of the instant application except for using a printhead assembly to deposit a liquid on a substrate supported on a substrate support of an inkjet printer, the printhead assembly and substrate support located within a first enclosure of the inkjet printer.
However, Somekh teaches using a printhead assembly to deposit a liquid on a substrate (450) supported on air bearings (substrate support) of an inkjet printer, the printhead assembly and air bearings (substrate support) located within a first enclosure (420) of the inkjet printer, for the benefit of purification of the printing environment (para 0031; see for example Fig. 4). Thus, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the printing (deposition) step of Somekh with claim 16 of USP 9387709, as taught by Somekh, for the benefit of purification of the printing environment.
Claim 16 of USP 9387709 discloses every limitation of independent claim 39 of the instant application except for using a printhead assembly to deposit a liquid on a substrate supported on a substrate support of an inkjet printer, the printhead assembly and substrate support located within a first enclosure of the inkjet printer.
However, Somekh teaches using a printhead assembly to deposit a liquid on a substrate (450) supported on air bearings (substrate support) of an inkjet printer, the printhead assembly and air bearings (substrate support) located within a first enclosure (420) of the inkjet printer, for the benefit of purification of the printing environment (para 0031; see for example Fig. 4). Thus, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the printing (deposition) step of Somekh with claim 16 of USP 9387709, as taught by Somekh, for the benefit of purification of the printing environment.
No double patenting rejection on claims 21-40 is applied based on claim 17 of U.S. Patent No. 9,048,344 (App. No. 13/802,304) since independent claims 21, 30, and 39 are patentably distinct from claim 17 of USP 9048344; specifically, claim 17 of USP 9048344 does not disclose performing at least one of a maintenance procedure and a calibration procedure on the printhead assembly while the second enclosure is sealed (claim 21) and/or while the first and second enclosures are isolated (claims 30 and 39).
Allowable Subject Matter
Claims 21-40 would be allowable if terminal disclaimers are filed to overcome the double patenting rejections based on U.S. Patent No. 11,975,546, U.S. Patent No. 11,034,176, and U.S. Patent No. 9,387,709.
The following is a statement of reasons for the indication of allowable subject matter:
The cited prior art of record, whether alone or in combination, fails to teach or fairly suggest, in the context of independent claim 21, positioning the printhead assembly to access the maintenance system (housed in the second enclosure); sealing the second enclosure; and performing at least one of a maintenance procedure and a calibration procedure on the printhead assembly using the maintenance system while the second enclosure is sealed.
The cited prior art of record, whether alone or in combination, fails to teach or fairly suggest, in the context of independent claim 30, the steps of engaging the printhead assembly with a maintenance system located in a second enclosure of the inkjet printer at a side of the substrate support; isolating the second enclosure from the first enclosure; performing at least one of a maintenance procedure and a calibration procedure on the printhead assembly using the maintenance system while the first and second enclosures are isolated.
The cited prior art of record, whether alone or in combination, fails to teach or fairly suggest, in the context of independent claim 39, engaging the printhead assembly with a maintenance system located in a second enclosure of the inkjet printer; isolating the second enclosure from the first enclosure; accessing the second enclosure from an environment external to the main enclosure while the second enclosure is isolated from the first enclosure; controlling a processing environment within the first enclosure according to a defined specification that is different from an environment external to the main enclosure while the first and second enclosures are isolated; and performing at least one of a maintenance procedure and a calibration procedure on the printhead assembly while the first and second enclosures are isolated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES CAPOZZI whose telephone number is (571)270-3638. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00pm.
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/CHARLES CAPOZZI/Primary Examiner, Art Unit 1717