antDETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Acknowledgement is made of the receipt of Preliminary Amendment filed 03 April 2024.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Regarding Claims 20-38, Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Provisional Applications No. 61/606,913, 61/611,505, 61/611,286, 61/619,546, 61/635,156 and 61/640,493 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The benefit to prior-filed Provisional application(s) listed above is therefore denied with respect to instant Claims 20-38.
Acknowledgment is made of applicant’s claim for priority a national stage application PCT/IB2013051718 under 35 U.S.C. 371. The requirements 35 U.S.C. 371 are met.
Information Disclosure Statement
The references cited on a Form PTO 1449 have been considered.
Specification
The specification has been checked to the extent necessary to determine the presence of all possible minor errors. However, the applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 20, 33 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 4 of U.S. Patent No. 11,104,123 to Schmaiser et al. in view of U.S. Pub. 2016/0075130 to Landa et al. and Claim 4 of U.S. Patent No. 11,607,878 to Schmaiser et al. in view of U.S. Pub. 2016/0075130 to Landa et al. Specifically, Claim 4 of U.S. Patent No. 11,104,123 and U.S. Patent No. 11,607,878 both disclose all limitations of instant Claims 20, 33 and 34 except for the belt passes over a plurality of guide rollers at the image formation station, each said guide roller at the image-forming station being positioned adjacent to a respective print bar. U.S. Pub. 2016/0075130 to Landa et al. discloses (§0280 and Fig. 4A) the belt passes over a plurality of guide rollers at the image formation station, each said guide roller at the image-forming station being positioned adjacent to a respective print bar. It would have been obvious to one of ordinary skill in the art, at the time of invention, to apply the roller positioning of Landa et al. to the art of Schmaiser et al. to provide precise support to the intermediate transfer member in the printing area.
Allowable Subject Matter
Claims 21-32 and 35-38 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. A statement of reasons for the indication of allowable subject matter will be provided upon resolving the double patenting rejection(s) above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D SHENDEROV whose telephone number is (571)270-7049. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas X Rodrigues can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER D SHENDEROV/Examiner, Art Unit 2853
/JASON S UHLENHAKE/Primary Examiner, Art Unit 2853
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