DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-9 and 14-26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by JP 2021-102522 (henceforth JP ‘522).
JP ‘522 teaches an image forming apparatus comprising a first image forming section for forming a printed image using a toner and a second image forming section for forming an adhesive image by using a powder adhesive ([0007-9]). IN embodiments the toner and the powder adhesive both contain an ester wax and the powder adhesive contains 11.7% ester wax (14 parts ester wax/120 total parts x 100% = 11.7%; [0045]) and the toner comprises 9.8% ester wax (12 parts ester wax/122.5 total parts x 100% = 9.8%; [0051-53]). The weight average particle diameter of the adhesive powder is taught to be 6.8 micrometers ([0050]) and the weight average particle diameter of the toner is taught to be 6.5 micrometers ([0058]).
JP ‘522 further teaches that the adhesive powder is stored in a process cartridge that is detachably mountable to the image forming apparatus and that the adhesive cartridge contains an image forming section along with the powder adhesive described above ([0037-39]). Furthermore, the process cartridge may further comprise a first image forming section comprising a toner and a second image forming section comprising an adhesive powder as recited in pending claim 14 ([0037-39]).
In embodiments JP ‘522 teaches the use of ethylene glycol distearate as the ester wax. Ethylene glycol distearate has the following structure and reads on the Applicant’s recited formula (3) wherein m and n are 16:
PNG
media_image1.png
100
302
media_image1.png
Greyscale
.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021-102522 (henceforth JP ‘522).
The complete discussion of JP ‘522 above is included herein. While JP ‘522 teaches an image forming apparatus and process cartridge that comprises a first image forming section for developing a toner image and second image forming section for developing an image with an adhesive powder, JP ‘522 does not teach relative amounts of each of the toner and adhesive powder. However, during routine operation of said apparatus one of ordinary skill in the art would be able to set the amounts as needed to produce the desired outcome through routine operation of said apparatus. Dictating the amount of each of the toner and the adhesive powder for use in any printing operation would flow natural from normal and routine use of the apparatus. According to the MPEP, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP 2144.05 II A) In the instant case routine operation of the image forming apparatus would cover the three possible utilization ratios wherein more powder adhesive was used than toner, wherein less powder adhesive was used than toner and wherein equal amounts of powder and adhesive and toner were used. As such, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application during routine operation of the image forming apparatus of JP ‘522 to have set the amount of powder adhesive on the image bearing member to be greater than the amount of toner of the image bearing member in order to optimize the image forming process and desired adhesive quality of the print.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 08/13/2026
