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 .
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.
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: image forming unit in claims 1, 8, 9; applying unit in claims 1,8,9; heating unit in claim 1; pressurizing unit in claim 1; special color image forming unit in claim 5.
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.
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)(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.
(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) 1-5, 10-14, and 19 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Toda et al. (WO 2023/054311; “Toda”). (Note: Family member US 2024/0239624, cited on IDS dated 2/11/2025, is being utilized as a translation. Cited paragraphs correspond to those in the US document. A machine translation of the WO reference is also being provided.)
Regarding claim 1, Toda discloses an image forming system (Fig. 1) comprising:
an image forming unit (process cartridge) that forms an image on a recording medium 4 by using a color toner 8 (Fig. 1 [0047, 0051]);
an applying unit (process cartridge) that applies a crimping toner 2 (“paste”) having pressure-responsiveness onto at least a portion of a surface of the recording medium 4 on which the image is formed ([0047-0052]);
a heating unit 5 that heats the crimping toner 2 applied to the recording medium 4 (Fig. 1 [0052]); and
a pressurizing unit 6/7 that pressurizes, in a thickness direction, a stacked body in which the recording medium 4 is folded with the heated crimping toner 2 interposed or a stacked body in which the recording medium and another medium are stacked with the heated crimping toner interposed (Fig. 1 [0053]),
wherein a volume average particle diameter of the crimping toner is more than a volume average particle diameter of the color toner (TABLE 4 [0143]).
Regarding claim 2, Toda discloses the image forming system according to claim 1, wherein the volume average particle diameter of the crimping toner is more than 6 μm (TABLE 4 [0143]).
Regarding claims 3 and 4, Toda discloses the image forming system according to claims 1 and 2, respectively, wherein the volume average particle diameter of the color toner is 6 μm or less (TABLE 4 [0143]).
Regarding claim 5, Toda discloses the image forming system according to claim 1, further comprising: a special color image forming unit (process cartridge) that forms a special color image on the recording medium by using a special color toner 9 (Fig. 1 [0047, 0051]), wherein the volume average particle diameter of the crimping toner is less than a volume average particle diameter of the special color toner (TABLE 4 [0143]).
The method steps of claims 10-14 are met by the operation of Toda as applied to claims 1-5.
Regarding claim 19, Toda discloses a crimping toner image forming apparatus (Fig. 1) that disposes a color toner 8 and a crimping toner 2 that exerts functionality by deformation due to pressure, on a medium 4 (Fig. 1 [0047-0053]), wherein a volume average particle diameter of the crimping toner is more than a volume average particle diameter of the color toner (TABLE 4 [0143]).
Claim Rejections - 35 USC § 103
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) 6-7 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (WO 2023/054311) in view of Ueda et al. (US 6,506,477; “Ueda”).
Regarding claims 6 and 7, Toda discloses the image forming system according to claims 1 and 2, respectively, but fails to teach wherein a toner mass (TMA) per unit area of the crimping toner is lower than TMA of the color toner.
Ueda teaches a similar image forming system (Fig. 2) that uses a crimping toner (bonding toner) as an adhesive to bond stacks of sheets together (steps ST2-ST4 in Fig. 1, Col. 5 line 43 - Col. 6 line 31). Ueda further teaches that when sufficient adhesion strength can be obtained by color toner (i.e., toner for the color region), then no crimping/bonding toner is needed to transfer (Col. 9 lines 53-63). In other words, Ueda recognizes that the amounts of crimping toner and color toner are result-effective variables that affect the adhesion strength between the laminated sheets. Additionally, Ueda teaches that the adhesion strength can be controlled by changing the density, concentration, and pattern (i.e., changing the toner mass per unit area) (Col. 16 lines 35-41).
Utilizing the teachings of Ueda, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to optimize the amounts of crimping toner and color toner, including that which results in a toner mass (TMA) per unit area of the crimping toner being lower than TMA of the color toner. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
The method steps of claims 15-16 are met by the operation of Toda modified by Ueda as applied to claims 6-7.
Claim(s) 8-9 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (WO 2023/054311) in view of Ueda (US 6,506,477) as applied to claims 6-7, and further in view of Sakamaki (US 2006/0083527).
Regarding claims 8 and 9, modified Toda teaches the image forming system according to claims 6 and 7, respectively, wherein in the image forming unit and the applying unit, the color toner and crimping toner are formed by developing an electrostatic latent image on an image holding member (drum) (Toda [0049, 0051] and Ueda Col. 5 lines 48-64).
Modified Toda fails to explicitly teach, wherein, in the image forming unit and the applying unit, TMA of the color toner and TMA of the crimping toner are controlled by a potential contrast in the electrostatic latent image on the image holding member.
Sakamaki teaches controlling a TMA (density) of a toner image by controlling a potential contrast in an electrostatic latent image on an image holding member (photosensitive drum) ([0091]).
Utilizing the teachings of Sakamaki, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to control the TMA of the color toner and TMA of the crimping toner by a potential contrast in the electrostatic latent image on the image holding member. It has been held to be within the general skill of a worker in the art to combine prior art elements according to known methods to yield predictable results. In this instance, the predictable results would be providing the apparatus with the means to ensure a proper amount of crimping and color toners are developed in order for the apparatus to function as intended.
The method steps of claims 17-18 are met by the operation of Toda modified by Ueda and Sakamaki as applied to claims 8-9.
Prior Art
The prior art made of record and not relied upon is cited as related art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLA J THERRIEN whose telephone number is (571)272-2677. The examiner can normally be reached Monday-Friday 8 am - 4 pm EST.
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/CARLA J THERRIEN/Primary Examiner, Art Unit 2852
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