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 .
Election/Restrictions
Applicant's election with traverse of claims 1 and 2 in the reply filed on 12/16/2025 is acknowledged. The traversal is on the grounds that a search of one species would necessarily encompass the search of the other species. This is not found persuasive because a thorough search of the claimed species would require different search queries to account for the presence of different features and functionality; for example, first and second operations, time periods after printing, the opening of the cover, a flushing period, a maintenance box, varnishing ink, and data size.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-10 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/16/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 limitations 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) are:
A deodorizing unit configured to suck odor generated from the UV curable ink in claim 1.
A control unit to control the printing unit and the deodorizing unit in claim 1.
An emitting unit configured to irradiate the UV curable ink discharged onto the medium by the printing head with ultraviolet light in claim 2.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Regarding the deodorizing unit the structure can be found in paragraph [0016] “The deodorizing unit 40 includes a suction fan for sucking air containing odor in the housing 13 and a filter and a deodorizer for deodorizing and cleaning the air sucked into the deodorizing unit 40 by the suction fan”. This recitation of structure does recite some specific structure, including the fan and filter. But the recitation of the deodorizer is not sufficient or specific structure known in the art to perform the claimed functionality (see the below 112(a) and 112(b) rejections).
Regarding the control unit the structure can be found in paragraph [0024] and is essentially a computer or its equivalents.
Regarding the emitting unit the structure can be found in paragraph [0032] and is an LED that emits ultraviolet light.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 and 2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically claim 1 invokes 112(f) with the recitation of the deodorizing unit. The structure can be found in the specification in paragraph [0016] which states “The deodorizing unit 40 includes a suction fan for sucking air containing odor in the housing 13 and a filter and a deodorizer for deodorizing and cleaning the air sucked into the deodorizing unit 40 by the suction fan”. However, a “deodorizer” is not specific or sufficient structure known in the art and as such this feature fails the written description requirement.
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 and 2 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.
Regarding claim 1, “A deodorizing unit configured to suck odor generated from the UV curable ink” invokes 112(f). The corresponding structure can be found in the specification in paragraph [0016] “The deodorizing unit 40 includes a suction fan for sucking air containing odor in the housing 13 and a filter and a deodorizer for deodorizing and cleaning the air sucked into the deodorizing unit 40 by the suction fan”. However, a “deodorizer” is not specific structure known in the art of printers and could take many forms such as a simple filter or a device which sprays a concealing odor. Primarily it is unclear whether a device which conceals odor is a deodorizer or whether the device must remove particles that cause the odor. As such it is unclear what the meets and bounds of the claim are and it is indefinite.
Regarding claim 1, the phrase “print data input from outside for printing” is unclear as it is unknown what outside means in this context. Outside of the control unit, the printing unit or the room the printing unit is in? As such the meaning of the claim is unclear and it is indefinite.
Regarding claim 2, the phrase “out of discharge of UV curable ink” is unclear as it is unknown what is meant by the phrase “out of discharge”. The phrase renders the meaning of the claim unclear and indefinite. The examiner recommends removing the phrase “out of discharge”.
Appropriate correction and/or clarification 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirobumi (JP 2009029009 A).
Regarding claim 1, Hirobumi teaches a printing unit that includes a printing head (Fig. 1 element 100 and paragraph [0007]) configured to discharge ink from a plurality of nozzles to a medium (Fig. 1 element 101 and paragraph [0007]) and configured to execute printing (paragraph [0007]):
a deodorizing unit configured to suck odor generated from the ink (Fig. 2, paragraph [0007], [0046]--note the deodorizing unit including the suction fan functions to remove odor generated from the ink, as set forth in paragraphs [0046]-[0050]);
and a control unit which is the equivalent of a computer configured to control the printing unit and the deodorizing unit (Fig. 4 element 550 and paragraphs [0010], [0012]),
wherein the control unit controls suction by the deodorizing unit according to any one of an operation of the printing unit, print data input from outside for printing, and an operation on the printing unit by a user (paragraph [0010]).
Additionally, note that MPEP 2115 states “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” Also MPEP 2114 states that “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.” Hirobumi teaches a printing head configured to discharge ink and is capable of discharging various types of ink, such as UV ink, and therefore meets the claim language as recited.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shimizu (US 20190100045 A1), Tanaka (US 20110200494 A1), and Nakamura (US 20230062349 A1) are cited as having structure and functionality similar to the claimed invention.
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/SAMUEL FREDERICK BOELITZ/Examiner, Art Unit 2853
/Leslie J Evanisko/Primary Examiner, Art Unit 2853