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 .
Specification
The disclosure is objected to because of the following informalities: The continuation data listed in Paragraph 1 of the specification for Application No. 17/533,861, filed November 23, 2021, should be updated, as Application No. 17/533,861 is now U.S. Patent No. 11,987,691. Appropriate correction is required.
Claim Objections
Applicant is advised that should claim 3 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: a developer storage unit configured to store a developer recited in claims 1 and 9.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
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 1-16 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.
Claim 1 recites the limitation "the resin molded article" in line 5. There is insufficient antecedent basis for this limitation in the claim. Accordingly, claim 1 and dependent claims 2-8 are indefinite.
Claim 9 recites the limitation "the resin molded article" in line 5. There is insufficient antecedent basis for this limitation in the claim. Accordingly, claim 9 and dependent claims 10-16 are indefinite.
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(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (US 2015/0016829).
Regarding claims 1-4: Watanabe et al. (US ‘829) discloses an image forming apparatus comprising a developer container whose developer amount is detected by a capacitance detection method when conductive resin members are used for electrodes [abstract; 0002; 0014-0015; 0078-0088; 0149-0152]. Watanabe et al. (US ‘829) discloses the detection device 130 contains an antenna member 43 [0149-0150; Fig. 9] which is insert molded to the inner wall of the developing container 46 [0151; Fig. 9]. Watanabe et al. (US ‘829) discloses the conductive sheet member constituting the antenna member 43 [0151] is a monolayer conductive resin sheet 24 in which ~35 wt% carbon black 24e is mixed with an EVA (ethylene vinyl acetate [0112]) resin 24d [0032; 0153-0155; Fig. 12B].
The claimed effects and physical properties, i.e. a shrinkage factor of the resin molded article at 25 degrees Celsius cooled after heated to 100 degrees Celsius relative to the resin molded article at 25 degrees Celsius before heated, when the resin molded article is heated from 25 degrees Celsius to 100 degrees Celsius and then cooled to 25 degrees Celsius is less than or equal to 2.0% [instant claim 1]; the resin molded article at 25 degrees Celsius cooled after heated to 100 degrees Celsius when the resin molded article is heated from 25 degrees Celsius to 100 degrees Celsius and then cooled to 25 degrees Celsius expands compared to the resin molded article at 25 degrees Celsius before heated [instant claim 2]; R1 and R2 satisfy a relationship of R2/R1 ≦ 1.5, where the R2 denotes a surface resistivity of the resin molded article after being drawn by a tension tester and the R1 denotes a surface resistivity of the resin molded article before being drawn by the tension tester, so that, at 25 degrees Celsius, a length of a primary face of the resin molded article in a width direction becomes 140% of a length of the primary face of the resin molded article in the width direction before being drawn by the tension tester, and wherein the primary face is a face that intersects a thickness direction of the resin molded article [instant claim 3], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 5: Watanabe et al. (US ‘829) discloses the conductive resin sheet has a thickness of 0.05 to 0.3 mm (50 µm to 300 µm) [0155], with specific embodiments having a thickness of 0.1 mm (100 µm) [0155; 0157].
Regarding claims 7-8: Watanabe et al. (US ‘829) discloses the detection device 130 has the antenna member 43 as the second electrode and is arranged on a part of the bottom of the developing chamber 46a formed by the developing frame 40 [0149-0150; Fig. 9]. Watanabe et al. (US ‘829) discloses the toner remaining amount detecting device 134 detects the capacitance between the developing sleeve 41 and antennae member 43 by applying bias to the developing sleeve 41 from the developing power source 131 [0151-0152; Fig. 9].
Claim(s) 9-13 and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (US 2015/0016829).
Regarding claims 9-12: Watanabe et al. (US ‘829) discloses an image forming apparatus comprising a developer container whose developer amount is detected by a capacitance detection method when conductive resin members are used for electrodes [abstract; 0002; 0014-0015; 0078-0088; 0149-0152]. Watanabe et al. (US ‘829) discloses the detection device 130 contains an antenna member 43 [0149-0150; Fig. 9] which is insert molded to the inner wall of the developing container 46 [0151; Fig. 9]. Watanabe et al. (US ‘829) discloses the conductive sheet member constituting the antenna member 43 [0151] is a monolayer conductive resin sheet 24 in which ~35 wt% carbon black 24e is mixed with an EVA (ethylene vinyl acetate [0112]) resin 24d [0032; 0153-0155; Fig. 12B].
The claimed effects and physical properties, i.e. R1 and R2 satisfy a relationship of R2/R1 ≦ 1.5, where the R2 denotes a surface resistivity of the resin molded article after being drawn by a tension tester and the R1 denotes a surface resistivity of the resin molded article before being drawn by the tension tester, so that, at 25 degrees Celsius, a length of a primary face of the resin molded article in a width direction becomes 140% of a length of the primary face of the resin molded article in the width direction before being drawn by the tension tester, and wherein the primary face is a face that intersects a thickness direction of the resin molded article [instant claim 9]; a shrinkage factor of the resin molded article at 25 degrees Celsius cooled after heated to 100 degrees Celsius relative to the resin molded article at 25 degrees Celsius before heated, when the resin molded article is heated from 25 degrees Celsius to 100 degrees Celsius and then cooled to 25 degrees Celsius is less than or equal to 2.0% [instant claim 10]; the resin molded article at 25 degrees Celsius cooled after heated to 100 degrees Celsius when the resin molded article is heated from 25 degrees Celsius to 100 degrees Celsius and then cooled to 25 degrees Celsius expands compared to the resin molded article at 25 degrees Celsius before heated [instant claim 11], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 13: Watanabe et al. (US ‘829) discloses the conductive resin sheet has a thickness of 0.05 to 0.3 mm (50 µm to 300 µm) [0155], with specific embodiments having a thickness of 0.1 mm (100 µm) [0155; 0157].
Regarding claims 15-16: Watanabe et al. (US ‘829) discloses the detection device 130 has the antenna member 43 as the second electrode and is arranged on a part of the bottom of the developing chamber 46a formed by the developing frame 40 [0149-0150; Fig. 9]. Watanabe et al. (US ‘829) discloses the toner remaining amount detecting device 134 detects the capacitance between the developing sleeve 41 and antennae member 43 by applying bias to the developing sleeve 41 from the developing power source 131 [0151-0152; Fig. 9].
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 2015/0016829) as applied to claim 1 above, and further in view of Yanagisawa et al. (JP 2018-28031).
Regarding claim 6: Watanabe et al. (US ‘829) discloses the basic claimed apparatus [as set forth above with respect to claim 1]; wherein Watanabe et al. (US ‘829) discloses carbon black [0114; 0117; 0154-0155].
Watanabe et al. (US ‘829) does not disclose carbon black having a dibutyl phthalate (DBP) oil absorption of greater than or equal to 100 ml/100g and less than or equal to 500 ml/100g. However, Yanagisawa et al. (JP ‘031) discloses conductive resin compositions [0001] comprising carbon black [0045] having a dibutyl phthalate (DBP) oil absorption 100 ml/100g to 400 ml/100g [0049], with specific carbon black having a DBP oil absorption of 190ml/100g [0071]. Watanabe et al. (US ‘829) and Yanagisawa et al. (JP ‘031) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of conductive resin compositions comprising carbon black. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined carbon black having a DBP oil absorption 100 ml/100g to 400 ml/100g, with specific carbon black having a DBP oil absorption of 190ml/100g, as taught by Yanagisawa et al. (JP ‘031) in the invention of Watanabe et al. (US ‘829), and would have been motivated to do so since Yanagisawa et al. (JP ‘031) suggests such carbon blacks afford conductive resin compositions capable of forming a molded articles that are lightweight and have high electrical conductivity [0015].
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 2015/0016829) as applied to claim 9 above, and further in view of Yanagisawa et al. (JP 2018-28031). Yanagisawa et al. (JP 2018-28031) English machine translation for citation.
Regarding claim 14: Watanabe et al. (US ‘829) discloses the basic claimed apparatus [as set forth above with respect to claim 9]; wherein Watanabe et al. (US ‘829) discloses carbon black [0114; 0117; 0154-0155].
Watanabe et al. (US ‘829) does not disclose carbon black having a dibutyl phthalate (DBP) oil absorption of greater than or equal to 100 ml/100g and less than or equal to 500 ml/100g. However, Yanagisawa et al. (JP ‘031) discloses conductive resin compositions [0001] comprising carbon black [0045] having a dibutyl phthalate (DBP) oil absorption 100 ml/100g to 400 ml/100g [0049], with specific carbon black having a DBP oil absorption of 190ml/100g [0071]. Watanabe et al. (US ‘829) and Yanagisawa et al. (JP ‘031) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of conductive resin compositions comprising carbon black. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined carbon black having a DBP oil absorption 100 ml/100g to 400 ml/100g, with specific carbon black having a DBP oil absorption of 190ml/100g, as taught by Yanagisawa et al. (JP ‘031) in the invention of Watanabe et al. (US ‘829), and would have been motivated to do so since Yanagisawa et al. (JP ‘031) suggests such carbon blacks afford conductive resin compositions capable of forming a molded articles that are lightweight and have high electrical conductivity [0015].
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 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. (11,208,545). Although the claims at issue are not identical, they are not patentably distinct from each other because the image forming apparatus comprising a developer level detection unit electrically connected to a cartridge comprising a capacitance detection unit comprising a resin molded article of EVA and carbon black [claim 9] of U.S. Patent No. (11,208,545) anticipates the instant claimed image forming apparatus (instant claim 1 and 9). While U.S. Patent No. (11,208,545) does not claim the image forming apparatus comprising the molded resin article of claims 2-6 and/or 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the molded resin article of claims 2-6 and/or 11 in the image forming apparatus of claim 9, as U.S. Patent No. (11,208,545) claims the molded resin article of claims 2-6 and 11 as resin molded articles. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
“Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claims 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. (11,987,691). Although the claims at issue are not identical, they are not patentably distinct from each other because the image forming apparatus comprising a developer level detection unit electrically connected to a cartridge comprising a capacitance detection unit comprising a resin molded article of EVA and carbon black [claim 9] of U.S. Patent No. (11,987,691) anticipates the instant claimed image forming apparatus (instant claim 1 and 9). While U.S. Patent No. (11,987,691) does not claim the image forming apparatus comprising the molded resin article of claims 2-6 and/or 12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the molded resin article of claims 2-6 and/or 12 in the image forming apparatus of claim 9, as U.S. Patent No. (11,987,691) claims the molded resin article of claims 2-6 and 12 as resin molded articles. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
“Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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