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 of a product made in the reply filed on 12/22/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a))
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).
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/22/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because the specification and claims state that the second opening (005) is ahead of the final charging position (014) (paragraph [0022] and claim 4) and that the first opening (006) is ahead of the buffer (015) (paragraph [0023] and claim 5). However, according to figures 5B. and 7A-C it appears that the resin arrives at the final charging position before getting to the second opening and similarly the resin arrives at the buffer before arriving at the first open. This inconsistency requires correction.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 4, 5 and 7 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 4, the claim states “wherein the opening is formed ahead of the charging target position”. It is unclear what is meant by “ahead of” in this context: whether this language refers to some sort of front or back of the claimed product, to a time when the components are created, or to the order in which resin arrives at the components. If the order in which the resin arrives at components is the intended meaning, Fig. 7A-7C appear to show the opposite of what is claimed where the resin would arrive at element 014 before arriving at element 005 or element 006. The plurality of possible meanings and the confusion with the figures renders the claim indefinite.
Regarding claim 5, the claim states “wherein the opening is formed ahead of the buffer”. It is unclear what is meant by “ahead of” in this context: whether this language refers to some sort of front or back of the claimed product, to a time when the components are created, or to the order in which resin arrives at the components. If the order in which the resin arrives at components is the intended meaning, Fig. 7A-7C appear to show the opposite of what is claimed where the resin would arrive at element 015 before arriving at element 006 (which appears to be the opening the claim is referring to in view of paragraph [0023] of the specification). The plurality of possible meanings and the confusion with the figures renders the claim indefinite.
Appropriate correction and/or clarification is required.
For the purposes of examination ahead in claims 4 and 5 are taken to mean ahead in terms of the order in which resin would arrive if poured into the flow path (i.e., a flow direction).
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.
(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.
Claims 1-7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Wakayama et al. (US 20180043626 A1).
Regarding claim 1, Wakayama et al. teaches a first member (Fig.1A element 20), a second member bonded to the first member (Fig. 1A element 11), a resin formed between the first member and the second member to bond the first member and the second member (See element 1 of below modified version of Fig. 1B and paragraph [0037]), and a buffer configured to store resin and formed between the first member and the second member (See element 2 of the below modified version of Fig. 1B), wherein the buffer has an opening that leads to a side surface of the liquid cartridge (Fig. 1A element 13).
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Regarding claim 2, Wakayama et al. teaches all the elements of claim 1 as stated above and wherein the opening is provided so that a state of the resin in the buffer can be visually checked from outside the liquid cartridge (Fig. 1C element 13).
Regarding claim 3, Wakayama et al. teaches all the elements of claim 1 as stated above and further comprising a charging target position, as a target position for charging the resin, defined between the first member and the second member, wherein the resin is formed up to the charging target position (see element 3 in the above modified version of figure 1B where the resin would naturally end if filled from element 21/44 as stated by paragraph [0039]).
Regarding claim 4, to the extent the claim is clear in meaning and scope, Wakayama et al. teaches all the elements of claim 3 as stated above and wherein the opening is formed ahead of the charging target position (See the above modified version of Fig. 1B where the resin if charged from element 44/21 as stated by paragraph [0039] it would make elements 13/43 before element 3).
Regarding claim 5, to the extent the claim is clear in meaning and scope, Wakayama et al. teaches all the elements of claim 1 as stated above and wherein the opening is formed ahead of the buffer (See elements 43 and 2 in the above modified version of Fig. 1B where the resin would form element 43 before element 2 if filled from element 44/21 as stated by paragraph [0039]).
Regarding claim 6, Wakayama et al. teaches all the elements of claim 1 as stated above and wherein the buffer is configured to receive the resin charged therein buffer (See element 2 in the above modified version of Fig. 1B and paragraph [0039]).
Regarding claim 7, Wakayama et al. teaches all the elements of claim 4 as stated above and wherein another opening different from the opening is formed between the buffer and the charging target position (Fig. 1A element 21).
Regarding claim 9, Wakayama et al. teaches all the elements of claim 1 as stated above and wherein the opening and the buffer are integrated (See the above modified version of Fig. 1B were elements 43 and 2 are connected).
Regarding claim 10, Wakayama et al. teaches all the elements of claim 1 as stated above and wherein the first member is a lid part of the liquid cartridge (Fig. 1A element 20 and paragraph [0023]), and wherein the second member is a container part configured to store a liquid of the liquid cartridge (Fig. 1A element 11 and paragraphs [0023] and [0029]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wakayama et al. (US 20180043626 A1).
Regarding claim 8, Wakayama teaches all the elements of claim 1 as stated above but fails to teach the opening is formed with a size of 1 mm × 1 mm on the side surface of the liquid cartridge. The optimum size of the opening could easily be determined by routine experimentation by one of ordinary skill in the art to arrive at a size that would allow visual inspection of the resin without weakening the overall structure or providing a visually distracting hole. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to create an opening with a size of 1mm x 1mm as a part of routine optimization to create an opening that will allow visual inspection of the resin without weakening the overall structure providing a visually distracting hole.
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.
Claim 1-3, 6, and 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4 of U.S. Patent No. 12420556 B2 (Hasegawa et al.). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2 and 4 of Hasagawa et al. recites a container comprising 2 members with a flow path between them, a buffer and an opening.
Regarding claim 1, Hasegawa et al. recites a first member (Col. 10, line 7); a second member (Col. 10, line 8) bonded to the first member (Col. 10, lines 10-15); a resin formed between the first member and the second member to bond the first member and the second member (Col. 10, lines 10-15); and a buffer configured to store resin (Col. 10, line 22-24) formed between the first and second member (Col. 10, line 23-24 and lines 10-13), wherein the buffer has an opening that leads to a side surface of the liquid cartridge (Col. 10, lines 17-24).
Regarding claim 2, Hasegawa et al. recites all the elements of claim 1 as stated above and the opening is provided so that a state of the resin in the buffer can be visually checked from outside the liquid cartridge (Col. 10, lines 25-28).
Regarding claim 3, Hasegawa et al. recites all the elements of claim 1 as stated above and further comprising a charging target position, as a target position for charging the resin (Col. 10, lines 14-16, note the filling target position is taken to be the same as the charging target position), wherein the resin is formed up to the charging target position (Col. 10, lines 14-16). Hasegawa et al. does not specifically recite that the charging target position is between the first and second member. However it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to place the charging target position in-between the first and second member because Hasegawa et al. states that the charging target position it attached to the flow path (Col. 10, line 14-16) and that the flow path is between the first and second member (Col. 10, lines 10-13) and since the charging target position is attached to the flow path it would be obvious that it is also between the first and second member.
Regarding claim 6, Hasegawa et al. recites all the elements of claim 1 as stated above and the buffer is configured to receive the resin charged therein (Col. 10, lines 22-24).
Regarding claim 8, Hasegawa et al. recites all the elements of claim 1 as stated above and an opening formed on the side of the cartridge (Col. 10, lines 17-24) but it does not specifically recite the opening being 1mm x 1mm. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention as routine optimization to make the opening 1mm x 1mm to provide an opening that allows visual inspection of the resin without compromising the structural integrity of the cartridge.
Regarding claim 9, Hasegawa et al. recites all the elements of claim 1 as stated above and wherein the opening and the buffer are integrated (claim 4, Col. 10, lines 37-38).
Claims 4, 5, 7 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12420556 B2 (Hasegawa et al.) in view of Wakayama et al. (US 20180043626 A1).
Regarding claim 4, Hasegawa et al. recites all the elements of claim 3 as stated above and an opening (Col. 10, lines 17-24) and charging target position (Col. 10, lines 14-16) but does not specifically recite the opening is formed ahead of the charging target position. Wakayama et al. does recite a container with 2 elements bound by resin (Abstract) and an opening (Fig. 1A element 13) that is formed ahead of the charging target position (see the above modified version of Fig. 1B where the resin if charged from element 44/21 as stated by paragraph [0039] it would make elements 13/43 before element 3). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to organize the charging target position and opening as claimed as an obvious method known in the art to allow a user to know that the resin is close to the charging target position.
Regarding claim 5, Hasegawa et al. recites all the elements of claim 1 as stated above and an opening (Col. 10, lines 17-24) and a buffer (Col. 10, line 22-24) but does not specifically recite the opening is formed ahead of the buffer. Wakayama et al. does recite a container with 2 elements bound by resin (Abstract) and an opening (Fig. 1A element 13) that is formed ahead of the buffer (See elements 43 and 2 in above modified version of Fig. 1B where the resin would form element 43 before element 2 if filled from element 44/21 as stated by paragraph [0039]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to organize the buffer and opening as claimed as an obvious method of placing buffers and openings known in the art to allow a user to know when resin enters the buffer.
Regarding claim 7, Hasegawa et al. and Wakayama recite all the elements of claim 4 as stated above and Hasegawa et al. recites an opening (Col. 10, lines 17-24) but does not specifically recite another opening different from the opening is formed between the buffer and the charging target position. Wakayama does teach a container with 2 elements bound by resin (Abstract) and wherein another opening different from the opening is formed between the buffer and the charging target position (Fig. 1A element 21). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the apparatus of Hasegawa et al. with the additional hole taught by Wakayama as an obvious plurality of parts to provide an addition view point to the status of the resin to better determine how it has flowed through the mold.
Regarding claim 10, Hasegawa et al. recites all the elements of claim 1 as stated above and a first (Col. 10, line 7) and second member (Col. 10 line 8) but does not recite that the first member is a lid and the second member is configured to store a liquid. Wakayama et al. does teach a container with 2 elements bound by resin (Abstract) and a lid (Fig. 1A element 20 and paragraph [0023]) and liquid container (Fig. 1A element 11 and paragraphs [0023] and [0029]) attached by resin (paragraph [0037]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to attach a lid and container as taught by Wakayama et al. as a simple substitution of 2 generic members for a lid and container known in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ino (US 7207307 B2) is cited for having similar structure to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL F BOELITZ whose telephone number is (571)272-3391. The examiner can normally be reached Mon-Fri 8am-5pm.
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, Stephen Meier can be reached at 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL FREDERICK BOELITZ/Examiner, Art Unit 2853
/Leslie J Thompson/Primary Examiner, Art Unit 2853