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 Group I, Subspecies A1, Subspecies C5, claims 1-3, 5-6, and 12-19 in the reply filed on June 16, 2026 is acknowledged. The traversal between Groups I-III is on the grounds that the feature of the multi-application module of claim 1 is not taught by the Kuronuma et al. reference because the Kuronuma et al. reference does not teach a printing unit designed such that it can print along two running directions in the printing nip. In particular, the applicant argues that the positive and negative X directions that the print head travels in Kuronuma does not correspond to the running direction as defined by the claims but rather to a direction perpendicular to the running direction of the paper.
This is not found persuasive for several reasons. First, the running direction has not been clearly defined in the claims as the running direction of the substrate or transfer product. Second, the claim recitation “wherein the printing unit is designed such that it can printing along two running directions in the printing nip” is unclear in meaning and scope as to how this structurally defines the printing unit (i.e., the inkjet printhead). For example, even if the “two running directions” is interpreted to be the direction of travel of the substrate or transfer product, as applicant contends, it is not clear how this language structurally distinguishes from a printing unit that is designed such that it can print along a single running direction in the printing nip. Specifically, it is not clear how the movement of the substrate through the printing nip structurally defines the printing unit (i.e., the inkjet printhead) because, regardless of whether the substrate is traveling forward or backward through the printing nip, the printing unit is structurally the same. Furthermore, the Examiner also points out that the multi-application module of claim 1 is also known in the art in view of Shigeta (US 20202/0079104 A1) as set forth in detail in the prior art rejection below. Thus, the Examiner maintains that Groups I, II and III lack unity of invention because the corresponding technical feature is not a special technical feature, as it does not make a contribution over the prior art.
With respect to the traversal of the species/subspecies requirement, the Examiner notes that while applicant has presented arguments regarding the disagreement with the necessity to elect from Subspecies group B and with the specific claims indicated as being generic, the applicant has not provided any specific arguments as to why the subspecies requirement is in error. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election of the subspecies A1 and C5 has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 4, 7-11, and 20-44 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions and subspecies, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 16, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities:
It is noted that there are several instances throughout the specification in which the applicant refers to particular claim numbers. Since the claim numbers may be renumbered by the Examiner during prosecution and/or allowance of the application, these references to specific claim numbers may become inaccurate and confusing if renumbering occurs. Therefore, it is suggested that the references to the particular claim numbers be deleted from the specification. Particular attention is invited to the following areas of the specification:
Page 2, lines 20-21
Page 2, line 26
Page 6, line 7
Page 7, lines 10-11
Appropriate correction and/or clarification is required.
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 1-3, 5-6, and 12-19 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.
With respect to claim 1, this claim is unclear in meaning and scope because the claim includes many “and/or” statements and alternative language which makes it impossible to determine what structure or combination of structures are actually being positively recited. Therefore, the exact metes and bounds of claim 1 are unclear. Additionally, it is suggested that the term “it” in line 8 be replaced with the structure to which “it” is referring since the term “it” can be ambiguous in meaning.
Also in claim 1, the phrase “wherein the printing unit is designed such that it can print along two running directions in the printing nip” is unclear in meaning and scope as to how this structurally defines the printing unit (i.e., the inkjet printhead) or what the language “designed such that” is intended to convey. Specifically, what does this language structurally require? For example, even if the “two running directions” is interpreted to be the direction of travel of the substrate or transfer product, as applicant contends, it is not clear how this language structurally distinguishes from a printing unit that is designed such that it can print along a single running direction in the printing nip. Specifically, it is not clear how the movement of the substrate through the printing nip structurally defines the printing unit (i.e., the inkjet printhead) because, regardless of whether the substrate is traveling forward or backward through the printing nip, the printing unit is structurally the same. From the context of the specification, it appears that the provision of being able to print along two running directions is more related to the multifunctional element and/or the multi-application module overall than to the construction of the printing unit (i.e., printhead) itself. Thus, the claim language reciting “the printing unit is designed such that it can print along two running directions in the printing nip” is unclear in scope and meaning.
With respect to claim 3, note that this claim is unclear because it uses improper Markush type language. Note the proper format for Markush language is set forth in MPEP 2117(I).
With respect to claim 5, the recitation of “a second multifunctional roller” in line 4, two second multifunctional rollers in lines 5-6, and “the at least one second multifunctional roller” in lines 7-8 are unclear as to whether these are somehow referring back the previously recited at least one second multifunctional roller in claim 1 or if it is intended to recite a different second multifunctional roller(s).
Additionally, note the multiple occurrences of “and/or” in claims 5-6 make it impossible to determine what structure or combination of structures are actually being positively recited. Therefore, the exact metes and bounds of claims 5-6 are unclear.
With respect to claims 12-13 and 15-19, note the multiple occurrences of “and/or” in claims 12-13 and 15-19 make it impossible to determine what structure or combination of structures are actually being positively recited. Therefore, the exact metes and bounds of claims 12-13 and 15-19 are unclear.
With respect to claim 17, the term “the same first multifunctional roller” has no proper antecedent basis. Additionally, it is not clear if the term “at least one second multifunctional roller” in line 5 is the same as the second multifunctional roller recited previously in claim 1 or if this language is intending to refer to a different second multifunctional roller.
With respect to claim 19, the term “the position” in lines 4-5 has no proper antecedent basis since no position was previously recited in the claims. Additionally, the term “the position data” in line 8 has no proper antecedent basis because no position data was previously recited in the claims.
Appropriate correction and/or clarification is required.
Note that in an effort to advance prosecution of the application, the Examiner has interpreted claim 1 as only positively reciting a printing unit comprising an inkjet head or UV inkjet printbar, a multifunctional element comprising a first multifunctional roller, a second multifunctional roller or a printing table, wherein the printing unit and multifunctional element form a printing nip and the printing unit is capable of printing in two running directions in the printing nip.
Note, similarly, all the other occurrences of “and/or” in the dependent claims have been broadly interpreted as “or” recitations as can be best understood by the Examiner.
To the extent that the claim language is clear in meaning and scope, note the following rejections are deemed to be appropriate:
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.
Claims 1-2, 5-6, and 12-18 are rejected under each of 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Shigeta (US 2020/0079104 A1).
With respect to claim 1, Shigeta teaches a multi-application module 10A, 10B for printing on a substrate 12 (paragraph [0025]) comprising a printing unit 16a-16e and a multifunctional element 64a, 64b, wherein a printing nip is formed between the printing unit 16a-16e and the multifunctional element 64a, 64b and wherein the multifunctional element has a printing table 64a, 64b (paragraph [0036]) and wherein the printing unit is designed such that it can printing along two running directions (i.e., forward and reverse directions as shown in Figures 1-2 and 4-5) in the printing nip, and wherein the printing unit comprises at least one inkjet printhead 16a-16e and wherein the printing on the substrate 12 is effected with the printing unit 16a-16e in the printing nip. See, in particular, Figures 1-2 and 4-5.
With respect to claim 2, Shigeta teaches the multi-application module 10A, 10B further has two winding rollers 30, 48 (paragraph [0031]) for receiving the substrate 12.
With respect to claims 5-6, 12, and 15-17, the requirements of the claim are considered to be met since claim 1 was met in the alternative where the first multifunctional roller and/or the at least one second multifunctional roller are considered to be optional. Only that which is optional is claimed here and therefore claims 5-6, 12, and 15-17 do not recite any features which would define over Shigeta.
With respect to claim 13, note Shigeta teaches the printing unit includes at least two rows of printheads 16a-16e, as shown in Figures 1-2 and 4-5.
With respect to claim 14, Shigeta teaches ink I is ejected from the printing unit 16a-16e perpendicularly relative to the surface of the multifunctional element 64a, 64b, as shown in Figures 1-5 in particular.
With respect to claim 18, note Shigeta teaches the module 10A, 10B has a changeable substrate path in that the substrate path has a different configuration and travels around different conveying rollers, as shown in Figures 1-2 and Figures 4-5.
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.
Claims 3 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shigeta (US 2020/0079104 A1) in view of Izawa et al. (EP 2 505 366 A1).
With respect to claim 3, Shigeta teaches a multi-application module as recited with the possible exception of the clamping system as recited. Izawa et al. teaches it is well made in the art to have a multi-application module that allows for printing on a substrate along two running directions of the substrate and further including a clamping system for clamping the substrate, wherein the clamping system has one or more of the following elements, selected individually or in combination from: dancer roller, controlled dancer roller, measuring roller, friction shaft. See, in particular, the multi-application module 1 printing on the substrate 3 and the controlled dancer roller arrangements 10a, 10b described in paragraphs [0024]-[0026] and shown, for example, in Figure 1 of Izawa et al. In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a clamping system as taught by Izawa et al. in the module of Shigeta to allow for better controlled conveyance of the substrate through the module.
With respect to claim 19, Shigeta teaches a multi-application module as recited with the exception of including a detection unit and control device for controlling the printing unit on the basis of the position data detected by the detection unit. Izawa et al. teaches a multi-application module 1 printing on a substrate 3 and includes a detection unit 15 for detecting an element 14 on the substrate and a control unit 7 for controlling the printing unit 4 such that the printing can be provided so as to correspond to the position of the printed element as desired. See, in particular, paragraphs [0029] and [0037] of Izawa et al. for example. In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a detection unit and control device as taught by Izawa et al. for the multi-application module of Shigeta to insure that the back printing and front side printing images are in corresponding positions on the substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nishioka et al. (US 2020/0307283 A1) teaches a substrate printing arrangement that allows for printing on a substrate in two running directions of the substrate. Strater, Jr. et al. (US 9,487,027 B1) teaches an inkjet method of applying adhesive to a substrate to bond a foil material to the substrate. Each of these references have similarities to the claimed subject matter that are readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE J THOMPSON whose telephone number is (571) 272-2161. The examiner can normally be reached M-W 8:30-5:00 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, Stephen D Meier can be reached at 571-272-7149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leslie J Thompson/Primary Examiner, Art Unit 2853
Prosecution Insights