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 .
Priority
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.
Information Disclosure Statement
The references cited in the information disclosure statement (IDS) submitted on 29 September 2024 and 13 November 2025 have been considered by the examiner.
Drawings
The drawings filed on 13 June 2024 are accepted.
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.
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 7-10 and 17-20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 (and claim 16) recites the broad recitation requiring one of nanotubes or particles or a combination of the two, and dependent claim 7 (and claim 17) recites and requires only carbon nanotubes which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 8-10 and 18-20 are similarly rejected because of their dependence on claim 7.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kuriyama et al. (US 6,072,976), hereinafter Kuriyama, in view of Saito et al. (US PGPub 2016/0368263 A1), hereinafter Saito.
With regard to Claim 1, Kuriyama discloses an intermediate transfer member (ITM) of a printing system (Col. 6, Line 60, intermediate transfer belt 20a; Figs. 3A-B), the ITM comprising:
an outer layer (22; Col. 7, Lines 4-10), which is configured to receive droplets of a printing fluid for producing an image thereon, and to transfer the image to a target substrate (Col. 6, Lines 60-68); and
a stack of flexible support layers (Figs. 3A-B), the stack comprising a mesh (Col 7, Lines 10-25, weave structure), having:
(i) a first section impregnated in a first layer having a first elastic modulus in an axis in which a tension force is applied to the ITM (Col. 7, Lines 52-65; 21a; intermediate transfer member is a belt so tension force applied in direction of movement inherently), and
(ii) a second section impregnated in a second layer (Fig. 3B; Col. 7, Line 27-51; multi-layer fabric structure), which is placed in contact with the first layer (Fig. 3B) and has in the axis, a second elastic modulus different from the first elastic modulus (Col. 8, Line 59 to Col. 10, Line 7; elastic layer may be formed on one or both fabric layers; Col. 9, Line 65 to Col. 10, Line 8, different resin or rubber layer similar or different from other elastic layer may be formed).
With respect to the recitation of “wherein, in response to applying to the ITM a specified level of the tension force, the stack of flexible support layers is configured to retain a predefined elongation of the ITM along the axis”, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The prior art as cited above recites the claimed structure, thus the function of the structure is not a distinguishing feature. Further, 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Kuriyama discloses an intermediate transfer member configured to receive a printing fluid for producing an image thereon as set forth above, but does not explicitly disclose configured to receive “droplets” of a printing fluid.
The secondary reference of Saito discloses a transfer member configured to receive droplets of a printing fluid for producing an image thereon, and to transfer the image to a target substrate (Abstract; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the inkjet heads to deliver droplets of a printing fluid of Saito, with the printing system of Kuriyama, in order to selectively and variably form images, as taught by Saito (¶0058).
With regard to Claim 2, Kuriyama further discloses wherein the mesh comprises a woven fiberglass fabric (Col. 10, Line 66 to Col. 11, Line 5).
With regard to Claim 3, Kuriyama further discloses wherein the second layer comprises a substance selected from a list of substances consisting of: (i) epoxy, (ii) Poly Aryl Ether Ketone (PAEK), (iii) Polysaccharides, (iv) polyimide, Polyethylene Terephthalate, and (v) a combination of two or more of the substances of the list (Col. 9, Lines 15-32, Col. 10, Lines 1-7).
With regard to Claim 4, Kuriyama further discloses an additional outer layer (resin layer 23), which is configured to be placed in contact with an ITM module (Col. 9, Lines 1-14; Figs. 1, 8, 10), wherein the ITM module is configured for moving the ITM along the axis (Col. 9, Lines 1-14; Figs. 1, 8, 10), the additional outer layer comprising: (i) a flexible substrate, configured to conform with one or more components of the ITM module and to have a friction with at least one of the one or more components for moving the ITM along the axis (Col. 9, Line 15 to 51), and (ii) one or more electrically conductive additives (Col. 9, Line 15 to 51).
With regard to Claim 5, Kuriyama further discloses wherein the one or more electrically conductive additives are configured to discharge an electrostatic charge away from the flexible substrate. Although Kuriyama does not explicitly disclose to discharge an electrostatic charge away from the flexible substrate, Kuriyama discloses the same structure as claimed (Col. 9, Lines 33-45; Col. 8, Line 17 to 51) and it would be an inherent property of the structure containing metal as claimed for such a discharge to take place, in order to function as intended. Further, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The prior art as cited above recites the claimed structure, thus the function of the structure is not a distinguishing feature. Further, 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With regard to Claim 11, Kuriyama discloses a method for producing an intermediate transfer member (ITM) of a printing system (Col. 1, Lines 13-17), the method comprising:
producing an outer layer (22; Col. 7, Lines 4-10) for:
(i) receiving droplets of a printing fluid and producing an image thereon (Col. 6, Lines 60-68), and
(ii) transferring the image to a target substrate (Col. 6, Lines 60-68);
producing a stack of flexible support layers (Figs. 3A-3B; Col. , Lines 10-25) by impregnating (i) a first section of a mesh in a first layer having a first elastic modulus in an axis in which a tension force is applied to the ITM (Col. 7, Lines 52-65; 21a; intermediate transfer member is a belt so tension force applied in direction of movement inherently), and (ii) a second section of the mesh in a second layer Fig. 3B; Col. 7, Line 27-51; multi-layer fabric structure), which is placed in contact with the first layer and has in the axis (Fig. 3B; Col. 7, Line 27-51; multi-layer fabric structure), a second elastic modulus different from the first elastic modulus (Col. 8, Line 59 to Col. 10, Line 7; elastic layer may be formed on one or both fabric layers; Col. 9, Line 65 to Col. 10, Line 8, different resin or rubber layer similar or different from other elastic layer may be formed); and producing the ITM by integrating at least the outer layer and the stack of flexible support layers (Col. 8, Line 59 to Col. 10, Line 7; elastic layer may be formed on one or both fabric layers; Col. 9, Line 65 to Col. 10, Line 8, different resin or rubber layer similar or different from other elastic layer may be formed).
Kuriyama discloses an intermediate transfer member configured to receive a printing fluid for producing an image thereon as set forth above, but does not explicitly disclose configured to receive “droplets” of a printing fluid.
The secondary reference of Saito discloses a transfer member configured to receive droplets of a printing fluid for producing an image thereon, and to transfer the image to a target substrate (Abstract; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the inkjet heads to deliver droplets of a printing fluid of Saito, with the printing system of Kuriyama, in order to selectively and variably form images, as taught by Saito (¶0058).
With regard to Claims 12-15, these claims recite limitations that are similar and in the same scope of invention as claims 2-5 respectively, above; therefore claims 12-15 are rejected for the same rejection rationale/basis as described in claims 12-15, respectively.
Claims 6-10 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kuriyama, in view of Saito, and further in view of Yoshida et al. (US PGPub 2019/0369527 A1), hereinafter Yoshida.
With regard to Claim 6, Kuriyama further discloses wherein the electrically conductive additives comprise one or more additives selected from a list of additives consisting of: (i) one or more nanotubes (NTs), (ii) one or more particles (Col. 8, Line 17 to 51), and (iii) a combination of the one or more NTs and particles.
The tertiary reference of Yoshida discloses wherein the electrically conductive additives comprise one or more additives selected from a list of additives consisting of: (i) one or more nanotubes (NTs) (¶0104), (ii) one or more particles (¶0096-0115), and (iii) a combination of the one or more NTs and particles (¶0096-0115).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the nanotubes of Yoshida, with the combination of Kuriyama-Saito, in order to improve the electrical conductivity and mechanical properties of the intermediate transfer belt, as taught by Yoshida (¶0104).
With regard to Claim 7, Kuriyama does not explicitly disclose wherein the NTs comprise carbon nanotube (CNTs) selected from a list of CNTs consisting of: (i) a multi-wall CNT (MWCNT), (II) a single-wall CNT (SWCNT), and (iii) a combination of one or more MWCNTs and SWCNTs.
The tertiary reference of Yoshida discloses wherein the NTs comprise carbon nanotube (CNTs) selected from a list of CNTs consisting of: (i) a multi-wall CNT (MWCNT), (II) a single-wall CNT (SWCNT), and (iii) a combination of one or more MWCNTs and SWCNTs (¶0104, carbon nanotubes can be single walled or multi-walled).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the carbon nanotubes of Yoshida, with the combination of Kuriyama-Saito, in order to improve the electrical conductivity and mechanical properties of the intermediate transfer belt, as taught by Yoshida (¶0104).
With regard to Claim 8, Kuriyama does not explicitly disclose wherein the additional outer layer comprises one of: (i) a first volume concentration of the MWCNT, (ii) a second volume concentration of the SWCNT, which is smaller than the first volume concentration, and (iii) a combination of the MWCNT and SWCNT having a third volume concentration that is smaller than the first volume concentration and larger than the second volume concentration, so as to obtain a predefined electrical conductivity of the additional outer layer.
The secondary reference of Yoshida discloses wherein the additional outer layer comprises one of: (i) a first volume concentration of the MWCNT (¶0104), so as to obtain a predefined electrical conductivity of the additional outer layer (¶0104).
With regard to Claim 9, Kuriyama does not explicitly disclose wherein the CNTs are configured to alter one or both of: (i) a third elastic modulus of the additional outer layer, and (ii) a thermal conductivity of the additional outer layer.
The tertiary reference of Yoshida discloses wherein the CNTs are configured to alter one or both of: (i) a third elastic modulus of the additional outer layer, and (ii) a thermal conductivity of the additional outer layer (¶0097-0098; 0104-0107).
Further, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The prior art as cited above recites the claimed structure, thus the function of the structure is not a distinguishing feature. Further, 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With regard to Claim 10, Kuriyama does not explicitly disclose wherein the one or more particles are selected from a list of particles consisting of: (i) metallic nanoparticle (NPs), (ii) carbon-based NPs, (iii) glass particles coated with metal, (iv) graphene particles, (v) graphite particles, and (vi) a combination of two or more of the particles selected from the list of particles.
The tertiary reference of Yoshida discloses wherein the one or more particles are selected from a list of particles consisting of: (i) metallic nanoparticle (NPs), (ii) carbon-based NPs, (iii) glass particles coated with metal, (iv) graphene particles, (v) graphite particles, and (vi) a combination of two or more of the particles selected from the list of particles (¶0096-0115).
With regard to Claims 16-20, these claims recite limitations that are similar and in the same scope of invention as claims 6-10 respectively, above; therefore claims 16-20 are rejected for the same rejection rationale/basis as described in claims 6-10, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT A. RICHMOND whose telephone number is (313)446-6547. The examiner can normally be reached on M-F 9-6:00 PM.
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/SCOTT A RICHMOND/Primary Examiner, Art Unit 2853