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 the apparatus of group II, claims 11-13 and species E, Figs. 27-29 in the reply filed on 04/21/2026 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)). Furthermore, the applicant in their election stated that “Claims 27-29 read on the elected species”. However, the examiner believes that the applicant meant that the “Figs. 27-29 read on the elected species” because there are no claims 27-29 present in the application. For the purpose of furthering prosecution, the examiner will interpret this statement as such.
Claims 1-10, 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected process and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/21/2026.
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.
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 Objections
Claims 11 and 13 are objected to because of the following informalities:
In claim 11, the phrase “an ejection head that ejects liquid” should read “an ejection head that ejects a liquid”.
In claim 11, the phrase “a liquid container configured to store liquid” should read “a liquid container configured to store the liquid”.
In claim 11, the phrase “a liquid storage portion configured to store liquid” should read “a liquid storage portion configured to store the liquid”.
In claim 11, the phrase “a liquid pouring portion that pours liquid” should read “a liquid pouring portion that pours the liquid”.
In claim 11, the phrase “a liquid supply portion that supplies liquid” should read “a liquid supply portion that supplies the liquid”.
In claim 11, the phrase “a collection container portion that stores liquid” should read “a collection container portion that stores the liquid”.
In claim 13, the phrase “a sealing member that prevents leakage of liquid” should read “a sealing member that prevents leakage of the liquid”.
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.
(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 11-13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kudo et al. (US 20170246879 A1).
Regarding claim 11, Kudo et al. teaches a liquid collection container comprising: a collection coupling portion configured to be coupled to the liquid discharge portion of the liquid container (Fig. 3 element 562 and paragraph [0147] and [0175]), a collection container portion that stores liquid collected from the liquid container through the collection coupling portion coupled to the liquid discharge portion (Fig. 3 element 54 and paragraph [0144]), and an atmospheric connection portion that connects the inside of the collection container to the atmosphere ((Fig. 3 element 56 and paragraph [0144]). The examiner notes that due to the usage of the word “for” in the claim, the limitations of a liquid ejecting apparatus with an ejection head that ejects liquid and a liquid container configured to store liquid supplied to the ejection head, and including a liquid storage portion configured to store liquid, a liquid pouring portion that pours liquid into the liquid storage portion, a liquid supply portion that supplies liquid to the ejection head, and a liquid discharge portion that discharges the liquid to the outside are functional intended use and have no patentable weight. It is noted that the structure taught by Kudo et al. is capable of being used with these elements.
Regarding claim 12, Kudo et al. teaches all the elements of claim 11 as stated above and wherein the collection coupling portion also serves as the atmospheric connection portion (Fig. 3 elements 562 and 56 and paragraphs [0144] and [0145] wherein the connection path 562 is part of the air communication path 56 that connects liquid chamber 52 and the buffer chamber 54 to the atmosphere).
Regarding claim 13, Kudo et al. teaches all the elements of claim 11 as stated above and a sealing member that prevents leakage of liquid through a passage of the collection coupling portion (paragraph [0149]).
Double Patenting
Claims 11-13 of this application is patentably indistinct from claims 1-3 and 9-11 of U.S. Application number No. 18/737,410. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 11-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3 and 9-11 of copending Application No. 18/737,410 (referred to as ‘410 below) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘410 teaches a liquid collection container, a collection coupling portion and an atmospheric connection portion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 11, the claims of 410’ teach a liquid collection container (claim 9, line 3, liquid collection container”) comprising: a collection coupling portion configured to be coupled to the liquid discharge portion of the liquid container (claim 9, line 5 and 6, collection coupling portion), a collection container portion that stores liquid collected from the liquid container through the collection coupling portion coupled to the liquid discharge portion (claim 9 lines 7-9, “collection container portion”), and an atmospheric connection portion that connects the inside of the collection container to the atmosphere (claim 9, lines 10 and 11, “atmospheric connection portion”). It is noted that due to the usage of the word “for” in the claim, the limitations of a liquid ejecting apparatus with an ejection head that ejects liquid and a liquid container configured to store liquid supplied to the ejection, and including a liquid storage portion configured to store liquid, a liquid pouring portion that pours liquid into the liquid storage portion, a liquid supply portion that supplies liquid to the ejection head, and a liquid discharge portion that discharges the liquid to the outside are intended use and have no patentable weight. Furthermore, it is noted that claims 2, 3, 10 and 11 of ‘410 all similarly teach the elements of the claim.
Claims 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9-11 of co-pending Application No. 18/737,410 (referred to as ‘410 below) in view of Kudo et al. (US 20170246879 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 12, the claims of ‘410 teach all the elements of claim 11 as stated above but the claims of ‘410 fail to teach the collection coupling portion also serves as the atmospheric connection portion. However, Kudo et al. teaches the collection coupling portion also serves as the atmospheric connection portion (Fig. 3 562 and 56 and paragraph [0144] and [0145]). 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 containers of ‘410 with the atmospheric connecting portion of Kudo et al. to allow air to displace ink or ink to displace air in the liquid storage portion as well as the collection container portion.
Regarding claim 13, the claims of application ‘410 teach all the elements of claim 11 as stated above but the claims of ‘410 fail to teach a sealing member that prevents leakage of liquid through a passage of the collection coupling portion. However, Kudo et al. does teach a sealing member that prevents leakage of liquid through a passage of the collection coupling portion (paragraph [0149]). It would have been obvious to one of the ordinary skill in the art prior to the effective filing date invention to combine the containers of application ‘410 with the sealing member of Kudo et al. to allow for a device that stops erroneous leakage of liquid through the collection coupling portion while allowing for air to pass through “a gas-permeable liquid-proof member (for example, gas-liquid separation membrane) configured to suppress a liquid from flowing upstream may be provided in the middle of the air communication path 56”(Kudo et al. paragraph [0149]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Suzuki et al. (US 20020024552 A1) and Chan (US 4831389 A) are cited for having structure similar 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.
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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
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