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 .
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.
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Claims 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,493,871 (hereinafter ‘871) in view of Gilan et al. (US Publication 2016/0097996; hereinafter Gilan). Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claims 1 and 11, patent ‘871 teaches an image forming apparatus comprising:
a housing comprising a front wall and a rear wall spaced apart from the front wall in a front/rear direction (col. 15, lines 38-39);
a photosensitive drum (“toner image” suggests the use of a photosensitive drum) provided in the housing and configured to execute a toner image forming process for forming a toner image on a sheet (col. 15, lines 40-41); and
a layer transfer unit configured to perform a layer transferring process for transferring a layer over the toner image formed on the sheet (col. 15, lines 42-43), the layer transfer unit comprising:
a layer transfer part configured to transfer the layer over the toner image (col. 15, lines 45-47);
a first reel on which the layer prior to transferring is wound (col. 15, lines 54-55);
a second reel configured to take-up the layer after transferring (col. 15, lines 57-58);
a casing disposed above the housing (col. 15, line 48 and col. 16, lines 7-8) and configured to accommodate the first reel, the second reel, and the layer transfer part therein (col. 15, lines 50-53), the casing being formed with an opening through which the first reel and the second reel are attachable and detachable (col. 16, lines 9-11); and a cover (an opening) configured to move between an open position in which the cover exposes the opening to an outside of the casing and a closed position in which the cover closes the opening (col. 15, lines 48-49 and col. 16, lines 9-11).
However, ‘871 is silent regarding the layer transfer part is a layer transfer roller.
Gilan teaches a layer transfer unit (10) comprising a layer transfer roller (including 24 and 28) configured to transfer the layer over the toner image ([0014]); a first reel (30) on which the layer prior to transferring is wound ([0014]; FIG. 2-3); and a second reel (36) configured to take-up the layer after transferring ([0014]; FIG. 2-3).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize the details of the layer transfer part as taught by Gilan to the layer transfer unit of ‘871 with reasonable expectation of transferring the layer as originally intended.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 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 1-4, 6, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Morikawa (US Publication 2011/0103855) in view of Tischer (US Publication 2003/0156877; IDS dated 06/28/2024 US Publication Cite No. 12).
With regards to claims 1 and 11, Morikawa teaches an image forming apparatus (100; FIG. 1) comprising:
a housing (housing of 100 shown in FIG. 1) comprising a front wall and a rear wall spaced apart from the front wall in a front/rear direction (FIG. 1);
a photosensitive drum (2a-d) provided in the housing and configured to execute a toner image forming process for forming a toner image on a sheet ([0023-0025]); and
a layer transfer unit (55) configured to perform a layer transferring process for transferring a layer (gloss film; [0032-0033]) over the toner image formed on the sheet ([0030]), the layer transfer unit comprising:
a layer transfer roller (203) configured to transfer the layer over the toner image ([0033]; FIG. 2);
a first reel (204) on which the layer prior to transferring is wound ([0033]; FIG. 2);
a second reel (205) configured to take-up the layer after transferring ([0033]; FIG. 2);
a casing (housing of 55) disposed above the housing (housing of 100; FIG. 1) and configured to accommodate the first reel (204), the second reel (205), and the layer transfer roller (203) therein (FIG. 1-2).
However, Morikawa is silent regarding the casing being formed with an opening through which the first reel and the second reel are attachable and detachable; and a cover configured to move between an open position in which the cover exposes the opening to an outside of the casing and a closed position in which the cover closes the opening.
Tischer teaches an image forming apparatus (abstract; FIG. 1) comprising a casing (including 4; [0025]) for a first reel (28) and second reel (30; [0028-0029]), the casing being formed with an opening ([0026]; FIG. 2) through which the first reel (28) and the second reel (30) are attachable and detachable ([0027]; FIG. 2); and a cover (4) configured to move between an open position (FIG. 2) in which the cover exposes the opening to an outside of the casing (housing of 2 including 4; [0025]) and a closed position (FIG. 1) in which the cover closes the opening (FIG. 1-2; [0025-0026]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a casing holding a first and second reel formed with a pivoting opening as taught by Tischer to the layer transfer unit holding the first and second reel of Morikawa to provide an opening for ease of inspection and maintenance ([0027]; Tischer).
With regards to claim 2, Morikawa, as combined with Tischer, teaches (citations to Tischer unless specified otherwise) the image forming apparatus according to claim 1, wherein the casing (including 4) has a wall (12; [0025]) extending in a vertical direction, an upper edge of the wall (12) defining the opening such that the opening faces upward (FIG. 2).
With regards to claim 3, Morikawa, as combined with Tischer, teaches (citations to Tischer unless specified otherwise) the image forming apparatus according to claim 2, wherein the cover (4) is disposed above the opening (FIG. 1-2), wherein, in a state where the cover is in the closed position, the cover covers the opening from above, and wherein, in a state where the cover is in the open position, the cover is disposed at a rear side of both of the first reel and the second reel in the front/rear direction, thereby enabling a user to access the first reel and the second reel from an upper side and a front side of the casing (in the opened position as in FIG. 2, the user is capable of accessing the first and second reel from an upper side being that the casing is placed on a table).
With regards to claim 4, Morikawa, as combined with Tischer, teaches (citations to Tischer unless specified otherwise) the image forming apparatus according to claim 3, wherein the cover (4) is pivotable about an axis, the axis being disposed nearer to the rear wall than to the front wall in the front/rear direction (see FIG. 2 casing of Tischer as the casing for 55 of Morikawa in FIG. 1-2).
With regards to claim 6, Morikawa, as combined with Tischer, teaches (citations to Morikawa unless specified otherwise) the image forming apparatus according to claim 1, further comprising a passage, along which a sheet that has been subjected to the toner image forming process is guided, the passage comprising:
a first part (path through 19, 12 to midpoint between 12 and 16) extending rearward (toward the right as in FIG. 1) in the front/rear direction from the photosensitive drum (FIG. 1);
a second part (path from midpoint of 12,16 to midpoint of 16, 21) extending from a rear end of the first part upward in a vertical direction (FIG. 1); and
a third part (midpoint of 16,21 through 21 and 55) extending from an upper end of the second part further upward in the vertical direction and extending frontward toward the layer transfer roller (FIG. 1-2).
With regards to claim 7, Morikawa, as combined with Tischer, teaches (citations to Morikawa unless specified otherwise) the image forming apparatus according to claim 1, wherein the first reel (204) is disposed nearer to the rear wall (right wall of 100 as in FIG. 1) than the second reel (205) is to the rear wall in the front/rear direction (left-right direction as in FIG. 1).
With regards to claim 10, Morikawa, as combined with Tischer, teaches (citations to Morikawa unless specified otherwise) the image forming apparatus according to claim 1, wherein the layer transfer roller is configured to transfer the layer onto the toner image by heating the toner image (via 201; [0032]).
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Morikawa (US Publication 2011/0103855) in view of Tischer (US Publication 2003/0156877; IDS dated 06/28/2024 US Publication Cite No. 12), and further in view of Saito (US Patent 7,107,004; IDS dated 06/28/2024 US Patent Cite No. 5).
With regards to claim 5, Morikawa, as combined with Tischer, teaches the image forming apparatus according to claim 1. However, Morikawa, as combined with Tischer, is silent regarding wherein the layer transfer unit further comprises: a first discharge roller configured to discharge, to an outside of the casing, a sheet that has been subjected to both of the toner image forming process and the layer transferring process; and a first discharge tray configured to receive the sheet discharged from the casing by the first discharge roller.
Saito teaches an image forming apparatus comprising a sheet-finishing unit (200); FIG. 2), which is located at a different position compared to Morikawa (FIG. 2 of Saito as opposed to FIG. 2 of Morikawa). Saito further teaches the sheet-finishing unit comprises: a first discharge roller (including roller of 213) configured to discharge (col. 6, lines 35-51), to an outside of the casing, a sheet that has been subjected to both of the toner image forming process (via 140) and the sheet-finishing unit (FIG. 2); and a first discharge tray (201) configured to receive the sheet discharged from the casing by the first discharge roller (col. 6, lines 35-51; FIG. 2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to relocate the layer transfer unit as taught by Morikawa, as combined with Tischer to the location (200 in FIG. 2) as taught by Saito to separate finished sheets from regular printed sheets (col. 6, line 52 to col. 7, line 9; Saito).
With regards to claim 8, Morikawa, as modified by Tischer and Saito, teaches (citations to Morikawa unless specified otherwise) the image forming apparatus according to claim 5, further comprising:
a second discharge roller (21; FIG. 1) configured to discharge, to an outside of the housing, a sheet that has been subjected to the toner image forming process and has not been subjected to the layer transferring process ([0028]);
a second discharge tray (22) configured to receive the sheet discharged from the housing by the second discharge roller ([0030]); and
a flapper (170; Saito) configured to receive a sheet conveyed from the photosensitive drum and to guide the received sheet to a selected one of the layer transfer roller and the second discharge roller (col. 6, lines 1-18; Saito),
the flapper being switchable between:
a first state in which the flapper guides the received sheet toward the layer transfer roller (col. 6, lines 1-18; Saito); and
a second state in which the flapper guides the received sheet toward the second discharge roller (col. 6, lines 1-18; FIG. 2; Saito).
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior arts on record fail to anticipate and/or suggest the combination of the claimed invention. Specifically, the prior arts on record fail to teach, inter alia, the limitation of “wherein the layer transfer unit further comprises an additional layer transfer roller configured such that the layer transfer roller and an the additional layer transfer roller nip therebetween the sheet formed with the toner image and the layer wound over the first reel and the second reel, the additional layer transfer roller being movable together with the cover.” The closest prior art, Morikawa (see above), teaches the image forming apparatus of claim 1. However, Morikawa teaches the layer transfer unit comprises a single transfer roller (203). To further combine an additional layer transfer roller and having “the additional layer transfer roller being movable together with the cover” would be require extensive modification to Morikawa. Furthermore, no other known prior art to have an additional layer transfer roller being movable together with the cover.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANG X.L NGUYEN whose telephone number is (571)272-1585. The examiner can normally be reached Monday-Friday 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHEN D. 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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/QXN/ Examiner, Art Unit 2853
/STEPHEN D MEIER/ Supervisory Patent Examiner, Art Unit 2853
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