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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed invention, i.e., an image forming apparatus, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Under the “Description of the Background Art” section, the toner of Fig. 2 is taught to be representative of what is previously known in prior art ([0002]). Accordingly, Fig. 2 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Fig. 1 includes reference numbers 1-4 and Fig. 2 includes reference numbers 11-13 and 15. However, these reference numbers are not mentioned or defined anywhere in written description.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The disclosure is objected to because of the following informalities:
The tables disclosed in paragraphs [0099] (Table 5), [0100] (Table 6), [0101] (Table 7), and [0102] (Table 8) are blurry and difficult to read. Applicant’s cooperation is respectfully requested in identifying and replacing any other blurry tables/figures not listed above, along with a statement that any amendments to the specification contain no new matter.
Appropriate correction is required.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it attempts to define the configuration of an image forming apparatus through the properties of the toner(s) consumed by the apparatus, without also specifying the structural features the apparatus or its method of operation.
Specifically, lines 3-10 of the abstract state:
“The image forming apparatus has the following configuration. The initial toner contains, as external additives, a fine powder prepared by adding silica to strontium titanate to form a core and hydrophobizing a surface of the core with a silane compound, and a silica particles, and does not contain any titanium dioxide particle or contains a titanium dioxide particle at 50% by mass or less of fine powder. The replenishment toner contains, as external additives, a titanium dioxide particle and a silica particle, and does not contain the fine powder or contains the fine powder at 50% by mass or less of the titanium dioxide particle”.
However, only the configuration of the toner set is defined, not the configuration of the image forming apparatus itself.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
Claim 1 presently recites functional language including steps of operating an apparatus. Specifically, lines 1-4 recite “wherein a two-component developer including an initial toner and a carrier is previously charged into a developer tank”, and “a replenishment toner is replenished into the developer tank as the development proceeds”.
Claims 1-8 also presently recite limitations directed at a two-component developer including an initial toner and a carrier, and a replenishment toner.
Initially, the claims are directed at an apparatus (i.e., an image forming apparatus) and not its method of operation. According to MPEP § 2114, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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)”.
Therefore, the steps of previously charging and replenishing toner into a developer tank do not distinguish the claimed image forming apparatus over others found in prior art which include the same structural features (e.g., “a developer tank”), absent any showing by the Applicant that the image forming apparatus of the prior art would not possess the characteristics capable of performing the recited function(s), such as containing a developer tank capable of being charged or replenished with toner.
Moreover, claim 1 does not recite that the image forming apparatus comprises a developer tank, only that a two-component developer including an initial toner and a carrier are previously charged into “a developer tank” and that a replenishment toner is replenished into “the developer tank”. In other words, the claimed “developer tank” containing the initial toner and/or replenishment toner is not positively recited as a structural component of the claimed image forming apparatus.
Other structural features of the image forming apparatus (e.g., the color multifunctional machine “MX-8081” manufactured by SHARP CORPORATION used to evaluate the developer and toner in paragraphs [0071], [0073], and [0076]) which would be necessary to carry out “the development” of the initial toner and replenishment toner are also missing from the claims. As a result, it is unclear what constitutes the claimed “development” or how it “proceeds”, as no structural features of the claimed image forming apparatus are positively recited.
Finally, the claimed two-component developer and replenishment toner are materials worked upon by the apparatus (emphasis added). The toner, during the image forming process, is changed from a particulate material to a melted and fused material. That is, during fixing, heat and/or pressure is applied to the toner to bind it to the recording material (e.g., paper) such that the fixed toner cannot be recovered and reused by the image forming apparatus.
According to MPEP § 2115, “A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)”.
Furthermore, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
In other words, a material portion of the apparatus must be a permanent fixture of the apparatus that is not permanently changed by the regular operation of the apparatus. Since a toner is a material that is consumed by the apparatus and is not a permanent fixture of the apparatus, its inclusion in the apparatus claims does not represent a material limitation on the apparatus.
For instance, multiple different developers may be used in any electrophotographic image forming apparatus. Therefore, the limitations of the developer in the present claims do not represent material limitations on the apparatus because the claimed developer/toner could be substituted by another developer/toner and not alter the mechanical functioning of the apparatus. Therefore, the type of developer/toner to be used by the apparatus possesses no patentability, only the structural and material properties of the apparatus. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
In accordance with MPEP § 2114 and § 2115 above, any “image forming apparatus” found in prior art would anticipate the claims as currently presented, because the claims lack any recitation of the structural features of the claimed apparatus and attempt to define the apparatus by the materials worked upon, or consumed by, the apparatus.
Therefore, Applicant is encouraged to consider one of the following recommendations:
(1) Amend the apparatus claims to define the structural components of the image forming apparatus which are considered by the Applicant to be inventive (e.g., a composition of the photoconductor),
(2) Change the type of claim from an apparatus claim to a method claim (e.g., an image forming method), or
(3) Change the type of claim from an apparatus claim to a product claim (e.g., a toner or developer set).
Applicant is kindly reminded that any amendments to the claims, including those suggested above, must include support in the originally filed specification. See 35 U.S.C. 132(a), 37 CFR 1.121(f), and MPEP § 608.04.
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 1-8 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.
Claim 1, lines 2-3, presently recite “a replenishment toner is replenished into the developer tank as the development proceeds”. However, there is insufficient antecedent basis for “the development” in the claim. Additionally, it is unclear what constitutes “the development” or how it “proceeds”.
Claims 2-8 are rejected because they fully incorporate the subject matter of an indefinite claim.
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Diamond (Diamond, Arthur S., “Handbook of Imaging Materials”, 2002, Marcel Dekker, Inc., 2nd Ed., pg. 173-204).
Diamond teaches that the first commercially successful photocopier, which uses an electrophotographic process to create images on paper, was introduced by Haloid (Xerox) under the name “Xerox 914” in 1959 (pg. 173).
An example of the six basic steps in reproducing a document using a practical copier based on photoconductivity is shown in Fig. 5.1, and an example of a typical two-component developer housing is shown in Fig. 5.2 (pg. 174-176).
In other words, “an image forming apparatus”, including one capable of housing a two-component developer, has been well known before the effective filing date of the claimed invention.
The limitations directed at the claimed two-component developer including an initial toner and a carrier and the claimed replenishment toner recited in instant claims 1-8 have been considered. However, in accordance with MPEP § 2114 and MPEP § 2115 discussed above, the material(s) worked upon by an apparatus is not a patentable limitation, only the structural and material properties of the apparatus itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent No. 3,720,617 A to Chatterji et al. teaches a developer material comprising color toner particles and a minor proportion of silicon dioxide additive particles having at least a portion of the silicon atoms on the outside surface of the silicon dioxide particles directly attached through an oxygen atom to another silicon atom which is in turn directly attached through a carbon linkage to one to three organic groups (Abstract).
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
10/05/2026
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