NON-FINAL OFFICE ACTION
Acknowledgements
1. This non-final Office Action addresses broadening reissue U.S. Application No. 18/806,622 (“instant application”). Examiners find the actual filing date of the instant application is August 15, 2024.
2. The instant application is a broadening reissue application of U.S. Patent No. 10,118,396, (“‘396 Patent”) issued Nov. 6, 2018. The ‘396 Patent was filed on Jul. 6, 2017 as U.S. Application No. 15/643,225 (“225 Application”), titled “PRINTING APPARATUS AND LIQUID STORAGE MEMBER”.
3. The instant application is a continuation of RE49,4336 published Dec. 20, 2022 (“R1”), which is a continuation of RE50,482 published Jul. 8, 2025 (“R2”).
4. Examiners do not find any certificates of correction, ongoing/previous proceedings before the Office, or current ongoing litigation involving the ‘396 Patent.
5. The ‘396 Patent issued with claims 1-24 (“Patented Claims”). In the preliminary amendment filed August 15, 2024 ("AUGUST 2024 CLAIM AMENDMENTS"), claims 1-24 are cancelled and claims 25-43 are added.
6. Claims 25-43 are pending and examined and are grouped as follows:
claims 25-39;
claims 40-42; and
claim 43.
Priority Claims
7. Examiners find the instant application is claiming domestic priority under 35 U.S.C. § 120 or 35 U.S.C. § 119(e) to U.S. App. No. 15/296,876 filed on Oct. 18, 2016 now Pat. No. 9,738,081
8. Examiners find the instant application claims foreign priority to JP 2015-214358 filed Oct. 30, 2015.
9. The presumed effective filing date of the instant application is Oct. 30, 2015, which is the filing date of the foreign priority document.
Specification Objections
10. The specification is objected to because it does not as the first sentence of the specification a cross reference to the other reissue applications (App. No. 16/728,460 and 17/750,772). 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue applications. Accordingly, the first sentence of each reissue specification must provide notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 99,999,999. The reissue applications are application numbers 99/999,994 (the present application), 99/999,995, and 99/999,998, all of which are continuation and/or divisional reissues of Patent No. 99,999,999.
Claim Rejections - 35 USC § 112
11. Claims 25-43 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
As to claim 25, the limitation “an opening portion in which a 1st liquid surface for entrance of air into the liquid storage chamber in a case where the liquid is ejected from the print head is formed” is indefinite because it is unclear what is being formed and when it is being formed.
The limitation “a 2nd liquid surface different from the 1st liquid surface on which the air contacts the liquid is formed above the 1st liquid surface in the liquid storage chamber” because it is unclear whether the “2nd liquid surface” or alternatively, the “1st liquid” is formed.
Moreover, claim 25 is indefinite because a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. See MPEP §2173.05(p). Here, the product is “a printing apparatus” and the process is “wherein the print head performs a printing operation…a liquid surface is formed in the same position as the 1st liquid surface formed at the opening portion in a state where the liquid is ejected from the print head in a state where the liquid is injected from the injection portion into the liquid storage chamber, and the 1st liquid surface of the opening portion is formed so that gas is provided on an upper side and the liquid is provided on a lower side.”
As to claim 34, the claim term “tightly” is a relative term which renders the claim indefinite. The term “tightly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 40 is indefinite because a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. See MPEP §2173.05(p). Here, the product is “a printing apparatus” and the process is “wherein the print head performs a printing operation, wherein in a case where the liquid is ejected from the print head, the valve is open so that the atmosphere can be introduced into the liquid storage chamber through the communication port, and a liquid surface on which a gas-liquid exchange between the liquid and air in the liquid storage chamber is performed is formed at the communication port, and in a case where the liquid is injected into the liquid storage chamber, the valve is closed so that the atmosphere is not introduced into the liquid storage chamber through the communication port, and a liquid surface is formed in a position of the liquid surface on which the gas-liquid exchange between the liquid and the air in the liquid storage chamber is performed in a state where the liquid is ejected from the print head.”
As to claim 42, the limitation “wherein the liquid storage container comprises an opening portion in which the liquid surface on which the gas-liquid exchange is performed a case where the liquid is ejected from the print head is formed, the air is above the liquid surface, and the liquid is below the liquid surface” is indefinite for two reasons: (1) the apparent typographical error where it appears “gas-liquid exchange is performed a case…” should be “gas-liquid exchange is performed in a case…” and (2) it is unclear whether the ejected liquid “is formed” or alternatively whether the “liquid surface…is formed….”
As to claim 43, the limitation “the atmospheric communication chamber” does not have an antecedent basis. Thus, it is indefinite.
Moreover, claim 43 is indefinite because a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. See MPEP §2173.05(p). Here, the product is “a printing apparatus” and the process is “wherein the print head performs a printing operation; and wherein the liquid storage container comprises an opening portion in which a liquid surface on which a gas-liquid exchange between the liquid and air in the liquid storage chamber is performed is horizontal in a case where the liquid is ejected from the print head, and the atmosphere communication chamber is provided in a direction of gravity between the liquid storage chamber and the liquid surface on which the gas-liquid exchange between the liquid and the air in the liquid storage chamber is performed.”
The remaining claims are rejected because of their dependency on rejected base claims.
Recapture
12. Claims 25-43 are rejected under 35 U.S.C. §251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. §251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Under MPEP §1412.02(I), the following is the three step test for determining recapture in reissue applications:
The following is the three step test for determining recapture in reissue applications (see MPEP §1412.02(I)):
determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the prosecution of the original application that became the patent to be reissued
determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
As to step 1, new claims 25-43 are broader in scope than the original claims because the relative placement, in the direction of gravity, of a liquid storage chamber, an atmosphere communication chamber, and an opening in a communication flow path therebetween has been removed from the claims.
As to step 2, the surrender generating limitation(s) ("SGLs") is the following because the relative placement, in the direction of gravity, of a liquid storage chamber, an atmosphere communication chamber, and an opening in a communication flow path therebetween was added to place the claims in condition for allowance (see U.S. App. No. 15/643,225 remarks and claim amendments filed Dec. 20, 2017).
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As to step 3, claims 25-43 were not materially narrowed in other respects, so as to escape the recapture rule, because these claims have not been narrowed with respect to the original claims.
Reissue Declaration
13. Claims 25-43 rejected as being based upon a defective reissue declaration filed Oct 22, 2024 under 35 U.S.C. 251. See 37 CFR 1.175.
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Specifically, this is a continuation of R2 where the Reissue Declaration, which was filed July 21, 2022, provides the same error description as the instant reissue declaration. More specifically, the instant declaration that does not identify an error being corrected by the instant continuation reissue application. Thus, Applicant must provide a new declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2).
This rejection may be overcome by providing a sufficient statement of the error in the remarks filed in response to the instant office action. There is no need for a newly signed reissue declaration.
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEANDRA M HUGHES whose telephone number is (571)272-6982. The examiner can normally be reached Generally M-Th 8AM-6PM.
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, Hetul Patel can be reached at 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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