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.
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 1 and 11; 2 and 12; 3 and 13; 4 and 14; 5 and 15; 6 and 16; 7 and 17; 8 and 18; 9 and 19; and 10 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1; 2; 3; 4; 5; 6; 7; 8; 9; and 10 of U.S. Patent No. 12,111,593 in view of Yamada (US 2011/0222881).
Claims 1; 2; 3; 4; 5; 6; 7; 8; 9; and 10 of U.S. Patent No. 12,111,593 contain or make obvious the limitations contained in claims 1 and 11; 2 and 12; 3 and 13; 4 and 14; 5 and 15; 6 and 16; 7 and 17; 8 and 18; 9 and 19; and 10 and 20, respectively. Specifically, the claimed limitation of a time moving from the abutment position to the separation position is considered to be obvious from the limitation of a time during which the one moves between the abutment position and the separation position, as claimed in claims 1, 5 and 7 of U.S. Patent No. 12,111,593, where, it would have been obvious to one of ordinary skill in the art that a time during which the one moves between the abutment position and the separation position would be a time moving from the abutment position to the separation position, since the movement time would be the same [see Applicant's claims 1, 5 and 7]. Moreover, the claimed limitation of a time moving from the separation position to the abutment position is considered to be obvious from the limitation of a time during which the one moves between the abutment position and the separation position, as claimed in claims 1, 5 and 7 of U.S. Patent No. 12,111,593, where, it would have been obvious to one of ordinary skill in the art that a time during which the one moves between the abutment position and the separation position would be a time moving from the separation position to the abutment position since the movement time would be the same [see Applicant's claims 11, 15 and 17]. Also, as contained in claim 3 of U.S. Patent No. 12,111,593, the limitation of the movement speed between the abutment position and the separation position in the first mode and in the second mode would have been obvious to one of ordinary skill in the art that this movement speed would be the same as the movement speed in the first mode and the second mode of the speed from the abutment position to the separation position [see Applicant's claim 3] and the speed from the separation position to the abutment position [see Applicant's claim 13]. Furthermore, as contained in claim 4 of U.S. Patent No. 12,111,593, the limitation that the cam to move the one to the abutment position and to the separation position, would be obvious to one of ordinary skill in the art to include the limitation of the cam to move from the abutment position to the separation position [see Applicant's claim 4], and the cam to move from the separation position to the abutment position [see Applicant's claim 14], since the cam, as claimed by claim 4 of U.S. Patent No. 12,111,593, moves both to an abutment position and to a separation position. However, claims 1; 2; 3; 4; 5; 6; 7; 8; 9; and 10 of U.S. Patent No. 12,111,593 do not contain the limitations of an image forming apparatus and a controller. Yamada (…881) discloses an image forming apparatus (figure 1) [see Applicant’s claims 1 and 11]. The image forming apparatus including an image forming unit configured to form an image on a recording material ([0041]; and figure 1) [see Applicant’s claim 11]. The image forming apparatus also including a controller (107) configured to control execution of a job, wherein the controller executes a job of forming images on the recording material ([0094]; and [0110]) [see Applicant’s claims 1 and 11]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the claimed image forming apparatus, since as disclosed by Yamada (…881), such an apparatus is well known in the art to form images. Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the claimed controller, since as disclosed by Yamada (…881), such a controller is well known in the art to control elements to perform an image forming job.
Response to Arguments
Applicant's arguments filed 01/05/2026 have been fully considered but they are not persuasive.
Applicant argues that the amendments to claims 1 and 11 makes the obviousness-type double patenting rejection moot. However, as explained above, claims 1-20 remain rejected under obviousness-type double patenting since the changes made to claims 1 and 11 are obvious, as disclosed by Yamada (US 2011/0222881).
Final Rejection
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDRA BRASE whose telephone number is (571)272-2131. The examiner can normally be reached M-F.
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/SANDRA BRASE/Primary Examiner, Art Unit 2852 February 24, 2026