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 .
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 limitations of claim 13 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.
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 1-4, 6-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 12-20 of U.S. Patent No. 12,083,813 (hereinafter ‘813).
With respect to claim 1, ‘813 recites (claim 1) a printing machine comprising:
a printing plate on a surface of a rotatable cylinder (line 2), the printing plate comprising a permanently patterned material configured to provide a fixed pattern for receiving a toner (lines 3-4 and 6-7); and
a vessel for containing the toner (line 5),
the permanently patterned material being a patterned surface of the printing plate (lines 6-9) or at least one patterned layer under a surface of the printing plate.
With respect to claim 2, ‘813 recites the printing machine of claim 1, further comprising a toner roller for transferring the toner from the vessel to the fixed pattern on the printing plate (claim 2).
With respect to claim 3, ‘813 recites the printing machine of claim 1, further comprising a transfer roller for transferring the toner from the fixed pattern on the printing plate to a substrate (claim 5).
With respect to claim 4, ‘813 recites the printing machine of claim 1, wherein the printing plate is made of two or more different non-conductive materials having a different electric charge (claim 7).
With respect to claim 6, ‘813 recites the printing machine of claim 1, wherein the printing plate includes one or more electrodes configured to have a voltage to induce an electric charge (claim 8).
With respect to claim 7, ‘813 recites the printing machine of claim 2, wherein the vessel includes a first roller configured to have a first voltage, and the toner roller is configured to have a second voltage that is more positive than the first voltage (claim 3).
With respect to claim 8, ‘813 recites the printing machine of claim 7, wherein the printing plate is configured to have a third voltage that is more positive than the second voltage of the toner roller (claim 4).
With respect to claim 9, ‘813 recites the printing machine of claim 3, further comprising a transfer roller that is configured to have a fourth voltage that is more positive than a third voltage of the printing plate (claim 6).
With respect to claim 10, ‘813 recites (claim 9) printing plate for use in an electrostatic printing machine, the printing plate comprising:
a permanently patterned material configured to provide a fixed pattern including two or more areas that have a different electric charge (lines 3-5),
wherein at least one of the two or more areas is configured to provide an electric charge that repels toner (lines 6-7); and
wherein at least one of the two or more areas is configured to provide an electric charge that attracts toner (lines 8-9).
However, ‘813 is silent regarding the permanently patterned material being a patterned surface of the printing plate or at least one patterned layer under a surface of the printing plate.
It has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"). In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.") In this particular case, claim 9 of ‘813 recites a generic location of the permanently patterned material and discovering the optimum placement of the patterned material by routine experimentation would have been obvious to one of ordinary skill in the art.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to place the permanently patterned material as taught by ‘813 in a location in a printing plate to provide charges for the surface as originally intended.
With respect to claim 11, ‘813 recites the printing plate of claim 10, wherein the at least one area configured to have an electric charge that repels toner includes at least one electrode, under an insulating surface, that produces a first induced charge (claim 12).
With respect to claim 12, ‘813 recites the printing plate of claim 11, wherein the at least one area configured to have an electric charge that attracts toner includes at least one electrode, under the insulating surface, that is configured to produce a second induced charge that is different from the first induced charge (claim 13).
With respect to claim 13, ‘813 recites the plate of claim 12, wherein the insulating surface has a dot hole pattern in a form of selected portions of an image (claim 14).
With respect to claim 15, ‘813 recites the plate of claim 10, wherein a first area has a positive triboelectric material; and a second area has a negative triboelectric material, wherein the first area and the second area form select portions of an image (claim 15).
With respect to claim 16, ‘813 recites the plate of claim 15, wherein the negative triboelectric material is chosen from nickel, copper, gold, platinum, natural rubber, sulfur, acetate, polyester, celluloid, urethane, vinyl, fluoroelastomer, polytetrafluoroethylene, silicon, polyethylene, and combinations thereof (claim 16).
With respect to claim 17, ‘813 recites the plate of claim 15, wherein the positive triboelectric material is chosen from gelatin, wood, steel, paper, aluminum, cotton, lead, wool, nylon, metal oxides, metal islands, glass, and combinations thereof (claim 17).
With respect to claim 18, ‘813 recites the plate of claim 15, wherein the first area and the second area are in a relief pattern, and wherein low areas are filled with a planarizing liquid resin (claim 18).
With respect to claim 19, ‘813 recites the plate of claim 15, wherein the first area includes raised areas (claim 19).
With respect to claim 20, ‘813 recites (claim 20) a printing system, comprising:
two or more printing machines, arranged serially, wherein each printing machine includes a printing plate comprising a permanently patterned material configured to provide a fixed pattern for receiving a toner (lines 2-7); and
two or more fusing units, arranged after each printing machine (lines 8-9);
wherein each printing machine is configured to print a select portion of the image, and each fusing unit is configured to fuse the printed selected portion of the image (lines 10-13).
However, ‘813 is silent regarding the permanently patterned material being a patterned surface of the printing plate or at least one patterned layer under a surface of the printing plate.
It has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"). In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.") In this particular case, claim 9 of ‘813 recites a generic location of the permanently patterned material and discovering the optimum placement of the patterned material by routine experimentation would have been obvious to one of ordinary skill in the art.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to place the permanently patterned material as taught by ‘813 in a location in a printing plate to provide charges for the surface as originally intended.
Claim Rejections - 35 USC § 102
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 10-12 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tashiro (JP 2008221642; IDS dated 09/06/2024 Foreign Patent Cite No. 7; see machine translation).
With regards to claim 10, Tashiro discloses a printing plate (1) for use in an electrostatic printing machine comprising:
a permanently patterned material configured to provide a fixed pattern including two or more areas (22, 23) that have a different electric charge ([0024-0029]), the permanently patterned material being a patterned surface of the printing plate (FIG. 3) or at least one patterned layer under a surface of the printing plate;
wherein at least one (23) of the two or more areas is configured to provide an electric charge that repels toner (FIG. 6; [0024]); and
wherein at least one (22) of the two or more areas is configured to provide an electric charge that attracts toner (FIG. 6; [0029]).
With regards to claim 11, Tashiro discloses the printing plate of claim 10, wherein the at least one area having an electric charge that repels toner includes at least one electrode, under an insulating surface, that produces a first induced charge ("+500V", [0024]).
With regards to claim 12, Tashiro discloses the printing plate of claim 11, wherein the at least one area having an electric charge that attracts toner includes at least one electrode, under an insulating surface , that produces a second induced charge ("ground potential") that is different from the first induced charge ([0024]).
With regards to claim 15, Tashiro discloses the printing plate of claim 10, wherein a first area has a positive triboelectric material ("+500V; [0024]); and a second area has a negative triboelectric material ("ground potential"; [0024]), wherein the first area and the second area form select portions of an image ([0025]).
With regards to claim 16, Tashiro discloses the printing plate of claim 15, wherein the
negative triboelectric material is chosen from nickel, copper, gold, platinum, natural rubber, sulfur, acetate, polyester, celluloid, urethane, vinyl, fluoroelastomer, polytetrafluoroethylene, silicon, polyethylene ([0018]), and combinations thereof.
With regards to claim 17, Tashiro discloses the plate of claim 15, wherein the positive
triboelectric material is chosen from gelatin, wood, steel, paper, aluminum, cotton, lead, wool,
nylon ([0019]), metal oxides, metal islands, glass, and combinations thereof.
With regards to claim 18, Tashiro discloses the plate of claim 15, wherein the first area
and the second area are in a relief pattern (FIG. 2), and wherein low areas are filled with a planarizing liquid resin ([0015]; FIG. 4).
With regards to claim 19, Tashiro discloses the plate of claim 15, wherein the first area
(areas of 23) includes raised areas (22; see FIG. 2).
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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP 2008221642; IDS dated 09/06/2024 Foreign Patent Cite No. 7; see machine translation) in view of Shigeta et al. (US Publication 2011/0255134; IDS dated 09/06/2024 US Pub Cite No. 26; hereinafter Shigeta).
With regards to claim 1, Tashiro teaches a printing machine (FIG. 11) comprising:
a printing plate (1) comprising a permanently patterned material configured to provide a fixed pattern (FIG. 2) for receiving a toner ([0009, 0024-0029]);
a vessel (33) containing the toner ([0024]), ,
the permanently patterned material being a patterned surface (including 21-23; FIG. 2) of the printing plate (FIG. 3) or at least one patterned layer under a surface of the printing plate.
Tashiro further teaches the printing plate can be curved into a drum ([0039]). However,
Tashiro is silent regarding (italicized portion highlights features not taught) the printing plate (1)
on a surface of a rotating cylinder.
Shigeta teaches a relief printing apparatus wherein the curved printing plate (C) is
mounted on a surface of a rotating cylinder (146; [0087]; 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 mount the relief printing plate as taught by Tashiro to the rotating cylinder as taught by Shigeta to provide equal support for the printing plate.
With regards to claim 2, Tashiro, as combined with Shigeta, teaches (citations to Tashiro unless specified otherwise) the printing machine of claim 1, further comprising a toner roller (31) for transferring the toner from the vessel to the fixed pattern on the printing plate ([0024]; FIG. 3).
With regards to claim 3, Tashiro, as combined with Shigeta, teaches (citations to Shigeta) the printing machine of claim 1, further comprising a transfer roller (152) for transferring
the toner from the fixed pattern on the printing plate (C) to a substrate (FIG. 2; [0087]).
With regards to claim 4, Tashiro, as combined with Shigeta, teaches (citations to Tashiro) teaches the printing machine of claim 1, wherein the printing plate is made of two or
more different non-conductive materials (22 and 23) having a different electric charge ([0018-
0019]; FIG. 6).
With regards to claim 6, Tashiro, as combined with Shigeta, teaches (citations to Tashiro) teaches the printing machine of claim 1, wherein the printing plate includes one or more electrodes with a voltage to induce an electric charge ([0021]).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP 2008221642; IDS dated 09/06/2024 Foreign Patent Cite No. 7; see machine translation) in view of Shigeta et al. (US Publication 2011/0255134; IDS dated 09/06/2024 US Pub Cite No. 26; hereinafter Shigeta) in view of Endoh (US Patent 6,321,049; IDS dated 09/06/2024 US Patent Cite No. 10).
With regards to claim 7, Tashiro, as combined with Shigeta, teaches the printing
machine of claim 2. However, Tashiro, as combined with Shigeta, is silent regarding wherein the
vessel includes a first roller having a first voltage, and the toner roller has a second voltage that
is more positive than the first voltage.
Endoh teaches a vessel includes a first roller (4c) having a first voltage (constant
voltage), and the toner roller (4a) has a second voltage that is more positive than the first voltage (high power supply; col. 7, lines 45-64).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to replace one type of vessel as originally taught by Tashiro, as combined with Shigeta, with another type of vessel as taught by Endoh with reasonable expectation of providing toner for printing as originally intended.
With regards to claim 8, Tashiro, as combined with Shigeta and Endoh, teaches (citations to Endoh) the printing machine of claim76, wherein the printing plate (voltage applied
to the development areas) has a third voltage that is more positive than the second voltage of
the toner roller (4a; col. 8, lines 16-41).
With regards to claim 9, Tashiro, as combined with Shigeta, teaches the printing
machine of claim 3. However, Tashiro, as combined with Shigeta, is silent regarding the printing
machine further comprising a transfer roller having a fourth voltage that is more positive than a
third voltage of the printing plate.
Endoh teaches the printing machine further comprising a transfer roller (5a) having a
fourth voltage that is more positive than a third voltage of the printing plate (col. 9, line 63 to col. 10, line 10; Endoh).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to control the transfer roller as taught by Tashiro, as combined with Shigeta, with to have the voltages as taught by Endoh with reasonable expectation of providing an appropriate voltage to assist in transferring toner for printing as originally intended.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP 2008221642; IDS dated 09/06/2024 Foreign Patent Cite No. 7; see machine translation).
With regards to claim 13, Tashiro teaches the plate of claim 12. However, Tashiro is silent regarding wherein the insulating surface has a dot hole pattern in a form of selected portions of an image.
It has been held that USPTO personnel may not disregard claim limitations comprised of
printed matter. See In re Gulack, 703 F.2d 1384, 217 USPQ 403 (Fed. Cir. 1983); see also Diamond V. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel
need not give patentable weight to printed matter absent a new and unobvious functional
relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-
84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994), In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed.Cir. 2004), In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). In this particular case, the pattern is defined by the toner attracting surface and the toner repelling insulating surface, therefore, the dot hole pattern of the insulating surface would define the desired printed image. It is additionally noted that the printed pattern does not provide functional or structural relationship with the substrate to be printed. Therefore, the claimed limitation of "the
insulating surface has a dot hole pattern in a form of selected portions of an image" is merely a
design as desired by the user.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the pattern of Tashiro including the pattern as claimed with reasonable expectation of forming a pattern on a substrate as originally intended.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over de Jong et al.
(US Publication 2006/0222393; IDS dated 09/06/2024 USPub Cite No. 22; hereinafter de Jong) in view of Tashiro (JP 2008221642; IDS dated 09/06/2024 Foreign Patent Cite No. 7; see machine translation).
With regards to claim 20, de Jong teaches a printing system (FIG. 1), comprising:
two or more printing machines (14, 16), arranged serially (FIG. 1; [0056]); and
two or more fusing units (48, 50), arranged after each printing machine (FIG. 1; [0057]);
wherein each printing machine prints a select portion of the image, and each fusing unit fuses the printed selected portion of the image ([0056-0058]).
However, de Jong is silent regarding wherein each printing machine includes a printing
plate comprising a permanently patterned material configured to provide a fixed pattern for receiving a toner, the permanently patterned material being a patterned surface of the printing plate or at least one patterned layer under a surface of the printing plate.
Tashiro teaches a printing plate comprising a permanently patterned material configured to provide a fixed pattern (22, 23) for receiving a toner ([0024-0029]), the permanently patterned material being a patterned surface of the printing plate (FIG. 3) or at least one patterned layer under a surface of the printing plate.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to replace one known type toner transferring mechanism as taught by de Jong with another known type of toner transferring mechanism as taught by Tashiro with reasonable expectation of printing toner image as originally intended.
Allowable Subject Matter
Claims 5 and 14 are 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 fail to anticipate and/or suggest the combination of the claimed invention.
Specifically, the prior arts fail to teach, inter alia, the limitation of “wherein the printing plate further comprises: a first layer of non-conductive material configured to provide a relatively positive charge; wherein the at least one patterned layer under a surface of the printing plate is a second layer of non-conductive material having gaps therein and configured to provide a relatively negative charge compared to the first layer of non-conductive material; and a layer of electrostatic material positioned between, and interfacing with, the first layer of non-conductive material and the second layer of non-conductive material.”
The closest prior art on record, Tashiro (JP 2008-221642), teaches a printing plate (1) for receiving a toner ([0009]). Tashiro further teaches the printing plate includes an insulative surface (44; 0018-0019]; FIG. 6). However, the non-conductive surface (44) of Tashiro is to prevent the adhesion of the toner (see FIG. 6-10; [0019]). There is no motivation to modify Tashiro to attract the toner using an insulative surface. Thus, Tashiro, whether singly or in combination with Shigeta, would not teach the invention of claim 5 and 14.
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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