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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“insertion member” in claim(s) 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 10 is 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 pre-AIA the applicant regards as the invention.
Regarding claim 10, the claimed insertion member invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not disclose any structure for the claimed insertion member. The specification does not disclose that the claimed insertion member is shown in the drawings. Accordingly, one of ordinary skill in the art would not be able to ascertain the structure from the drawings either. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Appropriate correction is required.
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 1-3 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makii (JP-2022061787-A – of record).
Regarding claims 1-3, Makii teaches a coating apparatus (Fig 1-17 and ¶0010-0102) comprising: a coating processing section configured to perform coating processing using a liquid coating agent on a printed surface of a workpiece that is a sheet-shaped object or a plate-shaped object having a surface subjected to electronic printing processing; a pressurizing roller pair disposed on an upstream side or a downstream side of the coating processing section and configured to sandwich, pressurize and convey the workpiece; and a heating section disposed at a same position as or on an upstream side of the pressurizing roller pair with respect to a conveyance direction of the workpiece and configured to heat the printed surface of the workpiece; wherein the heating section is configured to heat the printed surface of the workpiece simultaneously with pressurization by the pressurizing roller pair; and wherein the heating section is incorporated in one roller of the pressurizing roller pair, the one roller being disposed on a side of the printed surface (Fig 1-2, 4-5, and 17 and ¶0014,0024,0049,0050,0089-0099).
Regarding claim 11, Makii teaches a coating system (Fig 1-17 and ¶0010-0102) comprising: a coating apparatus including a coating processing section configured to perform coating processing using a liquid coating agent on a printed surface of a workpiece that is a sheet-shaped object or a plate-shaped object having a surface subjected to electronic printing processing; and a toner aggregation apparatus including a pressurizing roller pair and a heating section, the pressurizing roller pair being configured to sandwich, pressurize and convey the workpiece before being subjected to the coating processing by the coating apparatus and/or the workpiece after being subjected to the coating processing by the coating apparatus, the heating section being disposed at a same position as or on an upstream side of the pressurizing roller pair with respect to a conveyance direction of the workpiece and configured to heat the printed surface of the workpiece (Fig 1-2, 4-5, and 17 and ¶0014,0024,0049,0050,0089-0099).
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Makii (JP-2022061787-A – of record), as applied to claim 1, and in view of Mukai (JP-2009186617-A – of record).
Regarding claims 4 and 9-10, as applied to claim 1, Makii teaches wherein the pressurizing roller pair is disposed on the upstream side of the coating processing section and a surface of one roller of the pressurizing roller pair, the one roller being located on a side in contact with the printed surface (Fig 1-2, 4-5, and 17 and ¶0014,0024,0049,0050,0089-0099).
Makii is silent as to the material having a friction coefficient of 0.1 or less; wherein a surface of one roller of the pressurizing roller pair, the one roller being disposed on a side of the printed surface, is made of fluororesin; nor an insertion member inserted between one roller of the pressurizing roller pair, the one roller being disposed on a side of the printed surface, and the printed surface, and has a surface on a side in contact with the printed surface, the surface being made of a material having a friction coefficient of 0.1 or less.
Mukai teaches the material having a friction coefficient of 0.1 or less and a surface of one roller of the pressurizing roller pair, the one roller being disposed on a side of the printed surface, is made of fluororesin; and an insertion member inserted between one roller of the pressurizing roller pair, the one roller being disposed on a side of the printed surface, and the printed surface, and has a surface on a side in contact with the printed surface, the surface being made of a material having a friction coefficient of 0.1 or less.(¶0005).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to substitute the material taught by Makii with the material having a friction coefficient of 0.1 or less and/or fluororesin taught by Mukai since the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP 2144.07.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus disclosed Makii to include the insertion member inserted between one roller of the pressurizing roller pair, the one roller being disposed on a side of the printed surface, and the printed surface, and has a surface on a side in contact with the printed surface, the surface being made of a material having a friction coefficient of 0.1 or less as disclosed in Mukai, since the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. MPEP 2143(A).
Regarding claim 5, as applied to claim 4, Makii in view of Mukai teach an apparatus further comprising a workpiece cooling section provided between the pressurizing roller pair and the coating processing section and configured to cool the printed surface heated by the heating section (Makii, Fig 1-2, 4-5, and 17 and ¶0014,0024,0049,0050,0089-0099).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Makii (JP-2022061787-A – of record) in view of Mukai (JP-2009186617-A – of record), as applied to claim 5, and in further view of Yamashita (WO-2022059351-A1 – of record).
Regarding claim 6, as applied to claim 5, Makii in view of Mukai teaches wherein the workpiece cooling section includes a cooling roller pair configured to sandwich and convey the workpiece (Makii, Fig 1-2, 4-5, and 17 and ¶0014,0024,0049,0050,0089-0099).
Makii in view of Mukai is silent as to at least a surface of a roller in contact with the printed surface of the workpiece is made of metal.
Yamashita teaches a surface of a roller in contact with the printed surface of the workpiece is made of metal. (Fig 1 and ¶0090).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to substitute the material taught by Makii in view of Mukai with the metal material taught by Yamashita since the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP 2144.07.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Makii (JP-2022061787-A – of record) in view of Mukai (JP-2009186617-A – of record), as applied to claim 5, and in further view of Takehira (JP-2006208678-A – of record).
Regarding claims 7-8, as applied to claim 5, Makii in view of Mukai does not teach wherein the workpiece cooling section includes a blowing section configured to blow gas to the printed surface of the workpiece nor wherein the workpiece cooling section further includes a flow regulating section provided to surround the blowing section and configured to regulate a flow of gas blown to the workpiece from the blowing section.
Takehira teaches the known technique wherein a workpiece cooling section includes a blowing section configured to blow gas to the printed surface of the workpiece and wherein the workpiece cooling section further includes a flow regulating section provided to surround the blowing section and configured to regulate a flow of gas blown to the workpiece from the blowing section (Fig 7 and ¶0065-0069).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the apparatus disclosed in Makii in view of Mukai by applying the known technique wherein a workpiece cooling section includes a blowing section configured to blow gas to the printed surface of the workpiece and wherein the workpiece cooling section further includes a flow regulating section provided to surround the blowing section and configured to regulate a flow of gas blown to the workpiece from the blowing section disclosed in Takehira to the apparatus disclosed in Makii in view of Mukai with predictable results and resulting in an improved apparatus. MPEP 2143(D).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JaMel M Nelson whose telephone number is (571)272-8174. The examiner can normally be reached 9:00 a.m. to 5:00 p.m..
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/JAMEL M NELSON/Primary Examiner, Art Unit 1743
