DETAILED ACTION
Response to amendment dated 2/19/2026
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 25-28 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 18-21 respectively of prior U.S. Patent No. 11314193. This is a statutory double patenting rejection.
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 29-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11314193 (hereinafter Komatsu et al.) in view of Yoshihara et al. (US 2018/0275543).
With respect to claims 29-33, Komatsu et al. disclose the foreign substance collection apparatus according to claim 25 (e.g., Komatsu et al. claim 18).
With further respect to claim 29, claim 18 of Komatsu et al. does not disclose a process cartridge comprising a foreign substance collection apparatus and a charging member configured to charge the image bearing member.
With further respect to claim 29, Yoshihara et al. teach a process cartridge (as discussed at least in paragraphs 194-196) comprising a foreign substance collection apparatus (e.g., item(s) 70, 71, 72, 73 and/or 74), and a charging member (e.g., charging roller 20) configured to charge the image bearing member (e.g., photoreceptor 10).
With further respect to claim 30, claim 18 of Komatsu et al. does not disclose a developer bearing member configured to bear a developer, wherein the developer bearing member is configured to collect developer remaining on the image bearing member after a developer image is transferred from the image bearing member.
With further respect to claim 30, Yoshihara et al. teach a developer bearing member configured to bear a developer (e.g., item(s) 40, 41, 41A, 41B, 41C, 42, 42A, 43, 43A, 44, 44A and/or 45), wherein the developer bearing member is configured to collect developer remaining on the image bearing member (10) after a developer image is transferred (at item 42) from the image bearing member (10).
With further respect to claim 31, claim 18 of Komatsu et al. does not disclose a transfer member configured to transfer a developer image from the image bearing member.
With further respect to claim 31, Yoshihara et al. teach a transfer member (e.g., item 52) configured to transfer a developer image from the image bearing member (10).
With further respect to claim 32, claim 18 of Komatsu et al. does not disclose wherein the process cartridge is attachable to and detachable from an apparatus main body of an image forming apparatus.
With further respect to claim 32, Yoshihara et al. teach wherein the process cartridge is attachable to and detachable from an apparatus main body of an image forming apparatus (as discussed at least in paragraphs 194-196).
With further respect to claim 33, claim 18 of Komatsu et al. does not disclose an image forming apparatus, comprising a foreign substance collection apparatus and a fixing member.
With further respect to claim 33, Yoshihara et al. teach an image forming apparatus (e.g., item 300), comprising a foreign substance collection apparatus (e.g., item(s) 70, 71, 72, 73 and/or 74) and a fixing member (100 and/or 102).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to use the foreign substance collection apparatus of claim 18 of Komatsu et al. for the foreign substance collection apparatus of Yoshihara et al. at least because there would have been a reasonable expectation of success in collecting a foreign substance.
Response to Arguments
Applicant's arguments dated 2/19/26 have been fully considered but are now moot in view of the new grounds of rejection necessitated by amendment.
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S WONG whose telephone number is (571)272-8457. The examiner can normally be reached Monday-Friday (9-5).
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, Walter L Lindsay Jr. can be reached at (571) 272-1674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH S WONG/Primary Examiner, Art Unit 2852
JSW