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 .
Election/Restrictions
Newly submitted claim 10 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: see below at “Grounds for Election/Restriction”.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 7-12 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Grounds for Election/Restriction
A proper reply requires a response to all of Grounds A1-A2, and Grounds B1-B3 for requiring election/restriction. 37 C.F.R. 1.111(b). Examiner will treat a reply that fails to respond to all of Grounds A1-A2 and Grounds B1-B3 as both non-responsive and not bona fide.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Invention I. Claims 1, 4-6, 8, and 9, drawn to the originally presented Invention; and,
Invention II. Claim 10, drawn to the newly presented Invention.
Applicant has already elected Invention I through original presentation.
The Inventions are independent or distinct, each from the other because:
Ground A
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h).
Ground A1
In the instant case, the product limitations in claim 10 do not impact the method steps recited in claim 10 in any way, nor do the product limitations provide any patentable distinction. As such, the process for using the product as claimed can be practiced with another materially different product, such as one where the components are not made of resin.
Ground A2
In the instant case, the product as claimed can be used in a materially different process of using that product. After the tip member wears in the product, one is free to throw away the entire image forming apparatus rather than replace anything.
Ground B
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)).
Ground B1
In this case, the process as claimed can be practiced by another and materially different apparatus. One can apply the claimed method steps to an apparatus where no materials are resin.
Ground B2
In this case, the process as claimed can be practiced by hand. A person can manually implement all of the claimed method steps, even if the product limitations imparted patentable distinction to the method claim.
Ground B3
In this case, the apparatus as claimed can be used to practice another and materially different process. After the tip member wears in the product, one is free to throw away the entire image forming apparatus rather than replace anything.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
Here, the product limitations impart no patentable distinction upon the method steps.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the mutually exclusive characteristics require a different field of search; and,
Applicant has already received examination of another elected Invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Applicant has already elected an Invention through original presentation.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Construction
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 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:
“first engaging portion” in claims 1, 4-6, and 8-10; and,
“second engaging portion” in claims 1, 4-6, and 8-10.
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 § 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.
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.
Claims 1, 4-6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa, U.S.P.G. Pub. No. 2014/0239575, in view of Nakamura, U.S.P.G. Pub. No. 2015/0132034.
Regarding independent claim 1, Hasegawa et al. teach a fixing device (fig 1) configured to fix a toner image on a recording material, the fixing device comprising:
a rotating member (53) configured to rotate;
a heater (54) configured to heat the rotating member;
a pressure roller (55) configured to apply pressure to the rotating member and form a nip section with the rotating member and the pressure roller, to nip the recording material;
a separating member (58) disposed opposite the rotating member and configured to not contact the rotating member (¶ 54, describing adjusting the clearance) downstream of the nip section in the transport direction of the recording material (fig 1), for separating the recording material that has passed through the nip section from the rotating member, wherein the separating comprises:
a tip member (110) made of a resin material (¶ 51, the claim does not require that the entire thing be made of resin, here “thin metal plate 110a is coated with fluorine resin”, as Applicants admit, Remarks at page 6) and that separates the recording material from the rotating member striking the recording material after the recording material passes through the nip section; and
a support member (the combination of separation plate holder 101, auxiliary holder 102, separation plate support pin 103, rotation fulcrum pin 104, and screw 105) detachable from the tip member (cf figs 5, 6, showing the tip member detached, fig 5, and attached, fig 6), the support member including a guiding portion (every solid body “portion” that a recording material can interact with in that such portions “guide” by prohibiting the recording material to pass through their solid bodies while continuing in the conveying direction through the rotation of the members at the nip) that guides in the conveying direction the recording material separated from the rotating member by the tip portion in the transport direction;
a first engaging portion provided on the tip member (¶ 54, “each of the seven round holes on the base metal plate 110b”);
a second engaging portion provided on the support member (¶ 54, “the female screw portion formed on the upper surface of the separation plate holder 101”) and engages with the first engaging portion to position the tip member relative to the support member (¶ 54); and
a fastening member (screw 111) fastening the tip member to the support member (cf figs 5, 6, showing the tip member detached, fig 5, and attached, fig 6).
Hasegawa et al. are silent with respect to the material the support member is made of. As such, Hasegawa et al. are silent with respect to the support member is made of the resin material.
Nakamura teaches a fixing device with a separating claw 40 supported by a separation claw supporting plate 37 made of resin (¶ 52). As such, the prior art recognizes that resin is a suitable material for a separation claw supporting plate.
It would have been obvious to one having ordinary skill at the time of effective filing to provide the support member is made of the resin material. Such would have been a mere selection of a known material based on its suitability for its intended use. MPEP 2144.07.
Hasegawa et al. further teach:
Regarding claim 4, which depends from claim 1, wherein the tip member is longer than at least a length of the recording material in a width direction (the tip portion separates a sheet from the fixer, and therefore must engage at least some portion of the paper, and therefore the length of the tip member is longer than at least “a” length of the recording material in a width direction at the portion of the recording material that it engages, noting that the claim fails to specify that “a” length, as in “one or any” length of the recording material in a width direction refers to the entire length of the recording material in a width direction).
Regarding claim 5, which depends from claim 1, wherein the tip member is formed with fluororesin (¶ 51).
Regarding claim 6, which depends from claim 1, wherein the surface of the tip member is coated with fluororesin (¶ 51).
Regarding claim 8, which depends from claim 1, an image forming apparatus comprising:
the fixing device according to claim 1 (supra, as combined); and
an image forming portion (fig 7) configured to have the recording material bear the toner image and to convey the recording material bearing the toner image to the fixing device.
Regarding claim 9, which depends from claim 1, wherein the separating member is configured to allow (cf figs 5, 6, showing the tip member detached, fig 5, and attached, fig 6) the tip member to be replaceable by removing the fastening member (no replacement is required by the claim, merely being “configured to allow”, which the detachment allows).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa, U.S.P.G. Pub. No. 2014/0239575, in view of Nakamura, U.S.P.G. Pub. No. 2015/0132034, and further in view of Weiler et al., U.S. Pat. No. 3,938,950.
Examiner assumes arguendo, without conceding, that the limitation “is longer than at least a length of the recording material in a width direction” requires that it be longer than the entire length of the recording material in a width direction.
Weiler et al. teach a separation member (50) hiving a tip portion (52) that “is slightly longer than the copy sheet paper width so that no stripping demand is placed on the corners of the blade member”, col 3 ll 55-60.
It would have been obvious to one having ordinary skill at the time of effective filing to provide a length that is longer than the entire length of the recording material in a width direction. One having ordinary skill in the art at the time of effective filing would have done so that no stripping demand is placed on the corners of the tip portion.
Response to Arguments
Applicant's arguments filed 12/12/25 have been fully considered but they are not persuasive.
Applicant argues:
A) the tip member of Hasegawa et al. is coated with fluorine resin and is therefore not made of resin;
B) it is unclear whether the separation plate 110 of Hasegawa et al. can be attached and detached; and,
C) the separation plate 110 of Hasegawa et al. is made of sheet metal.
The claims fail to exclude other materials by claiming “made of resin”. A turkey sandwich is made of bread, turkey, and mayonnaise, whenever the turkey is coated with mayonnaise. As Applicants admit, the “sheet conveyance surface side of the thin metal plate 110a is coated with fluorine resin,” Remarks at page 6. As such, Applicants admit the tip member of Hasegawa et al. is coated with fluorine resin and is therefore made of resin. Examiner thanks Applicants for the admission, which will greatly simplify issues for appeal.
Applicants also seem to argue that the claims would require the entirety of the tip member of Hasegawa et al. to be made of resin. However, the claims do not contain such a feature. As such, by arguing an unclaimed feature, Applicants further admit that the claimed features at present are taught by Hasegawa et al. Examiner thanks Applicants for the further admission, which will further simplify issues for appeal.
Figs 5 and 6 of Hasegawa et al. make clear that the separation plate 110 of Hasegawa et al. can be attached and detached.
Although Hasegawa et al. fail to teach a separation plate made of resin, such is a mere selection of a known material based on its suitability for its intended use.
Conclusion
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.
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/SEVAN A AYDIN/Primary Examiner, Art Unit 2852