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 external additive remaining on the image bearing member adheres to the magnetic carrier in contact with the image bearing member, is carried together with the magnetic carrier into the developer container” 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.
Specification
The Title has been updated according to the amended Specification dated 6/05/2026. The objection to the Title has been withdrawn.
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.
Claims 1-4 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "the external additive remaining on the image bearing member" and “the magnetic carrier in contact with the image bearing member” in the last wherein clause. There is insufficient antecedent basis for these limitations in the claim.
Claim 1 recites inter alia, “wherein, during the second period, the control portion controls the developing bias application portion such that the external additive remaining on the image bearing member adheres to the magnetic carrier in contact with the image bearing member, is carried together with the magnetic carrier into the developer container, and is collected therein”.
It is unclear if the recited “external additive remaining on the image bearing member” refers to earlier recited external additive included in the developer contained in the developer container or some other “external additive”. Since an external additive is recited as part of a developer, it is unclear is the external additive remaining on the image bearing member is contained in the developer or not.
It is unclear if the recited “magnetic carrier in contact with the image bearing member” refers to earlier recited magnetic carrier included in the developer contained in the developer container or some other “magnetic carrier”.
It is unclear if the cited passage is a result of the earlier recited control features or if it requires a separate control feature that takes place during the second period.
Claims 1-4 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: structure, means, or method to distinctly ascertain what “the external additive remaining on the image bearing member” refers to.
The omitted elements are essential to properly determine the difference, if any, between and additive that is include in the developer and an external additive remaining on the image bearing member. From the recited features of a continuous image forming job, it is unclear when, why, and how external additive remains on the image bearing member. It is also unclear how these features have patentable weight on the structure of the image forming apparatus. Evidence that Applicant regards the omitted matter to be essential to the invention can be found at least in the Remarks dated 06/05/2026, page 16.
The issues exposed above are so severe that they preclude a reasonable search over prior art as one skilled in the art cannot determine the metes and bounds of the claim.
Allowable Subject Matter
Claim(s) 1-4 are not currently subject to a prior art rejection, but allowable subject matter cannot be determined due to the impact that possible amendments relating to rejections under 35 U.S.C. 112 may have on the claim meaning and scope.
Response to Arguments
Applicant’s arguments with respect to claim(s) 06/05/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARLENE HEREDIA whose telephone number is (571)272-8393. The examiner can normally be reached M-F: 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached at (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Arlene Heredia Ocasio/ Primary Examiner, Art Unit 2852
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