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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) for failing to comply with the written description requirement.
Claim 1 has been amended as follows “wherein the heater turning-on time is a control value representing an accumulated power-on time of the fuser heater. Claim 1 thus removes “from starting the continuous printing”. As a result, the “accumulated power-on time of the fuser heater” is measured, as claimed, with respect to any and all references. Applicant thus broadened the claim from a specific instance to recite a generic claim. The Specification would not support such an originally claimed genus. Such constitutes new matter.
Applicant has failed to disclose a “sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus”. MPEP 2163 (II)(A)(3)(a)(ii) (internal citations omitted). As such, Applicant has failed to show possession of the entire scope of the claimed genus.
Here, the claim now purports that the heater turning-on time represents an accumulated power-on time of the fuser heater. Applicant has only disclosed a heater turning-on time that represents an accumulated power-on time of the fuser heater from starting the continuous printing (Specification at ¶ 33: “Here, the heater turning-on time TF is a value that indicates an accumulated time of power-on time of the fuser heater 9a from starting the continuous printing.”) Applicant has provided no other reference points for such accumulated power-on time. Applicant nonetheless claims accumulated power-on times such as from when the printer first when the printer was first powered on, when the printed was first used to print while powered on, when a bird first flew within one mile of the printer while powered on, when one printed an image for the first time while powered on, and any and all other reference from measuring accumulated power-on times (hereinafter “the undisclosed”). The Specification includes no functional characteristics of that which was disclosed to broaden the claims to the entire genus of the undisclosed.
Applicant is invited to point out where the Specification as filed provides support for the undisclosed; or, amend to claim only that which was disclosed.
Claims 1-4 are rejected under 35 U.S.C. 112(a) for failing to comply with the enablement requirement.
Examiner assumes arguendo, without conceding, that a proper construction of Applicant’s Remarks means that continuous printing stops when the controller “reduces a value of the heater turning-on time when the sheet interval time of the print sheet decreases”. Otherwise, were continuous printing to continue, even assuming the claim were limited to that which was disclosed, there would be no other way to “reduce the value of … a control value representing an accumulated power-on time of the fuser heater [from starting the continuous printing ]”.
Assuming Examiner’s construction above is correct:
Nonetheless, the claims have been substantially broadened by the amendments to claim 1. Through the broadening amendment to the claim, Applicant now claims accumulated power-on times such as from when the printer first when the printer was first powered on, when the printed was first used to print while powered on, when a bird first flew within one mile of the printer while powered on, when one printed an image for the first time while powered on, and any and all other reference from measuring accumulated power-on times (hereinafter “the unenabled”).
Claims 1-4 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for reducing an accumulated power-on time from the start on continuous printing, not reasonably provide enablement for reducing accumulated power-on times such as from when the printer first when the printer was first powered on, when the printed was first used to print while powered on, when a bird first flew within one mile of the printer while powered on, when one printed an image for the first time while powered on, and any and all other reference from measuring accumulated power-on times (hereinafter “the unenabled”).
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims. The level of ordinary skill of one having ordinary skill in the art of electrophotography, to which the Specification pertains, at the time of effective filing is that of one having a Bachelor’s degree in engineering. However, the level of ordinary skill of one having ordinary skill in the art of the unenabled, to which the enormously broad Claims pertain, at the time of effective filing is as advanced as that of one having an advanced Doctoral degree. Nonetheless, due to the broad claimed applicability, the state of the prior art is largely undeveloped for vast swaths of the Claims’ scope. The predictability thus cannot be said to have any degree of certainty. Applicant has provided no guidance to those having ordinary skill in the art of the unenabled at the time of effective filing for making or using the claimed invention. There are no working examples in the art of the unenabled. Applicant has left the entire onus of experimentation on those who wish to make or use the claimed invention in the art of the unenabled. Applicant did not enable the full scope of the claimed invention at the time of effective filing.
If Examiner’s construction above is incorrect:
The Specification fails to enable the claims at all. The accumulated power-on time from the start on continuous printing is a number that is always increasing so long as continuous printing continues. The Specification fails to enable reducing a number that is always increasing.
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)(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Aihara et al., U.S.P.G. Pub. No. 2023/0221665.
The present amendments to the claims merely broaden the claims to recite any and all accumulated power-on time of the fuser heater, rather than the former accumulated power-on time of the fuser heater from starting the continuous printing. The former rejections thus apply to the present claims as well.
The reasoning of the rejections of claims 1-4 in the Office Action dated 1/9/26 are repeated herein in their entirety without modification.
Response to Arguments
Applicant's arguments filed 3/26/26 have been fully considered but they are not persuasive.
Applicant argues: Examiner misconstrued the claims even though the former claims simply changed a particular value to change the accumulated power-on time of the fuser from the start on continuous printing without stopping continuous printing.
Applicant has still not resolved the issues presented by the former 112(b) rejection. It was unclear how the controller can simply change a particular value to change the accumulated power-on time of the fuser from the start on continuous printing. Here, Applicant has broadened the claim to introduce far more severe issues of failing to comply with either the written description or enablement requirements.
Applicant is advised to explain how it now is that the controller simply changes a particular value to change the accumulated power-on time of the fuser from any and all reference points. Applicant is invited to specify exactly how the controller “reduces a value of the heater turning-on time when the sheet interval time of the print sheet decreases, [] wherein the heater turning-on time is a control value representing an accumulated power-on time of the fuser heater.” Putting those two limitations together, Applicant is invited to specify exactly how the controller: reduces a value representing an accumulated power-on time of the fuser heater.
Applicant is further advised to carefully consider amendments so that Applicant does not shift inventions. Whether a shift in invention occurs is determined with respect to the presented claims, rather than what Applicant intended to have claimed, or what was merely disclosed but not claimed.
Aihara discloses changing correction values based on changing sheet intervals since the beginning of continuous printing. Should Applicants wish to claim something other than that, the claims will need to specify what that is, clearly, and in a manner that the Specification both supports and enables.
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
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