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 .
2. This office action is responsive to application Nº 19/001,500 filed on March 14th, 2025 in which claims 27 and 70-75 are pending and ready for examination.
Information Disclosure Statement
3. Acknowledgment is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. These IDS have been considered.
Drawings
4. The examiner contends that the drawings submitted on 12/25/2024 are acceptable for examination proceedings.
Claim Objections
5. Claim 70 is objected to because of the following informalities: On line 9 of the claim, it appears Applicant intended the second section “b.” to be section “c.”. Appropriate correction is required.
Double Patenting
6. 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).
7. A timely filed terminal disclaimer in compliance with 37 CFR 1.321© 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).
8. 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€ and 714.13.
9. 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.
10. Claims 70-74 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 71, 72, and 76 of U.S. Patent No. 11,396,190 to Landa et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are essentially directed to the same subject matter.
The Table below shows how the claim is anticipated:
U.S. Patent Nº 11,396,190:
Instant application Nº 19/001,500:
71.
A printing system comprising:
a. an intermediate transfer member (ITM) comprising a flexible endless belt mounted over a plurality of guide rollers;
b. an image forming station configured to form ink images upon a surface of the ITM, first and second of the guide rollers being arranged upstream and downstream of the image forming station to define an upper run passing through the image forming station and a lower run;
b. an impression station through which the lower run of the ITM passes, the impression station being disposed downstream of the image forming station and configured to transfer the ink images from the ITM surface to substrate; and
d. a treatment station disposed downstream of the impression station and upstream of the image forming station for forming a uniform thin layer of a liquid treatment formulation onto the ITM surface at the lower run thereof, the treatment station comprising:
i. a coater for coating the ITM with the liquid treatment formulation; and
ii. a coating thickness-regulation assembly for removing excess liquid so as to leave only the desired uniform thin layer of treatment formulation, the coating thickness-regulation assembly comprising a rounded tip, wherein:
A. the rounded tip faces, and is disposed below, the ITM surface at the lower run; and
B. the ITM surface, at a location facing
the rounded tip, is downwardly urged towards the rounded tip.
B. the ITM surface, at a location facing
the rounded tip, is downwardly urged towards the rounded tip.
70.
A printing system comprising:
a. an intermediate transfer member (ITM) comprising a flexible endless belt mounted over a plurality of guide rollers;
b. an image forming station configured to form ink images upon a surface of the ITM, first and second of the guide rollers being arranged upstream and downstream of the image forming station to define an upper run passing through the image forming station and a lower run;
b. an impression station through which the lower run of the ITM passes, the impression station being disposed downstream of the image forming station and configured to transfer the ink images from the ITM surface to substrate; and
d. a treatment station disposed downstream of the impression station and upstream of the image forming station for forming a uniform thin layer of a liquid treatment formulation onto the ITM surface at the lower run thereof, the treatment station comprising:
i. a coater for coating the ITM with the liquid treatment formulation; and
ii. a coating thickness-regulation assembly for removing excess liquid so as to leave only the desired uniform thin layer of treatment formulation, the coating thickness-regulation assembly comprising a rounded tip facing the ITM surface at the lower run.
73.
The system of claim 70, wherein the rounded tip is urged towards the ITM surface or wherein the rounded tip and the ITM surface are urged towards each other.
74.
The system of claim 73, wherein the rounded tip is urged towards the ITM surface or wherein the rounded tip and the ITM surface are urged towards each other,
by a backing roller having a soft outer surface.
72.
The system of claim 71, wherein the rounded tip is a tip of a doctor blade.
71.
The system of claim 70, wherein the rounded tip is a tip of a doctor blade.
76.
The system of claim 71 wherein a central axis of the rounded tip is oriented vertically and faces the ITM surface at a horizontally-oriented location thereof.
72.
The system of claim 71, wherein the doctor blade is oriented normal to the ITM surface.
11. Claim 75 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,889,128 to Landa et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are essentially directed to the same subject matter.
The Table below shows how the claim is anticipated:
U.S. Patent Nº 10,889,128:
Instant application Nº 19/001,500:
1.
An intermediate transfer member (ITM) for use with a printing system, the ITM comprising:
(a) a support layer; and
(b) a release layer having an ink reception surface for receiving an ink image, and a second surface opposing said ink reception surface, said second surface attached to said support layer, said release layer formed of an addition-cured silicone material;
said ink reception surface is adapted to satisfy at least one of the following structural properties:
(i) a receding contact angle of a droplet of distilled water on said ink reception surface is at most 60º;
(ii) for a droplet of distilled water deposited on said ink reception surface, a 10 second dynamic contact angle (DCA) is at most 1080; and
wherein said release layer has at least one of the following structural properties:
(1) said addition-cured silicone material consisting essentially of an addition-cured silicone, or containing, by weight, at least 95% of said addition-cured silicone;
(2) functional groups make up at most 5%, by weight, of said addition-cured silicone material.
75.
An intermediate transfer member (ITM) for use with a printing system, the ITM comprising:
(a) a support layer; and
(b) a release layer having an ink reception surface for receiving an ink image, and a second surface opposing said ink reception surface, said second surface attached to said support layer, said release layer formed of an addition-cured silicone material,
said release layer having a thickness of at most 500 micrometers (μm);
said ink reception surface is adapted to satisfy at least one of the following structural properties:
(i) a receding contact angle of a droplet of distilled water on said ink reception surface is at most 60º;
(ii) for a droplet of distilled water deposited on said ink reception surface, a 10 second
and
wherein said release layer has at least one of the following structural properties:
(1) said addition-cured silicone material consisting essentially of an addition-cured silicone, or containing, by weight, at least 95% of said addition-cured silicone;
(2) functional groups make up at most 3%, by weight, of said addition-cured silicone material.
Claim Rejections - 35 USC § 103
12. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
13. 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 of this title, 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.
14. Claims 70-72 are rejected under 35 U.S.C. 103 as being unpatentable over Asano et al. (US Pat. Nº 6,318,853), in view of Hori (US Pub. Nº 2009/0317555) and Kato (US Pat. Nº 5,683,841).
15. Regarding independent claim 70: Asano et al. disclosed a printing system (Col. 2, line 27; also see Fig. 1, reference 80) comprising:
a. an intermediate transfer member (ITM) comprising a flexible endless belt (Col. 2, line 26; also see Fig. 1, reference 13) mounted over a plurality of guide rollers (Fig. 1, references 11 and 12);
b. an image forming station configured to form ink images upon a surface of the ITM (Col. 2, lines 21-26; also see Fig. 1, reference 20), first and second of the guide rollers being arranged upstream and downstream of the image forming station to define an upper run passing through the image forming station and a lower run (Fig. 1, references 11 and 12 respectively, defining an upper run and a lower run of the ITM);
c. an impression station through which the lower run of the ITM passes, the impression station being disposed downstream of the image forming station and configured to transfer the ink images from the ITM surface to substrate (Col. 2, lines 36-41; also see Fig. 1, the transfer roller 16 for transferring the image to the substrate P in the lower run of the ITM); and
d. a treatment station disposed downstream of the impression station and upstream of the image forming station for forming a uniform thin layer of a liquid treatment formulation onto the ITM surface (Col. 2, lines 45-48; also see Fig. 1, references (30, 40) disposed downstream of the impression station 16 and upstream of the image forming station 20), the treatment station comprising:
i. a coater for coating the ITM with the liquid treatment formulation (Col. 3, lines 27-28; also see Fig. 1, reference 30); and
ii. a coating thickness-regulation assembly for removing excess liquid so as to leave only the desired uniform thin layer of treatment formulation (Col. 5, lines 18-24; also see Fig. 1, reference 40).
Asano et al. are silent about the treatment station being disposed at the lower run of the ITM and the coating thickness-regulation assembly comprising a rounded tip facing the ITM surface at the lower run.
Hori disclosed a similar invention with a printing system (Fig. 1), comprising an ITM (Fig. 1, reference 12), a printing station (Fig. 1, reference 10), a transfer station (Fig. 1, reference 26), wherein a treatment station for applying a treatment liquid is disposed at the lower run of the ITM ([0091], line 7; also see Fig. 1, reference 16); furthermore, Kato disclosed a coating thickness-regulation assembly comprising a vertically-oriented blade comprising a rounded tip facing a lower run of an ITM (Col. 23, lines 64-65 and Col. 4, line 6; also see Fig. 3, reference 13b).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hori and Kato with those of Asano et al. by providing the treatment station and a coating thickness-regulation assembly at a lower run of the ITM in order to pack the components of the printing system more compactly and reduce the size of the apparatus while achieving a uniform coating of the treatment liquid on the ITM.
16. Regarding claim 71: The combination of Asano et al., Hori and Kato disclosed the system of claim 70, wherein the rounded tip is a tip of a doctor blade (Kato, Fig. 3, reference 13b is a doctor blade).
17. Regarding claim 72: The combination of Asano et al., Hori and Kato disclosed the system of claim 71, wherein the doctor blade is oriented normal to the ITM surface (Kato, Fig. 3, reference 13b is oriented normal to the ITM 11).
Allowable Subject Matter
18. Claim 27 is allowed.
19. Claims 73 and 74 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, provided that the Double Patenting rejection is overcome.
20. Claim 75 would be allowable, provided that the Double Patenting rejection is overcome.
Conclusion
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAOVI M. AMEH whose telephone number is (571)272-4578. The examiner can normally be reached M-F: 9:00 AM - 6:00 PM.
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23. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RICARDO MAGALLANES can be reached at (571)272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAOVI M AMEH/Primary Examiner, Art Unit 2853
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