Prosecution Insights
Last updated: April 19, 2026
Application No. 19/039,398

IMAGE FORMING APPARATUS

Non-Final OA §102§103
Filed
Jan 28, 2025
Examiner
THERRIEN, CARLA J
Art Unit
2852
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Brother Kogyo Kabushiki Kaisha
OA Round
1 (Non-Final)
86%
Grant Probability
Favorable
1-2
OA Rounds
1y 7m
To Grant
91%
With Interview

Examiner Intelligence

Grants 86% — above average
86%
Career Allow Rate
544 granted / 630 resolved
+18.3% vs TC avg
Minimal +4% lift
Without
With
+4.4%
Interview Lift
resolved cases with interview
Fast prosecutor
1y 7m
Avg Prosecution
23 currently pending
Career history
653
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
38.8%
-1.2% vs TC avg
§102
33.3%
-6.7% vs TC avg
§112
21.5%
-18.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 630 resolved cases

Office Action

§102 §103
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 . 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 (i.e., changing from AIA to pre-AIA ) 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. 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 person shall be entitled to a patent unless – (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. Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takada et al. (US 2020/0387100; “Takada”). Regarding claim 1, Takada discloses an image forming apparatus 100 (fig. 1 [0020]) comprising: an apparatus main body (outer casing of units A0, B0, and C0; Fig. 1); a cutter B1 capable of cutting sheets (Fig. 2 [0031]); a first discharge roller configured to discharge a sheet, which is not cut by the cutter (see Fig. 10, not all sheets must be cut), to the outside of the apparatus main body (via units B0 & C0; see annotated partial Fig. 1 below); and a second discharge roller configured to discharge a sheet, which is cut by the cutter, to the outside of the apparatus main body (via unit C0; see annotated partial Fig. 1 below), wherein PNG media_image1.png 672 581 media_image1.png Greyscale [AltContent: oval][AltContent: connector][AltContent: rect][AltContent: oval][AltContent: rect][AltContent: connector]the second discharge roller is located downstream of the first discharge roller in a discharge direction (generally, a leftward direction) of the sheet from the first discharge roller (see Fig. 1). Regarding claim 2, Takada discloses an image forming apparatus 100 (fig. 1 [0020]) comprising: an apparatus main body (outer casing of units A0, B0, and C0; Fig. 1); a cutter B1 capable of cutting sheets (Fig. 2 [0031]); a first discharge port (port in A0 immediately following the first discharge roller in annotated partial Fig. 1 above) through which a sheet that is not cut by the cutter (see Fig. 10, not all sheets must be cut) is discharged to the outside of the apparatus main body (via units B0 & C0; see annotated partial Fig. 1 above); and a second discharge port (port in B0 immediately following the second discharge roller in annotated partial Fig. 1 above) through which a sheet that is cut by the cutter is discharged to the outside of the apparatus main body (via unit C0; see annotated partial Fig. 1 above), wherein the second discharge port is located downstream of the first discharge port in a discharge direction (generally, a leftward direction) of the sheet discharged from the first discharge port (Fig. 1). Claim(s) 1-4, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zoltner et al. (US 6,603,954). Regarding claim 1, Zoltner discloses an image forming apparatus 10 (Fig. 1, Col. 1 line 66 - Col. 2 line 19) comprising: an apparatus main body (see Fig. 1); a cutter 30 capable of cutting sheets (Fig. 1, Col. 2 lines 20-37); a first discharge roller (one of the rollers of fixing unit 18) configured to discharge a sheet, which is not cut by the cutter, to the outside of the apparatus main body (via path 14b) (Fig. 1, Col. 2 lines 20-37); and a second discharge roller 58 (Fig. 3) configured to discharge a sheet, which is cut by the cutter 30, to the outside of the apparatus main body (Fig. 1, Col. 2 line 65 - Col. 3 line 28), wherein the second discharge roller 58 is located downstream of the first discharge roller in a discharge direction (along path 14a) of the sheet from the first discharge roller (see Fig. 1). Regarding claim 2, Zoltner discloses an image forming apparatus 10 (Fig. 1, Col. 1 line 66 - Col. 2 line 19) comprising: an apparatus main body (see Fig. 1); a cutter 30 capable of cutting sheets (Fig. 1, Col. 2 lines 20-37); a first discharge port 20 through which a sheet that is not cut by the cutter is discharged to the outside of the apparatus main body (via path 14b) (Fig. 1, Col. 2 lines 20-37); and a second discharge port (port immediately downstream of nip 51) through which a sheet that is cut by the cutter is discharged to the outside of the apparatus main body (Fig. 1, Col. 2 line 65 - Col. 3 line 28), wherein the second discharge port is located downstream of the first discharge port in a discharge direction (along path 14a) of the sheet discharged from the first discharge port (see Fig. 1). Regarding claim 3, Zoltner discloses the image forming apparatus according to claim 1, further comprising: an image forming unit (including photoreceptor 16) disposed in the apparatus main body and configured to form an image on the sheet (Fig. 1, Col. 1 line 66 - Col. 2 line 19); a first conveying path 14b configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is not cut by the cutter 30 passes (Fig. 1); and a second conveying path 14a different from the first conveying path 14b and configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is cut by the cutter 30 passes (Fig. 1), wherein the cutter 30 is disposed in the second conveying path 14a (Fig. 1). Regarding claim 4, Zoltner discloses the image forming apparatus according to claim 1, further comprising: an image forming unit (including photoreceptor 16) disposed in the apparatus main body and configured to form an image on the sheet (Fig. 1, Col. 1 line 66 - Col. 2 line 19); a first conveying path 14b configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is not cut by the cutter 30 passes (Fig. 1); and a second conveying path 14a different from the first conveying path 14b and configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is cut by the cutter 30 passes (Fig. 1), wherein the second conveying path 14a is a conveying path longer than the first conveying path 14b (see Fig. 1). Regarding claim 12, Zoltner discloses the image forming apparatus according to claim 1, further comprising: an image forming unit (including photoreceptor 16) disposed in the apparatus main body and configured to form an image on the sheet (Fig. 1, Col. 1 line 66 - Col. 2 line 19); a first conveying path 14b configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is not cut by the cutter 30 passes (Fig. 1); a second conveying path 14a different from the first conveying path 14b and configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is cut by the cutter passes (Fig. 1); a first discharge tray 34 on which the sheet discharged through the first conveying path 14b is allowed to stack (Fig. 1, Col. 2 lines 20-34); and a second discharge tray 70 on which the sheet discharged through the second conveying path is allowed to stack (Fig. 1, Col. 3 lines 30-38). 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. Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zoltner (US 6,603,954) in view of Takada (US 2020/0387100). Regarding claim 5, Zoltner discloses the image forming apparatus according to claim 1, further comprising: an image forming unit (including photoreceptor 16) disposed in the apparatus main body and configured to form an image on the sheet (Fig. 1, Col. 1 line 66 - Col. 2 line 19); a first conveying path 14b configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is not cut by the cutter 30 passes (Fig. 1); a second conveying path 14a different from the first conveying path 14b and configured to guide the sheet on which the image is formed by the image forming unit to the outside of the apparatus main body, and through which the sheet that is cut by the cutter 30 passes (Fig. 1); a fixing unit 18 including a two rollers of 18 are visible in Fig. 1) that forms a nip portion between the Zoltner does not explicitly disclose the fixing unit contains a heating rotation body. Takada teaches a similar image forming apparatus comprising a fixing unit 234 including a heating rotation body and a pressure rotation body (Fig. 1 [0024]). Based on the teachings of Takada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include a heating rotation body in the fixing unit of Zoltner. One would have been motivated to make this modification in order to perform a fixing process by applying heat and pressure to melt the toner image (Takada [0024]). Regarding claim 6, Zoltner discloses the image forming apparatus according to claim 1, further comprising: a fixing unit 18 including a two rollers of 18 are visible in Fig. 1) that forms a nip portion between the see Fig. 1, note that the first discharge roller is one of the rollers of fixing unit 18). Zoltner does not explicitly disclose the fixing unit contains a heating rotation body. Takada teaches a similar image forming apparatus comprising a fixing unit 234 including a heating rotation body and a pressure rotation body (Fig. 1 [0024]). Based on the teachings of Takada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include a heating rotation body in the fixing unit of Zoltner. One would have been motivated to make this modification in order to perform a fixing process by applying heat and pressure to melt the toner image (Takada [0024]). Regarding claim 7, Zoltner discloses the image forming apparatus according to claim 2, further comprising: a fixing unit 18 including a two rollers of 18 are visible in Fig. 1) that forms a nip portion between the rotation body and the pressure rotation body (Fig. 1), and configured to fix an image onto the sheet (Fig. 1, Col. 1 line 66 - Col. 2 line 19), wherein the first discharge port 20 is located closer to the fixing unit 18 than the second discharge port (see Fig. 1). Zoltner does not explicitly disclose the fixing unit contains a heating rotation body. Takada teaches a similar image forming apparatus comprising a fixing unit 234 including a heating rotation body and a pressure rotation body (Fig. 1 [0024]). Based on the teachings of Takada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include a heating rotation body in the fixing unit of Zoltner. One would have been motivated to make this modification in order to perform a fixing process by applying heat and pressure to melt the toner image (Takada [0024]). Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zoltner (US 6,603,954) in view of Sato (US 2022/0357694). Regarding claim 8, Zoltner discloses the image forming apparatus according to claim 1, further comprising: a conveying roller located upstream of the cutter 30 in a conveying direction of the sheet and configured to convey the sheet to the cutter (at least two conveying rollers upstream of cutter 30 in path 14a can be seen in Fig. 1). Zoltner is silent regarding dimensions of the second discharge roller and the conveying roller in an axial direction, and therefore fails to teach wherein dimensions of the second discharge roller and the conveying roller in an axial direction are larger than half a width of a sheet having a maximum width and capable of being conveyed by the image forming apparatus. Sato teaches a similar image forming apparatus 1 (Fig. 1) comprising rollers 42 used to transport a sheet S through the apparatus, and the width of rollers 42 is longer than the width of the widest sheet used in the apparatus (Fig. 1 [0044]). Utilizing the teachings of Sato, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use rollers having dimensions in an axial direction that are longer than the width of the widest sheet used in the apparatus as the second discharge roller and the conveying roller. In doing so, dimensions of the second discharge roller and the conveying roller in an axial direction would be larger than half a width of a sheet having a maximum width and capable of being conveyed by the image forming apparatus, as claimed. Because of Zoltner’s silence regarding the roller lengths, one of ordinary skill would have recognized that employing rollers having the dimensions taught by Sato would obtain the predictable results of effectively transporting a sheet, thereby rendering the substitution of rollers obvious. Regarding claim 9, modified Zoltner teaches the image forming apparatus according to claim 8, wherein the dimension of at least one of the second discharge roller and the conveying roller in the axial direction is larger than the width of the sheet having the maximum width and capable of being conveyed by the image forming apparatus (see claim 8 above and Sato [0044]). Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zoltner (US 6,603,954) in view of Mano (US 2010/0289207). Regarding claim 13, Zoltner discloses the image forming apparatus according to claim 3, wherein the image forming unit includes a photosensitive drum 16 (Fig. 1, Col. 1 line 66 - Col. 2 line 19), but does not explicitly disclose a developing roller that supplies a toner onto the photosensitive drum, and a transfer roller that transfers the toner supplied onto the photosensitive drum to the sheet. Mano teaches a similar image forming apparatus 1 wherein the image forming unit 41K includes a photosensitive drum 43, a developing roller (part of developing unit 45; see Fig. 2) that supplies a toner onto the photosensitive drum 43, and a transfer roller 46 that transfers the toner supplied onto the photosensitive drum to the sheet (Fig. 2 [0122]). Based on the teachings of Mano, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize a developing roller that supplies a toner onto the photosensitive drum, and a transfer roller that transfers the toner supplied onto the photosensitive drum to the sheet in the image forming unit of Zoltner. Because of Zoltner’s silence regarding the components of the image forming unit, one of ordinary skill would have found it obvious to utilize the components taught by Mano in order to obtain the predictable results of effectively forming an image in an electrophotographic apparatus. Allowable Subject Matter Claim 14 is allowed. The following is an examiner’s statement of reasons for allowance: Prior art of record does not disclose or suggest the claimed “a first discharge roller disposed in the first conveying path and configured to discharge the uncut sheet to the discharge tray” and “a second discharge roller disposed in the second conveying path and configured to discharge the cut sheet to the discharge tray, wherein an upstream end of the sheet discharged from the second discharge roller in a discharge direction is located downstream in the discharge direction with respect to an upstream end of the sheet discharged from the first discharge roller in the discharge direction” in combination with the remaining limitations of claim 14. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Claims 10-11 and 15-20 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. The following is a statement of reasons for the indication of allowable subject matter: Prior art of record does not disclose or suggest the claimed wherein the controller “conveys the sheet to the second conveying path and discharges the sheet to the outside of the apparatus main body without cutting the sheet when determining that the dimension of the sheet in the conveying direction is smaller than a predetermined value” in combination with the remaining limitations of claim 10. Prior art of record does not disclose or suggest the claimed “wherein when determining that a dimension of a sheet included in a received print job in a conveying direction of the sheet is smaller than a predetermined value, the controller conveys the sheet to the second conveying path and discharges the sheet to the outside of the apparatus main body without cutting the sheet” in combination with the remaining limitations of claim 11. Prior art of record does not disclose or suggest the claimed “discharge tray on which the sheets discharged from the first discharge roller and the second discharge roller are stacked, wherein the discharge tray has a placement surface on which the discharged sheets are placed, and the length of a shortest distance in a direction along the placement surface from a first end of the placement surface on an upstream side in the discharge direction to a reference point of the placement surface located below the second discharge roller in a vertical direction is smaller than a sheet length of the sheet discharged from the second discharge roller” in combination with the remaining limitations of claims 15-20. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLA J THERRIEN whose telephone number is (571)272-2677. The examiner can normally be reached Monday-Friday 8 am - 4 pm EST. 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, 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CARLA J THERRIEN/Primary Examiner, Art Unit 2852
Read full office action

Prosecution Timeline

Jan 28, 2025
Application Filed
Feb 04, 2026
Non-Final Rejection — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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2y 5m to grant Granted Apr 14, 2026
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IDENTIFICATION OF GAS CONVEYANCE MALFUNCTIONS
2y 5m to grant Granted Apr 07, 2026
Patent 12596320
CORRECTING DENSITY UNEVENNESS IN IMAGE FORMING APPARATUS
2y 5m to grant Granted Apr 07, 2026
Patent 12585220
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2y 5m to grant Granted Mar 24, 2026
Patent 12585211
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2y 5m to grant Granted Mar 24, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
86%
Grant Probability
91%
With Interview (+4.4%)
1y 7m
Median Time to Grant
Low
PTA Risk
Based on 630 resolved cases by this examiner. Grant probability derived from career allow rate.

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