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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/28/2025 has been considered.
Drawings
The drawings are objected to because there is a misspell in box S5 of Figs. 4 &5; i.e. “PRSSING”. 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.
Double Patenting
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).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) 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).
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(e) and 714.13.
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.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,242,218 to Tanto. Although the claims at issue are not identical, they are not patentably distinct from each other because a fixing device [Fig. 2(b)] comprising an endless and rotatable fixing belt [101], a heater [100] provided inside of the fixing belt and configured to heat the fixing belt, a rotatable pressing member [106] contacting an outer peripheral surface of the fixing belt and configured to form a fixing nip portion [N] and fix a toner image on a recording material in the fixing nip [Col. 4, lines 56-64], a holding member [103] configured to hold the heater [Col. 6, lines 25-27] by an adhesive [Col. 6, lines 33-37], and a remanufacturing method including the steps of peeling off adhesive between the first portion of the holding member and the heater, applying an adhesive to the second portion of the holding member and adhering the heater to the holding member [Col. 9, line 57 to Col. 10 line 2]; wherein the holding member including a first portion [41] to which the adhesive is applied and a second portion [42] in a region different from the first portion, of the patent to Tanto is the same as that as recited in claim 1 of the subject application, for example.
Regarding claim 4, Tanto discloses the second portion having a small projection-recess configuration [Col. 8, lines 12-15].
Regarding claim 5, Tanto discloses the holding member including a plurality of first portions and a plurality of second portions, respectively, and wherein the plurality of first portions and the plurality of second portions are alternatively arranged with respect to a longitudinal direction of the holding member [Col. 7, lines 54-58].
Regarding claim 6, Tanto discloses the plurality of first portions and the plurality of second portions are arranged at equal intervals [Col. 7, lines 61-63].
Regarding claim 7, Tanto discloses the plurality of first portions and the plurality of second portions are arranged in the same number [Col. 7, line 67 to Col. 8, line 2].
Prior Art
7. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
- Nakamoto et al. [9,329,535] disclose an image fixing device.
Contact Information
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to HOAN H TRAN whose telephone number is (571)272-2141.
The examiner can normally be reached on M-F 9AM-5:30PM.
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, Walter Lindsay can be reached on 571-272-1674. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
PAIRsystem, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
would like assistance from a USPTO Customer Service Representative or access to the
automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HOAN H TRAN/Primary Examiner, Art Unit 2852 04/01/26
Prosecution Insights