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 .
Election/Restrictions
Applicant’s election of Group II and Species II, Claims 9 and 10, in the reply filed on 15 June 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“intermediary transfer member” in claim 9;
“opposing member” in claim 9;
“transfer member” in claim 9;
“detecting portion” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 9 and 10 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 9 recites the limitation "the voltage being applied from an AC power source" in line 21. There is insufficient antecedent basis for this limitation in the claim.
In line 14, “a voltage” is introduced as coming from a transfer power source and being applied to the transfer member. The “the voltage” of line 21 appears to be a different voltage with a different power source and thus not properly introduced.
Claim Rejections - 35 USC § 102
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.
(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)(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 Rejections - 35 USC § 103
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.
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.
Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kanazawa et al. (US 5,701,569) or, in the alternative, under 35 U.S.C. 103 as obvious over Kanazawa et al. (US 5,701,569) in view of Yano et al. (US Pub.2007/0098433).
Regarding claim 9, Kanazawa et al. (US 5,701,569) teach an image forming apparatus (fig.1) comprising: an image bearing member configured to bear a toner image (fig.1&2, #10); a developing device configured to supply toner to the image bearing member and form the toner image on the image bearing member (fig.1, #4K/Y/M/C); an intermediary transfer member to which the toner image is transferred from the image bearing member and capable of circularly moving (fig.2, #20 moving in direction of arrows); an opposing member in contact with an inner circumferential surface of the intermediary transfer member (fig.2, #23); a transfer member in contact with an outer circumferential surface of the intermediary transfer member (fig.2, #24), configured to form a transfer portion by nipping the intermediary transfer member between itself and the opposing member (fig.2, #20 nipped between #23 and #24), and configured to transfer the toner image to a recording material from the intermediary transfer member in the transfer portion (col.4, ln.16-24); a transfer power source configured to apply a voltage to the transfer member (not shown, but must be present to accomplish: col.3, ln.44-46; col.4, ln.20-23); a fixing device disposed on a downstream side of the transfer portion with respect to a conveyance direction of the recording material and configured to form a fixing portion for nipping the recording material (fig.1, #7), the fixing device being provided with a heating source for heating the recording material nipped by the fixing portion and a heating member in contact with the recording material in the fixing portion and the heating source heating the recording material through the heating member by heating by the voltage being applied from an AC power source (fig.1, #7, the Office contends that this is standard configuration for an electrophotographic image forming apparatus); a detecting portion (fig.2, #41; col.4, ln.55-59) connected between the opposing member (fig.2, #23) and a ground potential without interposing the transfer member (fig.2, see ground symbol to which line left of #41 connects) and configured to detect a current or a voltage (col.4, ln.55-59); and a control portion configured to control the transfer power source, wherein the control portion controls the current outputting from the transfer power source based on a detecting result of the detecting portion while the toner image is transferred to the recording material from the intermediary transfer member in the transfer portion and the recording material is heated in the fixing portion (col.4, ln.60-col.5, ln.23).
Regarding claim 10, Kanazawa et al. (US 5,701,569) teach an image forming apparatus wherein the intermediary transfer member is an intermediary transfer belt constituted by an endless belt (fig.2, #20; col.2, ln.62-63).
The Office contends that Kanazawa et al. (US 5,701,569) would necessarily teach of the limitations of claim 9 when considered in light of how a conventional image forming apparatus operates; however, Kanazawa et al. (US 5,701,569) is silent as to specifics of the fixing device.
Regarding claim 9, Yano et al. (US Pub.2007/0098433) teach an image forming apparatus (fig.2) comprising: an image bearing member configured to bear a toner image (fig.2, #201A-D); a developing device configured to supply toner to the image bearing member and form the toner image on the image bearing member (fig.2, #204 at each station A-D); an intermediary transfer member to which the toner image is transferred from the image bearing member and capable of circularly moving (fig.2, #208 in direction of arrow); an opposing member in contact with an inner circumferential surface of the intermediary transfer member (fig.2, unlabeled roller inside #208 facing #205); a transfer member in contact with an outer circumferential surface of the intermediary transfer member (fig.2, unlabeled roller facing #208 and #215), configured to form a transfer portion by nipping the intermediary transfer member between itself and the opposing member (see fig.2), and configured to transfer the toner image to a recording material from the intermediary transfer member in the transfer portion (see fig.2); a fixing device disposed on a downstream side of the transfer portion with respect to a conveyance direction of the recording material (fig.2, #214) and configured to form a fixing portion for nipping the recording material (see fig.2), the fixing device being provided with a heating source for heating the recording material nipped by the fixing portion (fig.4, #518; para.0204) and a heating member in contact with the recording material in the fixing portion (fig.2, one of the unlabeled rollers in #214) and the heating source heating the recording material through the heating member by heating by the voltage being applied from an AC power source (fig.4, #540).
If the applicant does not find it convincing that the fixing device of Kanazawa et al. (US 5,701,569) would have such a configuration, it would have at least been obvious to one of ordinary skill in the art at the time of filing to modify the undefined fixing device of Kanazawa et al. (US 5,701,569) by using an AC driven heater as in Yano et al. (US Pub.2007/0098433) because it is a known configuration in the art and the fixing device has a short start-up time (para.0333).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA K ROTH whose telephone number is (571)272-2154. The examiner can normally be reached Monday - Friday, 7:30AM-3:30 PM.
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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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/LKR/
8/4/2026
/STEPHANIE E BLOSS/ Supervisory Primary Examiner, Art Unit 2852
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