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 Objections
Claim 23 is objected to because of the following informalities:
In the 2nd line of claim 23, “light portions” should be corrected to --light emitting portions--.
Appropriate correction is required.
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: light emitting portions in claims 1, 8-14, 16-23; control portions in claims 8-12, 17-21.
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 1 & 8-15 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 1 recites the limitation "the plurality of pixels" in the last line of the 2nd-to-last paragraph of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 8-15 are rendered indefinite at least due to their dependence upon claim 1.
Claim 8 recites “a control portion which controls the plurality of light emitting portions”, while claim 1 has already set forth “a controller configured to control turning on and turning off the plurality of light emitting portions provided at different positions in the rotation direction so as to expose one of the plurality of pixels”. It is unclear whether or not these two limitations are intended to describe the same or different structures.
Claims 9-12 recite “the control portion”.
For examination purposes, the “control portion” in claims 8-12 will be interpreted as the “controller” set forth in claim 1.
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, 8, 13-17 and 22-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sowa et al. (US 2011/0129245; “Sowa”).
Regarding claim 1 as best understood, Sowa discloses an image forming apparatus 1 configured to expose a surface ES of a photosensitive member 21 with light to form an electrostatic latent image, and attach toner to the electrostatic latent image to form an image (Figs. 2 & 20 [0080, 0122, 0125-0126]), the image forming apparatus comprising:
an exposure head 29 ([0079]) configured to expose the surface ES of the photosensitive member with light to form the electrostatic latent image and including a light emitting unit that includes:
a substrate 293, a plurality of light emitting portions E that are two-dimensionally arranged in a rotation direction LTD of the photosensitive member and a rotational axis direction LGD of the photosensitive member and are arranged on the substrate at intervals (Figs. 1-2 [0081-0082]); and
a controller HC configured to control turning on and turning off the plurality of light emitting portions provided at different positions in the rotation direction so as to expose one of the plurality of pixels (turning one light emitting portion on while the others are off will expose one pixel; Fig. 16 [0112, 0128]), wherein
the plurality of light emitting portions E are arranged in such a way that a pitch (Dr23 = 42 µm) of the plurality of light emitting portions in the rotation direction is an integer multiple (in this instance, an integer 4) of a resolution pitch (Pdt = 10.533 µm) of the image formed by the image forming apparatus in the rotation direction, and the integer is greater than 1 (Figs. 15-16 [0097, 0108, 0111]).
Regarding claim 8 as best understood, Sowa discloses the image forming apparatus according to claim 1, further comprising a control portion HC which controls the plurality of light emitting portions ([0112, 0128]).
Regarding claim 13 as best understood, Sowa discloses the image forming apparatus according to claim 1, wherein the plurality of light emitting portions E are arranged in two dimensions in the direction of the rotational axis and in the direction orthogonal thereto (Fig. 5).
Regarding claim 14 as best understood, Sowa discloses the image forming apparatus according to claim 1, wherein among the plurality of light emitting portions E, the light emitting portions that are adjacent to each other in the orthogonal direction are arranged so as to be offset from one another in the direction of the rotational axis (Fig. 5).
Regarding claim 15 as best understood, Sowa discloses the image forming apparatus according to claim 1, wherein the plurality of light emitting portions are organic ELs ([0082]).
Regarding claim 16, Sowa discloses an image forming apparatus 1 for forming an image on a recording medium (Fig. 20 [0122]), comprising:
a rotating photosensitive drum 21 (with exposed surface ES) (Fig. 2 [0080, 0125]); and
a plurality of light emitting portions E (Fig. 5 [0081]), each of which emits light that exposes the photosensitive drum ES (Fig. 1), the plurality of light emitting portions E arranged in a direction LGD of a rotational axis of the photosensitive member and in a direction LTD orthogonal to the rotational axis (Fig. 1 [0079]), wherein
the resolution pitch (Pdt = 10.533 µm) of the image in the orthogonal direction is 1/N (in this instance, N ≈ 4) times the pitch (Dr23 = 42 µm) of the plurality of light-emitting portions E arranged in the orthogonal direction and N is an integer of 2 or greater (Figs. 15-16 [0097, 0108, 0111]).
Regarding claim 17, Sowa discloses the image forming apparatus according to claim 16, further comprising a control portion HC which controls the plurality of light emitting portions ([0123]).
Regarding claim 22, Sowa discloses the image forming apparatus according to claim 16, wherein the plurality of light emitting portions E are arranged in two dimensions in the direction of the rotational axis and in the direction orthogonal thereto (Fig. 5).
Regarding claim 23, Sowa discloses the image forming apparatus according to claim 16, wherein among the plurality of light emitting portions E, the light portions that are adjacent to each other in the orthogonal direction are arranged so as to be offset from one another in the direction of the rotational axis (Fig. 5).
Regarding claim 24, Sowa discloses the image forming apparatus according to claim 16, wherein the plurality of light emitting portions are organic ELs ([0082]).
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 12-12, 15-18, 21, 22, and 24 of U.S. Patent No. 12,259,666 (“the patent”) in view of Sowa (US 2011/0129245). Note that differences in wording occur between the patent and the outstanding claims, but the scope remains the same.
Regarding outstanding claim 1: claim 1 of the patent claims an image forming apparatus configured to expose a surface of a photosensitive member with light to form an electrostatic latent image, and attach toner to the electrostatic latent image to form an image, the image forming apparatus comprising: an exposure head configured to expose the surface of the photosensitive member with light to form the electrostatic latent image and including a light emitting unit that includes: a substrate, a plurality of light emitting portions (electrodes) that are two-dimensionally arranged in a rotation direction of the photosensitive member and a rotational axis direction of the photosensitive member and are arranged on the substrate at intervals; and a controller configured to control
Claim 1 of the patent does not explicitly claim the controller configured to control turning on and turning off the plurality of light emitting portions.
Sowa teaches controlling turning on and off a plurality of light emitting portions E ([0103]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to claim the controller configured to control turning on and turning off the plurality of light emitting portions. One would have been motivated to do so in order to accurately control the lighting of individual pixels for the lighting unit to function as intended.
Regarding outstanding claim 16, claim 1 of the patent claims image forming apparatus i.e., a pitch of the plurality of electrodes included in the first electrode layer in the rotation direction is an integer multiple of a resolution of the image formed by the image forming apparatus in the rotation direction, and the integer is greater than one).
The patent does not explicitly claim the apparatus for forming an image on a recording medium and the photosensitive drum rotating.
These are extremely well known in the art.
Sowa teaches a similar apparatus for forming an image on a recording medium and including a rotating photosensitive drum ([0123, 0125]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to claim these limitations. One would have been motivated to do so in order for the image forming apparatus to function as intended.
The correlation between the outstanding dependent claims and the patent claims are as follows:
Outstanding claim
8
9
12
13
15
17
18
21
22
24
Patent claim
1
8
8
1
5
1
8
8
1
5
Allowable Subject Matter
Claims 10-11 and 19-20 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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.
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/CARLA J THERRIEN/Primary Examiner, Art Unit 2852
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