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 .
Claim Construction
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 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:
“engaged portion” in claims 1 and 3-18;
“restricting portion” in claims 4, 5, 7, and 8;
“separating portion” in claims 5-7;
“regulating structure” in claim 7; and,
“an image forming unit” in claims 14-16.
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(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-13, 17 and 18 are rejected under 35 U.S.C. 112(a) for failing to satisfy the written description requirement.
Claim 1, from which the remaining claims depend, recites the limitations:
a first unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening; and
a second unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening.
The terms “unit” in both first and second unit are generic terms that include several species. The claims fail to limit such species, either functionally or structurally, until claim 14.
Applicant has failed to disclose a “sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus”. MPEP 2163 (II)(A)(3)(a)(ii) (internal citations omitted). As such, Applicant has failed to show possession of the entire scope of the claimed genus.
Here, Applicant has disclosed as the “units”: an image forming unit or a tray unit; and, a belt unit. Nonetheless, Applicant attempts to claim any and all “units” that can move in and out of an opening, including: an exposure device and a sheet cassette; a nuclear reactor and a fish; two individual sheets of paper; two whole reams of paper that one tosses in through the opening; and even a ham sandwich and a turkey sandwich (hereafter “the undisclosed”); so long as the second “unit” has an “engaged portion” construed under 112(f). The “engaged portion” as described is nothing other than a projection, and its equivalents.
Applicant is invited to either: show with particularity where the Specification describes the undisclosed as “units”; or, limit the scope of the claims to that which was described.
Claims 1-13, 17 and 18 are rejected under 35 U.S.C. 112(a) for failing to satisfy the enablement requirement.
Claim 1, from which the remaining claims depend, recites the limitations:
a first unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening; and
a second unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening.
The terms “unit” in both first and second unit are generic terms that include several species. The claims fail to limit such species, either functionally or structurally, until claim 14.
Here, Applicant has disclosed as the “units”: an image forming unit or a tray unit; and, a belt unit. Nonetheless, Applicant attempts to claim any and all “units” that can move in and out of an opening, including: an exposure device and a sheet cassette; two individual sheets of paper; two whole reams of paper that one tosses in through the opening; and even a ham sandwich and a turkey sandwich (hereafter “the undisclosed”); so long as the second “unit” has an “engaged portion” construed under 112(f). The “engaged portion” as described is nothing other than a projection, and its equivalents.
Several of the above undisclosed are not enabled either, including: a nuclear reactor and a fish; two individual sheets of paper; two whole reams of paper that one tosses in through the opening; and even a ham sandwich and a turkey sandwich (hereafter “the unenabled”). Applicant has failed to make even an iota of an attempt to enable a nuclear reactor, a fish, or sandwiches as the claimed units, but Applicant claims them nonetheless as parts of an image forming apparatus.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims. The level of ordinary skill of one having ordinary skill in the arts of heat pipes and electrophotography, to which the Specification pertains, at the time of effective filing is that of one having a Bachelor’s degree in engineering. However, the level of ordinary skill of one having ordinary skill in the art of the unenabled, to which the enormously broad Claims pertain, at the time of effective filing is as advanced as that of one having an advanced Doctoral degree. Nonetheless, due to the broad claimed applicability, the state of the prior art is largely undeveloped for vast swaths of the Claims’ scope. The predictability thus cannot be said to have any degree of certainty. Applicant has provided no guidance to those having ordinary skill in the art of the unenabled at the time of effective filing for making or using the claimed invention. There are no working examples in the art of the unenabled. Applicant has left the entire onus of experimentation on those who wish to make or use the claimed invention in the art of the unenabled. Applicant did not enable the full scope of the claimed invention at the time of effective filing.
Applicant is invited to either: show with particularity where the Specification enables the unenabled; or, limit the scope of the claim to that which was enabled.
Allowable Subject Matter
Claims 14-16 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: none of the prior art either alone or in combination teaches the following limitations in combination with the other limitations:
a first unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening; and
a second unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening, the second unit including an engaged portion, and is configured to be movable from the apparatus main body together with the first unit, and also to be movable from the apparatus main body independently from the first unit; and
an engaging member engaged with the engaged portion in a case where the second unit is moved out from the apparatus main unit body, the engaging member including a first path and a second path branching from the first path, wherein in a case where the second unit is moved out together with the first unit, the engaged portion passes the first path, and in a case where the second unit is moved out independently from the first unit, the engaged portion passes the second path;
wherein the first unit is an image forming unit which includes at least one photosensitive member, and the second unit is a belt unit which includes a belt to be contacted with the photosensitive member.
Claims 1-13, 17 and 18 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(a) set forth in this Office action and to include 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: none of the prior art either alone or in combination teaches the following limitations in combination with the other limitations:
a first unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening; and
a second unit attached to the apparatus main body and configured to be movable from the apparatus main body through the opening, the second unit including an engaged portion, and is configured to be movable from the apparatus main body together with the first unit, and also to be movable from the apparatus main body independently from the first unit; and
an engaging member engaged with the engaged portion in a case where the second unit is moved out from the apparatus main unit body, the engaging member including a first path and a second path branching from the first path, wherein in a case where the second unit is moved out together with the first unit, the engaged portion passes the first path, and in a case where the second unit is moved out independently from the first unit, the engaged portion passes the second path.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miura et al., U.S.P.G. Pub. No. 2003/0161656; and, Mori et al., U.S.P.G. Pub. No. 2010/0166455; teach always separating a transfer belt from the process cartridges when withdrawing either so as to avoid damage, whether independently or together.
Kimura et al., U.S.P.G. Pub. No. 2004/0101328, teach removing the photoconductors along with the transfer belt so as to replace both at the same time, because any defects in the belt with scratch new photoconductors otherwise.
The remaining references teach withdrawing transfer belts and the process cartridges, either independently or together.
Conclusion
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/SEVAN A AYDIN/Primary Examiner, Art Unit 2852