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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed “a transfer unit, wherein the nip portion is formed by components of the transfer unit” of claim 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification in compliance with 37 CFR 1.121(b) 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. 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.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
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:
“support body” in claims 1-8;
“transfer unit” in claim 6;
“fixing unit” in claim 7; and,
“heating member” in claim 8.
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.
Claims 1-8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitations “an elastic member in close contact with the support body” and “the support body in close contact with the elastic member”.
The term “close” in claims 1-8 is a relative term which renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, there is no reasonable certainty as to the metes and bounds of the term “close contact”.
For the purpose of Examination, Examiner shall construe the term “close contact” as requiring contact, whether direct or indirect, that leaves the space between the support body and the elastic member at less than the radius of the Earth, upon which the apparatus is disposed.
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.
Claims 1-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yura et al., U.S.P.G. Pub. No. 2003/0103788, in view of:
EP 490664; JP S63-179041; JP S63-179040; JP S63-011642; JP S61-110743; and, JP S61-159546; individually and together.
Regarding independent claim 1, Yura et al. teach an image forming apparatus comprising:
a support body (fig 4 ref 19);
an elastic member (17; additionally and alternatively, the elastic member fig 5 ref 21) in close contact with the support body (it is closer than the moon);
an endless belt (15); and
a nip portion, wherein:
the nip portion (L1 and L2 together) is formed by the elastic member and the endless belt,
the support body in close contact with the elastic member pressed at the nip portion is made of aluminum (¶ 46).
Yura et al. is silent with respect to the support body is made of an aluminum alloy containing silicon, and
a content of silicon in the aluminum alloy is within a range of 0.8 to 12.0% by mass.
Yura et al. teach that the support body should be heat-resistant, ¶ 46, and able to be formed flat or arcuate complimentary to the circumference of the press roller, ¶ 46.
The following prior art, alone and in combination, teach utilizing aluminum alloys comprising silicon for improved heat resistance and workability:
EP 490664 (0.5-13% by weight Si for improved heat resistance and surface smoothness; and, 0.15 to 0.6% of Cu);
JP S63-179041 (0.5-13% Si by weight for improved heat resistance, workability, and surface smoothness; and, 0.05-7% Cu);
JP S63-179040 (0.05-12% Si by weight for improved heat resistance, workability, and surface smoothness; and, 0.05-7% Cu);
JP S63-011642 (4-13% Si by weight for improved heat resistance, workability, and surface smoothness; and, 0.05-1.5% Cu);
JP S61-110743 (5-11.7% Si by weight for improved wear resistance, workability, and a low coefficient of thermal expansion; and, 0.3-0.8% Cu); and,
JP S61-159546 (a photoconductor base with 0.5-7% Si by weight for improved hardness, workability, scratch resistance, and heat resistance; and unspecified Cu).
Each of the above references, alone and in combination, provide the benefits of using aluminum alloys containing Si and Cu. The art thus recognizes the suitability of the aluminum alloys containing Si and Cu for the intended purposes that Yura et al. mention. As such, the aluminum alloys containing Si and Cu in the claimed ranges would have been a mere obvious selection of a known material based on its suitability for its intended use. MPEP 2144.07.
Of the above cited references, each of C-F have endpoints of their disclosed ranges within the claimed ranges. As such, each of C- F anticipate the claimed ranges as citing specific examples. MPEP 2131.03 (I).
Moreover, each of references A-F teach overlapping ranges with sufficient specificity to either anticipate, MPEP 2131.03 (II), or render obvious 2144.05 (I), the claimed range. Each of the above references give reasons and benefits for providing the amount of Si that they do, with each of the references’ disclosed ranges’ extent very closely matching that of the claimed range. It would have been obvious to one having ordinary skill at the time of effective filing to provide the claimed ranges of Si content to obtain the benefits mentioned in each of A-F, matching the intended use of Yura et al.
Further still, each of references A-F disclose that the Si content is a result effective variable, determining the desirable properties mentioned above. It would have been obvious to one having ordinary skill in the art at the time of effective filing to determine the optimum or workable ranges of silicon content of the aluminum alloy through routine experimentation. Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233, 220 F.2d 454 (C.C.P.A. 1955) (selection of optimum ranges within known prior art general conditions is obvious, even if the ranges do not overlap); See In re Huang, 40 USPQ2d 1685, 100 F. 3d 135 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). The specification discloses neither the critical nature of the claimed optimum silicon content of the aluminum alloy, nor any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen range or upon another variable recited in a claim, the Applicant must show that the chosen range are critical. In re Woodruf, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, which depends from claim 1, Yura et al. further teach wherein:
the endless belt conveys a recording medium (fig 4 ref S), and
at least one of the nip portion is formed by the elastic member and the belt that conveys the recording medium (fig 4).
Regarding claim 3, which depends from claim 1, wherein a content of copper in the aluminum alloy is 1.1% by mass or less.
Each of references A-F teach an endpoint within the claimed range, and thus anticipate the claimed range.
Moreover, each of references A, D, and E teach overlapping ranges with sufficient specificity to either anticipate, MPEP 2131.03 (II), or render obvious 2144.05 (I), the claimed range. Each of the above references give reasons and benefits for providing the amount of Si that they do, with each of the references’ disclosed ranges’ extent very closely matching that of the claimed range. It would have been obvious to one having ordinary skill at the time of effective filing to provide the claimed ranges of Cu content to obtain the benefits mentioned in each of A-F, matching the intended use of Yura et al.
Further still, each of references A-F disclose that the Si content is a result effective variable, determining the desirable properties mentioned above. It would have been obvious to one having ordinary skill in the art at the time of effective filing to determine the optimum or workable ranges of copper content of the aluminum alloy through routine experimentation. Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233, 220 F.2d 454 (C.C.P.A. 1955) (selection of optimum ranges within known prior art general conditions is obvious, even if the ranges do not overlap); See In re Huang, 40 USPQ2d 1685, 100 F. 3d 135 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). The specification discloses neither the critical nature of the claimed optimum copper content of the aluminum alloy, nor any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen range or upon another variable recited in a claim, the Applicant must show that the chosen range are critical. In re Woodruf, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, which depends from claim 1, Yura et al. further teach wherein the nip portion is formed by the endless belt and two rotatable bodies that face each other with the endless belt in-between (fig 4).
Regarding claim 5, which depends from claim 1, Yura et al. further teach wherein:
the support body in close contact with the elastic member pressed at the nip portion is disposed inside the endless belt (fig 4), and
the image forming apparatus further includes a rotatable pressure member (17, noting that the elastic member of claim 1 can have two properties at the same time; additionally and alternatively, the pressure member 17 is a separate and distinct member from the elastic layer 21) that is disposed outside the endless belt and that presses the elastic member at the nip portion.
Regarding claim 7, which depends from claim 1, Yura et al. further teach further comprising a fixing unit (fig 4), wherein the nip portion is formed by components of the fixing unit (fig 4).
Regarding claim 8, which depends from claim 7, Yura et al. further teach wherein the fixing unit includes a heating member (16A).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yura et al., U.S.P.G. Pub. No. 2003/0103788, in view of JP S61-159546.
Regarding claim 6, which depends from claim 1, although Yura et al. teach a transfer unit as a transfer device across a transfer belt from each of the photoconductors (fig 3), Yura et al. fail to teach wherein the nip portion of claim 1 is formed by components of the transfer unit.
JP S61-159546 teaches the benefits of the aluminum alloy with the claimed silicon content as applied to photoconductors.
It would have been obvious to one having ordinary skill at the time of effective filing to provide wherein the nip portion is formed by components of the transfer unit. One having ordinary skill in the art at the time of effective filing would have done so to obtain the benefits of the aluminum alloy with the claimed silicon content as applied to photoconductors as taught by JP S61-159546.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEVAN A AYDIN whose telephone number is (571)270-3209. The examiner can normally be reached M-Th 9AM-6PM PT.
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/SEVAN A AYDIN/Primary Examiner, Art Unit 2852
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