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 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 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 maintenance" in the 2nd line of the 4th paragraph of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the maintenance" in the 2nd line of the 5th paragraph of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the maintenance" in the 2nd line of the 4th paragraph of the claim. There is insufficient antecedent basis for this limitation in the claim.
It is noted that in each of claims 1, 16, and 20, the phrase “a maintenance required determination control” appears in the previous line. As the “maintenance” in this instance is understood to be describing the control, it is not an antecedent of “the maintenance” that follows.
Claims 2-5, 7-8, 12-14, 17-19, and 21-22 are rendered indefinite for their dependence upon indefinite claims 1, 16, and 20.
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 1-5, 7-8, 13-14, and 16-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9, and 13 of U.S. Patent No. 12,405,560 (“the patent”).
With respect to outstanding claims 1-4, 7-8, 13-14, 16, and 18-21, although the claims at issue are not identical, they are not patentably distinct from each other because the outstanding claims are broader and thus fully met. Correlation between the claims are as follows:
Outstanding claim
1
2
3
4
7
8
13
14
16
18
19
20
21
Patent claim
1
1
2
3
6
7
8
9
13
1
1
1
1
Regarding outstanding claim 5, claim 4 of the patent claims wherein the indicator is a light emitting diode, the light emitting diode is turned on blinking requires the light emitting diode to be turned off, at least temporarily)
Patent claim 4 does not explicitly claim the turning on and turning off in the specific cases where maintenance is required and where maintenance is not required, respectively. Patent claim 4, however, claims that in one case the light is turned on and in the other case the light is turned off/blinks (see also patent claim 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to claim the light emitting diode is turned on in a case where the maintenance is required for the non-contact charge eliminating unit, and the light emitting diode is turned off in a case where the maintenance is not required for the non-contact charge eliminating unit. It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. In this instance, there are only two solutions: either (1) the light is turned on when maintenance is required and off when maintenance is not required, or (2) the light is turned off when maintenance is required and on when maintenance is required. One of ordinary skill would reasonably expect successful notification at least when the light is turned on when maintenance is required and off when maintenance is not required.
Regarding outstanding claim 17, claim 1 of the patent fails to explicitly claim a sensor configured to detect whether the door is opened or closed, wherein in a case where the door is opened, a user has access to the non-contact charge eliminating unit, and wherein the controller is configured to determine whether the door is opened or closed based on a detection result of the sensor.
However, patent claim 1 claims that in a case where the maintenance detection result stored when a door of the charge-eliminating apparatus is opened or closed indicates that maintenance is required. Therefore, a sensor configured to detect whether the door is opened or closed must be present, and the controller is configured to determine whether the door is opened or closed based on a detection result of the sensor. These limitations would be obvious to claim in order for the apparatus to function as intended.
Further, doors are well-known structures to allow access when open. It would have further been obvious to claim in a case where the door is opened, a user has access to the non-contact charge eliminating unit, in order to allow a user the ability to access a part requiring maintenance.
Regarding outstanding claim 22, claim 1 of the patent claims wherein: the controller is configured to perform the maintenance required determination control after a charge eliminating operation in which the non-contact charge eliminating unit eliminates the charge from a plurality of sheets that are conveyed in succession is completed (see claim 1 of the patent). 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 is configured not to perform the maintenance required determination control while the charge eliminating operation is performed, because the controller is already configured to perform the maintenance required determination control after a charge eliminating operation is completed.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,405,560 in view of Kawano et al. (US 2007/0236553; “Kawano”).
Regarding outstanding claim 12, claim 1 of the patent fails to claim wherein in a case where a print job is input in a middle of the maintenance required determination control, the controller interrupts the maintenance required determination control and starts the print job.
Kawano teaches interrupting a maintenance required determination control (i.e., an operation for measuring light quantities) and starting a print job when the job is input in the middle of the control ([0259]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to claim wherein in a case where a print job is input in a middle of the maintenance required determination control, the controller interrupts the maintenance required determination control and starts the print job. One would have been motivated to do so in order to immediately start a print operation (Kawano [0261]), thereby preventing a user from having to wait a longer period of time until their print job is finished.
Prior Art
The prior art made of record and not relied upon includes prior art cited by Examiner in the parent application and related art.
Conclusion
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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