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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,422,774. Although the claims at issue are not identical, they are not patentably distinct from each other because the outstanding claim is broader and thus fully met.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 7-8, 11, and 15 of U.S. Patent No. 12,422,774 (“the patent”) in view of Aiko (US 2010/0124425; "Aiko").
Regarding outstanding claim 1, despite slight differences in wording, claim 1 of the patent claims a printing system comprising: a printing apparatus configured to print an image on a sheet; a charge eliminating apparatus configured to perform a charge eliminating process on the sheet on which the image has been printed; a measurement unit configured to measure an amount of charge on the sheet on which the charge eliminating process has been performed by the charge eliminating apparatus.
Claim 1 of the patent fails to claim a control unit configured to cause the printing apparatus to suspend a printing process in a case where the measured amount of charge does not fall within a predetermined range.
However, claim 1 of the patent does claim a display unit configured to display a message for prompting a user to change the setting value for the charge eliminating process to be performed by the charge eliminating apparatus in a case where the amount of charge on the sheet that has undergone the charge eliminating process performed by the charge eliminating apparatus and that was measured in the measurement does not fall within a predetermined range. As such, claim 1 of the patent requires a control unit to perform an action in a case where the measured amount of charge does not fall within a predetermined range.
Aiko teaches suspending a printing process in a case where a measured amount does not fall within a predetermined range ([0046, 0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to claim a control unit configured to cause the printing apparatus to suspend a printing process in a case where the measured amount of charge does not fall within a predetermined range. It has been held to be within the general skill of a worker in the art to combine prior art elements according to known methods to yield predictable results. In this instance, the predictable results would be suspending the printing to allow the apparatus time to notify the user when a measured value affecting print quality is not at an ideal level.
Regarding outstanding claim 2, claim 2 of the patent claims the printing system according to claim 1, further comprising a display unit that displays the amount of charge on the sheet measured by the measurement unit.
Regarding outstanding claim 3, claim 4 of the patent claims the printing system according to claim 1, wherein the control unit causes the printing system to resume the printing process in a case where the printing system receives an instruction to change a setting for the charge eliminating process to be performed by the charge eliminating apparatus and an instruction to resume the printing process.
Regarding claim outstanding claim 4, claim 7 of the patent claims the printing system according to claim 1, further comprising: a setting unit (inherent in the system that prompts a user to change the setting value; see also claim 1 of the patent) configured to set whether the charge eliminating apparatus performs the charge eliminating process (ON or OFF state), wherein, in a case where the setting unit sets that the charge eliminating apparatus performs the charge eliminating process (ON state), the charge eliminating apparatus performs the charge eliminating process on the sheet on which the image has been printed.
Regarding outstanding claim 5, claim 8 of the patent claims the printing system according to claim 4, further comprising: another setting unit (a second control) configured to set a setting value for the charge eliminating process.
Regarding outstanding claim 6, claim 8 of the patent claims the printing system according to claim 5, wherein the setting value is a value for setting an intensity (changing the setting value) of the charge eliminating process.
The method steps of claim 7 are met by the operation of the apparatus of modified 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 modify patent claim 11 in the same manner as patent claim 1.
Regarding outstanding claim 8, despite slight differences in wording, claim 15 of the patent claims a non-transitory computer-readable storage medium storing computer-executable instructions for causing a computer to execute a method for controlling a printing system comprising a printing apparatus and a charge eliminating apparatus, the printing apparatus printing an image on a sheet, the charge eliminating apparatus performing a charge eliminating process on the sheet on which the image has been printed, the method comprising: measuring an amount of charge on the sheet on which the charge eliminating process has been performed.
Patent claim 15 fails to claim causing the printing apparatus to suspend a printing process in a case where the measured amount of charge does not fall within a predetermined range.
However, claim 15 of the patent does claim displaying a message for prompting a user to change the setting value for the charge eliminating process to be performed by the charge eliminating apparatus in a case where the amount of charge on the sheet that has undergone the charge eliminating process performed by the charge eliminating apparatus and that was measured in the measurement does not fall within a predetermined range. In other words, claim 15 claims performing an action in a case where the measured amount of charge does not fall within a predetermined range.
Aiko teaches suspending a printing process in a case where a measured amount does not fall within a predetermined range ([0046, 0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to claim the step of causing the printing apparatus to suspend a printing process in a case where the measured amount of charge does not fall within a predetermined range. It has been held to be within the general skill of a worker in the art to combine prior art elements according to known methods to yield predictable results. In this instance, the predictable results would be suspending the printing to allow the apparatus time to notify the user when a measured value affecting print quality is not at an ideal level.
Prior Art
The prior art made of record and not relied upon is related art cited by Examiner in the parent case.
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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