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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/606,734
`
`10/18/2019
`
`TAKAFUMI SHINGAI
`
`083710-2880
`
`9930
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`HINZE, LEO T
`
`2853
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/01/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/606,734
`Examiner
`LEO T HINZE
`
`Applicant(s)
`SHINGAI, TAKAFUMI
`Art Unit
`AIA (FITF) Status
`2853
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 18 October 2019.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(J Claim(s)__ is/are allowed.
`Claim(s) 1-2,4-5,8 and 10-12 is/are rejected.
`Claim(s) 3,6-7 and 9 is/are objected to.
`1) Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 18 October 2019 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.4 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 20191018.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210326
`
`

`

`Application/Control Number: 16/606,734
`Art Unit: 2853
`
`Page 2
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`DETAILED ACTION
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthefirst
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`inventorto file provisions of the AJA.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`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
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`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`3.
`
`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.
`
`4,
`
`Claims1, 2, 4, 5, 8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Nishio et al., US Patent Number 9,498,992 B2 (hereinafter Nishio).
`
`a.
`
`Regarding claim 1, Nishio teachesa roller device comprising:
`
`a cylindrical body (11, Fig. 4);
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`a thermoelectric converter disposed on an inner peripheral surface of the cylindrical body
`
`(23/24, Fig. 4);
`
`a first heatsink (22, Fig. 4) and a second heatsink (22, Fig. 4; “each of cooling units 21
`
`includes heat sink 22,” col. 7, lines 7-8) that are adjacent to each other, the first heatsink and the
`
`second heatsink each dissipating heat of the thermoelectric converter; and
`
`

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`Application/Control Number: 16/606,734
`Art Unit: 2853
`
`Page 3
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`a press-fitting member disposed between the first heatsink and the second heatsink (26,
`
`Fig. 4),
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`wherein the press-fitting member makesthe thermoelectric converter be held between the
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`cylindrical body andat least one of the first heatsink and the second heatsink (as assembled, with
`
`spacer 26in place, thermoelectric converter 23/24 is between the cylindrical body andthe heatsink,
`
`Fig. 4).
`
`b.
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`Regarding claim 2, Nishio teaches the invention of claim 1, as set forth in the rejection of
`
`claim 1 above. Nishio also teaches the press-fitting memberhas a rod shape(triangular elongated
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`shape of 26, Fig. 4; “Spacer 26 having a triangular prism shape and extendingin the axial direction
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`of roller 11,” col. 8, lines 66-67), and
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`the first heatsink has a grooveto regulate a position of the press-fitting member (heatsinks
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`22 have grooves between the fins, and the heatsinks regulate positions of press-fitting members
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`26, Fig. 4).
`
`c.
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`Regarding claim 4, Nishio teaches the invention of claim 2, as set forth in the rejection of
`
`claim 2 above. Nishio also teaches wherein the second heatsink has an area facing the groove, the
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`area being a flat surface (heatsink 22 hasflat portionsof fins that face the grooves betweenthe fins
`
`of heatsink 22, Fig. 4).
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`d.
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`Regarding claim 5, Nishio teaches the invention of claim 2, as set forth in the rejection of
`
`claim 2 above. Nishio also teaches wherein an end part of the press-fitting memberin an insertion
`
`direction has a shape whose width becomes narrow toward a tip (“Spacer 26 having a triangular
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`prism shape and extendingin the axial direction of roller 11,” col. 8, lines 66-67 — the triangular
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`prism shape tapers to become narrowertowardatip of the triangular prism, Fig. 4).
`
`e.
`
`Regarding claim 8, Nishio teaches the invention of claim 1, as set forth in the rejection of
`
`

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`Application/Control Number: 16/606,734
`Art Unit: 2853
`
`Page 4
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`claim 1 above. Nishio also teaches wherein the press-fitting member is disposed substantially in
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`an entire range of at least one of the first heatsink and the second heatsink in a longitudinal
`
`direction of the at least one of the first heatsink and the second heatsink (“Spacer 26 having a
`
`triangular prism shape and extending in the axial direction of roller 11,” col. 8, lines 66-67).
`
`f.
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`Regarding claim 10, Nishio teaches the invention of claim 1, as set forth in the rejection
`
`of claim 1 above. Nishio also teaches an elastic body disposed between the press-fitting member
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`and the inner peripheral surface of the cylindrical body (body 24 haselasticity, Fig. 4).
`
`g.
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`Regarding claim 11, Nishio teaches the invention of claim 1, as set forth in the rejection
`
`of claim 1 above. Nishio also teaches a printer comprising the roller device according to claim 1
`
`wherein the roller device is used to transfer ink to a sheet-shaped object to be printed (This
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`limitation refers to an intended use of the apparatus, and is incapable of patentably distinguishing
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`an invention over an otherwise structurally identical apparatus, as set forth in MPEP § 21141). In
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`this instance, the roller 11 of Nishio is capable of being used in the mannerclaimed).
`
`h.
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`Regarding claim 12, Nishio teaches the invention of claim 11, as set forth in the rejection
`
`of claim 11 above. Nishio also teaches wherein the roller deviceis an ink roller that leads ink from
`
`an ink storage to a plate cylinder (This limitation refers to an intended use of the apparatus, and is
`
`incapable of patentably distinguishing an invention over an otherwise structurally identical
`
`apparatus, as set forth in MPEP § 2114(II). In this instance, the roller 11 of Nishio is capable of
`
`being used in the manner claimed).
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`Allowable Subject Matter
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`5.
`
`Claims3, 6, 7, and 9 are objected to as being dependent upon a rejected base claim, but
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`would be allowable if rewritten in independent form includingall of the limitations of the base
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`claim and any intervening claims.
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`

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`Application/Control Number: 16/606,734
`Art Unit: 2853
`
`Page 5
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`6.
`
`a.
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`The following is a statement of reasonsfor the indication of allowable subject matter:
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`Regarding claim 3, the prior art of record does not teach or render obviousa roller device
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`havingall of the recited structure and functionality, including a thermoelectric converter disposed
`
`on an inner peripheral surface of the cylindrical body, a first heatsink and a second heatsink that
`
`are adjacent to each other, the first heatsink and the second heatsink each dissipating heat of the
`
`thermoelectric converter, and a press-fitting member disposed between the first heatsink and the
`
`second heatsink, wherein the press-fitting member makes the thermoelectric converter be held
`
`between the cylindrical body andat least one of the first heatsink and the second heatsink, wherein
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`the press-fitting memberhasa circular cross-section, the groove has two wall surfaces each having
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`a planar shape, the two wall surfaces being inclined to each other, and the two wall surfaces receive
`
`the press-fitting member.
`
`b.
`
`Regarding claim 6, the prior art of record does not teach or render obvious a roller device
`
`havingall of the recited structure and functionality, including a thermoelectric converter disposed
`
`on an inner peripheral surface of the cylindrical body, a first heatsink and a second heatsink that
`
`are adjacent to each other, the first heatsink and the second heatsink each dissipating heat of the
`
`thermoelectric converter, and a press-fitting member disposed between the first heatsink and the
`
`second heatsink, wherein the press-fitting member makes the thermoelectric converter be held
`
`between the cylindrical body andat least one of the first heatsink and the second heatsink, wherein
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`the press-fitting memberis inserted from one end edge of the groove, and the second heatsink has
`
`a guide groovein an area facing the one end edge of the groove, the guide groove hasa shapethat
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`gradually becomesshallow along a direction that the press- fitting memberis inserted in.
`
`c.
`
`Regarding claim 7, the prior art of record does not teach or render obvious a roller device
`
`havingall of the recited structure and functionality, including a thermoelectric converter disposed
`
`

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`Application/Control Number: 16/606,734
`Art Unit: 2853
`
`Page 6
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`on an inner peripheral surface of the cylindrical body, a first heatsink and a second heatsink that
`
`are adjacent to each other, the first heatsink and the second heatsink each dissipating heat of the
`
`thermoelectric converter, and a press-fitting member disposed between the first heatsink and the
`
`second heatsink, wherein the press-fitting member makes the thermoelectric converter be held
`
`between the cylindrical body andat least one ofthe first heatsink and the second heatsink, wherein:
`
`the groove is formed from a first end part of the first heatsink to a second end part of the first
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`heatsink in a longitudinal direction of the first heatsink, a plurality of press-fitting members
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`including the press-fitting memberare disposed in the groove, and the groove is deformed so that
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`both end edges of the groove are wider than a part other than the both end edges byinsertion of
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`each of the plurality of press-fitting member.
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`Conclusion
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`7.
`
`The prior art made of record and notrelied upon is considered pertinent to applicant's
`
`disclosure.
`
`a.
`
`Kikugawa, US Patent Number 9,004,670 B2 discloses an invention similar to a reference
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`disclosed in the international search report, but which Applicant did not disclose in an Information
`
`Disclosure Statement.
`
`8.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to LEO T HINZE whose telephone numberis (571)272-2864. The examiner
`
`can normally be reached on M-F 9-5.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant
`
`is
`
`encouraged to use the USPTO Automated Interview Request (AIR)at:
`
`http://www.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/606,734
`Art Unit: 2853
`
`Page 7
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`David Gray can be reached on (571) 272-2119. The fax phone numberfor the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applicationsis available through Private PAIR only. For more information about the PAIR system,
`
`see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system,
`
`contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO CustomerService Representative or access to
`
`the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LEO T HINZE/
`Patent Examiner
`
`AU 2853
`26 March 2021
`
`/Leslie J Evanisko/
`Primary Examiner, Art Unit 2853
`
`