DETAILED ACTION
Response to Arguments
The rejection of claims 2 and 3 under 35 U.S.C. 112(d) has been withdrawn.
Applicant's arguments filed 4/13/2026 with respect to the 35 U.S.C. 103 rejection of claims 1, 4, 5, 9-12 and 15 have been fully considered but they are not persuasive. Applicant argues that the SP values for the first amorphous polyester resin of Sugimoto correspond to polyesters with fundamentally different weight-average molecular weights than the first amorphous polyester in claim 1, and therefore the obviousness rejection lacks merit. According to the MPEP, objective evidence must be factually supported. In order to be considered, any objective evidence must be accompanied by experimental data that corroborates the objective results (MPEP 716.01(c)). Applicant has not shown that a difference in molecular weight of a polyester of 2,000 corresponds to a resin which is different to the extent that the SP values cannot be compared.
Typically, SP values of resins are affected by the type and ratio of monomers used to form the resin. This can be seen on page 22 of the specification, which states that the SP value of a polyester resin can be modified by changing the monomers which are used to make the resin.
Further, the instant specification discloses on page 19 a wider range for the first amorphous polyester resin, wherein the molecular weight may be as low as 7,000. While this value is not the claimed limitation, it shows that it must not be fundamentally different from the claimed range, only a slightly less preferred embodiment. The exemplary amorphous resins a1 listed in Table 1 further show that resins with molecular weights included in the range of Sugimoto are similar to resins with molecular weights in the range of claim 1, as the SP value is consistent based on monomer composition. Examples a1-1, a1-4, a1-7, and a1-8 all have the same monomer composition and SP value, but range in molecular weight from 9,000 to 24,000.
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.
Claims 1, 4, 5, 9-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Veregin (US Patent No. 11,092,906) in view of Sugimoto (Japanese Patent Application Publication No. 2012-063559).
Veregin teaches a toner comprising toner particles containing a binder resin, wherein the binder resin comprises a first amorphous polyester resin, a second amorphous polyester resin different from the first, and a crystalline polyester resin (Col. 6 line 1-5). The first amorphous polyester resin has a weight average molecular weight, Mw(a1), of 18,000 to 21,000 (Col. 11 line 1-20) and the second amorphous resin has a weight average molecular weight of 68,000 to 85,000 (Col. 11 line 43-55). These values would produce a range for |Mw(a2) – Mw(a1)| of 47,000 to 67,000. The crystalline polyester resin is present in an amount of 6 to 7% by weight based in the total weight of the toner (Col. 9 line 64-66). The content of the crystalline resin to the low molecular weight amorphous resin and the high molecular weight amorphous resin is 1:5:5 to 1:9:9, or 5.6% to 10% (Col. 14 line 28-33). The content of the amorphous resins is from 35% to 85% by weight of the toner (Col. 7 line 22-26).
The toner may be mixed with a carrier to form a developer (Col. 30 line 43-46). The image forming apparatus comprises an image carrier, a charging component, an image creating component, a developing component, a transfer component, and a fixing component (Col. 31 line 58-62).
Veregin is silent regarding suitable SP values for the various binder resins. Sugimoto also teaches a toner comprising a crystalline polyester resin, a first amorphous polyester resin, and a second amorphous polyester resin ([0007]). The solubility parameter for the crystalline resin is SP1, the first amorphous resin is SP3, and the second amorphous resin is SP4 ([0007]). Controlling the solubility parameters of the crystalline polyester resin and the first amorphous polyester resin allows for the crystalline resin to be finely dispersed and filming can be suppressed, and the low-temperature fixability can be improved ([0028]). Controlling the solubility parameters of both amorphous resins allows for the viscoelasticity of the toner at high temperatures to be maintained, and the offset resistance can be improved ([0031]). Exemplary toners 1-10 have values |SP(a2) – SP(c1)|, or SP4 – SP1 between 1.6 and 2.1 (Table 1). Regarding the formula |SP(a1) – SP(c1)| / |SP(a2) – SP(c1)|, or |SP3 – SP1| / |SP4 – SP1|, exemplary toners 1, 4-6, 9, and 10 have the same SP values: |11.0 – 9.9| / |12.0 – 9.9| = 1.1/2.1 = 0.5 (Table 1). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the resins of Veregin to control the SP values as disclosed by Sugimoto in order to produce a toner that suppresses filming, and has improved low-temperature fixability and offset resistance.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Veregin and Sugimoto as applied to claims 1, 4, 5, 9-12, and 15 above, and further in view of Miyamoto (Japanese Patent Application Publication No. 2016-065955).
Veregin teaches that the toner may be used for electrophotographic processes (Col. 31 line 50-51), but does not describe the image forming apparatus in depth. Miyamoto teaches an image forming apparatus ([0157]) comprising the same components as Veregin (Col. 31 line 58-62). Miyamoto further teaches a process cartridge attachable to and detachable from the image forming apparatus, comprising a developing component containing the developer ([0175]). The toner is contained in a toner cartridge that is attachable to and detachable from the image forming apparatus ([0179]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have used the image forming device of Miyamoto with the toner of Veregin and Sugimoto as these components are known in the art as part of the image forming apparatus for the electrophotographic process.
Claims 1 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Veregin (US Patent No. 11,092,906) in view of Masafumi (JP 2019-061207).
Veregin teaches a toner comprising toner particles containing a binder resin, wherein the binder resin comprises a first amorphous polyester resin, a second amorphous polyester resin different from the first, and a crystalline polyester resin (Col. 6 line 1-5). The first amorphous polyester resin has a weight average molecular weight, Mw(a1), of 18,000 to 21,000 (Col. 11 line 1-20) and the second amorphous resin has a weight average molecular weight of 68,000 to 85,000 (Col. 11 line 43-55). These values would produce a range for |Mw(a2) – Mw(a1)| of 47,000 to 67,000.
Veregin is silent regarding the SP values of the binder resins. Masafumi teaches a toner containing a crystalline resin, and two amorphous resin (Abstract). The difference between the crystalline resin and the first amorphous resin is ΔSP1 (comparable to |SP(a2) – SP(c1)| of the instant application), and the difference between the crystalline resin and the second amorphous resin is ΔSP2 ([0037]). The ΔSP1 is preferably 1.2 to 1.3, and the ΔSP2 is preferably 0.5 to 1.0 ([0043]). These values produce a range for Expression (2) of instant claim 1 of 0.38 to 0.83.
Δ
S
P
2
Δ
S
P
1
=
0.5
1.3
=
0.38
Δ
S
P
2
Δ
S
P
1
=
1.0
1.2
=
0.83
The relationship between the resin SP values allows for the storage modulus to be controlled ([0037]), which results in a toner having excellent heat-resistant storage stability and document offset resistance ([0034-35]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the toner or Veregin to have included the relationship between SP values of the resins in order to improve the heat-resistant storage stability and document offset resistance.
The modified toner of Veregin and Masafumi would be expected to have the sea-island structure of claim 16. Applicant teaches that having the molecular weight and SP values meet the limitations of Expressions (1) and (2) tends to form the sea-island structure (Page 8-9).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 07/11/2026
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