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 .
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive. Applicant argues that Sacripante does not disclose the limitation wherein the content of recycled resin > content of biomass-derived resin. Applicant describes that the examples and comparative examples of Sacripante disclose compositions wherein the biomass content > recycled material content, and as such there would be no reason to select a ratio of components that satisfy the relationship of claim 1.
According to the MPEP, “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, patents are relevant as prior art for all they contain, according to the MPEP, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). The MPEP also instructs that, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” (See MPEP 2123 II).
Although the examples may only show cases wherein there is more biomass-derived resin content, that is not the only embodiment taught in the disclosure. Sacripante teaches a range than encompasses the range claimed by the Applicant. One of ordinary skill in the art would be motivated to employ any of the values within that range, as those values are explicitly taught by Sacripante by virtue of the ranges for each of the biomass material and recycled material. Sacripante teaches that all values within the range are inventive and effective for obtaining the effects of the invention. Perfecting the known range is well within the purview of one of ordinary skill in the art and constitutes routine experimentation. The Applicant has not offered any evidence to suggest that perfecting said range would have required undue experimentation outside the purview of one of ordinary skill in the art, nor has the Applicant offered any evidence of unexpectedly superior results that arise from the Applicant’s narrower range. As such, the Applicant’s arguments are not deemed persuasive.
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 1-3, 5-9, 14-15, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sacripante (US PGP 2014-0134534) in view of Sakamoto (Japanese Patent Application No. 2019-066575).
Sacripante teaches a toner that is composed substantially of biodegradable and recycled materials (Abstract). The toner is comprised of a binder resin comprising a biomass-derived resin ([0023] polyester resin, [0025] line1, bio-based) and a recycled resin ([0021] PET from sources such as spent liquid containers). PET is recycled by shredding it into flakes with an approximate size of 3mm by 3mm by 1mm ([0021] line 5-7). This produces a material for the binder resin containing recycled-resin-derived ethylene glycol and recycled-resin-derived terephthalic acid, as these are the monomers that comprise PET. The total sustainability content of the toner is preferably 90% or more ([0012] line 23-27), wherein the sustainability content refers to the sum of the bio-based and recycled materials ([0012] line 1-5). The toner may comprise from 25% to 90% of a bio-based material ([0019] line 6-8), giving it a biomass degree of at least 25%. The binder resin polymer, which comprises 95% of the toner, may contain from 5% to 70% PET ([0019] line 1-4). Based on these percentages, the content of the recycled resin may be greater than the content of the biomass-derived resin. When the content of the bio-based material is at the lower end of the range, the content of the PET must be larger in order to maintain the preference for a high sustainability content.
The toner may also contain a wax and a colorant ([0006]). The toner may have an external additive ([0077]). The toner may be formulated into a developer ([0126]). The developer is stored in a cartridge ([0134]).
The biomass-derived resin is a polyester resin ([0024-25]), and comprises both an amorphous polyester and crystalline polyester resin ([0027]). The polyester resin is a condensation product of a polyfunctional carboxylic acid and a polyfunctional alcohol, and may include PET oligomers ([0028]). The polyacid may include adipic acid ([0029]). Polyols that may be used for both the amorphous polyester resin and the crystalline polyester resin include 1,2-propanediol and 1,3-propanediol ([0030],[0034]). In example 4, the sustainable resin includes 1,2-propylene glycol as one of the reagents for the polyester resin ([0143]), though it is not specified whether or not it is a bio-based reagent. The amount of ethylene glycol and terephthalic acid derived from the PETE is greater than the amount of propylene glycol.
Sakamoto teaches a toner with a binder resin comprising a polyester resin ([0060]). The resin preferably includes a plant-derived 1,2-propanediol (propylene glycol) as an alcohol component in order to improve low-temperature fixability while ensuring sufficient environmental properties ([0067]). 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 polyester resin of Sacripante to have included the plant-derived 1,2-propanediol of Sakamoto in order to improve low-temperature fixability while maintaining the sustainability of the toner.
Sacripante teaches that the toner and developer are used in the electrophotographic process ([0136]), but is silent regarding the specifics of the imaging device. Therefore, it would have been obvious to look to the prior art for an appropriate apparatus to use with the toner and developer. Sakamoto teaches an image forming apparatus and image forming method comprising forming an electrostatic latent image using an exposure device, on an electrostatic latent image bearer (photoreceptor), developing the latent image using the toner with a developing device, transferring the toner image to a recording medium with a transfer device, and fixing the image to the recoding medium with a fixing device ([0019-20]).
Claims 16, 18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sacripante and Sakamoto as applied to claims 1-3, 5-9, 14-15, 17, and 19 above, and further in view of Iwamoto (US PGP 2009-0297973).
The entire discussion of Sacripante and Sakamoto above is included herein. Sacripante and Sakamoto are silent regarding the binder resin including a polyester resin having a urethane or a urea bond. Iwamoto teaches a toner containing biomass components ([0009]). The binder resin includes a modified polyester resin having a urethane bond or a urea bond ([0136]). The addition of this resin can improve the hot offset resistance of the toner while maintaining low-temperature fixability ([0137]). 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 of Sacripante and Sakamoto to have included the urethane or urea modified polyester resin of Iwamoto in order to improve the hot offset resistance of the toner while maintaining low-temperature fixability.
Conclusion
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/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 05/12/2026
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