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 Amendment
Claim 1 has been amended to reflect the limitation surrounding the mole ratio of BPA-alkylene oxide adducts to ethylene glycol in the diol component, moved from now-cancelled Claim 10. Claim 12 has been amended to reflect the mole ratio of the ethylene and propylene oxide adducts of BPA in the alkylene oxide adduct of BPA. New Claim 21 has been added. Claims 8 and 9 remain withdrawn from consideration. The Specification has been added to mole ratios (as opposed to mass ratios) of the ethylene and propylene oxide adducts of BPA to ethylene glycol and to one another. No new subject matter has been added.
Response to Arguments
Claim 10 has been cancelled, and so the rejections of Claim 10 under 35 U.S.C. §112(a) and (b) are withdrawn. Where the Specification has been amended to recite preferred mole ratios of non-crystalline polyester monomers, instead of mass ratios, the objection to the Specification is withdrawn. Applicant argues (remarks filed 2023-02-05) that Claim 1, which now reflects the clarified limitation of cancelled Claim 10, is allowable over the prior art. However, the present invention remains unpatentable for the reasons detailed in the updated rejections below. Accordingly, withdrawn Claims 8 and 9 are not rejoined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 – 7 and 11 – 21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
In particular, Claim 1 recites a range for the mole ratio of the alkylene oxide adduct of BPA (which is the sum of the ethylene and propylene oxide adducts of BPA) to ethylene glycol monomer units in the non-crystalline polyester resin. However, only a single example of a non-crystalline resin comprising ethylene glycol is reported, having a mole ratio of the alkylene oxide adducts of BPA to ethylene glycol of 1.0 (page 25, Table 1). The only other reported non-crystalline polyester resin contains no ethylene glycol (page 26, Table 2). There does not appear to be any indication in the Specification that any presently named inventor has prepared an example having a non-crystalline polyester wherein the mole ratio of alkylene oxide adducts of BPA to ethylene glycol is as low as 0.7, or as high as 2.3. Therefore, it would not be clear to one of ordinary skill in the art that any presently named inventor had prepared toners covering the range stated in Claim 1. Claims 2 – 7 and 11 – 21 each depend, directly or indirectly, on Claim 1, and therefore are also rejected.
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.
Claim 21 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, Claim 21 recites the broad recitation “the alkylene oxide adduct of bisphenol A is at least one of an ethylene oxide adduct of bisphenol A or a propylene oxide adduct of bisphenol A,” and the claim also recites “the alkylene oxide adduct of bisphenol A includes the ethylene oxide adduct of bisphenol A and the propylene oxide adduct of bisphenol A,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Additionally, Claim 21 recites a “mole mass ratio” of the ethylene and propylene oxide adducts of BPA, which leaves ambiguity as to whether the mole ratio or the mass ratio is claimed.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 7, 11, and 13 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over Uchinokura et al (US PGP 2013/0196261) in view of Kameoka (US PGP 2003/0207995).
Uchinokura teaches a toner containing toner base particles, which each comprise a binder resin (Abstract). The binder resin of the toner particles contains a non-crystalline resin and a crystalline resin ([0072]). Uchinokura teaches that the non-crystalline resin is preferably a non-crystalline polyester resin ([0073]). Uchinokura gives examples of diol components which may be contained in the non-crystalline polyester resin, including ethylene glycol, and ethylene oxide or propylene oxide adducts of bisphenol A ([0076]). Uchinokura teaches that the crystalline resin is preferably a crystalline polyester resin ([0111]). Other components may be included in the toner particles, such as a release agent ([0142]). Uchinokura gives as an example of a release agent a synthetic hydrocarbon wax, such as Fischer-Tropsch wax ([0143]). The content of the release agent in the toner may be 1 – 40% by mass ([0145]). Uchinokura teaches a kneading-pulverizing method of producing the toner base particles ([0160]), and goes on to detail such a method ([0161] – [0163]). Uchinokura mentions aromatic petroleum resin in the context of a colorant master batch ([0140]), but does not appear to otherwise teach its inclusion in the toner particles.
Kameoka teaches an additive for a toner which imparts excellent pulverizability to the toner (Abstract). The additive may be a copolymer comprising monomer units of styrene and α-methylstyrene ([0013]), reading on the aromatic petroleum resin of Claim 1. Kameoka teaches that the additive may incorporated in the toner in an amount of 1 – 20 parts by mass with respect to 100 parts of binder resin ([0015]). The benefits of the additive to the grindability of the toner in the pulverizing process are described in detail ([0037] – [0039]).
Where the toner of Uchinokura is produced by a pulverizing method, one of ordinary skill in the art would have been motivated to incorporate the additive taught by Kameoka so as to improve the grindability of the toner in the pulverizing process. Given the preferred addition amounts of release agent (hydrocarbon wax) taught by Uchinokura and additive (aromatic petroleum resin) taught by Kameoka, the mass ratio of the additive to the release agent would be allowed to be at least 1, reading on the inequality stated in Claim 1. In addition, it would have been obvious to one of ordinary skill in the art, in the course of routine experimentation, to vary the monomer composition of the non-crystalline polyester resin, such that the mole ratio of alkylene oxide adducts of bisphenol A to ethylene glycol read on the range stated in Claim 1. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the toner additive of Kameoka to the toner of Uchinokura, resulting in a toner described by Claim 1.
As mentioned above, Uchinokura teaches ethylene oxide adducts of bisphenol A and propylene oxide adducts of bisphenol A ([0076]), satisfying Claim 2.
Uchinokura teaches that the melting point of the crystalline polyester is preferably in the range of 60 - 130°C, encompassing the range stated in Claim 3.
The additive of Kameoka, being a copolymer of styrene and α-methylstyrene, reads on the copolymer described by Claim 4.
Kameoka discloses the preparation of a copolymer of styrene and α-methylstyrene having a weight-average molecular weight of 2590, lying in the range stated in Claim 5.
As discussed above, Uchinokura gives Fischer-Tropsch wax as an example of a hydrocarbon wax, satisfying Claim 6.
Uchinokura discloses an image forming apparatus which contains at least: an electrostatic latent image bearing member; a charging unit and an exposing unit, which together constitute an image formation unit; a developing unit; a transferring unit; and a fixing unit ([0233]). The developing unit houses the toner as described above ([0266]), which may be produced by a kneading-pulverizing method, satisfying Claim 7.
Uchinokura teaches that the volume-average (being the same as the weight-average) particle diameter of the toner is preferably 3 – 7 µm, encompassing the range stated in Claim 11.
As mentioned above, Uchinokura teaches that the release agent, which may be a hydrocarbon wax, is preferably contained in an amount of 1 – 40% by mass in the toner ([0145]), encompassing the range stated in Claim 13.
Uchinokura teaches that the toner base particles contain a binder resin, which contains a crystalline resin and a non-crystalline resin ([0071] – [0072]). The non-crystalline resin is preferably a polyester resin ([0073]), which preferably contains an unmodified polyester and a modified polyester ([0074]). The modified polyester resin may be contained in an amount of 0.1 – 50% by mass relative to the toner ([0108]). The crystalline resin may be contained in an amount of 0.1 – 50% by mass relative to the unmodified polyester ([0137]). These ranges allow the unmodified non-crystalline polyester to be contained in the toner in an amount reading on the range stated in Claim 14.
As mentioned above, the release agent of Uchinokura may be Fischer-Tropsch wax ([0143]), the same as that which is particularly preferred in the present invention (Specification, page 7, lines 3 – 5). Therefore, Fischer-Tropsch wax would also satisfy the stated preference for the melting point range of the hydrocarbon wax being 75 - 100°C (Specification, page 7, lines 6 – 10), such that the release agent of Uchinokura, being Fischer-Tropsch wax, would have a melting point lying in the range stated in Claim 15.
The additive of Kameoka, being a copolymer of styrene and α-methylstyrene, reads on the copolymer described by Claim 16.
Uchinokura teaches that the toner may comprise a charge control agent ([0142], [0146] – [0149]), satisfying Claim 17.
Uchinokura teaches an intermediate transfer member which primarily receives the toner image from the image bearing member, and secondarily transfers the toner image to the recording medium, reading on Claim 18.
The intermediate transfer member taught by Uchinokura may be a transfer belt ([0275]), reading on Claim 19.
Uchinokura describes a process cartridge comprising an image bearer and a developing unit containing a developer, which is detachably attached to the main body of the image forming apparatus, satisfying Claim 20.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Uchinokura et al (US PGP 2013/0196261) in view of Kameoka (US PGP 2003/0207995), further in view of Takahashi et al (US PGP 2014/0080047).
The above discussion of Uchinokura and Kameoka is incorporated herein. Neither of Uchinokura or Kameoka appears to teach preferred mole ratio of different alkylene oxide adducts of bisphenol A in the diol component of a non-crystalline polyester resin.
Takahashi teaches a toner comprising a crystalline resin, a non-crystalline resin, a colorant, and a release agent (Abstract). The non-crystalline resin imparts low-temperature fixability to the toner ([0031]). Takahashi teaches that the non-crystalline resin is preferably a non-crystalline polyester ([0140]). In describing monomers which may be contained in the non-crystalline polyester segment of a hybrid resin, Takahashi points out ethylene oxide and propylene oxide adducts of bisphenol A ([0134]). Takahashi discloses the preparation of polyester resin B6, a non-crystalline resin ([0305], [0317]). An ethylene oxide adduct of BPA and a propylene oxide adduct of BPA are added as the diol component, and the molar ratio of the two is 85/15, or 5.67, lying in the range stated in Claim 12. Takahashi details a kneading-pulverizing method of toner production ([0204] – [0208]).
In preparing the toner of Uchinokura comprising the additive taught by Kameoka, one of ordinary skill in the art would have been motivated to improve the low-temperature fixability of the toner by setting the ratio of the ethylene oxide adduct of bisphenol A and the propylene oxide adduct of bisphenol A in the diol component of the non-crystalline polyester resin as taught by Takahashi. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to prepare the toner of Uchinokura comprising the additive of Kameoka, wherein the ratio of alkylene oxide adducts of bisphenol A is set according to Takahashi’s example, resulting in a toner described by Claim 12.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grant S Seiler whose telephone number is (571)272-3015. The examiner can normally be reached 9:30 - 5:30 Pacific.
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/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 03/31/2026