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
By the amendment filed 2025-12-03, Claim 1 has been amended to reflect the limitations of now-cancelled Claim 5. Claims 2, 3, and 6 – 9 are amended for formatting and usage. Withdrawn Claim 10 is also amended for formatting and usage. Claim 4 has been amended to clarify the limitation surrounding the content of magnesium in the toner particles. New Claims 11 – 20 have been added. No new subject matter has been added.
Response to Arguments
Applicant's arguments filed 2025-12-03 regarding amended Claim 1 have been fully considered but they are not persuasive.
Applicant argues that Sacripante does not disclose an amount of sodium contained in the toner. However, as noted in the updated rejection below, Sacripante does teach a preferred range for the amount of surfactant to be included in the toner-forming composition. That range encompasses the addition amount of surfactant disclosed in an instant preparative example, and so the toner of Sacripante may contain a similar amount of sodium as the example toner described in the instant application.
Applicant also argues that there is no basis in Sacripante for stating in the prior office action that magnesium may be contained in a greater amount than sodium in the toner. However, as detailed in the updated rejection below, Sacripante does teach a preferred range for the amount of aggregating agent used in toner formation, which, alongside the preferred range of surfactant included in the toner-forming composition, allows for magnesium to be included in a greater amount than sodium
Third, Applicant argues that, because Sacripante does not exemplify the use of an aggregating agent containing a divalent metal in preparative examples, that Sacripante’s teaching of the use of such an aggregating agent would be lost on a practitioner of ordinary skill in the art. However, a preparative example is not required for a teaching to make obvious the use or inclusion of one reagent or another. For these reasons, the updated rejection under 35 U.S.C. §103 is not withdrawn.
Applicant’s argument regarding the amendment to Claim 4 is persuasive, and the objection to amended Claim 4 is withdrawn.
Claim Objections
Claim 1 is objected to over the language “magnesium in the divalent metal”. This wording implies that the parameter being constrained by the claim is the share of magnesium which makes up part of a total content of divalent metals in the toner particles, instead of simply the content of magnesium in the toner particles. Appropriate correction is required.
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.
Claim 14 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains 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. Namely, Claim 14 recites a limitation on the weight-average molecular weight (Mw) of PET or PBT comprised in the resin particles. However, a value for Mw is not reported for the PET introduced in P-1 in the body of the disclosed examples (Specification, [0298]) or in the table listing the components of each preparative example (Specification, page 90, Table 1). Therefore it is not clear that the preparative examples disclosed in the instant application contain PET having a value for Mw in the claimed range.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 – 4, 6 – 8, 11 – 13, and 15 - 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sacripante et al (US PGP 2014/0134534).
Sacripante teaches a toner comprising biodegradable and recycled materials (Abstract). Toner particles may comprise one or more polymers ([0018]), which may be present in the toner particle in an amount of 65 – 95% by mass ([0019]). A polymer may comprise 5 – 70% by mass of PET (polyethylene terephthalate), and the toner may comprise 25 – 90% by mass of bio-based material ([0019]). Bio-based material according to Sacripante ([0010]) is substantially the same as the biomass-derived material of the instant application. Therefore, such a toner would inherently possess 14C in an amount exceeding 10.8 pMC.
Sacripante teaches that a surfactant may be used in the emulsion aggregation ([0060] – [0061]), and several examples containing sodium ions are given, including sodium dodecylsulfate (SDS) ([0064]). Sacripante teaches that the total amount of surfactant in the toner forming emulsion may be 0.01 – 5% by mass ([0062]). This range encompasses the inclusion amount of SDS disclosed in the instant application for Resin particles 1 (Specification, [0307] – 0314]). 1,200 parts by mass of aqueous phase 1 being included in the toner-forming composition introduces 22 parts by mass of SDS.
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That results in SDS being included in the toner-forming composition in an amount of about 1.1% by mass.
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Resin particles 1 possess a value for sodium content (Na %) of 0.08 (Specification, page 96, Table 3). Therefore, the toner of Sacripante may contain sodium in an amount in the range of about 0.0007 – 0.36% by mass in the toner, reading on the inequality stated in Claim 1.
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Sacripante mentions salts of magnesium (a divalent metal), including MgSO4 and MgCl2, as aggregating agents ([0072]). These may be present an emulsion for aggregating toner particles in an amount of 0.01 – 10% by mass relative to toner solids ([0073]). This range encompasses the inclusion amount of MgSO4 disclosed in the instant application for Resin particles 3 (Specification, Table 2 and Table 3). 30 parts of a 5% solution of MgSO4 introduces 1.5 parts of MgSO4.
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That results in MgSO4 being included in the toner-forming composition in an amount of about 0.08% by mass.
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Resin particles 3 possess a value for magnesium content (Divalent metal elements Amount %) of 0.07 (Specification, Table 3). Therefore, the toner of Sacripante may contain magnesium in an amount in the range of about 0.01 – 9.1%.
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This range, having an upper bound higher than that for the amount of sodium allowed in the toner by Sacripante, allows the amount of magnesium in the toner to exceed the amount of sodium in the toner. This range for the content of magnesium also encompasses the range stated for the content of a divalent metal element in the toner particles stated in Claim 1.
The toner particles of Sacripante may contain amorphous polyester and/or crystalline polyester resins ([0006]). An amorphous polyester resin may be bio-based ([0029]), and a crystalline polyester resin may be bio-based ([0035]). As mentioned above, the toner particles may comprise polymers containing 5 – 70% by mass of PET, and may also comprise 25 – 90% by mass of bio-based materials, allowing the total content of PET and bio-based polymers to be greater than 50% by mass of the toner particles, satisfying Claim 2. This also allows the content of PET to exceed that of bio-based polymers in the toner particles, satisfying Claim 3.
As discussed above, the content of magnesium in the toner particles of Sacripante may be in the range of 0.009 – 9.09% by mass, encompassing the range stated in Claim 4.
As mentioned above, Sacripante teaches a toner comprised of toner particles, which are analogous to resin particles, satisfying Claim 6.
Sacripante teaches that the toner particles may be part of a two-component developer ([0125]), satisfying Claim 7.
Sacripante teaches enclosures and vessels which may serve more than a storage function ([0131]), as well as toner delivery devices such as cartridges, tanks, or reservoirs ([0133]), all able to be considered a toner housing unit, satisfying Claim 8.
Sacripante teaches that the toner may contain a wax ([0067]), and gives at least carnauba wax, rice wax, beeswax, ozokerite, and ceresin as examples ([0069]). These waxes are also pointed out in the instant application (Specification, [0105]) as preferable examples of waxes for use as a release agent. These are listed alongside the stated preference for a wax having a melting point of 50 - 120°C (Specification, [0104], [0107]). Therefore, at least some of the waxes listed by Sacripante would possess a melting point reading on the range stated in Claim 11.
Sacripante teaches that the toner may comprise externally added silica or titania fine particles ([0077]), and that they may be contained in the toner in an amount of 0.1 – 10% by weight relative to the toner ([0079]), satisfying Claim 12 and Claim 13.
Where, as discussed above, the toner particles of Sacripante may comprise one or more polymers ([0018]), which may be present in the toner particle in an amount of 65 – 95% by mass ([0019]), and a polymer may comprise 5 – 70% by mass of PET (polyethylene terephthalate), the toner of Sacripante may contain PET in an amount of 3.25 – 66.5% by mass relative to the whole toner particles, overlapping the range stated in Claim 15.
5
%
*
65
%
=
3.25
%
70
%
*
95
%
=
66.5
%
Sacripante discloses the preparation of three different resins, which are amorphous polyester resins, having glass transition temperatures ([0141] – [0142], [0143], [0145]) lying in the range stated in Claim 16.
Sacripante discloses the preparation of an amorphous polyester resin having an acid value ([0145]) lying in the range stated in Claim 17.
Sacripante teaches that a crystalline polyester resin may contain monomer units of linear aliphatic diols having 2 – 10 or 12 carbons ([0034]), and monomer units of linear aliphatic dicarboxylic acids having 4 – 6 or 8 – 10 carbons ([0035]), reading on the monomers described in Claim 18.
Sacripante teaches that the toner may contain a charge control additive in an amount of 0.1 – 10% by weight, encompassing the range stated in Claim 19.
Claims 9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sacripante et al (US PGP 2014/0134534) in view of Iwamoto et al (US PGP 2009/0297973).
The above discussion of Sacripante is incorporated herein.
Sacripante does not appear to teach specific parts of an image forming apparatus.
Iwamoto teaches a toner having a 14C content of 10.8 pMC or more (Abstract). Iwamoto teaches an image forming apparatus comprising at least an image bearing member, an image forming unit, a developing unit, a transfer unit, and a fixing unit ([0171]). The developing unit houses the toner of Iwamoto ([0166]).
In the absence guidance from Sacripante regarding an image forming apparatus for use with the toner, one of ordinary skill in the art would have looked to the prior art for an appropriate apparatus. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the toner of Sacripante with the image forming apparatus of Iwamoto, satisfying Claim 9.
Iwamoto teaches a process cartridge which is detachably mounted to an image forming apparatus ([0026]), and which includes a latent electrostatic image bearing member ([0027]) and a developing unit ([0028]), satisfying Claim 20.
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.
Examiner interviews 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRANT STEVEN SEILER/ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 01/30/2026