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
Applicant’s claim amendments and remarks filed December 16, 2025 are entered and have been fully considered.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-6, 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Farrugia et al US20120219894A1 in view of Matsumura et al US20050245694.
Regarding claims 1-3, Farrugia teaches a toner composition comprising toner particles that include a bio-based amorphous polyester resin optionally in combination with another amorphous and/or crystalline resin, abstract. The bio-based amorphous polyester is comprised of bio-based monomers in an amount from 50 wt.% to 100 wt.% of the bio-based resin, ¶¶[0008, 0021]. The toner particles may further include an amorphous polyester and/or a crystalline polyester, ¶¶[0007, 0034]. The crystalline polyester may be formed from a number of organic diols including 1,2-ethanediol and 1,4-butanediol, ¶[0044] and from a number of organic diacids including terephthalic acid, ¶[0045]. The reactions of which form polyethylene terephthalate PET and polybutylene terephthalate PBT respectively, and render their addition to the toner particles as crystalline polyesters obvious. The fact that Farrugia discloses numerous types of diols and diacids which can be suitably selected to form a crystalline polyester does not render any particular combination of the disclosed diols and diacids less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
When the bio-based resin is blended with a crystalline resin, it is mixed in a ratio of 1-10 wt.% crystalline resin and 90-99 wt.% bio-based amorphous resin, ¶[0050], and because the bio-based resin is 50-100% bio-based, this satisfies the claimed biomass derived component A being greater than the amount B of PET or PBT.
Farrugia further teaches the toner particles have a core-shell structure ¶¶[0013,0083]. The shell may be made of any of the previously described resins, including the (non-bio-based) amorphous polyester resin, ¶[0083], which also reads on claim 2. The shell has a thickness of up to about 5 microns (5000 nm) or 0.1-2 microns (100-2000 nm), ¶[0085], which encompasses the claimed ranges of claims 1 and 3. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, Matsumura discloses a resin composition for toner excellent in low temperature fixability which contains a crystalline polyester that is preferably polybutylene terephthalate or polyethylene terephthalate, abstract and ¶[0021]. It is further disclosed that PBT and PET are preferable because they have high crystallization speeds and high crystallinity; toner compositions obtained with them are excellent in high temperature offset resistance, low temperature fixation, and luster, ¶¶[0065-0066]. It is further disclosed that the amount of crystalline polyester is preferably 5-15 wt.% in the toner ¶[0090], and Matsumura exemplifies amounts of 7% and 10% in table 1, page 14. This amount of crystalline polyester aligns with the composition of Farrugia, which teaches the crystalline resin is blended in the amount of 1-10 wt.% with the bio-based resin.
Farrugia and Matsumura are analogous to the claimed invention because both are in the field of toner compositions comprising polyesters.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the toner composition of Farrugia selecting PET and/or PBT as the crystalline polyester with the motivation of producing permutations of toner particle compositions which exhibit the properties of excellent high temperature offset resistance, low temperature fixation, and luster as disclosed by Matsumura.
Regarding claims 4-5, Farrugia teaches the bio-based amorphous polyester is comprised of bio-based monomers in an amount from 50 wt.% to 100 wt.% of the bio-based resin, ¶¶[0008, 0021], the biobased resin is present in the toner particles from 10-90 wt.% ¶[0024], and when mixed with a crystalline resin they are blended in a ratio of 1-10 wt.% crystalline resin and 90-99 wt.% bio-based resin ¶[0050], which means the sum A+B can be 10.1 wt.% to 99 wt.% and satisfies claim 4. This also encompasses the percent range of claim 5.
Regarding claim 6, Farrugia teaches the bio-based content of the resin is 50-100 wt.%, ¶[0021], and the resin is in the toner from 10-90 wt.%, ¶[0024], as noted above. This means the bio-based content of the toner can be from 5-90 wt.%. Farrugia does not explicitly teach the radiocarbon content of the toner particles. Applicant has the formula: biomass degree% = 14C content (pMC)/107.5 X 100 on page 179 of the instant specification. Therefore applying this formula to the teachings of Farrugia results in an inherent radiocarbon content ranging from 5.375 pMC to 96.75 pMC, which encompasses the claimed range.
Regarding claim 8, Farrugia teaches a toner composition comprising the toner particles and other additives such as colorants, surfactants, and waxes, ¶¶[0001, 0051]
Regarding claim 9, Farrugia teaches the toner composition of claim 8, but does not explicitly teach a storage unit comprising the toner. Farrugia teaches that the toner composition is used in electrophotographic imaging methods, and any known type of image development system may be used ¶[0112], including high speed printers, ¶[0113]. Storage devices for toner compositions are inherent to devices such as high-speed printers and it would be obvious to utilize a storage device to contain the toner composition for use in printing images.
Regarding claim 10, Farrugia teaches the toner composition is used in imaging processes for preparing an image by using an electrophotographic device (image forming apparatus) which includes a charging component (reads on image forming unit), an imaging component (reads on image bearer), a photoconductive component (can also read on the image bearer), a developing component, a transfer component, and a fusing component, ¶[0113]. The development component contains a developer prepared by mixing a carrier with the toner composition, ¶[0113]. Farrugia further teaches that once the image is formed with the toner/developer, the image is transferred to an image receiving medium such as paper, and the developing method may utilize a fuser roll member, which fuse the image to the image receiving medium, ¶[0114].
Regarding claim 11, Farrugia teaches the non-bio-based amorphous polyester can be formed from the reaction of dicarboxylic acids, ¶[0036], and diols which include bis(hydroxyethyl)-bisphenol A, bis(2-hydroxypropyl)-bisphenol A, ¶[0037], which are alkylene oxide adducts of BPA.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Farrugia et al US20120219894A1 in view of Matsumura et al US20050245694 further in view of Sacripante et al US5290654
Regarding claim 7, Farrugia teaches a method of preparing the toner comprising emulsion aggregation processes which, include a coagulant to stabilize aggregation, ¶¶[0054, 0071], which reads on the claimed coagulation. Farrugia further teaches the shell, with a thickness of up to 5 microns ¶[0085], is formed over the toner particles after aggregation, ¶[0083]. Farrugia modified by Matsumura teaches the toner particles comprising the bio-based polyester and crystalline polyester that can be selected as PET or PBT and the amount of bio-based material is greater than the amount of crystalline polyester, PET or PBT, according to claim 1, as explained above.
Farrugia modified by Matsumura does not explicitly teach dissolving or dispersing the toner particles into solvent and adding an aqueous phase to cause a phase inversion emulsion, but Farrugia does teach that the process for preparing the toner can be according to any method within the purview of one skilled in the art and also incorporates as reference the patent of US5290654, to Sacripante, ¶[0070], which details a process for making toner particles. Sacripante discloses a process for preparing toner compositions comprising dissolving a polymer in solvent, dispersing the solution in aqueous media that contains a surfactant, stirring and heating to remove the solvent, which then results in the particles being suspended in the aqueous media, abstract. The suspension is then homogenized followed by aggregation to obtain the toner particles, abstract and Col. 4 lines 54-68. Sacripante also discloses the polymer is a polyester, Col. 3 line 60 and claim 2. Sacripante does not specifically call the process phase inversion emulsification, but the phase inversion is inherent to the process because the polymer in solvent solution (oil phase) is mixed with an aqueous phase, then the solvent is removed, thereby transitioning the mixture from water-in-oil to an oil-in-water dispersion, leaving the toner particles dispersed in the aqueous phase to be homogenized and then aggregated with the coagulant taught by Farrugia, which reads on the claimed coagulating particles in the oil-in-water dispersion to prepare cohesive particles.
Scripante and Farrugia are analogous to the claimed invention because they are in the field of polyester toners for printing and the methods of making them.
Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the toner particles of Farrugia m. Matsumura by the process of dissolving the polyester resins (bio-based and crystalline) in an organic solvent and then adding an aqueous phase, causing phase inversion, and removing the solvent resulting in the toner particles dispersed in the aqueous phase, and aggregating (coagulating) the particles before forming the shell layer on the particles because this is a recommended method of making the toner particles as referenced by Farrugia and as disclosed by Sacripante.
Response to Arguments
Applicant’s arguments, see pages 2-5, filed 12/16/2025, with respect to the rejection(s) of claim(s) 1-10 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Farrugia in view of Matsumura and Farrugia in view of Matsumura further in view of Sacripante under 103.
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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765