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 .
Withdrawn Rejection
The 35 U.S.C. §103 rejection of claims 1-6 and 9-17 as over Matsui et al. (US 2019/0384198) in view of Tanaka et al. (US 2020/0209775), made of record in the office action mailed on 09/17/2025, page 2 has been withdrawn due to Applicant’s amendment in the response filed on 12/17/2025.
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.
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (US 2019/0384198) in view of Tanaka et al. (US 2020/0209775), Gotoh et al. (US 2015/0092123) and Koenig et al. (US 2013/0215184).
Regarding claims 1-2, Matsui discloses a toner includes toner particles containing a binder resin; the binder resin contains a polymer A that is a polymer of a composition containing a first polymerizable monomer, a second polymerizable monomer, and a crosslinking agent (abstract). The first polymerizable monomer is at least one selected from the group consisting of a (meth) acrylate having an alkyl group having 18 to 36 carbon atoms (para 0072). The first polymerizable monomer is at least one selected from the group consisting of (meth) acrylates having an alkyl group having 18 to 36 carbon atoms. As the (meth) acrylate having an alkyl group having 18 to 36 carbon atoms, for example, a (meth) acrylate having a linear alkyl group having 18 to 36 carbon atoms [stearyl (meth) acrylate, (meth) ) Nonadecyl acrylate, eicosyl (meth) acrylate, heneicosanyl (meth) acrylate, behenyl (meth) acrylate, lignoseryl (meth) acrylate, seryl (meth) acrylate, octacosa (meth) acrylate, (meth) And a (meth) acrylic ester having a branched alkyl group having 18 to 36 carbon atoms [such as 2-decyltetradecyl (meth) acrylate] (para 0125-0126). The second polymerizable monomer, one type may be used alone, or two or more types may be used in combination. Monomers having a nitrile group; for example, acrylonitrile, methacrylonitrile and the like. Monomers having a hydroxy group; for example, 2-hydroxyethyl (meth) acrylate, 2-hydroxypropyl (meth) acrylate and the like (page 130-134). The third polymerizable monomer is preferably at least one selected from the group consisting of styrene, methyl methacrylate and methyl acrylate in order to improve the storage stability of the toner (para 0174-0175), where styrene or methyl methacrylate would intrinsically have the claimed glass transition temperature of 70C or higher.
However, Matsui fails to disclose that the binder resin contains polymer comprising multifunctional (meth) acrylate-based monomer (D) and does not disclose ethylenically unsaturated bond (methacrylic acid) present in a content of 5-30 parts by mass in relation to 100 parts by mass of all monomer units and fails to disclose diethylene glycol diacrylate or triethylene glycol di(meth)acrylate monomer in a content of 5-50 parts by mass in relation to 100 parts by mass of all monomer units and a mass ratio of the content of the vinyl monomer C unit to the content of all monomer units is in a range of 0.3-2.
Whereas, Tanaka discloses toner containing: a toner particle that contains a binder resin and an external additive, wherein the external additive contains an organosilicon polymer fine particle, the binder resin contains an amorphous resin and a crystalline polyester resin (abstract). The styrene-acrylic resins can be exemplified by homopolymers of the following polymerizable monomers, or copolymers obtained from a combination of two or more thereof (para 0067). The styrene-acrylic resin may optionally use a multifunctional polymerizable monomer. The multifunctional polymerizable monomer can be exemplified by diethylene glycol di(meth)acrylate, triethylene glycol di(meth)acrylate (para 0072).
Whereas, Gotoh discloses transfer film of the present invention has a temporary support and a colored layer, and the colored layer contains at least (A) a white inorganic pigment and (B) a silicone-based resin (abstract). Gotoh discloses methacrylic acid present along with styrene and methyl methacrylate in an amount of 29 mass% (see para 0415, table).
Whereas, Koenig discloses core/shell particle is provided, comprising: a water-absorbent, dye-fixing polymeric core, comprising: (a) a multivalent cation and a polymerization product of a monoethylenically unsaturated carbonyl-group containing monomer; (b) a nitrogen-containing polymer; or (c) a combination of (a) and (b) (abstract). The core polymer may comprise as one component thereof a small amount of a polyethylenically unsaturated monomer, such as ethylene glycol di(meth)acrylate, allyl (meth)acrylate, 1,3-butane-diol di(meth)acrylate, diethylene glycol di(meth)acrylate, trimethylol propane trimethacrylate, divinyl benzene, or combination thereof. The proportion thereof in one embodiment is in the range of about 0.1% to 20%, based on the total monomer weight of the core (para 0022).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include diethylene glycol diacrylate or triethylene glycol di(meth)acrylate monomer as taught by Tanaka in the resin particle of Matsui motivated by the desire to have fast cure times, improved mechanical properties and It would have been obvious to one of ordinary skill in the art at the time the application was filed to include ethylenically unsaturated bond of Matsui in an amount of 29 mass% as taught by Gotoh motivated by the desire to have improved durability and water resistance of ink and It would have been obvious to one of ordinary skill in the art at the time the application was filed to include diethylene glycol diacrylate in an amount of 0.1-20 mass% as taught by Koenig and Tanaka in the resin particle of Matsui motivated by the desire to have fast cure times, improved mechanical properties.
Hence, when ethylenically unsaturated bond is present in an amount of 29 mass% and diethylene glycol diacrylate is present in an amount of 0.1-20 mass%, it therefore would meet the mass ratio limitation of vinyl monomer C to vinyl monomer D such as 290:1 to 1.45:1.
Regarding claims 2, As Matsui in view of Tanaka discloses fine resin particle as presently claimed, it therefore would be obvious that resin would intrinsically show no inflection point in a compressive displacement-compressive load curve in a compression test when the fine resin particle is compressed to a load of 9.81 mN and a primary particle of the fine resin particle would intrinsically have a compressive strength at 10% compressive strength upon initial compression at 25°C of 1 to 10 MPa.
Regarding claim 3, As Matsui in view of Tanaka discloses fine resin particle comprising first polymerizable monomer such as behenyl (meth) acrylate as presently claimed, it therefore would be obvious that monomer would intrinsically have a biomass degree of a homopolymer of the alkyl (meth)acrylate-based monomer (A) measured according to ASTM D 6866 of 60% or higher.
Regarding claim 4, Matsui discloses behenyl acrylate (first polymerizable monomer) in an amount of 65.5 parts by mass (para 0329).
Regarding claim 5, Matsui discloses meth acrylonitrile (second polymerizable monomer in an amount of 21.56 parts by weight (para 0332), where 2-hydroxyethyl (meth) acrylate or 2-hydroxypropyl (meth) acrylate are alternative second monomer which can be used in the same amount.
Regarding claim 6, Matsui discloses the third polymerizable monomer is preferably at least one selected from the group consisting of styrene, methyl methacrylate and methyl acrylate in order to improve the storage stability of the toner (para 0174-0175), where styrene or methyl methacrylate would intrinsically have the claimed glass transition temperature of 70C or higher. The second polymerizable monomer preferably has an ethylenically unsaturated bond, and more preferably has one ethylenically unsaturated bond (para 0140).
Although, Matsui does not disclose ethylenically unsaturated bond present in a content of 5-30 parts by mass in relation to 100 parts by mass of all monomer units, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization motivated by the desire to have improved durability and water resistance of ink, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Regarding claim 8, with respect to all monomers present in an amount of 20 parts by weight which overlaps all the claimed parts by mass, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claims 9-10, As Matsui in view of Tanaka discloses fine resin particle as presently claimed, it therefore would be obvious that resin particle would intrinsically have a thermal decomposition initiation temperature under a nitrogen and an air atmosphere of 280C or higher.
Regarding claim 11, As Matsui in view of Tanaka discloses resin particle which does not residual monomer, it therefore would be obvious that they would be present in an amount of 1000 ppm or less (i.e. 0 wt%).
Regarding claim 16, Matsui in view of Tanaka discloses resin particle, but fails to disclose it is used in resin composition comprising a synthetic resin.
Whereas, Tanaka discloses toner containing: a toner particle that contains a binder resin and an external additive, wherein the external additive contains an organosilicon polymer fine particle, the binder resin contains an amorphous resin and a crystalline polyester resin (abstract).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include resin particle taught by Matsui in view of Tanaka in the toner containing crystalline polyester resin motivated by the desire to form toner with enhanced cleaning performance and prevent fogging caused by charging defects.
Regarding claim 6, Matsui discloses the third polymerizable monomer is preferably at least one selected from the group consisting of styrene, methyl methacrylate and methyl acrylate in order to improve the storage stability of the toner (para 0174-0175), where styrene or methyl methacrylate would intrinsically have the claimed glass transition temperature of 70C or higher. The second polymerizable monomer preferably has an ethylenically unsaturated bond, and more preferably has one ethylenically unsaturated bond (para 0140).
However, Matsui does not disclose ethylenically unsaturated bond (methacrylic acid) present in a content of 5-30 parts by mass in relation to 100 parts by mass of all monomer units.
Whereas, Gotoh discloses transfer film of the present invention has a temporary support and a colored layer, and the colored layer contains at least (A) a white inorganic pigment and (B) a silicone-based resin (abstract). Gotoh discloses methacrylic acid present along with styrene and methyl methacrylate in an amount of 29 mass% (see para 0415, table).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include ethylenically unsaturated bond of Matsui in an amount of 29 mass% as taught by Gotoh motivated by the desire to have improved durability and water resistance of ink.
Regarding claims 12-15 and 17, While there is no disclosure that the resin particle is an coating film softening agent, matting agent for paints, stress reliever for curable resins, light diffuser and light diffusing resin composition as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. coating film softening agent, matting agent for paints, stress reliever for curable resins, light diffuser and light diffusing resin composition, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art resin particle and further that the prior art structure which is a resin particle identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 7, Matsui in view of Tanaka fails to disclose diethylene glycol diacrylate or triethylene glycol di(meth)acrylate monomer in a content of 5-50 parts by mass in relation to 100 parts by mass of all monomer units.
Whereas, Koenig discloses core/shell particle is provided, comprising: a water-absorbent, dye-fixing polymeric core, comprising: (a) a multivalent cation and a polymerization product of a monoethylenically unsaturated carbonyl-group containing monomer; (b) a nitrogen-containing polymer; or (c) a combination of (a) and (b) (abstract). The core polymer may comprise as one component thereof a small amount of a polyethylenically unsaturated monomer, such as ethylene glycol di(meth)acrylate, allyl (meth)acrylate, 1,3-butane-diol di(meth)acrylate, diethylene glycol di(meth)acrylate, trimethylol propane trimethacrylate, divinyl benzene, or combination thereof. The proportion thereof in one embodiment is in the range of about 0.1% to 20%, based on the total monomer weight of the core (para 0022).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include diethylene glycol diacrylate in an amount of 0.1-20 mass% as taught by Koenig and Tanaka in the resin particle of Matsui motivated by the desire to have fast cure times, improved mechanical properties.
Regarding claim 8, Matsui discloses behenyl acrylate (first polymerizable monomer) in an amount of 65.5 parts by mass (para 0329). Matsui discloses meth acrylonitrile (second polymerizable monomer in an amount of 21.56 parts by weight (para 0332), where 2-hydroxyethyl (meth) acrylate or 2-hydroxypropyl (meth) acrylate. Matsui discloses the third polymerizable monomer is preferably at least one selected from the group consisting of styrene, methyl methacrylate and methyl acrylate in order to improve the storage stability of the toner (para 0174-0175), where styrene or methyl methacrylate would intrinsically have the claimed glass transition temperature of 70C or higher. The second polymerizable monomer preferably has an ethylenically unsaturated bond, and more preferably has one ethylenically unsaturated bond (para 0140).
However, Matsui does not disclose ethylenically unsaturated bond (methacrylic acid) present in a content of 5-30 parts by mass in relation to 100 parts by mass of all monomer units and fails to disclose diethylene glycol diacrylate or triethylene glycol di(meth)acrylate monomer in a content of 5-50 parts by mass in relation to 100 parts by mass of all monomer units.
Whereas, Gotoh discloses transfer film of the present invention has a temporary support and a colored layer, and the colored layer contains at least (A) a white inorganic pigment and (B) a silicone-based resin (abstract). Gotoh discloses methacrylic acid present along with styrene and methyl methacrylate in an amount of 29 mass% (see para 0415, table).
Whereas, Koenig discloses core/shell particle is provided, comprising: a water-absorbent, dye-fixing polymeric core, comprising: (a) a multivalent cation and a polymerization product of a monoethylenically unsaturated carbonyl-group containing monomer; (b) a nitrogen-containing polymer; or (c) a combination of (a) and (b) (abstract). The core polymer may comprise as one component thereof a small amount of a polyethylenically unsaturated monomer, such as ethylene glycol di(meth)acrylate, allyl (meth)acrylate, 1,3-butane-diol di(meth)acrylate, diethylene glycol di(meth)acrylate, trimethylol propane trimethacrylate, divinyl benzene, or combination thereof. The proportion thereof in one embodiment is in the range of about 0.1% to 20%, based on the total monomer weight of the core (para 0022).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include ethylenically unsaturated bond of Matsui in an amount of 29 mass% as taught by Gotoh motivated by the desire to have improved durability and water resistance of ink and It would have been obvious to one of ordinary skill in the art at the time the application was filed to include diethylene glycol diacrylate in an amount of 0.1-20 mass% as taught by Koenig and Tanaka in the resin particle of Matsui motivated by the desire to have fast cure times, improved mechanical properties.
Response to Arguments
Applicant’s arguments filed on 12/17/2025 have been fully considered, but they are moot in view of new grounds of rejections as stated above.
Applicant argues that none of the references teach the mass ratio of the content of the vinyl monomer (C) unit to the content of the multifunctional (meth)acrylate-based monomer (D) unit [vinyl monomer (C) unit content/multifunctional (meth)acrylate-based monomer (D) unit content] is 0.3 to 2. Additionally, when addressing claim 7, the rejection indicated that Koening describes that 0.1% to 20% by weight of a polyethylenically unsaturated monomer is contained in the core polymer. See Office Action of September 17, 2025, pages 8-9. Koening, however, still does not disclose that the mass ratio of the content of the vinyl monomer (C) unit to the content of the multifunctional (meth)acrylate-based monomer (D) unit [vinyl monomer (C) unit content/multifunctional (meth)acrylate-based monomer (D) unit content] is 0.3 to 2.
Based on the teaching above, It would have been obvious to one of ordinary skill in the art at the time the application was filed to include ethylenically unsaturated bond of Matsui in an amount of 29 mass% as taught by Gotoh and to include diethylene glycol diacrylate in an amount of 0.1-20 mass% as taught by Koenig and Tanaka in the resin particle of Matsui, it would mee the claimed mass ratio as when ethylenically unsaturated bond vinyl monomer C is present in an amount of 29 mass% and diethylene glycol diacrylate vinyl monomer D is present in an amount of 0.1-29 mass%, it therefore would meet the mass ratio limitation of vinyl monomer C to vinyl monomer D such as 290:1 to 1.45:1.
Applicant argues that in the present claims, "the content of the multifunctional (meth)acrylate-based monomer (D) unit" and "the mass ratio of the content of the vinyl monomer (C) unit to the content of the multifunctional (meth)acrylate-based monomer (D) unit" within specific ranges, respectively, Applicant has discovered that it is possible to provide a fine resin particle that has excellent softness and improved brittleness, thereby achieving a balance between properties that are inherently conflicting with each other. see, paras. [0078] to [0081]. According to the present claims, even when subjected to stress such as compressive force, damage to the fine resin particles is reduced, enabling the fine resin particles to perform their functions when used in various applications while minimizing the occurrence of defects such as appearance defects.
However, it should be noted that as Matsui in view of Gotoh, Tanaka and Koenig discloses mass ratio of vinyl monomer C to vinyl monomer D as stated above, it therefore would be obvious, absent evidence to the contrary that resin particles would intrinsically have the properties of excellent softness and improved brittleness.
Applicant also separately traverses the rejection of claim 2, which requires that the fine resin particle shows no inflection point in a compressive displacement-compressive load curve in a compression test when the fine resin particle is compressed to a load of 9.81 mN and a primary particle of the fine resin particle has a compressive strength at 10% compressive strength upon initial compression at 25°C of 1 to 10 MPa. See claim 2. In this regard, Applicant kindly notes that the fine resin particle possesses excellent softness and improved brittleness by satisfying the
requirements of claim 2. See Specification, paras. [0085] to [0086] and [0093].
Matsui relates to toner particles. Toner particles are used to print text or images on a
substrate to be printed, such as paper, using a printer or the like. During printing, the toner particles are heated and pressurized in the printer to be melted, and a part thereof penetrates into the substrate to be printed, such as paper, to form a printed film. In this way, text or images are printed. See Matsui, para. [0094]. The toner particles of Matsui are heated and pressurized during printing to be melted and form a printed film. The properties of this printed film are important, but the softness and brittleness of the toner particles themselves are not required. Indeed, in Matsui, the toner particles are evaluated, but it is the properties after melting the toner particles using a printer that are evaluated. See id., paras. [0412] to [0431]). The toner described in Tanaka is also similar to the toner particles of Matsui. The properties after melting of the toner particles using a printer are evaluated. See Tanaka, paras. [0275] to [0295]. As seen above, the particles described in Matsui, Tanaka, and Koening are particles
used for printing applications, and are not particles used for applications where both softness and brittleness are required. If the toner particles of Matsui and Tanaka somehow had excellent softness and improved brittleness, there arises a problem that external additives are likely to be buried in the surface of the toner particles in a printing apparatus, the toner particles lose fluidity, become sticky, or the charge amount becomes unstable.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
“obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
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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/RONAK C PATEL/Primary Examiner, Art Unit 1788