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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3,12 and 13 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3’s addition polymer is already required by claim 1’s polypropylene. Claim 12 and 13 add no further limitation to claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 5-18 rejected under 35 U.S.C. 103 as being unpatentable over JP2005091696 in view of JP07114208.
JP2005091696 exemplifies (paragraph 63) a toner of 40 parts A3, 42 parts B2, 5 parts of 6,000g/mol molecular weight polypropylene, 10 parts carbon black and 3 parts charge control agent.
A3 (paragraph 50) is polyester of ethoxylated BPA, propoxylated BPA (both of which qualify as applicant’s (I), terephathalic acid, isophthalic acid and maleic anhydride. Its softening point is 900C. This qualifies as applicant’s polyester of (a).
B2 (paragraph 55) is a polyester of ethoxylated BPA, propoxylated BPA, terephthalic acid, phthalic acid anhydride and trimellitic anhydride. Its softening point is 1250C. This qualifies as applicant’s polyester (H).
The low Mw polypropylene of the reference is not an acid terminated polypropylene for bonding to polyester A3.
JP07114208 is also directed to polyester toners. J’208 (paragraph 6,7) explains that polypropylene wax (ie low Mw polypropylene) has poor compatibility with polyester. In order to overcome this incompatibility, an ester forming group is placed on the polypropylene such that the polypropylene reacts with diols forming the polyester (paragraph 14). Preferably, maleic acid group(s) are placed at the end(s) of the polypropylene (paragraph 15).
It would have been obvious to utilize polypropylene having terminal(s) of maleic acid (ie applicant’s polymer A) to produce JP2005091696’s toner. Attaching the polypropylene to polyester A3 would overcome the compatibility issues. This is polyester having polypropylene attached is applicant’s (a).
In regards to applicant’s dependent claims:
The maleic acid terminated polypropylene also qualifies as claim 3’s addition polymer. Alternatively, JP2005091696 (paragraph 42) suggests the inclusion of other polymers that can be addition polymers.
Not only ethoxylated BPA and propoxylated BPA can be used, but ethylene glycol, butylene glycol etc (paragraph 31) – meeting applicant’s claim 5.
J’208 (paragraph 33) co-reacts the maleic functional polypropylene with the polyester forming monomers – meeting applicant’s claim 6.
The polypropylene of JP2005091696 has a MW of 6,000. The maleic functional polypropylene of JP07114208 can be 2,000 (paragraph 32). Either meet applicant’s claim 9.
JP07114208 2,000 g/mol polypropylene having a single maleic anhydride group
(paragraph 32) would have claim 9’s acid value of:
1maleic group 2acid groups 56g KOH 1000mg KOH
------------------- X -------------------- X ----------------------- X---------------------- = 56mgKOH/g
2,000g 1 maleic group acid group g KOH
The trimellitic anhydride meets applicant’s claim 15.
J’696 A3 has a Tg of 610C and an acid number of 20 – meeting applicant’s claims 16 and 17.
J’696’s polyesters have a molecular weight of 1800-20,000 (paragraph 39) – meeting applicant’s claim 18.
Claim 19 rejected under 35 U.S.C. 103 as being unpatentable over JP2005091696 in view of JP07114208 in further view of WO2016/186129.
Yoshida 2018/0136575 is relied on as a translation of WO2016/186129.
JP2005091696 and JP07114208 apply as explained above. Neither suggest using their toner to print on a polypropylene film.
Using polyester based toners to print on polypropylene is known (see Yoshida’s abstract). The low molecular weight polypropylene (ie wax PP) containing polyester based toners would be expected to be especially effective on a polypropylene substrate in view of Yoshida’s teachings of paragraph 21).
It would have been obvious to utilize JP2005091696/JP07114208 polyester based toners on any common substrate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached on weekdays from 9 to 3pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 10/29/25