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
Claims 1 and 2 have been amended to consistently use the variable Δεr to state claimed ranges for the value of the difference between the relative permittivity measured at 0.01 Hz and 383 kHz. Accordingly, the objection to Claims 1 and 2, stated in the prior office action, is withdrawn. Claim 1 has also been amended to reflect the limitation surrounding monomer unit (a), which is moved from now-cancelled Claim 6. Claim 7 is accordingly amended to depend on Claim 1 and not cancelled Claim 6. No new subject matter has been added.
Response to Arguments
Applicant's arguments filed 2026-02-09 have been fully considered but they are not persuasive.
Applicant traverses the rejection made under 35 U.S.C. §112(b) (non-final rejection dated 2025-11-14), citing case law discussed in the MPEP. These discussions appear to be aimed at claims of chemical compounds in terms of physical or other characteristics not being considered indefinite. However, the invention claimed in the instant application is a toner, composed of multiple different chemical compounds. Some of the physical properties of the toner arise from the identities and amounts of particular chemical compounds included in the toner, and these properties may be related to those compounds in complex ways. Therefore, when a product such as a toner is claimed in terms of physical properties which are imparted by one or more comprised chemical compounds, it is not clear that another toner would not have the same properties, imparted by some unrelated combination of chemical compounds. A practitioner of ordinary skill in the art would not be able to readily tell which other toners do or do not infringe on such claims. The ability to make such a determination without having to perform physical or chemical measurements on a product such as a toner is the very essence of what it means to “particularly point out” and “distinctly claim” an invention.
In addition to the citation of Ex parte Slob in the prior office action, “it is necessary that the product be described with sufficient particularity that it can be identified so that one can determine what will and will not infringe.” Benger Labs, Ltd v. R.K. Laros Co., 135 USPQ 11, In re Bridgeford 149 USPQ 55, Locklin et al. v. Switzer Bros., Inc., 131 USPQ 294; furthermore, “Reciting the physical and chemical characteristics of the claimed product will not suffice where it is not certain that a sufficient number of characteristics have been recited that the claim reads only on the particular compound which applicant has invented.” Ex parte Siddiqui, 156 USPQ 426, Ex parte Davission et al., 133 USPQ 400, Ex parte Fox, 128 USPQ 157.
Where Claim 1 has been amended to recite the monomer unit (a) represented by formula (2) comprised in the crystalline resin, Claim 1 and its dependent claims are made definite, and so the rejection under 35 U.S.C. §112(b) is withdrawn.
Applicant further traverses the obviousness rejection under 35 U.S.C. §103 over Matsui et al (US PGP 2021/0181646), arguing that the evaluations of the claimed toner in tests for low-temperature fixability and durable developability under high-temperature and high-humidity environments represent unexpected superior results. However, Matsui teaches “durability, fixability, and storage stability” flowing from polymer A. Matsui further teaches that the long-chain (meth)acrylates included in polymer A improve the sharp melt property and fixing gloss of the toner ([0072]). Applicant acknowledges that “a binder resin is excellent in low-temperature fixability due to its sharp-melt property” (Remarks, page 7). Matsui also identifies the problem of transfer roughness ([0029]), and describes the same as the deterioration of an image due to untransferred toner ([0030]). An evaluation for transfer roughness is described, which entails allowing a toner cartridge to stand in a high-temperature and high-humidity environment, followed by image output ([0266] – [0267]). Judgement of transfer roughness is based on visual observation of impaired image uniformity ([0268]). Such an evaluation measures substantially the same property of “developability” described in the instant application. Where Matsui teaches improved sharp melt property, fixability, and suppressed transfer roughness (which equates to developability), the results achieved by the present invention cannot be considered unexpected.
Finally, Applicant asserts that the teachings of Matsui would fail on a technical basis to yield the toner as claimed, since Matsui does not teach the use of both an oil-soluble initiator and a water-soluble initiator. Allegedly, by using only an oil soluble initiator, such as tert-butyl peroxypivalate, the resulting toner would bear no sulfo groups on the ends of polymer chains, and would thus possess a value for Δεr outside the claimed range. This line of reasoning appears plausible given the preparative example data presented in the instant application. Conversely, using only a water-soluble initiator, such as potassium persulfate, the suspension polymerization, conducted in an aqueous medium, would not proceed stably. Absent a preparative example showing that the use of a water-soluble initiator independent of an oil-soluble initiator in the suspension polymerization method would fail to effect sufficient polymerization of the monomers, it still appears plausible that toner particles comprising a crystalline resin, having a monomer composition and sulfo group content giving rise to the same properties as those described in the instant application, could be prepared by Matsui’s method using potassium persulfate as the initiator. However, the updated rejection below takes into account the tandem use of an oil-soluble initiator and a water-soluble initiator, mooting the argument.
For these reasons, the updated rejections under 35 U.S.C. §103 are not withdrawn.
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 - 8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al (US PGP 2021/0181646) in view of Yagi et al (US PGP 2019/0369529).
Matsui teaches a toner comprising a binder resin, wherein the resin comprises a polymer A (Abstract). Polymer A may make up the entire binder resin of the toner particle ([0043]). Matsui teaches that monomer units of methacrylonitrile may make up 10 – 75% my mass of polymer A ([0045]), and that polymer A also preferably has a monomer unit of a vinyl-based monomer according to a formula (Z) ([0046]). Examples of monomer units represented by formula (Z) are given ([0051]), including styrene ([0052]) and ethyl methacrylate ([0054]). Matsui teaches that the vinyl-based monomers may be used in combination of a plurality ([0055]), and that the amount of monomer unit(s) derived from formula (Z) in polymer A may be 5 – 90% by mass ([0057]). Matsui teaches “durability, fixability, and storage stability” flowing from polymer A, and further teaches that the long-chain (meth)acrylates included in polymer A improve the sharp melt property and fixing gloss of the toner ([0072]).
Matsui also teaches that polymer A preferably contains a monomer unit derived from an alkyl (meth)acrylate of C18 – C36 ([0071]), reading on instant formula (2) representing instant monomer unit (a) recited in Claim 1. The long-chain (meth)acrylate monomer unit is preferably contained in polymer A in an amount of 1 – 75% by mass ([0075]). Behenyl (meth)acrylate is pointed out as an example of a monomer unit which may be included ([0076]).
Matsui teaches that a known external additive may be used without particular limitation, and silica particles surface-treated with a silane coupling agent are pointed out as an example ([0122]). The content of the external additive in the toner is preferably 0.1 – 5 parts by mass relative to 100 parts of the toner particle ([0123]).
Matsui describes the suspension polymerization method of preparing a toner ([0127]), including a dispersion step ([0128]), a granulation step ([0130]), a polymerization step ([0135]), and finally filtration, washing, drying, classification, and external addition to obtain the toner ([0140]).
Matsui teaches a known polymerization initiator may be used in the preparation of polymer A without particular limitation ([0104]). Ammonium persulfate and potassium persulfate are pointed out as examples ([0105]). Matsui does not appear to teach the use of an oil-soluble initiator in combination with a water-soluble initiator.
Yagi teaches a toner comprising a binder resin, which may be a styrene-acrylic polymer ([0154]). The suspension polymerization method is preferred for producing toner particles ([0201]). Yagi describes the use of an oil-soluble initiator, such as tert-butyl peroxypivalate, as an initiator used in the suspension polymerization ([0209]). A water-soluble initiator, such as potassium persulfate, may be used together with the oil-soluble initiator ([0210]). Yagi teaches that the initiators may be used alone or in combination, alongside other agents to control the degree of polymerization of the monomers ([0211]).
In preparing the toner of Matsui, and with the aim of optimizing the fixing and storage properties of the toner flowing from polymer A (as taught by Matsui), one of ordinary skill in the art would have been motivated to vary the monomer composition of polymer A, and to use various combinations of oil-soluble initiators and water-soluble initiators in the suspension polymerization to control the molecular weight and degree of polymerization of polymer A, as taught by Yagi. Thus, in the course of routine experimentation, one of ordinary skill in the art would have prepared a toner having polymer A as a binder resin, having a composition of monomer units substantially the same as those in Example Toner 1 of the instant application (Specification, [0189], Table 1), and polymerized by a similar suite of initiators as those used for Example Toner 1 (Specification, [0190], Table 2).
Where instant Example Toner 1 possesses a value for Δεr of 0.26 (Specification, [0192], Table 4), the toner having the monomer and initiator composition just described would necessarily possess a similar value for Δεr, lying in 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 prepare a toner as taught by Matsui and Yagi, which is described by Claim 1.
The toner prepared as taught by Matsui and Yagi above would also necessarily possess a value for Δεr lying in the range stated in Claim 2.
Instant Example Toner 1 possesses a value of κ at a frequency of 0.01 Hz of 2.5 * 10-14 S/m (Specification, [0192], Table 4). Where the toner prepared as taught by Matsui and Yagi above used a persulfate salt as an initiator, that toner would necessarily have a sulfo group content at the surface of the toner particle substantially similar to that of instant Example Toner 1. Therefore, the toner prepared as taught by Matsui and Yagi would necessarily possess a value of κ lying in the range stated in Claim 3.
Instant Example Toner 1 possesses a value of κ/ω at a frequency of 0.01 Hz of 4.0 * 10-13 (S/m)(s/rad) (Specification, [0192], Table 4). Where the toner prepared as taught by Matsui and Yagi above used a persulfate salt as an initiator, that toner would necessarily have a sulfo group content at the surface of the toner particle substantially similar to that of instant Example Toner 1. Therefore, the toner prepared as taught by Matsui and Yagi would necessarily possess a value of κ/ω lying in the range stated in Claim 4.
Instant Example Toner 1 possesses a minimum of κ/ω at a sweep frequency of 0.01 Hz to 383 kHz of 1.6 * 10-13 (S/m)(s/rad) (Specification, [0192], Table 4). Where the toner prepared as taught by Matsui and Yagi above used a persulfate salt as an initiator, that toner would necessarily have a sulfo group content at the surface of the toner particle substantially similar to that of instant Example Toner 1. Therefore, the toner prepared as taught by Matsui and Yagi would necessarily possess a minimum value of κ/ω at a sweep frequency of 0.01 Hz to 383 kHz lying in the range stated in Claim 5.
As mentioned above, Matsui teaches that the long-chain (meth)acrylate monomer unit is preferably contained in polymer A in an amount of 1 – 75% by mass ([0075]), reading on the range stated in Claim 7.
Instant Example Toner 1 possesses a value for Ic1 of 0.020 (Specification, [0192], Table 4). Where the toner prepared as taught by Matsui and Yagi above used a persulfate salt as an initiator, that toner would necessarily have a sulfo group content at the surface of the toner particle substantially similar to that of instant Example Toner 1. Therefore, the toner prepared as taught by Matsui and Yagi would necessarily possess a value of Ic1 lying in the range stated in Claim 8.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GRANT STEVEN SEILER/ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 04/02/2026