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 Arguments
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive. The Applicant has argued that while AU ‘237 (relied upon in the prior Office Action) teaches the use of monovalent cations during aggregation of the core particles a preference is taught for polyvalent cations if a tighter particle size distribution is desired. The Applicant further points to the instant specification for teaching that the use of an ionic compound having a monovalent cation has been discovered to produce a toner with a low internal porosity which in turn suppresses the occurrence of gloss unevenness in printed images. To support this argument the Applicant has pointed to Comparative Example 5 in Tables 1-1 to 1-4 of the instant application. Comparative Examples 5 utilizes magnesium chloride as the cation during aggregation, which is a bivalent cation. As can be seen in Table 1-4 of the instant specification Comparative Example 5 does in fact perform worse in the gloss unevenness evaluation than does Example 1, which is largely similar to Comparative Example 5 in composition (see Tables 1-1 and 1-3) and in method of production (see Table 1-2). As such, the Examiner is agreement with the Applicant that the use of the monovalent cation does produce unexpectedly superior over the use of the bivalent cation in Example 1 and Comparative Example 2.
The Applicant’s argument is not found persuasive, however, as the claims as currently recited are not commensurate in scope with the examples that achieve the unexpectedly superior results. The Applicants Inventive Examples and Comparative Example 5 all utilize a hybrid amorphous resin (H1 and H2) [0172-175] and Table 1-1), a crystalline polyester resin, a colorant, release agent and a nonionic surfactant in the toner core ([0193-198], [0202-214], [0219] and Table 1-1) as well as a polyester resin in the toner shell (Table 1-3). None of these components are positively recited in the instant claims. Furthermore, the Applicant has not demonstrated that the improvements obtained by the toner method that produced Toner 1 over the toner method that produced Comparative Example 5 would extend to all toner compositions utilizing said method. The Applicant’s claim 1 recites that the toner core comprises “resin particles” and that the core have “an ester structure” and a “nonionic surfactant.” The data presented by the Applicant in Tables 1-1 to 1-4 are insufficient to extend the showing of unexpectedly superior results to all toners, such as that taught by AU ‘237, wherein the toner core comprises resin particles, a nonionic surfactant and an ester structure and wherein the shell comprises a shell having an ester structure. In order to overcome the pending rejection, which has be re-stated below, the Applicant should amend the independent claim (claim 1) to be commensurate in scope with the inventive examples of the specification. Such an amendment would place the claims in condition for allowance.
An example of a suitable amendment for overcoming the pending rejections would be to recite that the resin particles comprise a hybrid amorphous polyester-vinyl resin, a crystalline polyester resin, the class of surfactant used (or the dew point) for the core particles and reciting the use of an amorphous polyester resin the shell. The Applicant is of course at liberty to propose other amendments that would render the claims suitably commensurate in scope with the examples of the specification.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2, 5-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over AU 2008-246237 (henceforth AU ‘237) in view of JP 2018-084678 (JP ‘678) and considered with CN 115125741 (henceforth CN ‘741).
AU ‘237 teaches an emulsion aggregation method comprising a first aggregation step whereby toner core components are dispersed and aggregated at a temperature at or below the glass transition temperature of the non-crystalline (amorphous) polyester binder resin and a second aggregation step whereby aggregation occurs at or below the glass transition temperature of the amorphous polyester shell resin ([0110-141]), especially [0110] and [0141]). The use of a nonionic surfactant is further taught such as a polyoxyethylene alkyl ether ([0115]) as well as a monovalent flocculant such as inorganic metal salt ([0141]). Coalescence of the aggregated core and shell particles is further taught to be achieved at a temperature that is equal to or higher than the glass transition temperature of core binder resin ([0110] and [0143]). While AU ‘237 does not teach that the coalescence temperature is below the cloud point of the nonionic surfactant, AU ‘237 does teach the same nonionic surfactants as the Applicant (polyoxyethylene alkyl ethers). Furthermore, in embodiments AU ‘237 teaches that the coalescence of the aggregated particles occurs at 90 °C ([0239]) while the Applicant teaches coalescence within the range of 85 to 100 °C (see Table 1-4 of the instant specification). As such, it is clear that the coalescence] step of AU ‘237 will occur at a temperature below the cloud point of the polyoxyethylene alky ether surfactant but above the glass transition temperature of the resin particles of the core and shell of the toner.
In embodiments, the core particles comprise 396 parts of core component materials and the shell comprises 150 parts of shell component materials. As such, the resin particles of the shell are present in an amount of 38% by weight of the core material components (150/396 x 100% = 38%; Table 5). Au ‘237 does not teach a difference in the solids concentration of the core and shell dispersions, however, adjusting the concentration of said dispersion would represent routine laboratory experimentation that is well within the purview of one of ordinary skill in the art. According to the MPEP, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP 2144.05 II A). Furthermore, AU ‘237 teaches that the dispersions are stirred in a homogenizer at a rotation number of the such that the slurry is sufficiently agitated ([0239]). As such, one of ordinary skill in the art would have known to adjust the stirring rate to a power within the Applicant’s range in the course of routine experimentation of finding a rotational speed sufficient to agitate the slurry as taught by AU ‘237. This applies equally to the limitations of pending claim claims 18-19.
AU ‘237 does not teach solubility parameter of the core and resin particle, but teaches that they may be the same type of resin and therefore the difference in solubility parameter would be 0. Furthermore, AU ‘237 does not teach the viscosity of the dispersion for core but does teach similar solids concentration and similar amounts of water used in forming the dispersions. As such, it is clear that the viscosity of the aqueous dispersion of AU ‘237 will be in the Applicant’s recited range as the Applicant teaches substantially similar dispersions (see [0229-242] of AU ‘237 and [0173-199] of the instant specification). AU ‘237 is silent regarding internal porosity and it is therefore assumed that absent any teaching to the contrary the core particles are not porous and therefore have an internal porosity approaching 0%.
JP ‘678 teaches a toner comprising a core-shell configuration wherein the toner is taught to have a glass transition temperature of 10 °C or higher and 40 °C or less (Abstract). The core is taught to comprise a crystalline and non-crystalline resin and the shell is taught to comprise a polymer having an oxazoline group. The ring-opened form of the oxazoline group present in the shell resin possesses an ester group (see [0041], Chemical Formula 3). The toner with these resins and glass transition temperature properties is taught to achieve both heat-resistant preservability and low temperature fixability ([0034]). In embodiments, the non-crystalline core resins are taught to have glass transition temperatures of less than 40 °C (see [0110-121]). Additionally, the use of Epocros WS 300 is taught as the shell resin comprising the oxazoline group. Epocros WS 300 is taught by CN ‘741 to have a glass transition temperature of 90 °C (see the Comparative Example 1 section of the provided translation). As such, the glass transition temperature of the shell resin is greater than the glass transition of the core resin. Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized the core/shell resin of JP ‘678 in the toner of AU ‘273 or to have followed the guidance regarding suitable glass transition temperatures of the core and shell resins taught by JP ‘678 in the resins of AU ‘273 and it would have been further obvious to have optimized the stirring speed and viscosity of the dispersions in the method of AU ‘273 through routine laboratory experimentation.
Claim(s) 3-4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over AU 2008-246237 (henceforth AU ‘237) in view of JP 2018-084678 (JP ‘678) and considered with CN 115125741 (henceforth CN ‘741) as applied to claims 1-2, 5-16 and 18-20 above, and further in view of EP 1 273 976 (henceforth EP ‘976).
The completed discussions of AU ‘237 and JP ‘678 above are included herein. Neither prior art reference teaches a suitable difference between the glass transition temperatures of core and shell resin.
EP ‘976 teaches a toner comprising a core-shell configuration wherein the core comprises a binder resin having a low glass transition temperature and is covered by the shell comprising a binder resin with a glass transition temperature higher than that of the core ([0019]). Such a configuration is taught to optimize the low temperature fixability of the toner while improving the storability of the toner by preventing aggregation ([0019]). The glass transition temperature of the core resin is taught to be at most 60 C and the glass transition temperature of the shell resin is taught to be within the range of 50 to 120 °C ([0092-95]). Furthermore, the difference in glass transition temperature between the binder resin of the core and the shell is taught to be at least 10 °C ([0095-96]). The glass transition temperatures of the core shell resins are taught to be the controlling properties for the low temperature fixability and storage stability of the toner ([0092-96]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized the core/shell resin of JP ‘678 in the toner of AU ‘273 or to have followed the guidance regarding suitable glass transition temperatures of the core and shell resins taught by JP ‘678 in the resins of AU ‘273 and further to have followed the guidance regarding setting a suitable difference between the glass transition temperatures of the core and shell resins. It would have been further obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have optimized the stirring speed and viscosity of the dispersions in the method of AU ‘273 through routine laboratory experimentation.
Claim(s) 3-4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over AU 2008-246237 (henceforth AU ‘237) in view of JP 2018-084678 (JP ‘678) and considered with CN 115125741 (henceforth CN ‘741) as applied to claims 1-2, 5-16 and 18-20 above, and further in view of Kakinuma et al. (US PGP 2012/0389686).
The completed discussions of AU ‘237 and JP ‘678 above are included herein. Neither prior art reference teaches specific examples of the cationic metal flocculant.
Kakinuma teaches a method of making toner particles that includes an emulsion aggregation method ([0230-250]). Additionally, Kakinuma teaches specific monovalent metal salts of inorganic acids such as ammonium sulfate ([0249]). Kakinuma additionally teaches that the metal salts of inorganic acids such as ammonium sulfate are preferentially used as aggregating agents for their stability with respect to heat and time as well as their removability during washing as well as their performance and applicant ion as aggregating agents ([0249]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized the ammonium sulfate aggregating agent taught by Kakinuma et al. as the aggregating agent the modified toner of AU ‘273 in view of JP ‘678 as set forth above, in order to benefit from the improvements taught to be associated with said aggregating agent by Kakinuma et al.
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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/PETER L VAJDA/Primary Examiner, Art Unit 1737 05/20/2026
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