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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/5/2026 has been entered.
Response to Amendment
The amendment filed 6/5/2026 has been entered. Claims 1 and 3-20 remain pending. Claim 1 is amended. Claim 2 has been cancelled. Claim 21 has been added.
Response to Arguments
Applicant’s arguments, see page 6, filed 6/5/2026, with respect to the specification have been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant argues objection is to part of the specification, covering the preparation methods, which is not pertinent to the pending claims, the product. Examiner agrees objection is withdrawn.
Applicant's arguments, see page 6-8, filed 6/5/2026 have been fully considered but they are not persuasive.
Applicant argues the art does not disclose or teach a core which contains a plant derived resin, and a shell which contains polyethylene terephthalate and/or polybutylene terephthalate, or the same reason to combine as disclosed by the Instant Application. Specifically, when a plant derived alcohol monomer is used, less or no BPA is used, resulting in a decreased toughness of the polyester, and a shell which contains PET and/or PBT enhances the toner’s strength (page 17, or [0142]-[0143] of the US PGPUB of the application).
Examiner disagrees, Sacripante discloses a shell may be added to the resin particles, such as one comprising PET oligomers ([0103]). As for the motivation Sacripante discloses using both bio-based polyester reagents and recycled PET oligomers, for improved sustainability of the toner. Furthermore, in view of the motivation to combine with Wosnick, according to the MPEP, rationale to modify or combine prior art may be expressly or impliedly contained in the prior art and references do not have to explicitly suggest combining teachings (MPEP 2144 [R-5]). In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Furthermore, the MPEP states that, “it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the applicant.” Also, according to the MPEP, “Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that obviousness cannot be established by combining references “without also providing evidence of the motivating force which would impel one skilled in the art to do what the patent applicant has done” (emphasis added), reading the quotation in context it is clear that while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention (MPEP 2144 [R-5]).”
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.
Claims 1, 3-4 and 7-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sacripante (US 20140134534) in view of Wosnick (US 20120276478).
Regarding claims 1, 3-4, and 7-16, Sacripante discloses a sustainable toner particle comprising a resin with a bio-based polyacid or polyol and a polyol comprising a depolymerized recycled plastic comprising PET ([0005]). Sacripante further discloses the toner may use a combination of recycled PET and bio-based materials ([0012]). Sacripante further discloses the toner may optionally include a shell ([0014]), and the shell may include a sustainable polyester comprising PET oligomers ([0103]). Sacripante further teaches the sustainability is the content of bio-based, reused, or recycled material in the toner, with a sustainable resin comprising at least 50 % sustainable content ([0012]). While Sacripante does disclose a bio-based material may be used in the toner as well, but does not specifically disclose a resin comprising 5 to less than 30 percent plant derived alcohol ([0010]-[0012]).
Wosnick teaches a toner comprising a bio-based amorphous polyester resin which uses 45-100% by weight bio-based monomers, with camphoric acid specifically comprising 1-60% of the polymer by weight ([0008]-[0009]). Wosnick further teaches propylene glycol as a bio-based monomer which may also be used ([0009]-[0010]). Wosnick further teaches propylene glycol is used in an amount of 5-50% by weight of the resin (claim 2, [0024]), Wosnick further teaches examples of other diols include bis(2-hydroxypropyl)-bisphenol A (aka bisphenol A propylene oxide 2 mol adduct), and bis(2-hydroxyethyl)-bisphenol A (aka bisphenol A ethylene oxide 2 mol adduct) ([0040]). Wosnick further teaches the bio-based resin includes formulations derived from sources such as plant-based stocks, such as plant oils ([0017]-[0018]). Wosnick further teaches bio-based polyesters reduce the need for carcinogenic monomers, and are more environmentally friendly ([0005], [0008]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the toner of Sacripante includes a bio-based polyester comprising propylene glycol, as taught by Wosnick, to reduce the amount of carcinogens used and be more environmentally friendly.
Regarding claim 17-19, modified Sacripante discloses all limitations as set forth above. Sacripante further discloses the toner particle may include an optional crystalline resin, which comprises recycled PET ([0006], claims 6 and 11). Sacripante further discloses when using an optional crystalline polyester, the ratio of crystalline polyester to amorphous polyester is in the range of 1:99 to 30:70 ([0027]). Sacripante further discloses the second amorphous resin comprises recycled PET and a bio-based polyester or polyacid reagent, and a sustainability content of about 70% ([0006], claim 7). In other words, even if the sustainability content is 70%, the amount of recycled PET is less than 70% because the resin also includes a bio-based component.
Regarding claim 20, modified Sacripante discloses all limitations as set forth above. Wosnick further teaches succinic acid as a suitable component for the bio-based polyester ([0009], claims 2, 10]).
Regarding claim 21, modified Sacripante discloses all limitations as set forth above. Sacripante further discloses several acids which may be used to form the polyesters which include adipic acid, phthalic acid, isophthalic acid, terephthalic acid, fumaric acid, maleic acid, succinic acid, dodecylsuccinic acid (aka dodecenyl succinic acid), trimellitic acid, succinic anhydride, dodecylsuccinic anhydride, or phthalic anhydride ([0029])
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sacripante (US 20140134534) in view of Wosnick (US 20120276478) as applied to claims 1-4 and 7-20 above, and further in view of Sugiura (US 20110097659).
Regarding claims 5-6, modified Sacripante discloses all limitations as set forth above. Sacripante does not specifically disclose the shell thickness being 1.005 to 1.5 as a ratio of the diameter of the resin particle to the diameter of the core.
Sugiura teaches a core-shell type toner having a shell thickness of 0.01 to 2.00 µm, preferably 0.4-1.5 µm (abstract, [0010], [0043]). Sugiura further teaches the toner average particle diameter is 2-7, preferably µm ([0018], [0288]). In other words the thickness viewed as a ratio of particle diameter to core diameter, as claimed, ranges from 7/6.99 to 2/0, or 1.001 to ∞, or using the preferred ranges 7/6.6 to 2/0.5, or 1.061 to 4. Sugiura further teaches when the thickness is too thin, the high-temperature storage and development stability deteriorate, and when the shell is too thick low temperature fixing deteriorates ([0043]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the shell thickness ratio in modified Sacripante is preferably 1.061 to 4, as taught by Sugiura, to ensure proper high temperature storage and development stability, and low temperature fixability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Uosaki (US 20040068052) teaches a toner comprising recycled PET or PBT products used as raw material for the polyester binder resin (abstract, [0048], [0053]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./ Examiner, Art Unit 1737
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
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