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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
Tables 1-1 through 1-5 on pg. 78-82 are blurry, making it difficult to read the labels/data. Applicant is respectfully requested to include tables having better resolution/clarity, along with a statement that the substituted tables contain no new matter.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. Ex parte Slob, 157 USPQ 172, states, “Claims merely setting forth physical characteristics desired in an article, and not setting forth specific composition which would meet such characteristics, are invalid as vague, indefinite, and functional since they cover any conceivable combination of ingredients either presently existing or which might be discovered in the future and which would impart said desired characteristics.”
Also, “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.
In the instant case, claim 1 defines the electrostatic charge image developing toner in terms of measured physical properties, such as total amounts of heat generated at an exothermic peak in a particular temperature range during a reheating period during two specified thermal processes, but does not recite the specific materials that the Applicant has invented that would exhibit these claimed properties. Consequently, someone of ordinary skill would not be able to readily ascertain which toners found in prior art would or would not infringe based on these claims as currently recited. In order to overcome this rejection, the Applicant must add limitations directed to the specific toner materials that give rise to these properties such that all of the claimed conditions are satisfied.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 13-14, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa et al. (US PGP 2017/0160660 A1).
Hasegawa teaches a toner comprising a toner particle containing a binder resin, a colorant, a wax, and a crystalline polyester. The binder resin is taught to include an amorphous polyester ([0255]-[0256], [0330], Table 5) (which reads on the corresponding limitations recited in instant claim 1).
The toner is taught to have two or more peak tops for crystallization peaks in a temperature range from 40 ºC to 80 ºC in a first DSC curve, the first DSC curve being obtained by using a differential scanning calorimeter (DSC) by a process of heating to 100 ºC and thereafter cooling the toner from 100 ºC to 20 ºC at 0.5 ºC/min ([0022]). An exothermic quantity “ΔH(0.5)” for the crystallization peak on the lowest temperature side of the two or more crystallization peaks in the first DSC curve is taught to preferably be 0.5 J/g to 3.5 J/g ([0065]).
Similarly, an exothermic quantity “ΔH(100)” for the crystallization peak on the lowest temperature side of the crystallization peaks having peak tops present in a temperature range from 40 ºC to 80 ºC in a second DSC curve, the second DSC curve being obtained by using a differential scanning calorimeter (DSC) by a process of heating to 100 ºC and thereafter cooling the toner from 100 ºC to 20 ºC at 100 ºC/min is taught to preferably be 2.5 J/g or more and 15.0 J/g or less ([0061]).
The cooling rate during the first DSC process (0.5 ºC/min) is taught to be considered a sufficiently slow cooling rate and is carried out in order to analyze the crystallization peaks with a high reproducibility, although a cooling rate of up to 2.0 ºC/min is also mentioned as being effective ([0043]). On the other hand, the cooling rate during the second DSC process (100 ºC/min) is taught to be considered a sufficiently fast cooling rate and is also carried out in order to analyze the crystallization peaks with a high reproducibility, although a cooling rate of as low as 50.0 ºC/min is also mentioned as being effective ([0044]).
While not identical, the first DSC process is sufficiently similar to the instantly claimed thermal process (2) and the second DSC process is sufficiently similar to the instantly claimed thermal process (1). That is, both of the claimed thermal process (2) and the claimed thermal process (2) recite sufficiently similar heating steps within similar temperature ranges and sufficiently similar cooling steps using either a slow cooling rate or a rapid cooling rate. Accordingly, the exothermic quantities obtained first and second DSC processes taught by Hasegawa are understood to be representative of the claimed condition (2) and condition (1).
Therefore, the toner of Hasegawa which satisfies exothermic quantities within the first DSC process and second DSC process would be expected to also exhibit sufficiently similar exothermic quantities when measured under the claimed thermal process (2) and thermal process (1), and thus would be expected to satisfy the claimed condition (2) and condition (1) recited in instant claim 1 and claim 2.
According to MPEP § 2112(V), "[T]he PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of his
[or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977) (footnote and citation omitted).
Claims 1-9, 11, and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakamoto et al. (US PGP 2014/0287353 A1).
Sakamoto teaches an electrostatic charge image developing toner including an amorphous polyester resin and a crystalline polyester resin as a binder resin (Abstract). Developers comprising components recited in instant claim 13, claim 14, claim 15, and claim 16, an image forming apparatus comprising the components recited in instant claim 19, a process cartridge comprising the components recited in instant claim 18, a toner cartridge comprising the components recited in instant claim 17, and an image forming method comprising the steps recited in instant claim 20 are also discussed ([0167]-[0207]).
When a differential scanning calorimetry (DSC), which undergoes processes of a first temperature rise, cooling at a rate of -10 ºC/min, and a second temperature rise, an exothermic peak having an intensity of 0.1 J/g or more is absent during the first temperature rise and the exothermic peak is present in the second temperature rise ([0016]). In other words, an exothermic peak during the reheating period (i.e., the second temperature rise) after a slow cooling rate (10 ºC/min) is 0.1 J/g or less.
More specifically, the DSC process is taught to include a first temperature rise performed from 0 ºC to 150 ºC using a differential scanning calorimeter and maintaining the temperature at 150 ºC for 5 minutes. Next, rapid cooling is performed to 0 ºC at a temperature falling rate of -10 ºC/min and the temperature is maintained at 0 ºC for 5 minutes. Subsequently, the second temperature rise is performed from 0 ºC to 150 ºC at a temperature rising rate of 10 ºC/min ([0023]).
While not identical, the DSC process taught by Sakamoto is sufficiently similar to the instantly claimed thermal process (2). That is, both of the claimed thermal process (2) and the claimed thermal process (2) recite sufficiently similar heating steps within similar temperature ranges and sufficiently similar cooling steps using a slow cooling rate. Accordingly, the exothermic quantity obtained during the DSC process taught by Sakamoto is understood to be representative of the claimed condition (2).
Therefore, the toner of Sakamoto which satisfies exothermic quantities within the DSC process corresponding to the claimed thermal process (2) would be expected to also exhibit sufficiently similar exothermic quantities when measured under the claimed thermal process (1), and thus would be expected to satisfy both the claimed condition (2) and condition (1) recited in instant claim 1 and claim 2.
According to MPEP § 2112(V), "[T]he PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of his
[or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977) (footnote and citation omitted).
The content of the crystalline polyester resin is taught to be within the range of from 2% by weight to 40% by weight with respect to the binder resin comprising the crystalline polyester resin and the amorphous polyester resin ([0045]) (which reads on the corresponding range recited in instant claim 3). Therefore, a mass ratio of amorphous resin having a molecular weight of 5,000 or less to a mass ratio of crystalline resin having a molecular weight of 5,000 would be expected to be close to aforementioned range, or from 0.02 to 0.4 (which reads on the corresponding range recited in instant claim 4).
Additionally, the content of the release agent is taught to be within the range of from 1% by weight to 20% by weight with respect to a total amount of the toner particles ([0089]). Therefore, a content ratio of the crystalline polyester resin to the release agent contained in the toner includes the value 2 in scenarios where both the minimum amounts of crystalline polyester resin and release agent are used (2% and 1%, respectively), and when both the maximum amounts of crystalline polyester resin and release agent are used (40% and 20%, respectively) (which reads on the corresponding range recited in instant claim 11).
The amorphous polyester resin is taught to include a condensation polymer of a polyvalent carboxylic acid and a polyol. Examples of the polyvalent carboxylic acid include aliphatic dicarboxylic acids like adipic acid ([0049]-[0050]) (which reads on the corresponding limitation recited in instant claim 6 and the formula (1) recited in instant claim 7). Similarly, the crystalline polyester resin is taught to include a condensation polymer of a polyvalent carboxylic acid and a polyol. Examples of the polyvalent carboxylic acid include aliphatic dicarboxylic acids like 1,10-decanedicarboxylic acid ([0065]-[0067]) (which reads on the corresponding limitation recited in instant claim 6 and the formula (2) recited in instant claim 7).
Sakamoto appears to be silent to teach a mass ratio of aliphatic carboxylic acids in the amorphous resin having a molecular weight of 5,000 or less to a mass ratio of aliphatic carboxylic acids in the amorphous resin having a molecular weight of 50,000. However, Sakamoto encourages the adjustment of the molecular weight of the polyester resin in order to control the temperature range of the exothermic peak ([0021]). Accordingly, the skilled artisan would have sought to optimize the temperature range of the exothermic peak by experimenting with different molecular weights. In doing so, the skilled artisan would have likely arrived at a mass ratio within the range recited in instant claim 5.
In the examples, the mass ratio of the aliphatic dicarboxylic acid unit to all dicarboxylic acid units in the amorphous resin was 32% by mass, and the mass ratio of the aliphatic dicarboxylic acid unit to all dicarboxylic acid units in the amorphous resin was 100% by mass ([0209]-[0211], [0241]-[0246]). Accordingly, the ratio R1/R2 can be calculated as being 0.32/1 = 0.32, which falls within the corresponding range recited in instant claim 9.
While the mass ratio of the aliphatic dicarboxylic acid unit falls just outside of the corresponding range of from 1% to 30% by mass recited in instant claim 8, MPEP § 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
Additionally, “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.)”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US PGP 2014/0287353 A1), in view of Koyama (US PGP 2015/0044605 A1).
The teachings of Sakamoto are discussed above and incorporated herein. The amorphous polyester resin and the crystalline polyester resin are taught to include carboxylic acid and polyols having a crosslinked structure ([0051], [0054], [0068], [0072]). However, Sakamoto is silent to teach or suggest a range for the amount of crosslinked resin contained in the toner. Koyama teaches a toner containing cross-linked polyester resin particles. Koyama teaches that the content of the cross-linked polyester resin particles is preferably 0.5% or more and 5.0%, in view of exhibiting excellent polishing characteristics ([0035]). In Example 4, 5.0% by mass of the cross-linked polyester resin particles were used, resulting in a content of 3.7% by number (which reads on the corresponding range recited in instant claim 10).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted the amount of crosslinked polyester of Sakamoto’s toner to be within the amount taught by Sakamoto, in view of imparting excellent polishing characteristics.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US PGP 2014/0287353 A1), in view of Tsuchihashi (US PGP 2019/0332025 A1).
The teachings of Sakamoto are discussed above and incorporated herein. Sakamoto teaches that the toner may contain an external additive as necessary ([0036]), but is silent to teach or suggest a range for the average particle size of the external additive. Tsuchihashi teaches that, in order to obtain a toner having excellent fluidity, it is preferable to use inorganic particles (powder) having a number average particle size of at least 5 nm and no greater than 500 nm as external additive particles ([0095]) (which reads on the corresponding range recited in instant claim 12).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have equipped Sakamoto’s toner with inorganic particles having an average particle size within the range of Tsuchihashi, in view of imparting excellent fluidity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
1/22/2026