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
The amendment filed 4/8/2026 has been entered. Claims 1-4, 6-7, and 8-20 remain pending. Claim 1 has been amended. Claims 5 and 8 are cancelled. Claim 21 has been added.
Response to Arguments
Applicant’s arguments, see page 8, filed 4/8/2026, with respect to the abstract have been fully considered and are persuasive. The objection of the abstract has been withdrawn.
Applicant has filed a replacement abstract objection withdrawn.
Applicant’s arguments, see page 8, filed 4/8/2026, with respect to claims 1-16 have been fully considered and are persuasive. The rejection of claims 1-16 has been withdrawn.
Applicant argues the amendment specifying the type of resin used for the binder, polyester, and resin particles, crosslinked styrene-(meth)acrylic copolymer, obviates the 35 USC 112(b) rejection. Examiner agrees, the amended claim 1 is definite.
Applicant's arguments, see page 8-10, filed 4/8/2026, with respect to claims 17-19 have been fully considered but they are not persuasive.
Applicant argues MPEP 2114 does not apply, stating the inclusion of the limitations of claim 1, which are directed toward a toner, are structural limitations. Examiner disagrees, the toner of claim 1 does not include any structural limitations specific to the toner cartridge, process cartridge, or image forming apparatus. In other words, the toner cartridge, process cartridge, and image forming apparatus would not be structurally different if a toner other than that the instant application was used instead of the toner of claim 1. Furthermore, the cartridges and apparatus of claims 17-19 would still function with a different toner. Therefore, the toner cartridge, process cartridge, and image forming apparatus of claims 17-19 are not structurally or functionally differentiated from those disclosed by Miyamoto.
Applicant further argues MPEP 2115 and its examples do not directly apply to the apparatus of the current application noting that in Otto the court noted the process of winding the hair (the article worked upon by the structure) does not impart patentability, arguing the Instant Claims do not include process limitations. Applicant further argues in Young the court indicated the concrete member (the product of the machine) is not given patentable weight, arguing the toner in the Instant Claims is not the product of the cartridge/apparatus. Applicant further argues in Casey the court indicated limitations regarding “the use of the device” and “the manner or method in which the machine is to be utilized” were not given patentable weight, and therefore it does not apply.
Examiner agrees that In re Otto and In re Young are not exact matches to the to the instant claims. However, Examiner disagrees with Applicant in regards to In re Casey. The court upheld the rejection in Casey because "the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle." One of skill in the art would expect the toner cartridge, process cartridge, and image forming device of the Instant Claims, would function with any other toner. The toner in the Instant Claims is considered a material consumed, or worked upon by the apparatus, similar to the adhesive tape in Casey, it is contained in the apparatus and consumed as the apparatus is used. Therefore, in the Instant Application the use of the toner of Instant Claim 1 does not expressly or impliedly require any particular structure in addition to that of Miyamoto.
Applicant’s arguments, see pages 10-13, filed 4/8/2026, with respect to claims 1, 3-10, 12, and 14-20 have been fully considered and are persuasive. The rejection of claims 1, 3-10, 12, and 14-20 has been withdrawn.
Applicant argues Aoki’s “tan δ” is not the loss coefficient tan δ(t) measured by rheometry. Examiner agrees, as amended Aoki no longer covers the claimed loss coefficient.
Applicant further argues Miyamoto does not fully establish inherency regarding the Q1/Q2 limitation of claim 1. Examiner agrees while Miyamoto discloses a crystalline polyester produced using a similar ratio of the same monomers as are used in the resin of the Instant Application, the reaction process is different. The difference in resins is evidenced by the difference in the endothermic peak/melting temperature 74 vs 69 °C, for Miyamoto and the Instant Example 1 respectively.
Claim Rejections - 35 USC § 102
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 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyamoto (JP 2017058645).
Regarding claims 17-19, Miyamoto discloses a toner cartridge detachably mountable to an image forming apparatus ([0015]). Miyamoto further discloses a process cartridge equipped with a developing means to develop an electrostatic image into a toner image ([0016]). Miyamoto further discloses an image forming apparatus comprising an image carrier, a charging means for charging the surface of the image carrier, an electrostatic image forming means, a developing means for developing the electrostatic image into a toner image, a transfer unit to transfer the toner image to a recording medium, and a fixing means for fixing the toner image to the recording medium ([0017]).
The applicant has recited the apparatus, toner cartridge, and process cartridge claims as also containing or comprising the toner of pending claim 1, via the developer of claim 12. However, since a developer, or toner, is a material that is consumed by the apparatus and is not a permanent fixture of the apparatus, its inclusion in the apparatus claims does not represent a material limitation on the apparatus. Multiple different developers may be used in any xerographic apparatus and therefore the limitations of the developer in the present claims do not represent material limitations on the apparatus because the developer with these limitations could be substituted by another developer and not alter the mechanical functioning of the apparatus. § MPEP 2115. In accordance with MPEP 2114 an apparatus in a claim must be recited structurally and therefore the type of toner to be used possesses no patentability, only the material properties of the apparatus are patentable. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Additionally, a claim containing a recitation in respect to the manner that an apparatus is intended to be used does not differentiate the claim from prior art. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In further regards to the toner, MPEP 2115 states that, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
The toner is a material worked upon and consumed by the image forming apparatus. A material portion of the apparatus must be a permanent fixture of the apparatus that is not permanently changed by the regular operation of the apparatus. The toner, during the course of the imaging process, is changed from a particulate material to a melted and fused material. During fixing, heat and/or pressure is applied to the toner to bind it to the recording material such that the toner cannot be recovered and re-used in the apparatus. Therefore, the toner cannot be claimed as a structural member of the apparatus.
Allowable Subject Matter
Claims 1-5, 6-7, 9-16, and 20-21 allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
The toner of claim 1 is not disclosed or taught in the art, specifically the ratio Q1/Q2 is 0.15 or more. With Q1 being the heat absorption of the crystalline resin calculated by performing differential scanning calorimetry on the toner that has been melted at 150°C, then cooled to 10°C lower than the endothermic peak temperature Tc, and then retained thereat for 1 minute. And Q2 being the heat absorption Q2 of the crystalline resin calculated by performing differential scanning calorimetry on the toner that has been melted at 150°C, then cooled to a temperature 10°C lower than the endothermic peak temperature Tc, and then retained thereat for 30 minutes.
The closest available art for the crystalline polyester is Bando (JP 2013228724) and Wada (JP 2018045093).
Bando teaches a crystalline polyester produced with 286 parts of dodecanedioic acid and 159 parts 1,6 hexanediol and 1 part catalyst, reacted for 8 hours at 170°C, followed by a temperature increase to 220°C, for further reaction for 4 hours, then reaction under reduced pressure resulting in a resin with a melting point of 65°C ([0128]).
Wada teaches a similar method reacting 132 g 1,6-hexanediol and 230g 1,10-decanedicarboxylic acid (aka dodecanedioic acid) with 3 g of catalyst at 210°C followed by reacting under reduced pressure, resulting in a resin with a melting point of 88°C ([0128]).
Both methods use dodecanedioic acid and 1,6-hexanediol in a ratio of approximately 2:1, the same as the instant application (Instant spec page 42, [0182]). However, the difference in reaction temperatures and time produce resins with a different thermal properties. Furthermore, the combination with crosslinked styrene-(meth)acrylic resin particles as crystallization nucleation sites, further adjusting the thermal properties, is not disclosed in the art either. In combination with the other limitations the toner of the Instant Claim 1, is not disclosed or rendered obvious by the available prior art.
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 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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/C.C.S./ Examiner, Art Unit 1737
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
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