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 .
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.
Claims 1 – 8 are rejected under 35 U.S.C. 112(b) as failing to set forth the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 - 8 are 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 particular, Claim 1 defines the invention almost entirely in terms of peaks observed when the toner is analyzed by DSC, and only states the structural limitations of a binder resin comprising an amorphous polyester and a crystalline polyester. Claims 2 and 5 – 7 similarly further constrain the invention entirely in terms of physical properties, reciting no additional structural limitations. While Claims 3, 4, and 8 do add structural limitations, they are dependent on Claim 1, and therefore also do not hold patentable weight.
Claim Rejections - 35 USC § 103
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.
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 Katsumata et al (US PGP 2016/00334725) in view of Fukudome et al (US PGP 2015/0037727).
Katsumata teaches a toner comprising a toner particle comprising an amorphous polyester resin, a crystalline polyester resin, a wax, and a colorant (Abstract). Katsumata teaches that the crystalline polyester includes 0.5 – 15% by mass of a segment derived from an aliphatic monocarboxylic acid having 8 – 20 carbons or an aliphatic monohydric alcohol having 8 – 20 carbons ([0040], [0082] – [0084]), analogous to the terminal-modifying groups of the instant application. The crystalline polyester contains monomer units of an aliphatic diol having 2 – 22 carbons and an aliphatic dicarboxylic acid having 2 – 22 carbons ([0056] – [0058]). Katsumata points out ethylene glycol ([0070]), decanedicarboxylic acid (C12), and dodecanedicarboxylic acid (C14) ([0077]) as optional monomers to include in the crystalline polyester resin.
Katsumata describes the amorphous polyester which is the main component of the binder resin ([0108] – [0109]), and points out ethylene glycol ([0114]) and alkylene oxide adducts of bisphenol A ([0115]) as optional polyhydric alcohols which may be used in the amorphous polyester. Katsumata further points out fumaric acid, terephthalic acid, and adipic acid ([0116]) as optional polyvalent carboxylic acids which may be used in the amorphous polyester. Further pointed out as vinyl group-bearing monomers which can react with the amorphous polyester resin are (meth)acrylate esters ([0129]).
Katsumata teaches that a wax may be incorporated into the toner ([0140]), and points out Fischer-Tropsch wax as an example ([0141]). The wax may be incorporated in an amount of 1 – 20 parts by mass relative to 100 parts of amorphous polyester resin ([0144]). Katsumata further describes a colorant which may be incorporated in the toner ([0146]), and points out carbon black as an option ([0147]). The colorant may be included in an amount of 0.1 – 30 parts by mass relative to 100 parts of amorphous polyester resin ([0154]). In addition, Katsumata describes inorganic fine particles ([0175]) which may be externally added to the toner particles ([0176]). Silica and titania fine particles are mentioned as optional inorganic fine particles ([0177]), in an amount of 0.1 – 10 parts by mass relative to 100 parts of toner ([0182]). Katsumata describes a pulverization method of preparing the toner ([0190]).
Fukudome teaches a toner comprising a toner particle containing a crystalline polyester resin and an amorphous resin (Abstract). The monomers used to prepare the crystalline polyester are described ([0115]), which include aliphatic diols having 4 – 18 carbons ([0116]), and aliphatic dicarboxylic acids having 4 – 18 carbons ([0120]). Fukudome teaches that the crystalline polyester resin has a crystal nucleating agent group at the terminus of the polymer chain ([0093]), analogous to the terminal-modifying group of the instant application. The crystal nucleating agent group being bonded to the polyester chain improves the crystallinity of the crystalline polyester ([0033]). Fukudome teaches that the crystal nucleating agent group may be an aliphatic monohydric alcohol having 10 – 30 carbons, or an aliphatic monocarboxylic acid having 11 – 31 carbons ([0101]). Behenic acid is pointed out as a specific example of an aliphatic monocarboxylic acid ([0106]).
In preparing the toner of Katsumata, one of ordinary skill in the art would have been motivated to improve the crystallinity of the crystalline resin by incorporating the crystal nucleating agent (analogous to a terminal-modifying group) taught by Fukudome. Through routine experimentation, the skilled practitioner would have thus prepared a crystalline polyester resin having a composition similar to that of instant Crystalline polyester C1, and an amorphous polyester resin having a composition similar to that of instant Amorphous polyester A1. These would be incorporated into a toner particle alongside Fischer-Tropsch wax and carbon black by a kneading-pulverization method in ratios similar to those for instant Toner 1. The toner particles would be treated with fine silica and titania in a manner similar to that used for instant Toner 1.
Instant Toner 1 possesses a peak top temperature of endothermic peak A of 85°C; a peak top temperature of exothermic peak B of 57°C; an exothermic quantity of exothermic peak B of 1.4 J/g; a peak top temperature of exothermic peak C of 75°C; an exothermic quantity of exothermic peak C of 1.7 J/g; a peak top temperature of endothermic peak D of 84.2°C; and a difference T2 – T1 of -0.8°C (Specification, Table 8, Toner 1), all lying in the ranges stated in Claim 1. Where the toner of Katsumata modified with the crystal nucleating agent of Fukudome has a composition substantially similar to that of instant Toner 1, and is produced in by a substantially similar method, such a toner would inherently possess substantially the same values for endothermic peak A, exothermic peak B, exothermic peak C, and endothermic peak D as instant Toner 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 the toner of Katsumata as modified by Fukudome, comprising a crystalline polyester and an amorphous polyester and possessing a DSC profile satisfying the ranges of Claim 1.
Instant Toner 1 possesses an endothermic quantity of endothermic peak D of 4.7 J/g. The toner of Katsumata as modified by Fukudome, being substantially the same as instant Toner 1, would inherently possess a substantially similar value for the endothermic quantity of endothermic peak D, satisfying Claim 2.
As discussed above, Katsumata teaches a crystalline polyester contains monomer units of an aliphatic diol having 2 – 22 carbons, encompassing the range stated in Claim 3, and an aliphatic dicarboxylic acid having 2 – 22 carbons ([0056] – [0058]). Therefore, the carbon number of the dicarboxylic acid monomer unit may have a carbon number exceeding that of the diol monomer unit by 6 carbons or more, satisfying Claim 3.
As discussed above, Fukudome teaches that the crystalline polyester resin has a crystal nucleating agent group at the terminus of the polymer chain ([0093]), which may be an aliphatic monohydric alcohol having 10 – 30 carbons, or an aliphatic monocarboxylic acid having 11 – 31 carbons ([0101]), encompassing the ranges stated in Claim 4. In addition, Katsumata teaches that the crystalline polyester includes 0.5 – 15% by mass of the terminal modifier group ([0040]). Instant Crystalline polyester 1 includes 10% by mass of terminal modifying group behenic acid (Specification, Table 5), and has a terminal modification ratio of 98% (Specification, Table 6). Therefore, the crystalline polyester resin of Katsumata as modified by Fukudome, incorporating a similar portion of terminal modifying monomer, would also possess a terminal modification ratio in the range stated in Claim 4.
Crystalline polyester C1 possess a melting point of 90°C (Specification, Table 6). Therefore, the crystalline polyester of Katsumata as modified by Fukudome, being substantially the same as instant Crystalline polyester C1, would inherently also possess a melting point of roughly 90°C, satisfying Claim 5.
Instant Toner 1 possesses a value for SPA – SPC of 3.3 (Specification, Table 7). The toner of Katsumata modified with the crystal nucleating agent of Fukudome, having crystalline polyester resin and an amorphous polyester resin with substantially the same compositions as those contained in instant Toner 1, would inherently possess a value for SPA – SPC of roughly 3.3, lying in the range stated in Claim 6.
Instant Toner 1 possesses a value for TA – TM of 11°C (Specification, Table 7). The toner of Katsumata modified with the crystal nucleating agent of Fukudome, having crystalline polyester resin and an amorphous polyester resin with substantially the same compositions as those contained in instant Toner 1, would inherently possess a value for TA – TM of roughly 11°C, lying in the range stated in Claim 7.
Katsumata teaches that the crystalline resin should be included in the toner particle in an amount of 0.5 – 15 parts by mass relative to 100 parts of amorphous polyester, converting to a range of content of the crystalline polyester in the binder resin having an upper bound of 13%. Therefore, the crystalline polyester resin would be contained in the binder resin in an amount having a range overlapping that stated in Claim 8.
Conclusion
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.
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/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 01/05/2026