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 - 10 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. Claim 1 is indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. Namely, the claim recites limitations on T1, T2, and T3, which represent temperatures at which the toner possesses certain values for the storage elastic modulus in viscoelasticity measurement. The storage elastic modulus of a toner at a particular temperature is a physical property, and not a chemical or structural feature of the toner. Claims 2 – 10 depend, directly or indirectly, on Claim 1, and therefore also reflect this limitation in terms of a physical property of the toner.
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.
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 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al (US PGP 2021/0181647).
Hashimoto teaches a toner comprising toner particles comprising a binder resin, wherein the binder resin contains a first resin, which is a crystalline resin, and a second resin, which is an amorphous resin (Abstract).
The first resin contains a first monomer unit represented by a formula (1) ([0045]), which represents (meth)acrylates having alkyl chains of 18 – 36 carbons, reading on instant Formula (3). The first monomer unit is preferably contained in the first resin in an amount of 30 – 90% by mass ([0083]), and may be a single monomer unit or a combination of two or more types ([0089]). The first resin also contains a second monomer unit ([0101]), which may be acrylic acid or methacrylic acid ([0102], [0107]). Hashimoto teaches that the second monomer unit may be contained in the first resin in an amount of 0.1 – 70% by mass ([0112]). The first resin also contains a third monomer unit, represented by a formula (5), which may represent styrene ([0114]). Hashimoto teaches that the third monomer unit may be contained in the first resin in an amount of 10 – 50% by mass ([0116]). The first resin is preferably contained in the binder resin in an amount of 30 – 95% by mass, facilitating the formation of the matrix-domain structure ([0123]).
Hashimoto teaches that the second resin may be a vinyl resin ([0125]), and that it is preferably contained in the binder resin in an amount of 4 – 70% by mass ([0131]). Given as examples of monomers which may be used in the preparation of the second resin include (meth)acrylates having alkyl chains of 1 – 4, 8, 12, or 18 carbons ([0124], [0134], [0135]). Hashimoto teaches a relationship between the chain length of the (meth)acrylate monomer units of the second resin and the number-average diameter of the domains in the matrix-domain structure of the toner particle ([0148]).
Hashimoto teaches that, in a cross-section of the toner, the area ratio of the domains in the domain-matrix structure is preferably 15 – 80% ([0072]). While Hashimoto does not teach a preferred range for the surface area of the domains, a preferred number-average diameter of 100 – 1,500 nm is given for the domains ([0070]). Hashimoto does not appear to teach preferred viscoelasticity parameters such as the storage elastic modulus at particular temperatures.
The types and relative amounts of monomer units contained in Hashimoto’s first resin; the types and relative amounts of monomer units contained in Hashimoto’s second resin; and the content amount of the first resin in the binder resin taught by Hashimoto allow for the preparation of toners having the same resins comprising the binder resins as those of instant Toner 1, Toner 5 to Toner 7, Toner 11 to Toner 13, and Toner 23 (Specification, Table 1 and Table 2). I addition, the preferred area ratio of the domains in the domain-matrix structure taught by Hashimoto conforms to that of those same toners (Specification, Table 2). As mentioned above, while Hashimoto does not teach a preferred range for the surface area of the domains, a preferred number-average diameter of 100 – 1,500 nm is given for the domains ([0070]). If the cross-sections of the domains are assumed to be roughly circular, then the number-average surface area of the domains of Hashimoto would lie in the range of 7,854 – 1,767,000 nm2.
π
*
100
n
m
2
2
=
7,854
n
m
2
π
*
1,500
n
m
2
2
=
1,767,000
n
m
2
This range encompasses the value reported for instant Toner 18 - Toner 20 (Specification, Table 2). In addition, all instant examples Toner 1 – Toner 23 possess values for T2, T3-T1, and G’(100) lying in the ranges stated in Claim 1. These values do not appear to fall outside the claimed ranges as a result of variation in the number-average surface area of the domain cross-sections.
Thus, the toner of Hashimoto, being composed of a crystalline resin and an amorphous resin substantially the same as those disclosed in the instant application; and forming a domain-matrix structure wherein the area ratio of the domains lies in a range encompassing those disclosed in the instant application; and having a number-average domain cross-sectional surface area in a range overlapping those disclosed in the instant application; would inherently possess values for T2, T3-T1, and G’(100) lying in the ranges stated in Claim 1.
Therefore, in preparing the toner of Hashimoto, in the course of routine experimentation, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to prepare a toner comprising a toner particle comprising a crystalline resin and an amorphous resin, which form a domain-matrix structure having an area ratio of domains in the range stated in Claim 1; having a number-average cross-sectional surface area of the domains overlapping the range stated in Claim 1; and possessing values for T2, T3-T1, and G’(100) lying in the ranges stated in Claim 1.
As discussed above, Hashimoto teaches that, in a cross-section of the toner, the area ratio of the domains in the domain-matrix structure is preferably 15 – 80% ([0072]), overlapping the range stated in Claim 2.
As discussed above, the number-average surface area of the domains in the domain-matrix structure of the toner taught by Hashimoto would lie in the range of 7,854 – 1,767,000 nm2, overlapping the range stated in Claim 3.
As discussed above, Hashimoto teaches that the first resin, which is a crystalline resin, contains a first monomer unit represented by a formula (1) ([0045]), which represents (meth)acrylates having alkyl chains of 18 – 36 carbons, reading on instant Formula (3) of Claim 4. Hashimoto further teaches that the first monomer unit is preferably contained in the first resin in an amount of 30 – 90% by mass ([0083]), overlapping the range stated in Claim 5.
As discussed above, Hashimoto teaches that the first resin is preferably contained in the binder resin in an amount of 30 – 95% by mass ([0123]). While Hashimoto does not appear to teach a preferred content of the binder resin in the toner, Hashimoto does teach that the content of a colorant may be contained in an amount of 0.1 – 30 parts by mass relative to 100 parts of binder resin ([0218]). In addition, a wax may be contained in an amount of 2 – 30 parts by mass relative to 100 parts of binder resin ([0223]). A charge control agent may also be contained in an amount of 0.2 – 10 parts by mass relative to 100 parts of binder resin ([0233]). Finally, an external additive may be contained in the toner in an amount of 0.1 – 10 parts by mass relative to 100 parts of the toner particle.
Therefore, the binder resin may make up roughly 59 – 98% by mass of the toner particle:
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And the toner particle may make up roughly 91 – 100% by mass of the toner:
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So the first (crystalline) resin of Hashimoto would be contained in the toner in an amount of roughly 16 – 93% by mass, overlapping the range stated in Claim 6.
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As discussed above, Hashimoto teaches that the second resin, which is an amorphous resin, may include (meth)acrylates having alkyl chains of 1 – 4, 8, 12, or 18 carbons ([0124], [0134], [0135]), reading on Formula (4) of Claim 7, Formula (7) of Claim 9, and satisfying the group R5 of Claim 8.
Both the first (crystalline) and second (amorphous) resins taught by Hashimoto, being composed of vinyl monomers such as (meth)acrylic acid derivatives and styrenes, are vinyl resins, satisfying Claim 10.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 02/10/2026