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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/339,830 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap with those of the Instant Application.
Regarding claims 1-6, the ‘830 application claims A toner comprising a toner particle, the toner particle comprising a binder resin, wherein the binder resin comprises a crystalline resin A, (i) the crystalline resin A comprises a monomer unit (a) represented by formula (1):
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in formula (1), R1 represents a hydrogen atom or a methyl group, L1 represents a single bond, an ester bond, or an amide bond, and m represents an integer from 15 to 30, (ii) a percentage of a content of the monomer unit (a) in the crystalline resin A is 30.0 mass % or more, (iii) the monomer unit (a) comprises an alkyl group of which carbon number C(a) is 16 to 31, and (iv) a content of the crystalline resin A in the toner is 20.0 to 90.0 mass %, when, in measurement of viscoelasticity of the toner, T1 (° C.) represents a temperature at which a storage elastic modulus G′ of the toner is 1.0×107 Pa, tan δ(T1) represents a ratio (tan δ) of a loss elastic modulus G″ of the toner to the storage elastic modulus G′ of the toner at the temperature T1 (° C.), and tan δ(T1-10) represents tan δ at a temperature T1-10 (° C.), the T1, the tan δ(T1), and the tan δ(T1-10) satisfy expressions (2) to (4),
50.0≤T1≤70.0 (2)
0.3≤tan δ(T1)≤1.0 (3)
1.0≤tan δ(T1)/tan δ(T1-10)≤1.9 (4)the toner particle comprises a linear fatty acid metal salt, a carbon number C(a) of the alkyl group and a carbon number C(b) of a linear fatty acid in the linear fatty acid metal salt satisfy |C(a)−C(b)|≤10, and a metal in the linear fatty acid metal salt has a valency of 2 or more. (Claim 1)
The ‘830 application further claims The toner according to claim 1, wherein, when, in measurement of viscoelasticity of the toner, T2 (° C.) represents a temperature at which the storage elastic modulus G′ of the toner is 3.0×107 Pa, r; and T3 (° C.) represents a temperature at which the storage elastic modulus G′ of the toner is 3.0×106 Pa, the T2 and the T3 satisfy an expression (5) below:
|T3−T2|≤10.0 (5). (Claim 6)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-3 and 6-7 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.
Claims 1-3 and 6-7 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.
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.
Claims 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama (US 20220107573).
Regarding claims 1-7, Akiyama discloses a toner comprising a crystalline resin and an amorphous resin. The toner having a Tm between 50-80°C. Akiyama further discloses the toner possesses storage elastic moduli at a temperature Tm-5°C and Tm+5°C which satisfy G’(Tm-5)/G’(Tm+5) ≥ 50 ([0009], [0033]). Akiyama further discloses G’(Tm+5) is preferably 1*104 to 1*106 ([0035]). Therefore, G’(Tm-5) is 50*(1*104) to 50*(1*106), or 5*105 to 5*107 or greater. Akiyama further discloses the toner of the examples with a Tm value ranging from 53.6°C to 77.8°C, and G’(Tm-5) ranging from 1.89*107 Pa to 3.55*107 Pa, and G’(Tm+5) ranging from 8.62*104 Pa to 5.83*105 Pa, Toners 1-12 are the Examples, Toners 13-18 are Comparative Examples (Table 3, page 16; Table 4, page 18). Akiyama further discloses the toner comprises a maximum loss tangent, Tanδ(Max) in the temperature range of 50-130°C of 0.00-1.50 ([0009]). Akiyama further discloses when the Tanδ(Max) is under 1.50 the viscosity of the toner is lower in the temperature range resulting in less soiling of the fixing device ([0021]), with the Examples having Tanδ(Max) values ranging from 0.40-1.45 (Table 3, page 16).
Akiyama further discloses the crystalline resin is a vinyl resin produced by mixing behenyl acrylate methacrylic acid, styrene, and acrylonitrile in Toluene with the polymerization initiator t-butyl peroxypivalate at 70°C and 200 rpm to polymerize for 12 hours, followed by cooling and precipitating the polymer in methanol (0212]-[0213]). The amount of behenyl acrylate ranging from 29-98 mass%, with some examples replacing the behenyl acrylate with stearyl, myristyl, or octadecyl acrylate (Table 1, page 15). The behenyl acrylate, n value of 21, and stearyl acrylate, n value of 17, of the examples read on formula (6) of the Instant Claim 4). The vinyl crystalline resin is then mixed with amorphous resin B-1, and is kneaded before mixing pigment and release agent to produce the toner. The amount of crystalline resin used in the examples ranges from 35-93 parts per 100 parts resin, mixed with 5 parts pigment and 5 parts release agent (0218]-[0220], Table 2 page 16). In other words 35/100 to 93/110, or 31.8-84.5 mass% of the toner particles.
Akiyama does not teach the specific temperature at which the Tanδ(Max) occurs it or the Tanδ at 10°C lower. However, the crystalline resin of Akiyama is produced with a nearly identical method and sufficiently similar monomer proportions to that of Applicants Examples in the Instant Specification (Table 1, page 30). Provided the toner of Akiyama satisfies expressions (1) and (2) and includes a sufficiently similar crystalline resin including sufficiently similar monomers in similar proportions, the toner of Akiyama would be expected to necessarily satisfy the claimed formulae (3) to (5), and thus would read on the corresponding limitations of claims 1 and 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 1997) (footnote and citation omitted).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama (US 20220107573) as applied to claims 1-7 above, and further in view of Hashimoto (US 20210181647).
Regarding claims 5-10, Akiyama discloses all limitations as set forth above. However, Akiyama does not disclose the amorphous resin is vinyl or comprises a monomer unit which reads on formula (7) of the Instant Claim 8.
Hashimoto teaches a similar toner, comprising a binder having a first resin and second resin, the first resin is crystalline and has a monomer represented by a long chain (meth)acrylate, with a 18-36 carbon alkyl group, similar to that of Akiyama. Hashimoto further teaches the second resin is amorphous and contains at least one of a vinyl resin or a hybrid vinyl/polyester resin ([0041]-[0050]). Hashimoto further teaches the first resin and second resin form a domain-matrix structure in the toner, having domains with an average diameter of 0.1-2 µm ([0050]). Hashimoto further teaches there is a correlation between the domain diameter and the fixation temperature range in this configuration, with the domain-matrix structure exhibiting excellent low temperature fixability, whether the domains are the crystalline resin and the matrix is the amorphous, or vice versa ([0062]-[0069]). Hashimoto further lists several acrylate based monomers which read of formula (7) of the Instant Claim 8, and Hashimoto specifically teaches using n-octyl acrylate in an amount of 5-10 mass% specifically in second resin 15 and 21, or dodecyl acrylate in an amount of 10 mass% in second resin 20 in the examples ([0134], Table 4 page 22). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to produce the toner of Akiyama using a vinyl resin produced with a long chain (meth)acrylate monomer to form a matrix-domain structure, as taught by Hashimoto, resulting in improved low temperature fixability.
Conclusion
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
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737