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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2022-100448, filed on 6/22/2022.
Specification
The disclosure is objected to because of the following informalities: The content of Additive Resins B1 and C1 are inconsistent. The Method for Synthesizing Additive Resin B1 includes the monomer composition of 80.0 parts of behenyl acrylate, 18.0 parts of styrene, and 2.0 parts of methacrylic acid according to paragraphs [0242] to [0249]. The same resin is listed as the first resin in Table 1, wherein the monomer composition is 80.0 parts behenyl acrylate, 18.5 parts styrene, and 1.5 parts methacrylic acid. It is unclear what the composition of this resin is, as the amounts of styrene and methacrylic acid differ between the method and the table. Similarly, the Method for Synthesizing Additive Resin C1 includes the monomer composition of 80.0 parts of behenyl acrylate, 19.2 parts of styrene, and 0.8 parts of methacrylic acid according to paragraphs [0261] to [0268]. The same resin is listed as the first resin in Table 2, wherein the monomer composition is 80.0 parts of behenyl acrylate, 17.5 parts of styrene, and 0.8 parts of methacrylic acid. It is unclear what the composition of this resin is, as the amount of styrene differs between the method and the table.
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 1-13 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.
Claims 1-13 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 1 recites the toner in terms of peaks on a gradient LC analysis of a chloroform soluble component of the toner particle. As such, the claims are indefinite as presented as one of ordinary skill in the art would not be able to readily ascertain, absent undue experimentation, what prior art toners will read on the claims. Furthermore, as presented, the claims are not recited that the claim reads only in the particular toner that the applicant has invented. The Applicant may overcome this rejection by additionally reciting components (i.e. the binder resins) in the inventive toner that give rise to these properties. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamae (Japanese Patent Application Publication No 2021-096278).
Kamae teaches a toner including a vinyl binder resin wherein a first polymer includes a first monomer unit represented by chemical formula 1 ([0005-6]). Chemical formula 1 represents many of the same compounds as formula (3) of the instant application, wherein RZ1 of Kamae and R1 of the instant application represent a hydrogen atom or a methyl group, L1 of the instant application may be an ester bond, present at the same location as the ester bond of Kamae, and m of the instant application represents an integer of 15 to 30 which is equivalent to an R group having an alkyl group of 16 to 31 carbon atoms, the R group of Kamae representing an alkyl group having 18 to 36 carbon atoms. The content of this monomer in the resin is 30.0% to 100.0% by mass, and more preferably 40.0% to 90.0% by mass ([0018]). The acid value of the resin, AVb of the instant application, is 0.1 to 30.0 mgKOH/g, and preferably 5.0 to 30.0 mgKOH/g ([0027]). The melting point of the resin, Tmb of the instant application, is 50°C to 80°C, and preferably 53°C to 70°C ([0049]). The binder resin contains a second resin, which may be an amorphous styrene-based resin ([0051]). The second resin has an acid value, AVa of the instant application, of 0.5 to 40.0 mgKOH/g ([0028]). The content of the amorphous resin in the binder resin is preferably 25.0% to 40.0% by mass ([0058]). Exemplary Amorphous Vinyl Resin is a mixture of styrene and n-butyl acrylate, an acrylic acid alkyl ester monomer ([0099]). The glass transition temperature of this resin is not specified, but as the components are similar to resin A of the instant application, it would be expected to fall in the range of 40.0°C to 65.0°C.
The binder resin contains a third resin that is obtained by cross-linking the first and second resins ([0059]). This resin would not be soluble in chloroform since it is a high molecular weight cross-linked resin. As the first resin is a component of the third resin, the compound with chemical formula (1) would be present, which is representative of formula (12) of the instant application. This resin is present in an amount of 1.0% to 20.0% by mass of the binder resin ([0062]). The melting point for the third resin is not specified, but based on the components it would be expected to be in the range 45.0°C to 65.0°C.
Kamae does not teach a chloroform soluble component analyzed by gradient LC analysis using acetonitrile and chloroform as solvents, however, the toner would be expected to satisfy formulae (1) and (2). Since the composition of the crystalline vinyl resin and the amorphous vinyl resin are similar to resin B and resin A of the instant application, the peaks on an LC analysis would be expected to be similar. The half-width of the peaks would also be similar, and formula (5) would be satisfied. The resins would have similar solubility in chloroform and acetonitrile, and so the volume fractions of chloroform CA and CB would be expected to satisfy formula (7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jenna Kuipers whose telephone number is (571)272-0161. The examiner can normally be reached Monday - Friday 8:30 - 5:30 PT.
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/J.K./ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 01/08/2026