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 § 102
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 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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uratani et al. (US PGP 2022/0206402).
Uratani teaches an electrophotographic toner comprising a binder resin and a wax, but fails to teach the slope X obtained by a micro-compression test as is recited in the Applicant’s pending claim 1. Uratani does, however, teach a toner that is formed by largely the same procedure using largely the same components in largely the same relative amounts as taught by the Applicant in the Preparation of Toner Core Particle Dispersion 1 in the instant specification ([0149-154]). Said toner is taught to satisfy the conditions recited in pending claim 1 (see Table 5-1).
Specifically, Uratani teaches a production method of Toner 24 wherein styrene, n-butyl acrylate, n-lauryl acrylate, 1-6-hexanediol diacrylate, a polyester resin, a low molecular weight resin, ethylene glycol distearate and a copper phthalocyanine pigment are mixed to prepare a mixture of polymerizable monomers ([0239-251]). An aqueous dispersion is then formed and a polymerization initiator is added and polymerization is performed to form toner particles ([0252-258]). These materials and this process are the same taught by the Applicant in the Applicant’s specification ([0149-152]). As such, the toner of Uratani would be expected to inherently possess the same deformation properties recited by the Applicant in the instant claims 1 and 4-6.
Uratani further teaches that the toner comprises an ester wax such as ethylene glycol distearate which reads on the Applicant’s instant claims 2-3. Regarding instant claims 4-5, the Applicant teaches that a monomer unit M1 has the following formula (1) and the monomer unit M2 has the following formula (2):
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In formula (1) above L1 represents -COO(CH2)n- wherein n is an integer from 11 to 31 ([0037-41]). Uratani teaches above that the comprises n-lauryl acrylate, which reads on formula (1) styrene, which reads on formula (2). Furthermore, Uratani teaches these two monomers in the same relative amounts taught by the Applicant (see [0041] of the instant specification and the portion of Uratani cited above, [0239-251]) and as such the toner of Uratani will inherently read on the limitations recited in the Applicant’s instant claims 4-5. This resin taught by Uratani corresponds to the Applicant’s resin A.
In instant claim 5 the Applicant further teaches that the toner may additionally comprise a resin B, wherein resin B possess a monomer unit represented by formula (2) above. The content of the monomer unit of formula (2) is recited to be 90.0 to 100.0% by mass. Uratani teaches that the toner comprise a low molecular weight polystyrene polymer in the exemplified toner described above in an amount of 4.0% by mass ([0244]) and therefore Uratani teaches the limitations of instant claim 5. As the resin A in Uratani ([0239-251]) comprises the same resin A formed by the same procedure as the Applicant it is understood that it will inherently possess the same molecular weight properties and solubility parameter properties recited by the Applicant in instant claims 4-6.
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.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-009211 (henceforth JP ‘211).
JP ‘211 teaches an electrophotographic toner wherein the slope of a micro-compression test plotting compressive strength (mN/m) against displacement (µm) has a slope of greater than 1.1 mN/ µm up to a first shoulder (Abstract). JP ‘211 further teaches that the particle diameter of the toner should be in the preferable range of 4 to 7 µm ([0028]) and in embodiments teaches a toner with a particle diameter of 5.0 µm (see Table 1). JP ‘211 does not teach a slope of a plot of load (mN) and percentage deformation, wherein the all the point plotted are within 15% or less of the particle diameter of the particle as recited in pending claim 1. Furthermore, JP ‘211 does not teach a temperature at which the compression test is performed and therefore room temperature is presume (20-23 °C). It is further understood that the load required to achieve a compression of 15% of the toner particle diameter decreases as temperature is elevated.
JP ‘211 does, however, teach the following graph which is taught to be representative of the compression plot of the toner:
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The graph shows that for a toner of Example 1 of JP ‘211 with a particle diameter of 5.0 µm the load required to achieve a compression of 15% of the particle diameter (5.0 µm x 0.15 x 100% = 0.75 µm) is roughly 0.75 mN. As such, if the data of JP ‘211 where plotted as a percentage of deformation from the particle diameter and only data of up to 15% of the particle diameter were plotted, then the slope would look roughly the same as the plot of the shown in figure 1 of JP ‘211 above up to a value of 0.75 micrometers (plotting the perecentage deformation based on particle diameter would have the same relative difference in degree between data points as would the displacement distnace in µm). As the plot of JP ‘211 starts at a compressive strength of 0 and a displacement of zero, the slope at of plotting points up to 15% deformation from the particle diameter would have a slope of approximately 15%-0%/0.75 mN-0 mN = 20. This slope is just slightly under the lower endpoing taught by the Applicant for the range measuremed at 30 °C. As stated above, the load required to achieve the same percentage deformation at higher temperatures would decrease and therefore the slope of the plot would increase. It is believed that the toner of JP ‘211 will inherently possess slope values within the Applicant’s ranges measured at 30 °C and 45 °C recited in pending claim 1.
JP ‘211 teaches that the compression strength within the range of 15% deformation from the particle diameter of the toner is a result effective variable that governs whether the toner is cracked or deformed due to endurance, thereby further governing chargeability, chage amount distrubtion and fogging of the toner ([0019-20]). Furthermore, JP ‘211 additionally teaches that the compression strength of the toner can be regulated by controlling the type and molecular weight properties of binder resins used in the toner ([0024-25]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have perfected the result effective variables tuaght by JP ‘211 by optimizing the slope of the compression strength vs. displacement graph of toners taught by JP ‘211. As the slope of the graph at 20-23 °C is already very near the slope recited by the Applicant at 30 °C optimizing said property would be expected to produce toners that inherently possessed slope values that were within the Applicant’s recited range. JP ‘211 further teaches that the toner comprise at least two separate binder reisns and a wax ([0032-66] and [0070-71]). The wax is further taught to be an ester wax, such as pentaerythritol tetrabehenate ([0070]).
Allowable Subject Matter
Claims 7-10 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 02/04/2026