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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 5 is 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.
Claim 5 recites that the toner “contains no gold nanoparticles”, or “contains gold nanoparticles at a ratio of 15% by number or less”. However, it is unclear what constitutes a “gold nanoparticle” in the claim. Without any definition provided, “gold nanorods” could reasonably be interpreted as being included within the scope of “gold nanoparticles”. Consequently, the claim is indefinite because it is unclear whether or not the “gold nanoparticles” include the “gold nanorods” recited in claim 1 (which claim 5 depends on).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Under the reasonable interpretation that “gold nanoparticles” include the “gold nanorods” recited in claim 1 (as discussed above), claim 5 attempts to broaden the scope the claim that it depends from by reciting an option where the toner no longer contains gold nanorods, or particularly gold nanorods exhibiting the features recited in instant claim 1. In other words, absent any definition of what the claim considers a “gold nanoparticle”, claim 5 is in improper dependent form because it fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-8 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katagiri et al. (JP 2007219103 A) (references herein made with respect to English machine translation attached).
Katagiri teaches an electrophotographic toner comprising a binder resin and metal nanorods including gold, an alloy of gold and other metals, or a mixture of gold and other metals ([0031]) (which reads on the corresponding limitation recited in instant claim 1). The metal nanorod may also include platinum, an alloy of platinum and other metals, and a mixture of platinum and other metals ([0031]). In this case, the toner would contain platinum nanorods instead of gold nanorods, and thus would be absent of gold nanoparticles (which reads on the corresponding limitation recited in instant claim 5).
The particle size of the toner is taught to be in the range of from 3 µm to 12 µm, and preferably from 5 µm to 10 µm ([0102]) (which reads on the corresponding limitation recited in instant claim 6). The major axis diameter of the metal nanorod is taught to be 300 nm or less and the aspect ratio is taught to be in the range of from 3 to 15 ([0031], [0076]) (which reads on the corresponding ranges recited in instant claim 1, claim 3, and claim 8). In other words, the major axis diameter of the metal nanorod may be 1/4th of the particle size of the toner (which reads on the corresponding limitation recited in instant claim 7). The content of the metal nanorods contained in the toner is taught to be in the range of from 0.1 to 40 parts by weight with respect to 100 parts by weight of toner ([0036]) (which reads on the corresponding range recited in instant claim 4). In the examples, the gold nanorods are taught to have had a major axis diameter of from 80 to 600 nm and an aspect ratio of from 2.0 to 18 ([0148]).
The toner is taught to be used for forming invisible images ([0129], [0131]) (which reads on the corresponding limitation recited in instant claim 13). The invisible images are taught to have been evaluated using an image reading device equipped with a near-infrared sensor ([0171]) (which reads on the corresponding limitations recited in instant claim 14).
Katagiri appears to be silent to explicitly teach a standard deviation of the aspect ratio distribution, as recited in instant claim 1, claim 2, and claim 3. However, Katagiri teaches that the aspect ratio of the metal nanorods are controlled such that they are not too small or too large, in view of maintaining the electrical function of the toner ([0076]). Therefore, it follows that metal nanorods used in Katagiri necessarily have a uniform distribution of aspect ratios. In this case, the standard deviation of the aspect ratio distribution would be about 1.0 (which falls within the corresponding ranges recited in instant claim 1, claim 2, and claim 3).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Katagiri et al. (JP 2007219103 A) (references herein made with respect to English machine translation attached), in view of Nozaki (US PGP 2019/0243270 A1).
The teachings of Katagiri are discussed above and incorporated herein. Katagiri teaches that the toner may control a charge control agent to control the charging performance of the toner ([0095]). However, Katagiri appears to be silent to explicitly teach poly(3,4-ethylenedioxythiophene)-poly(styrenesulfonic acid) (PEDOT-POSS) as an example. However, PEDOT-POSS was known to be used as a charge control agent in toner before the effective filing date of the claimed invention.
For example, Nozaki teaches toner particles containing an electrically conductive polymer. The electrically conductive polymer is taught to include PEDOT-POSS (which reads on the corresponding limitation recited in instant claim 9), and its inclusion in the toner is taught to prevent the occurrence of offset ([0022]-[0023]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used PEDOT-POSS as a charge control agent in the toner of Katagiri, in view of preventing the occurrence of offset.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Katagiri et al. (JP 2007219103 A) (references herein made with respect to English machine translation attached), in view of Jung et al. (US PGP 2011/0027713 A1).
The teachings of Katagiri are discussed above and incorporated herein. Katagiri appears to be silent to teach or suggest a maximum value of light absorbance in a wavelength range of from 400 nm to 800 nm or 900 nm to 1800 nm, and/or a maximum value of light transmittance in a wavelength range of from 400 nm to 800 nm when measured in a spectroscopic analysis of a fixed image formed using the toner with a loading amount of 0.30 mg/cm2, as recited in instant claim 10, claim 11, and claim 12.
Jung teaches an electrophotographic toner including a binder resin and a light absorber. The light absorber is taught to include a metal nanorod and a surfactant covering the surface of the nanorod ([0007]). The metal nanorod is taught to include gold (Au) and has an aspect ratio of from 1 to 100 ([0011], [0015]).
The metal nanorod is taught to be formed to have a predetermined aspect ratio corresponding to a wavelength of light emitted from a light source used when the metal nanorod is fused, and is formed by putting a salt, such as gold chloride (HAuCl4), in a solvent to form a metal seed and adding cetyltrimethylammonium bromide (CTAB). At this point, the aspect ratio of the metal nanorod is taught to be controlled according to the time taken to form the metal nanorod and the concentration of the CTAB ([0034]). The use of the surfactant is taught to improve the long-term stability and optical absorption efficiency of the metal nanorod ([0038]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have covered the surface of the gold nanorod of Katagiri with a surfactant, such as CTAB, in view of improving the long-term stability and optical absorption efficiency of the gold nanorods.
In doing so, the gold nanorods of Katagiri modified by Jung would be expected to necessarily exhibit sufficiently similar maximum light absorbance and maximum light transmittance values within the recited wavelength ranges, as the gold nanorods of the Applicant’s dispersion A exhibited a similar average aspect ratio and were also disclosed as being produced by forming gold seed particles and coating the seed particles with CTAB (see [0091]-[0094] of the instant specification).
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 1977) (footnote and citation omitted).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
12/12/2025