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.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0126], there is a space missing between “styrene” and “85.0” parts.
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 1-11 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.
Claim 1 is 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.
In the instant case, claim 1 defines the toner in terms of measured physical properties, such as abundance ratios of resins when measured from varies depths from the toner particle surface using time-of-flight secondary ion mass spectrometry, but does not recite the specific materials that the Applicant has invented that would exhibit these claimed properties. Consequently, someone of ordinary skill would not be able to readily ascertain which toners found in prior art would or would not infringe based on these claims as currently recited.
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.
Claims 1-5 and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US PGP 2002/0009661 A1), in view of Kamikura et al. (US PGP 2019/0271926 A1).
Hashimoto teaches a magnetic toner comprising toner particles comprising a binder resin and magnetic powder (“magnetic bodies”), and inorganic fine powder externally blended with the toner particles ([0103]) (which reads on the corresponding limitation recited in instant claim 3, claim 5, claim 13, and claim 15). The binder resin is taught to comprise a styrene-based resin ([0104]) (corresponding to the claimed “resin C”). The styrene-based resin is taught to include a styrene monomer and acrylic ester-based monomers, such as dodecyl acrylate (also known as “lauryl acrylate”) (which reads on the claimed monomer unit represented by formula (1) when R1 is a hydrogen atom and R2 a straight-chain alkyl group having 12 carbon atoms) or methacrylic ester-based monomers, such as dodecyl methacrylate (also known as “lauryl methacrylate”) (which reads on the claimed monomer unit represented by formula (1) when R1 is a methyl group and R2 a straight-chain alkyl group having 12 carbon atoms) (which reads on the corresponding limitations recited in instant claim 7 and claim 8). The acrylic ester and/or the methacrylic ester is taught to be selected in view of controlling the Tg of the toner ([0110]).
The magnetic powder is taught to be surface treated with a silane coupling agent, in view of suppressing the exposure of the magnetic powder at the toner particles surfaces ([0146]). Suitable coupling agents are taught to include butyltrimethoxysilane (a treatment agent having an alkyl group having 4 carbon atoms), hexadecyltrimethoxysilane (a treatment agent having an alkyl group having 16 carbon atoms), and octadecyltrimethoxysilane (a treatment agent having an alkyl group having 18 carbon atoms) ([0155]) (which reads on the corresponding limitations recited in instant claim 4 and claim 14).
In the examples, the surface-treated magnetic powder 1 was produced using a sufficiently similar method to the production method of the magnetic body fine particle 1 disclosed in the instant specification. Particularly, Hashimoto’s surface-treated magnetic powder 1 and the Applicant’s magnetic body fine particle 1 were both surface-treated with n-decyltrimethoxysilane (see [0438] of Hashimoto and [0130] of the instant specification).
In the production of Magnetic Toner A, the binder resin included a styrene-based resin comprising styrene and lauryl methacrylate as monomer components and an amorphous saturated polyester resin (corresponding to the claimed “resin B”). The surface-treated magnetic powder 1 surface-treated with n-decyltrimethoxysilane described above was used as the magnetic powder ([0462]). The toner production method is taught to include a step of heating a precursor at a temperature of 80 ºC and a pH of 10.5 ([0464]).
While this temperature and pH falls just outside of the corresponding ranges recited in instant claim 12, MPEP § 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
Additionally, “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.)”.
Hashimoto teaches that the magnetic toner further contains a charge control agent to stabilize the chargeability. Examples of the charge control agent are taught to include polymeric compounds having a sulfonic acid group in side chains (corresponding to the claimed “resin A”) ([0215]). However, Hashimoto appears to be silent to teach or suggest specific polymeric compounds having such side chains in the examples.
Kamikura teaches a toner including a toner base particle containing a base resin and an organosilicon condensate present on a surface of the toner base particle (Abstract). The toner base particle is further taught to contain a charge control agent. Examples of the charge control agent are taught to include polymers or copolymers having a sulfonic acid group, a sulfonate group, or a sulfonic acid ester group ([0179]).
In the examples, toner base particles 1 were prepared using styrene, n-butyl acrylate, an amorphous polyester resin B1 being a condensate of bisphenol A propylene oxide adduct/terephthalic acid/trimellitic acid), a blue pigment, and a Fischer-Tropsch wax ([0260]-[0268]). A resin fine particle dispersion 1 was also prepared as a polymeric charge control agent using 59.5 parts of styrene, 7.7 parts of n-butyl acrylate, and 2.8 parts of 2-acrylamido-2-methylpropane sulfonic acid ([0248]). A toner was then prepared by mixing the toner base particles 1 with the resin fine particles 1 to produce toner particles 11 having resin fine particles ([0308]).
The method of preparing the resin fine particle dispersion 1 of Kamikura is nearly identical to the method of preparing the sulfonic acid-type group-containing vinyl resin 1 (Resin A-1) disclosed in the specification. That is, both methods disclose using the same monomer composition in the same mass proportions in sufficiently similar reaction processes (see [0248] of Kamikura and [0126] of the instant specification).
According to Table 1 of the instant specification, the sulfonic acid-type group concentration of resin A-1 was 0.19 mmol/g. Therefore, the concentration of the 2-acrylamido-2-methylpropane sulfonic acid used in Kamikura’s resin fine particle dispersion 1 would also be expected to be about 0.19 mmol/g (which falls within the corresponding range recited in instant claim 10). Additionally, the resin fine particles 1 of Kamikura would be expected to be amorphous (which reads on the corresponding limitation recited in instant claim 11).
Similarly, the polyester resin of Kamikura was produced using sufficiently similar monomer components as the Applicant’s resin B-5. According to Table 1 of the instant specification, the ester group concentration of the polyester resin B-5 was 4 mmol/g. Therefore, the concentration of the polyester resin used in Kamikura would also be expected to be about 4 mmol/g (which falls within the corresponding range recited in instant claim 9). Additionally, the polyester resin of Kamikura would be expected to be amorphous (which reads on the corresponding limitation recited in instant claim 11).
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 the resin fine particles 1 of Kamikura as the charge control agent for the toner of Hashimoto, in view of stabilizing the chargeability of the toner. In doing so, the toner of modified Hashimoto would be expected to necessarily exhibit sufficiently similar abundance ratios as the Applicant’s toner, and thus would necessarily satisfy the relationships recited in instant claim 1, claim 2, and claim 12 when measured under the same time-of-flight secondary ion mass spectrometry conditions, given the similarities between the toner production methods and resin compositions discussed above.
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).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US PGP 2002/0009661 A1), in view of Kamikura et al. (US PGP 2019/0271926 A1), and further in view of Nakagawa et al. (US PGP 2019/0137900 A1).
The teachings of Hashimoto and Kamikura are discussed above and incorporated herein. In the production of Hashimoto’s Magnetic Toner A, an ester wax was used as the wax ([0463]). However, Hashimoto appears to be silent to teach the chemical structure of the ester wax and/or the abundance ratio of the ester wax at the depth DA recited in instant claim 6.
Nakagawa teaches a toner comprising a toner particle containing a binder resin and a wax. The wax is taught to contain an ester wax of a diol having from 2 to 6 carbons and an aliphatic monocarboxylic acid having from 14 to 22 carbons ([0027]).
The diol having from 2 to 6 carbons includes ethylene glycol ([0159]) and the aliphatic monocarboxylic acid having from 14 to 22 carbons includes stearic acid ([0160]). In the examples, ethylene glycol distearate was taught to be used as the ester wax ([0217]) (which reads on the corresponding ester compound represented by formula (4) recited in instant claim 6).
The toner containing the aforementioned wax is taught to exhibit high compatibility with a binder resin that contains a styrene-acrylic copolymer, resulting in satisfactory softening of the binder resin during fixing even when the Tg is not lowered and suppression of exposure of the wax at the toner surface during toner storage ([0013], [0047]).
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 the ester wax of Nakagawa as the ester wax in the magnetic toner of Hashimoto, in view of improving the compatibility between the styrene-based resin of the binder resin and the ester wax, resulting in satisfactory softening of the binder resin during fixing even when the Tg is not lowered and suppression of exposure of the wax at the toner surface during toner storage.
In doing so, the toner of modified Hashimoto would be expected to necessarily exhibit sufficiently similar abundance ratios as the Applicant’s toner, and thus would necessarily satisfy the relationship recited in instant claim 6 when measured under the same time-of-flight secondary ion mass spectrometry conditions, given the similarities between the toner production methods and resin compositions discussed above.
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
01/09/2026