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.
Claims 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (US 20050277044).
Regarding claims 6-7, Watanabe discloses a container containing toner, and an image forming apparatus comprising an electrostatic latent image bearer, a laser beam scanner as an electrostatic latent image former, an image developer developing the latent image with toner, a transferer, and a fixer (Claim 19, [0016], [0214], [0216]).
The applicant has recited the apparatus and toner accommodating unit claims as also containing or comprising the toner of pending claim 1. However, since a developer, or toner, is a material that is consumed by the apparatus and is not a permanent fixture of the apparatus, its inclusion in the apparatus claims does not represent a material limitation on the apparatus. Multiple different developers may be used in any xerographic apparatus and therefore the limitations of the developer in the present claims do not represent material limitations on the apparatus because the developer with these limitations could be substituted by another developer and not alter the mechanical functioning of the apparatus. § MPEP 2115. In accordance with MPEP 2114 an apparatus in a claim must be recited structurally and therefore the type of toner to be used possesses no patentability, only the material properties of the apparatus are patentable. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Additionally, a claim containing a recitation in respect to the manner that an apparatus is intended to be used does not differentiate the claim from prior art. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In further regards to the toner, MPEP 2115 states that, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963).
The toner is a material worked upon and consumed by the image forming apparatus. A material portion of the apparatus must be a permanent fixture of the apparatus that is not permanently changed by the regular operation of the apparatus. The toner, during the course of the imaging process, is changed from a particulate material to a melted and fused material. During fixing, heat and/or pressure is applied to the toner to bind it to the recording material such that the toner cannot be recovered and re-used in the apparatus. Therefore, the toner cannot be claimed as a structural member of the apparatus.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 20050277044) in view of Ishizu (US 20160319077).
Regarding claims 1-3, Watanabe discloses a toner comprising a binder resin comprising an unsaturated carboxylic acid such as acrylic acid, and a vinyl polymerizing monomer (abstract, claims 1, 14, [0047], [0085]). Watanabe further discloses using a low molecular weight polyolefin wax as a release agent, such as polyethylene wax, in an amount of 0-40% by weight of the toner ([0099], [0103]). Watanabe further discloses the toner preferably includes a charge controlling agent ([0069], [0111]). Watanabe further discloses the toner comprises a glass transition temperature of 30-70°C, and a flow starting temperature (Tfb) of not less than 60°C ([0173], [0178]). One of skill in the art would recognize the flow starting temperature (Tfb), also known as an outflow start temperature, as measured in a flow tester, would be equivalent to the claimed temperature, t, defined in the Instant Specification as the “Efflux Initiation Temperature”, as Efflux defined as outward flow or something that flows out, both measured by the CFT-500 flow tester by Shimadzu Corporation ([0178]-[0179], Instant Specification page 5-6). However, Watanabe does not disclose external additives comprising a hydrophobized polymethylsilsesquioxane particle.
Ishizu teaches a hydrophobized polyalkylsilsesquioxane fine particle, specifically a polymethylsilsesquioxane fine particle as an external additive for a toner, and a toner using the external additive ([0002], [0011]-[0014], [0018]-[0019], claims 1-2, 6-7). Ishizu further teaches using the polyalkylsilsesquioxane fine particle, having a median diameter of 0.05-0.3µm results in improved transferability and improved durability ([0034]-[0036]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use the hydrophobized polymethylsilsesquioxane fine particles, as taught by Ishizu, as external additives in the toner of Watanabe to improve transferability and durability.
Regarding claim 4, modified Watanabe discloses all limitations as set forth above. Watanabe further discloses the average circularity of the toner is from 0.900-1.000 ([0183]).
Regarding claim 5, modified Watanabe discloses all limitations as set forth above. Ishizu further teaches the fine particles are used in an amount of 0.1-5.0% by mass of the toner ([0107]).
Regarding claims 6-7, Watanabe discloses all limitations as set forth above. Watanabe further discloses a container containing toner, and an image forming apparatus comprising an electrostatic latent image bearer, a laser beam scanner as an electrostatic latent image former, an image developer developing the latent image with toner, a transferer, and a fixer (Claim 19, [0016], [0214], [0216]).
Regarding claim 8, Watanabe discloses all limitations as set forth above. Watanabe further discloses an image forming method comprising charging an image bearer, irradiating the image bearer to form an electrostatic latent image, developing the latent image with toner, transferring the toner image onto an image support medium, and fixing the image on the medium ([0017], [0215] claim 16, 18, and 20)
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./Examiner, Art Unit 1737
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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