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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 and 6-7 in the reply filed on 07/10/2026 is acknowledged.
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 1-4 and 6-7 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, lines 5-7, recite “the sulfonic acid salt group-containing polyester resin having a solubility parameter of from 10 to 13”. However, the claim does not recite the units of the solubility parameter. Common units used in the art for solubility parameter values are known to include MPa1/2 and (cal/cm3)1/2. However, these units are not interchangeable as 1 (cal/cm3)1/2 is equal to approximately 2.0455 MPa1/2.
According to the instant specification, the SP value of the sulfonic acid salt-group containing polyester resin of the instant invention was calculated from amounts of monomers used for the production of the sulfonic acid salt group-containing polyester resin according to Fedors’ method (pg. 30, lines 16-20). Therefore, for the purposes of examination, the solubility parameter recited in the claims will be assumed to have units of (cal/cm3)1/2.
Claims 2-4 and 6-7 are indefinite because they full incorporate the subject matter of an indefinite claim.
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 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US PGP 2018/0143551 A1), in view of Yamashita et al. 2023/0195005 A1).
Fujita teaches an electrostatic-image developing toner containing toner particles, each including a core particle and a shell layer disposed on at least a portion of a surface of the core particle. The core particle is taught to contain a first amorphous polyester resin containing structural units derived from a polycarboxylic acid and structural units derived from a polyol. The shell layer is taught to contain a second amorphous polyester resin also containing structure units derived from a polycarboxylic acid and structural units derived from a polyol (Abstract).
The toner particles are taught to contain binder resins, an optional colorant, a release agent, and other additives including external additives ([0018], [0068], [0106]) (which reads on the corresponding limitations recited in instant claim 6). The toner is taught to be used in a two-component developer containing the toner and a carrier ([0148]-[0150]) (which reads on the corresponding limitations recited in instant claim 7).
Examples of polycarboxylic acids are taught to include aromatic dicarboxylic acids like terephthalic acid and sodium 5-sulfoisophthalate ([0023]). In the examples, the first amorphous polyester resin (A1) was prepared using 90 molar parts of terephthalic acid and 10 molar parts of sodium 5-sulfoisophthalate ([0199]-[0205]). Therefore, the molar ratio of the monomer unit including a sulfonic acid salt group (i.e., sodium 5-sulfoisophthalate) relative to a total amount of carboxylic acid monomers in the amorphous polyester resin (A1) was 10 mol% (which reads on the corresponding limitation recited in instant claim 2). The second amorphous polyester resin (B1) was prepared using different monomers than that of the amorphous polyester resin (A1), and did not have a sulfonic acid salt group ([0231]).
The toner particles (1) were taught to comprise a core and a shell, where the core included an amount of the amorphous polyester resin (B1) not having the sulfonic acid salt group, and the shell included an amount the amorphous polyester resin (A1) having the sulfonic acid salt group ([0240]-[0242]) (which reads on the corresponding limitations recited in instant claim 1 and claim 4). The amount of the amorphous polyester resin (A1) having the sulfonic acid salt group in the shell was taught to be 20% by mass (Table 1) (which reads on the corresponding limitation recited in instant claim 3).
Fujita appears to be silent to teach the solubility parameter of the first amorphous polyester resin (including the sulfonic acid salt group), or to suggest a suitable range for this property. Yamashita teaches a toner including toner particles comprising a core and a shell (Abstract). The shell is taught to include resins containing salts of sulfonic acids ([0058]).
From the viewpoint of the easiness of formation of the toner particles, the solubility parameter (SP) value of the shell resin is taught to preferably be 9 (cal/cm3)1/2 or more and 13 (cal/cm3)1/2 or less, and particularly preferably 10.5 (cal/cm3)1/2 or more and 11.5 (cal/cm3)1/2 or less ([0094]) (which reads on the corresponding range recited in instant claim 1). The SP value of the shell resin is taught to be adjusted by changing the type of monomers and blending ratio of the monomers in the shell resin, and is calculating according to the Fedors method ([0095]-[0096]).
Fujita also appears to be silent to teach that the toner particle includes a crystalline polyester resin, or specifically that the core includes a crystalline polyester resin. However, Fujita mentions that the toner particles may contain other binder resins, in addition to the first amorphous polyester resin and the second amorphous polyester resin ([0019]).
Yamashita teaches that when a crystalline polyester resin is used in combination with an amorphous polyester resin, excellent heat-resistant storage stability is obtained at temperatures up to the melt onset temperature due to the crystallinity of the crystalline polyester resin (which reads on the corresponding limitations recited in instant claim 1 and claim 4). Accordingly, the heat-resistant storage stability and low-temperature fixing ability of the toner is improved ([0170]-[0171]).
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 adjusted the solubility parameter of the first amorphous polyester resin (including the sulfonic acid salt group) in the shell of Fujita’s toner particle to fall within the range taught by Yamashita, in view of improving the easiness of formation of the toner particles.
It would have also been obvious to have used a crystalline polyester resin as an additional binder resin in the core of Fujita’s toner particle as Yamashita teaches that the combined use of a crystalline polyester resin with an amorphous polyester resin improves the heat-resistant storage stability and low-temperature fixing ability of a toner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent No. 4,340,519 to Kotera et al. teaches an aqueous dispersion of polyester resin comprising a crystalline polyester containing 0.5 to 10% by mole of an aromatic dicarboxylic acid having a metal sulfonate group as the polycarboxylic acid component and a non-crystalline polyester containing 0.5 to 10% by mole of an aromatic dicarboxylic acid having a metal sulfonate group as the polycarboxylic acid component. The polyester resin is taught to be useful for preparing aqueous printing inks (Abstract).
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
08/06/2026
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