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 Objections
Claim 3 objected to because of the following informalities:
It is unclear how a coverage ratio would be measured in "percent by mass". Coverage ratios are typically measured in percent by area. Furthermore, the Instant Specification indicates the ratio is calculated as a ratio of the resin particle’s area to the mother toner particle’s area (Instant Specification page 6-7). In the interest of compact prosecution, the examiner will examine the coverage ratio as percent by area. Appropriate correction is required.
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 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inoue (JP 2021092604).
Regarding claims 5-6, Inoue discloses a developing apparatus with developer, containing a toner, contained in a casing ([0164]). Inoue further discloses an image forming apparatus comprising an image carrier able to be charged, an exposing means to form an electrostatic latent image on the image carrier, a developing means for developing the latent image using toner to form a visible image, a transfer means for transferring the visible image to a recording medium, and a fixing means for fixing the image to the recording medium ([0154]).
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 1-2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Inoue (JP 2021092604).
Regarding claims 1-2, Inoue discloses a toner made by adding silica particles to a toner base ([0018]). The toner base particle comprises a binder res, a colorant and a release agent, the release agent is a wax, preferably a hydrocarbon wax ([0039], [0066]-[0069]). Inoue does not disclose the liberation ratio of the silica at a power of 20 W or 60 W at a frequency of 20 kHz.
However, Inoue does disclose the method of producing the toner, which is nearly identical to that of the Instant Application. Inoue discloses producing a crystalline polyester resin 1 by mixing sebacic acid and 1,10-decanediol in a molar ratio of hydroxyl groups to carboxyl groups of 0.9, 500 ppm of titanium tetraisopropoxide is added to the monomers, which are then reacted for 10 hours at 180°C, then raised to 200°C for 3 hours. The reaction is then continued under reduced pressure for 2 hours ([0186]). Inoue further discloses producing crystalline polyester resin 2, using 1,2 ethylene glycol instead of 1,10-decanediol ([0187]). The production of the crystalline polyester in the Instant Application is similar, the only difference being 1,6 hexanediol is used as the diol instead of 1,10-decanediol or 1,2-ethylene glycol(Instant Specification page 68). While a different diol is used, Inoue teaches any alkylene glycol with a carbon number of 2-12 are preferred ([0086]). Furthermore, the resulting crystalline polyesters make up less than 5% of the toner base particles.
Inoue further discloses production of an amorphous polyester resin by adding 1427.5g of bisphenol A propylene oxide 2 molar adduct, 20.2g of trimethylolpropane, 512.7g terephthalic acid, and 119.9g of adipic acid to a flask with a nitrogen inlet, dehydration tube, stirrer, and thermocouple, reacted at 230°C under atmospheric pressure for 10 hours, followed by reacting for 5 hours under reduced pressure from 10-15 mmHg. After that, 41g of trimellitic anhydride was added and reacted at 180°C under atmospheric pressure for 3 hours ([0188]). This method is identical to that of the Instant application (Instant Specification page 68-69).
Inoue further discloses preparing a crystalline resin dispersion by mixing 100 parts crystalline resin and 200 parts ethyl acetate, which is heated and dissolved at 75°C, then rapidly cooled at 27°C/min. Glass beads are then added and the mixture is ground for 10 hours ([0189]). The dispersion process is the same as the Instant Application (Instant Specification page 70).
Inoue further discloses producing a prepolymer in a vessel with a condenser, stirrer, and nitrogen introduction tube, using 682 parts bisphenol A ethylene oxide 2 molar adduct, 81 parts bisphenol A propylene oxide 2 molar adduct, 283 parts terephthalic acid, 22 parts of trimellitic anhydride, and 2 parts dibutyl tin. The ingredients are reacted under atmospheric pressure at 230°C for 8 hours, then reacted further for 5 hours under reduced pressure of 10-15 mmHg to obtain intermediate polyester 1. Then, 410 parts of intermediate polyester 1 mixed with 89 parts isophorone diisocyanate, and 500 parts ethyl acetate, and reacted at 100°C for 5 hours to obtain prepolymer 1 ([0192]). This process is identical to that of the Instant Application (Instant Specification page 69).
Inoue further discloses producing a Ketimine reacting 170 parts isophoronediamine and 75 parts methyl ethyl ketone ag 50°C for 5 hours ([0193]). This is identical to the production of the Ketimine in the Instant Application (Instant Specification page 69).
Inoue further discloses production of a masterbatch, mixing 1200 parts water, 540 parts carbon black, and 1200 parts amorphous polyester resin. The mixture is then kneaded at 150°C for 20 minutes, then rolled, cooled and pulverized. This is identical to the production of the master batch of the Instant Application (Instant Specification page 69-70).
Inoue further discloses preparing a wax dispersion, stirring 50 parts HNP-9 by Nippon Seiro Co. with 450 parts ethyl acetate, heating to 80°C, maintaining for 5 hours, then cooling to 30°C over an hour. The dispersion is then milled using a bead mill ([0195]). The method is identical to that of the Instant Application (Instant Specification page 70).
Inoue further discloses preparing the oil phase, by mixing 500 parts wax dispersion, 200 parts prepolymer, 500 parts crystalline polyester resin dispersion, 750 parts amorphous polyester resin, 100 parts masterbatch, and 2 parts ketimine compound for 60 minutes ([0196]). This is nearly identical to the production of the oil phans in the Instant Application, which further adds 8 parts inorganic filler (Instant Specification page 72).
Inoue further discloses production of an organic fine particle dispersion, mixing 683 parts water, 11 parts sodium salt of ethylene oxide adduct sulfate methacrylate (Eleminol RS-30, an anionic surfactant), 138 parts styrene, 138 parts methacrylic acid, and 1 part ammonium persulfate and reacting at 75°C for 5 hours. 30 parts 1% ammonium persulfate aqueous solution is then added and the mixture is aged at 75°C for 5 hours to obtain an aqueous vinyl resin dispersion ([0197]). This identical to the dispersion of resin fine particles produced in the Instant Application (Instant Specification page 72).
Inoue further discloses preparing the aqueous phase by mixing 990 parts water, 83 parts fine particle dispersion, 37 parts of a Eleminol Mon-7 and 90 parts ethyl acetate ([0198]). This is nearly identical to the preparation of the aqueous phase 6 in the Instant Application, which also adds small amounts of sodium carboxymethyl cellulose (Instant Specification page 73, 77).
Inoue further discloses a dispersed slurry is produced by adding 1200 parts of the aqueous phase to the oil phase, mixing at 13000 RPM for 20 minutes, then dissolved at 30°C for 8 hours and aged at 45°C for 4 hours ([0199]). This is identical to the method of producing the slurry dispersion of the Instant Application (Instant Specification page 73).
Inoue further discloses washing, heating and drying the filtered dispersed slurry to produce the matrix particles (aka toner mother particles), by washing with deionized water, a sodium hydroxide solution, a hydrochloric acid solution, repeating the washing process twice, followed by a final wash with deionized water, filtering and heating for 4 hours at 50°C, and air drying at 45°C for 48 hours and sieving with a 75µm mesh ([0200]). This is identical to the treatment by the Instant Application (Instant specification page 73-74).
Inoue further disclose mixing 100 parts of the matrix particles with 2.0 parts of 160 nm hydrophobic silica and 1.5 parts 20 nm hydrophobic silica particles in a Henschel mixer at a peripheral speed of 40 m[/s] for 6 minutes to obtain the toner ([0201]). The mixing step mirrors that of the Instant Application, though the ratio of silica particles and the stirring time vary slightly (Instant Specification page 73).
The Instant Application further details several embodiments, varying the mixing time, as well as the amount of each silica particle used. The Instant Example 14 being the closest to that of Inoue, as it uses the same resin fine particle dispersion as Inoue (Instant Specification page 74-78, Example 14 page 77). Example 14 is shown to possess a circularity of 0.980, liberation ratios A, B, and B-A of 21, 27, and 6 respectively. Example 14 is further taught to have a content ratio of silica, C, of 3.65 (Instant Specification Table 2, page 84-87). The Instant Application further teaches Examples which mix the toner mother particle and silica particles for less time, 4 minutes as opposed to 8, which slightly increases the liberation ratio B of the produced toner, see Example 4 in view of Example 1 and Example 8 in view of Example 3, an increase of 5% in both cases, and no change to the liberation ratio A, circularity, or content ratio of silica. Therefore, one of skill in the art would expect the Toner of Inoue would inherently possess a circularity of 0.980, while meeting the limitations of Relationships 1, 2, and 3 due to the nearly identical materials and process of production.
Regarding claim 4, Inoue discloses all limitations as set forth above. Inoue further discloses a developer comprising the toner ([0144]).
Regarding claims 5-6, assuming arguendo the toner is a material limitation of the toner accommodating unit and the image forming apparatus, Inoue discloses all limitations as set forth above. Inoue further discloses a developing apparatus with developer, containing a toner, contained in a casing ([0164]). Inoue further discloses an image forming apparatus comprising an image carrier able to be charged, an exposing means to form an electrostatic latent image on the image carrier, a developing means for developing the latent image using toner to form a visible image, a transfer means for transferring the visible image to a recording medium, and a fixing means for fixing the image to the recording medium ([0154]).
Regarding claim 7, Inoue discloses all limitations as set forth above. Inoue further discloses an image forming method including a step of forming an electrostatic latent image on the image carrier, developing the electrostatic latent image using the toner to form a visible image, transferring the visible image to a recording medium, and fixing the image to the recording medium ([0155]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (JP 2021092604) as applied to claim 1 above, and further in view of Emoto (US 20050250036).
Regarding claim 3, Inoue discloses all limitations as set forth above. However Inoue does not disclose resin fine particles on the surface of the toner particle with a coverage of 30-70.
Emoto teaches a similar toner comprising polyester binder resin, and particulate resin on the surface of the toner with a coverage rate of 50-100% ([0020]-[0022]). Emoto further teaches the particulate resin material improves the friction chargeability of the toner, and if the particulate resin coverage is less than 50%, the toner does not possess sufficient friction chargeability, resulting in low image density and background fouling ([0053]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add resin particles to the surface of the toner of Inoue with a coverage rate of 50% or more, as taught by Emoto, to improve friction chargeability of the toner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Akazawa teaches a toner comprising fine resin particles adhered to the surface, with a surface coverage of the toner of 10-50% (abstract, [0019]). Akazawa teaches by ensuring 50% or more of the surface is not covered by the resin particles the release agent is able to sufficiently bleed out, to enable release of the toner during fixing ([0023].
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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