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 § 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 1-20 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.
Claims 1-20 are 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.
Specifically, the Applicant has recited the invention in terms of dynamic viscoelasticity properties (physical characteristics) desired in the toner without setting forth specific compositions that would meet these characteristics. The claims are therefore indefinite as it is not possible to ascertain what toners would or would not infringe on the claims absent undue experimentation. The Applicant should amend claim 1 to additionally recite the specific compositions that the Applicant has invented that give rise to the properties recited in claim 1 in order to overcome this rejection.
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.
Claim(s) 1-4, 9-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. (US PGP 2014/0255840) in view of JP 2004-333968 (henceforth JP ‘968) and further in view of JP 2007-333886 (henceforth JP ‘886).
Sekiguchi teaches a toner comprising a binder resin wherein the storage modulus of the toner at 90 °C is less than 1.0 x 105 and the storage modulus at 180 °C is greater than 1.0 x 103 (see curve for G’, Figure 1, [0023] and Abstract). Sekiguchi further teaches that the toner comprises a crystalline polyester resin ([0048]) in an amount of from 1 to 15 parts by weight ([0100]). In addition to the crystalline polyester resin the toner is further taught to comprise a non-crystalline polyester resin ([0141]). The toner is further taught to have a loss tangent of 1.0 to 2.5 ([0067]). Figures 1-2 demonstrate that the loss tangent is within this range at both 90 °C and 150 °C. Additionally, Sekiguchi teaches that the THF soluble component of the toner have a number average molecular weight of from 1,000 to 10,000 ([0018]). Sekiguchi additionally teaches an image forming apparatus comprising a toner cartridge and a process cartridge that read on the Applicant’s claims 10-13 and 15-20 and which are capable of performing the image forming method recited by the Applicant in pending claim 19 ([0210-231]). While Sekiguchi teaches the above loss tangent properties of the toner, Sekiguchi is silent regarding the strain applied during measurement of said properties. Additionally, the toner is taught to be paired with magnetic carrier particles, but Sekiguchi does not teach the surface morphology recited in pending claim 1.
JP ‘968 teaches a toner comprising a binder resin with specific dynamic viscoelastic properties (Abstract). Additionally, JP ‘968 teaches that storage modulus and loss tangent with regard to strain is a result effective variable that may be used to optimize high-temperature offset resistance ([0030-32]). Regarding the relationship between the storage modulus and strain JP ‘968 teaches in Figure 16 that the difference in storage modulus at strain levels of approximately 1% to 10% is relatively unchanged and that a slight decrease in storage modulus is encountered at a strain level of 50%. Such a relationship would be expected to give ratios of lass tangent values at strain values of 1% and 50% at different temperatures within the ranges taught by the Applicant in pending claim 1.
JP ‘886 teaches a carrier for a two-component developer that has good wettability, small electrostatic partial repulsion and high adhesiveness between coated layer and core material for the carrier particle that is also excellent in robustness and long term image stability (Abstract). The carrier is taught to comprise a magnetic core and a resin shell layer formed thereon (Abstract). Additionally, the carrier is taught to have a surface roughness (Ra; arithmetic mean roughness) of 0.1 micrometers or more and a surface roughness (Sm, average unevenness interval) of 2.0 micrometers or less (Abstract). As such, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have optimized the relationship between loss tangent values at different strain values in the toner of Sekiguchi as taught by JP ‘986 in order to optimize high-temperature offset resistance in the toners of Sekiguchi and to have utilized the carrier particle of JP ‘886 as the magnetic carrier in order to obtain the benefits taught to be associated therewith. Furthermore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date to have optimized the loss tangent at 90 and 150 C and the roughness values Sm and Ra in order to perfect the result effective variables associated with each. Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have optimized the relationship between loss tangent values at different strain values in the toner of Sekiguchi as taught by JP ‘986 in order to optimize high-temperature offset resistance in the toners of Sekiguchi and to have utilized the carrier particle of JP ‘886 modified to possess an exposed area ratio within the range taught by Uchino et al. as the magnetic carrier in order to obtain the benefits taught to be associated therewith.
Claim(s) 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. (US PGP 2014/0255840) in view of JP 2004-333968 (henceforth JP ‘968) and further in view of JP 2007-333886 (henceforth JP ‘886) as applied to claims 1-4, 9-13 and 15-20 above, and further in view of Uchino et al. (US PGP 2016/0282742).
The complete discussions of Sekiguchi JP ‘886 and JP ‘968 above are included herein. Neither Sekiguchi nor JP ‘886 teach an exposed area ratio of the carrier particles.
Uchino teaches a two component developer comprising a toner and a magnetic carrier (Abstract). The carrier particles are taught to have an exposed area ratio of 10.0 to 18.0% ([0031]). When the exposed area ratio is within this range the resistance value is regulated within a suitable range and image defects are prevented thereby improving the image quality ([0031]).
Claim(s) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. (US PGP 2014/0255840) in view of JP 2004-333968 (henceforth JP ‘968) and further in view of JP 2007-333886 (henceforth JP ‘886) as applied to claims 1-4, 9-13 and 15-20 above, and further in view of JP 2017-044864 (henceforth JP ‘864).
The complete discussions of Sekiguchi and JP ‘968 above are included herein. Sekiguchi does not teach the inclusion of crosslinked resin particles as recited by the Applicant in pending claims 6-8.
JP ‘864 teaches a toner that contains specific resin particles, ([0029]). The specific resin particle dispersion 6 of JP ‘864 has equal parts styrene and n-butyl acrylate along with a crosslinking agent ([0133]), this is the same as the examples presented in table 1 of the instant application. JP ‘864 discloses in all but 1 example of the specific resin particles a content of 3 to 17%. JP ‘864 teaches in specific resin particle dispersions 1, 2, 3, 5, and 6 the use of the crosslinking agent divinylbenzene to create crosslinked resin particles. Out of these example dispersions 4 and 6 are crosslinked particles of styrene-acrylic resin particles ([0128-135]). (Meth)acrylics are preferable for their affinity with polyester resins and their electrical properties ([0034]). JP ‘864 teaches that these specific resin particles impart the benefits of a decrease in likelihood of the external additive easily separating from the toner particle, causing contamination of the carrier and changing the image density, and good low temperature fixability ([0030]). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the effective filing date of the instant application to have optimized the relationship between loss tangent values at different strain values in the toner of Sekiguchi as taught by JP ‘986 in order to optimize high-temperature offset resistance in the toners of Sekiguchi and to have utilized the carrier particle of JP ‘886 as the magnetic carrier in order to obtain the benefits taught to be associated therewith and to further modify the toner of Sekiguchi to include the specific resin particles of JP ‘864 in order to gain the benefits of the resin particles as listed above.
Conclusion
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 01/10/2026