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, 3-12, 14-15, and 17-20 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 states “a Fox equation on the basis of proportions of monomers” is used to calculate the glass transition temperature Tg(C1). However, no equation is specified in the claim, and the Instant Specifications do not detail the specific equation used to calculate Tg(C1). There are several variations of the Flory-Fox equations which “a Fox equation” could represent, and it is unclear which specific equation is intended by the Instant Application’s Claims and Specification.
Claims 3-12, 14-15 and 18-20 depend on claim 1, and do not provide any more detail as to what specific “Fox equation” is used. Therefore, they are also indefinite.
Claim 17 also states “a Fox equation on the basis of proportions of monomers” is used to calculate the glass transition temperature Tg(C1). Claim 17 also does not state which specific “Fox equation” is used.
In the interest of compact prosecution the examiner will use equation (1) below as the “Fox equation” to calculate the Tg(C1).
1/Tg = w1/Tg1 + w2/Tg2 … + wn/Tgn
Wherein Tg represents the glass transition temperature of the copolymer in kelvin, w1 to wn represent the weight ratio of the monomer units, and Tg1 to Tgn represent the glass transition temperature of a homopolymer composed of each monomer unit in kelvin.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-12, 14-15, and 17-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 17, the claims state “a Fox equation on the basis of proportions of monomers” is used to calculate the glass transition temperature Tg(C1). The Instant Specification does not state the specific equation used, does not, if formula (1) above is used, provide specific Tg values of the monomer units in the resins, and no calculation for glass transition temperatures of the resins in the Instant Examples are discussed. “Fox equation” is mentioned on page 2-4, 14-15, 17, 76, 82, and 84, and the values for Tg(E)-Tg(C1) and Tg(C2)-Tg(C1) for the Examples are listed in Table 2 on page 77. However, it is never stated clearly the equation used, or how the values are calculated.
Claims 3-12, 14-15, and 18-20 are dependent on claim 1.
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 2 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamada (US 20220291602).
Regarding claim 2, Kamada discloses a toner comprising a binder resin, a colorant and a wax, and resin particles. The resin particles have a core-shell structure ([0006], [0013], [0189]]). Kamada further discloses polyester is the preferred binder resin, including crystalline polyester, noncrystalline polyester, or a combination of crystalline and noncrystalline [0190]-[0191]). Kamada further discloses a blend of crystalline resin, amorphous resin, and the resin particles is controlled to adjust the storage elastic modulus of the toner ([0021], [0023]). Kamada further discloses the resin particles are produced using resin particle A using dispersions WO-1 through W0-3, each using styrene, butyl acrylate and methacrylic acid as the monomers in weight ratios of 45:25:30 for WO-1, 43:27:30 for WO-2, and 40:30:30 for WO-3 ([0474]-[0486], Table 1). The monomers are added in amounts 10x their weight ratio to 3760 parts water, 150 parts Hitenol surfactant, and 90 parts aqueous ammonium persulfate solution, and reacted forming a resin dispersion with 20% concentration ([0474]-[0486], Table 1). The resin in the dispersion is then is then treated to add the shell, 667 parts of the dispersion (133.4 parts resin) is mixed with 43.3 parts styrene and 23.3 parts butyl acrylate, reacting to produce the shell to form resin particles A-1 to A-3 ([0487]-[0503], Table 2). Therefore, in particle A-1 there is (133.4*45%)+43.3 = 103.78 parts styrene, (133.4*25%)+23.3 = 56.65 parts butyl acrylate, and 133.4*30% = 40.02 parts methacrylic acid. Styrene has a molar mass of 104.15, butyl acrylate has a molar mass of 128.17, and methacrylic acid a molar mass of 86.06. Therefore the molar amounts in resin particles A-1 are 103.78/104.15 = 0.996 mol styrene, 56.65/128.17 = 0.442 mol butyl acrylate, and 40.02/128.17 = 0.312 mol methacrylic acid, for a total of 1.75 mol and a molar ratio, Ws(B), of 0.996/1.75 = 56.9mol%. The molar ratio of styrene on the surface can be calculated from the molar ratio of the shell, 43.3/104.15 = 0.416 mol of styrene and 23.3/128.17 = 0.182 mol butyl acrylate for a total of 0.598 mol, and a molar ratio of styrene, Ws(S), of 0.416/0.598 = 69.6 mol%. Therefore, the value of Ws(S) – Ws(B) = 69.6-56.9 = 13.
Regarding claims 19-20, Kamada discloses a process cartridge able to store toner, and is
detachably mounted in an image forming apparatus ([0415]). Kamada further discloses an image forming apparatus including an electrostatic latent image bearer, and electrostatic latent image forming unit, a developing unit, a transferring unit, and a fixing unit ([0421]). Kamada further discloses the electrostatic latent image forming unit includes a charging member to charge the surface of the latent image bearer ([0425]).
The applicant has recited the apparatus, toner cartridge, and process cartridge 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, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kamada (US 20220291602) in view of Akazawa (US 5981129).
Regarding claim 13, Kamada discloses all limitations as set forth above. However, Kamada does not disclose the difference in SP value of the binder resin and the surface of the resin particles.
Akazawa teaches a surface modified toner made up of toner particles comprising core particles made chiefly of binder resin, and surface modifying fine polymer particles (abstract, Col 6 line 20-28). Akazawa further teaches the absolute value of the difference in SP values between core particles and the organic surface modifying fine particles is no more than 2.0. Akazawa further teaches by limiting the difference in SP value to 2.o the materials have good compatibility, resulting in a strong state of affixing, preventing peeling or separation which can cause poor cleaning performance of the toner (Col 27 line 33-45). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the toner of Kamada possessed an absolute value of the difference in SP value of the binder and the surface of the resin particles of 2.0 or less, as taught by Akazawa, to prevent peeling or separation and poor cleaning performance.
Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamada (US 20220291602) in view of Mine (US 20120094229).
Regarding claim 16, Kamada discloses all limitations as set forth above. However, Kamada does not disclose cross linking the resin particles.
Mine teaches a similar toner comprising a binder comprising a non-crystalline polyester, a crystalline polyester and an acryl resin having a cross-link structure ([0012]). Mine further teaches the acryl resin having a cross-link structure is formed from acrylic resin particles ([0015]-[0016]). Mine further teaches the cross-link improves the mechanical strength of the toner while maintaining low temperature fixability ([0020]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the resin particles of Kamada were crosslinked, as taught by Mine, to improve the mechanical strength of the toner.
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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/C.C.S./ Examiner, Art Unit 1737
/MARK F. HUFF/ Supervisory Patent Examiner, Art Unit 1737