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.
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, 7, 9, 11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US PGP 2016/0026104 A1), in view of Sumikura (JP 2000275907 A) (references herein made with respect to English machine translation attached).
Fujita teaches a toner including toner particles containing a binder resin and crosslinked resin particles (Abstract). Developers comprising components recited in instant claim 17, an image forming apparatus comprising the components recited in instant claim 20, a process cartridge comprising the components recited in instant claim 19, and a toner cartridge comprising the components recited in instant claim 18, are also discussed ([0206]-[0250]).
In a cross-sectional measurement of the toner, an area ratio of the area of the crosslinked resin particles and the area excluding the area of the crosslinked resin particles is taught to be from 0.1 to 0.5 (or 10% to 50%), and preferably from 0.15 to 0.45 (or 15% to 45%) ([0114]-[0118]) (which reads on the corresponding area fraction range recited in instant claim 1).
The crosslinked resin particles are taught to include styrene-(meth)acrylic crosslinked polymer particles and form domains in a cross section of the toner ([0067], [0119]) (which reads on the corresponding limitation recited in instant claim 4). The binder resin is taught to include an amorphous polyester resin ([0252]-[0259]) (which reads on the corresponding limitation recited in instant claim 7). The polyester resin is taught to be a polycondensate of polyvalent carboxylic acids and polyols. Examples of the polyvalent carboxylic acid are taught to include adipic acid ([0084]) (which reads on the corresponding formula (1) recited in instant claim 11 when n is 4). The toner is taught to include metal compounds like aluminum and magnesium ([0047]) (which reads on the corresponding limitation recited in instant claim 16).
In the examples, the polyester resin (1) was taught to have exhibited a glass transition temperature of 54 ºC and an acid value of 15.3 mgKOH/g ([0259]) (which falls within the corresponding range recited in instant claim 9). The crosslinked resin particles (1) were taught to have exhibited a glass transition temperature of 65 ºC and had a volume average particle diameter of 150 nm ([0275]) (which falls within the corresponding size range recited in instant claim 13).
Given the similarities in production methods between Fujita’s crosslinked resin particles and the Applicant’s crosslinked resin particles, Fujita’s crosslinked resin particles would be expected to necessarily exhibit an average shape factor, number average particle size distribution, and degree of swelling within the corresponding ranges recited in instant claim 3, claim 14, and claim 15 (see [0126] of the instant specification and [0275] of Fujita).
According to MPEP § 2112, “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted).”
While the glass transition temperature of the crosslinked particles falls outside of the corresponding range of from 0 ºC to 30 ºC recited in instant claim 2, MPEP § 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
Additionally, “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.)”.
Fujita appears to be silent to explicitly teach a proportion of voids in the cross section of the toner. Therefore, Fujita does not teach a ratio of the proportion of voids to the area ratio of the crosslinked particles, as recited in instant claim 1. Sumikura teaches a toner having voids (pores). The area ratio of voids in the toner is taught to be 5% or less, and preferably 3.0% or less ([0020]). By setting an area ratio of the voids in the cross section to 5% or less, the charging and dielectric characteristics of the toner are taught to be improved ([0105]). The area ratio of the voids can be controlled, for example, by utilizing an antifoaming agent before or at the time of mixing the dispersions ([0048]).
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 proportion of voids in the cross section of Fujita’s toner to fall within the range taught by Sumikura, in view of improving the charging and dielectric characteristics of the toner. In doing so, the ratio of the proportion of voids to the area ratio of the crosslinked particles would necessarily fall within the corresponding range recited in instant claim 1.1
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US PGP 2016/0026104 A1), in view of Sumikura (JP 2000275907 A) (references herein made with respect to English machine translation attached), and further in view of Yamato et al. (US PGP 2009/0269691 A1).
The teachings of Fujita and Sumikura are discussed above and incorporated herein. Fujita is silent to teach the hydroxyl value of the polyester resin, let alone a sum of the acid value and the hydroxyl value. Yamato teaches a polyester resin for toner. The acid value and the hydroxyl value are taught to be controlled such that a sum of the acid value and the hydroxyl value are no greater than 40 mgKOH/g ([0138]-[0143]) (which reads on the corresponding range recited in instant claim 10). When the sum of these values is no greater than 40 mgKOH/g, high-temperature offset resistance, low-temperature fixability, fixing temperature range, storage stability, and durability are improved ([0102]).
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 sum of the acid value and the hydroxyl value of Fujita’s polyester resin to fall within Yamato’s range, in view of achieving the improvements taught by Yamato discussed above.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (US PGP 2016/0026104 A1), in view of Sumikura (JP 2000275907 A) (references herein made with respect to English machine translation attached), and further in view of Matsui et al. (US PGP 2018/0004106 A1).
The teachings of Fujita and Sumikura are discussed above and incorporated herein. Fujita is silent to teach that the binder resin contains a crystalline resin, let alone the content of the crystalline resin in the toner. However, the inclusion of a crystalline polyester resin in toner is a common practice that has been widely performed before the effective filing date of the claimed invention. For instance, Matsui teaches a toner that exhibits a suppression of fogging and has excellent low-temperature fixability ([0012]). In order to bring about an improvement in fixing performance, Matsui teaches that the toner includes a crystalline polyester component and an amorphous polyester component ([0073]).
The crystalline polyester is taught to have a higher molecular weight than the conventional plasticizing waxes. Therefore, the melted crystalline polyester raises the adhesiveness of the toner with media (e.g., paper), thus solid image chipping can be substantially suppressed ([0073]). Matsui further teaches that fogging after repeated use can be suppressed by the presence of the crystalline polyester component ([0074]).
The content of the crystalline resin is taught to be 3.0 parts by mass or more and 15.0 parts by mass or less, or preferably 3.0 parts by mass or more and 10.0 parts by mass or less, with respect to 100 parts by mass of binder resin ([0106]) (which reads on the corresponding range recited in instant claim 12). When in the aforementioned range, suppression of solid image chipping is and toner deterioration during long-term use and heat cycling-induced outmigration of low molecular weight components are achieved.
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 included a crystalline polyester component in the binder resin of Fujita’s toner, in an amount within the range taught by Matsui, in view of improving the fixing strength of the toner and suppressing solid image chipping.
Allowable Subject Matter
Claims 5-6 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
01/24/2026
1 Sc taught by Fujita: 0.10 to 0.5 (see [0114]-[0118])
Se taught by Sumikura: ≤0.05 (see [0020])
Se/Scmax = 0.05/0.10 = 0.5
Se/Scmin = 0.05/0.5 = 0.1