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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Morales-Tirado et al. (US PGP 2014/0272697 A1), in view of Jugle et al. (US Pat. No. 3,983,045).
Morales-Tirado teaches a toner composition comprising blended toner particles comprising base-treated raw toner particles including at least one surface additive attached to a surface of the base-treated raw toner particles (Abstract).
The toner is taught to be used in an image development system including single component development or two component development ([0072]). While Morales-Tirado teaches that magnetites may be used as colorants in the toner ([0032]), none of the toners in the examples appear to have included a magnetic material. Therefore, the toner composition produced in the examples were non-magnetic. In other words, the toner composition of Morales-Tirado was likely used for non-magnetic one-component development (which reads on the corresponding limitation recited in instant claim 6).
A degree of attachment between the bare toner particles and the at least one surface additive is taught to be from 10 to 40% ([0005]). The degree of attachment is taught to refer to the percentage of surface additives that remain attached to the surface of the raw toner particle after it has been sonicated at different levels of energy and the percentage of additive remaining on the base-treated raw toner particle surface is based on the initial amount of additive that was on the base-treated raw toner particles before it was sonicated ([0069]) (which corresponds to the claimed “percentage (100 x M2/M1)” recited in instant claim 1).
The surface additive is taught to include silica particles, such as those described in U.S. Pat. No. 6,190,815 and 6,004,714 ([0064]). Other additives are taught to include strontium titanates, such as those described in U.S. Pat. No. 3,983,045 ([0064]). In the examples, the base-treated raw toner particles were surface treated with silica particles, conductive particles, and lubricant particles ([0082]), and the toner particles exhibited a degree of attachment of 13% when sonication was performed at 56 ºC ([0090]). The residual amount of silica after sonicating the toner is taught to show that the degree of attachment can be controlled by adjusting the amount of base and by varying the temperature.
As discussed above, Morales-Tirado teaches the use of lubricant particles as a toner surface additive, but appears to be silent to teach fluororesin particles as a specific example of the lubricant particles. However, Morales-Tirado states that additives described in U.S. Pat. No. 3,983,045 (to Jugle et al.) may be suitably used, and that these additives are “totally incorporated by reference” ([0064]).
Jugle teaches a developer comprising toner particles including friction-reducing particles and abrasive fine particles externally added to the surface of the toner particles (Abstract). The friction-reducing particles are taught to include low molecular weight fluororcarbon compounds, such as short chain telomers of tetrafluoroethylene, and polytetrafluoroethylene powder (Col. 7, lines 25-30) (which corresponds to the claimed “fluororesin particle” recited in instant claim 1). The content of the friction-reducing particles is taught to be 0.01% to 10% by weight, and preferably 0.1% to 2.0% by weight with respect to the mass of the toner particles (Col. 10, lines 23-38) (which reads on the corresponding limitation recited in instant claim 4).
The abrasive fine particles are taught to include barium titanate and/or strontium titanate (Col. 8, lines 34-40) (which corresponds to the “specific external additive” recited in instant claim 1). The particle size of the abrasive fine particle is taught to be in the submicron range of from 1 to 500 nm, and preferably from 10 to 100 nm (Col. 9, lines 2-5) (which reads on the corresponding limitation recited in instant claim 3). The content of the abrasive fine particles is taught to be 0.01% to 10% by weight, and preferably 0.1% to 2% by weight with respect to the mass of the toner particles, in view of achieving desirable results (Col. 10, lines 59-63) (which reads on the corresponding range recited in instant claim 2).
In addition to the suggested ranges for the respective content ranges of the friction-reducing particles and the abrasive fine particles, Jugle states that one skilled in the art would be able to readily determine the optimum ratios of the dual additives (i.e., the friction-reducing particles and the abrasive fine particles) by monitoring the thickness of the residual friction-reducing film (Col. 10, lines 53-55).
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 used fluororesin particles like fluorocarbon compounds and/or polytetrafluoroethylene and titanates like barium titanate and/or strontium titanate as lubricant particles and abrasive particles as external additives for the toner of Morales-Tirado, in view of achieving the beneficial effects taught by Jugle.
It would have also been obvious to someone of ordinary skill in the art to have optimized the respective contents of the lubricant and abrasive particles using the corresponding ranges suggested by Jugle for guidance, as Jugle explicitly states that one skilled in the art would have been readily able to determine optimum content ranges of the particles by adjusting, for example, the thickness of the residual friction-reducing film.
Morales-Tirado appears to be silent to teach the sonification conditions recited in instant claim 1. However, the toner of Morales-Tirado (modified by the teachings of Jugle) would have been expected to necessarily exhibit an attachment rate within the scope of the claimed invention since modified Morales-Tirado’s toner is sufficiently similar in composition to the claimed toner composition.
According to the instant specification, the claimed detachment fraction of the silica particles can be adjusted by adjusting the content of the silica particles in the toner particles and the attachment conditions (see pg. 12, lines 22-28 of the instant specification). In Morales-Tirado’s toner production method, 1.75% by mass of the silica particles were added to the toner and blended for 16 minutes to form the surface treated toner particles. Similarly, in the Applicant’s toner production method, 2.0% by mass of the silica particles were added to the toner and blended for 25 minutes to form the surface treated toner particles (see pg. 34, lines 1-11 of the instant specification).
According to MPEP § 2112.01, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Regardless, instant claim 1 is directed toward a product, not a method. It has long been upheld that product-by-process claims are not limited to the manipulations of the recited steps (e.g., ultrasonification conditions), only the structure implied by the steps. Despite what sonification conditions are used in Morales-Tirado to determine the attachment rate of the silica particles, the residual amount of silica particles after sonicating Morales-Tirado’s toner still falls within the scope of the residual amount of silica particles of the claimed toner.
According to MPEP § 2113, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Morales-Tirado et al. (US PGP 2014/0272697 A1), in view of Jugle et al. (US Pat. No. 3,983,045), and further in view of Sata et al. (US Pat. No. 5,683,845).
The teachings of Morales-Tirado and Jugle are discussed above and incorporated herein. Both Morales-Tirado and Jugle appear to be silent to teach or suggest a suitable range for the size of the lubricant particles (e.g., fluororesin particles).
Sata teaches a toner containing toner particles including an external additive containing polytetrafluoroethylene particles (Abstract). The polytetrafluoroethylene particles are taught to have an average primary particle size of 0.05 µm (50 nm) or more and 0.5 µm (500 nm) or less, and preferably 0.15 µm (150 nm) or more and 0.45 µm (450 nm) or less (Col. 3, lines 28-33) (which reads on the corresponding range recited in instant claim 5).
Sata teaches that, when the average primary particle size of the PTFE particles is 0.05 µm or more, the PTFE particles externally added to the surface of the toner particle are not likely to be embedded in the toner particle during continuous printing, thereby maintaining advantageous effects. When the primary particle size is 0.5 µm or less, the particles are not easily detached from the toner particles, thereby making it possible to achieve desirable effects (Col. 3, lines 33-44).
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 used lubricant particles (e.g., polytetrafluoroethylene particles) having an average primary particle size within the range taught by Sata in the toner of modified Morales-Tirado, in view of achieving a suitable attachment of the lubricant particles to the toner particle surface.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Suganuma (US PGP 2009/0180811 A1), in view of Morales-Tirado et al. (US PGP 2014/0272697 A1), and further in view of Jugle et al. (US Pat. No. 3,983,045).
The teachings of Morales-Tirado and Jugle are discussed above and incorporated herein. Before proceeding with the teachings of the prior art, it should be noted that claim 7, lines 4-6 and 8-13, recite functional language limitations.
According to MPEP § 2114(II), "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”.
However, in view of promoting compact prosecution, the functional language of these limitations will still be considered.
Morales-Tirado teaches that the toner may be used in a variety of imaging devices including printers and copy machines ([0072]), but appears to be silent to teach the specific components of suitable imaging devices. However, absent any teachings of a specifically required image forming apparatus, the toner of modified Morales-Tirado would be expected to be compatible with any operational image forming apparatus that is configured to utilize a one-component developer.
Suganuma teaches an image forming apparatus comprising a developing device including a developer container configured to store a developer and a developing unit provided below the developer container. The developing unit includes a developer bearing member rotatably provided facing a latent image bearing member, configured to bear the developer to be supplied to the latent image bearing member, and a restriction member pressed against the developer bearing member to restrict an amount of the developer borne by the developer bearing member ([0010]-[0011]). The developing device is taught to use toner as a one-component developer, and either magnetic toner or non-magnetic toner may be used ([0054]) (which reads on the corresponding components recited in instant claim 7).
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 used the toner of modified Morales-Tirado in image forming apparatus of Suganuma, with a reasonable expectation of success in producing an operational toner image without hindering the desired improvements taught by Morales-Tirado and Jugle.
Conclusion
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
04/03/2026
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