CTNF 18/516,690 CTNF 96364 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US PGP 2012/0052430 A1), in view of Obara et al. (US PGP 2011/0151371 A1) . Yamasaki teaches an electrostatic image developing toner including a toner particle that includes a core particle containing a binder resin and a coating layer containing a resin having a crosslinked structure derived from at least one of boric acid and boric acid derivatives ([0008]). In addition to being contained in the coating layer, Yamasaki teaches that the boron crosslinked resin may also be contained in the core particle ([0016]). Therefore, the toner particles would have been expected to necessarily exhibit a peak derived from boric acid when subjected to attenuated total reflection infrared (ATR-IR) spectroscopy when using germanium as an ATR crystal (which reads on the corresponding limitation recited in instant claim 1 ). The toner particles would have also been expected to necessarily exhibit a carbonyl group-derived peak when the toner is subjected to ATR-IR spectroscopy, as the binder resin of the toner comprises a polyester resin ([0175]-[0194]). According to paragraph [00152] of the instant specification, the absorption peak of the carbonyl group is derived from the binder resin component contained in the toner particles. The toner particles are taught to include an external additive added to surfaces of the toner particle. Examples of the external additive are taught to include inorganic particles ([0109]) (which reads on the corresponding limitation recited in instant claim 1 ). Examples of suitable inorganic particles are taught to include silicon nitride ([0110]). According to Table 2 of the instant specification, silicon nitride can have a hexagonal crystal structure in X-ray diffraction analysis. While silicon nitride is named, Yamasaki appears to be silent to teach inorganic particles made of a nitride of a group 13 element of the periodic table (e.g., boron, aluminum, gallium, indium, thallium, nihonium) as specific examples of the external additive. Obara teaches a toner comprising toner particles containing a binder resin, a colorant, and an external additive (Abstract). The external additive is taught to comprise boron nitride particles (which corresponds to the “inorganic fine particles A” recited in instant claim 1 and claim 5 ). The use of boron nitride as an external additive is taught to achieve enhanced transferability, resulting in high quality images over long durations of printing ([0018]). The boron nitride is taught to include a hexagonal system which is stable under ordinary temperature and pressure, and is synthesized from melted boric acid anhydride and nitrogen or ammonia with calcium phosphate as a catalyst ([0019]-[0022]) (which reads on the corresponding limitation represented in instant claim 1 ). According to paragraph [0040] of the instant specification, boron nitride produced by reacting boric acid anhydride (B 2 O 3 ) and ammonia (NH 3 ) contains trace amounts of oxygen atoms. The amount of oxygen atoms is disclosed as being controlled by, for example, the raw materials. Therefore, the boron nitride particles of Obara would have necessarily contained oxygen within the range recited in instant claim 7 , given the similarities in reaction processes. See also Table 2 of the instant specification, where all of the hexagonal boron nitride particles produced by reacting boric acid anhydride and ammonia exhibited an oxygen content of from 0.05 to 2.97. A hexagonal boron nitride is taught to form a hexagonal network in which boron atoms are firmly combined while the force connecting layers in the vertical direction are weak so that faces are slippery against each other. Because of this structure, Obara teaches that boron nitride is often called “white graphite” ([0022]). Boron nitride is also taught to exhibit a Moh’s hardness of 2, which is approximately equal to that of graphite ([0023]). Given the similarities between boron nitride and graphite discussed above, the boron nitride particles would necessarily exhibit a graphitization index GI within the range recited in instant claim 6 , as the graphitization index is understood to measure how closely a carbon material’s structure resembles perfectly ordered graphite. See also Table 2 of the instant specification, where all of the hexagonal boron nitride particles exhibited a GI value of from 1.60 to 10.0. The boron nitride particles would also necessarily exhibit a ratio (D/T) of the longer diameter D to the thickness T within the range recited in instant claim 2 , given the graphite-like structure and reaction process described above. According to paragraph [0029] of the specification, a D/T ratio within the range of from 6.0 to 20.0 indicates that the boron nitride particles are flat. The boron nitride particles are taught to have a number average primary particle size of 10 to 500 nm, in view of achieving suitable attachment and enhancing transferability (which reads on the corresponding range recited in instant claim 2 ). In the examples, a boron nitride having a particle size of 500 nm was used (see “Boron nitride 4” in Table 1). Additionally, the amount of boron nitride particles added to the toner is taught to be from 0.5 to 5.0 parts by mass with respect to the mass of the toner particles ([0031]) (which reads on the corresponding range recited in instant claim 4 ). 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 boron nitride particles of Obara as external additives in the toner of Yamasaki, in view of achieving enhanced transferability, resulting in high quality images over long durations of printing. In doing so, the boron nitride particles of modified Yamasaki would be expected to necessarily exhibit similar adhesion properties when the toner is measured by the claimed adhesion measurement method recited in instant claim 8 , as Obara’s boron nitride particles fall within the scope of the claimed inorganic fine particles A as discussed above. The Applicant is kindly invited to demonstrate otherwise. According to MPEP § 2112(V), "[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) . 07-21-aia AIA Claim s 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US PGP 2012/0052430 A1), in view of Obara et al. (US PGP 2011/0151371 A1), and further in view of Law et al. (US Pat. No. 5,385,798) . The teachings of Yamasaki and Obara are discussed above and incorporated herein. Yamasaki appears to be silent to teach or suggest a suitable range for the content of boric acid with respect to the mass of the toner particles, or a ratio (IB/IC) of an intensity of the boric acid-derived peak IB to an intensity of the carbonyl-group peak IC when the toner is measured under ATR-IR spectroscopy. Law teaches a toner composition comprising resin, pigments particles, optional surface additives, and boric acid or salts thereof (Abstract). The boric acid is taught to be incorporated into the toner, present on the toner surface, or present on toner surface additives (Col. 6, lines 22-25). The amount of the boric acid in the toner, or on the toner surface, is taught to be from 0.1 to 10 weight%, and preferably 1 to 3 weight%, in view of providing effective charge enhancing properties (Col. 6, lines 7-21) (which reads on the corresponding range recited in instant claim 3 ). 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 boric acid content of modified Yamasaki’s toner to fall within the range taught by Law, in view of providing a suitable amount for improving charge enhancing properties. In doing so, the toner particles of modified Yamasaki would be expected to necessarily exhibit a ratio IB/IC within the range recited in instant claim 9 , given the similarities between the content of boric acid. According to [0053] of the specification, the claimed IB/IC ratio of from 0.02 to 0.30 is indicative of the amount of boric acid in the vicinity of the surfaces of the toner particles. The Applicant is kindly invited to demonstrate otherwise. According to MPEP § 2112(V), "[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). 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BOONE ALEXANDER EVANS/Examiner, Art Unit 1737 04/04/2026 Application/Control Number: 18/516,690 Page 2 Art Unit: 1737 Application/Control Number: 18/516,690 Page 3 Art Unit: 1737 Application/Control Number: 18/516,690 Page 4 Art Unit: 1737 Application/Control Number: 18/516,690 Page 5 Art Unit: 1737 Application/Control Number: 18/516,690 Page 6 Art Unit: 1737 Application/Control Number: 18/516,690 Page 7 Art Unit: 1737 Application/Control Number: 18/516,690 Page 8 Art Unit: 1737 Application/Control Number: 18/516,690 Page 9 Art Unit: 1737
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