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 Interpretation
Regarding claims 3 and 10, while there is mention of the external additives comprising a particle diameter of 20-300µm in the specification ([0014]), the claimed range is larger than the particle diameter of the toner particles, 3-10µm ([0083]). One of skill in the art would not expect a toner comprise external additives which are larger than the toner itself. Also, the Instant Specification does not include examples of an external additive added to the toner base particles with a particle diameter of 20-300 µm. The Instant Specification only teaches the Examples and Comparative Examples which are produced using the external additives in Table 3, with particle diameters ranging from 12-200 nm (aka 0.012-0.2 µm), not µm (Instant Specification [0213], Table 3 and Table 4, page 24-26). Furthermore, if the external additive is only added in an amount of 0.05-5 mass% of the toner (Instant Specification [0062]), yet is larger than the toner particles, one of skill in the art would expect the majority of the toner particles would not have any external additives attached.
In the interest of compact prosecution, Examiner will also examine claims 3 and 10 as using an external additive having a particle diameter of 20-300 nm, which is in line with the particle size detailed in the specific examples of the Instant Specification, as well as the figures and intended use of the external additives to suppress scratching of the fixing member by the pigment.
Specification
The disclosure is objected to because of the following informalities:
In the Instant Specification, page 17-20, details the production of brilliant pigment 1 by forming a coating layer by reacting trimethylolpropane triacrylate, benzyl methacrylate, and acrylic acid in a beaker with the brilliant material to coat the brilliant material with a resin ([0159]-[0162]). The other Examples are prepared in the same manner as brilliant pigment 1, with adjusted stirring conditions and different brilliant material, referencing Table 2; by applying a polyester resin to the brilliant material; by forming an oxide layer prior to forming the resin coating layer of brilliant pigment 1; or by only forming an oxide layer ([0163]-[0176]). Table 2, as cited by the preparation of brilliant pigments 2-11 and 13, does mention the resin coating layer containing TEOS, tetraethoxysilane. However, it is unclear how, when, or if the TEOS is added to coating layer, there is no mention in the production of brilliant pigment methods ([0159]-[0176]). While there is broad mention of a silicon-containing compound in the coating layer in the specification ([0017]) it is not clear to one of skill in the art if there is any silicon-containing compound in the coating layer of any of the brilliant pigments in the Examples or Comparative Examples.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 5, 7-9, 12, and 14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 4 of copending Application No. 18/323,690 in view of Shiraishi (US 20110194861).
Regarding claims 1, 2, 5, and 7, the ‘690 application claims an electrophotographic toner comprising a toner mother particle including a bright pigment and a resin layer coating the bright pigment, wherein the bright pigment includes a bright portion and a coating layer coating the bright portion, an average thickness of the coating layer is in a range of 5-15 nm, and when the average thickness of the coating layer is A nm and an average thickness of the resin layer is B nm, the electrophotographic toner satisfies A + B ≤ 1,600 nm. (claim 1). And the electrophotographic toner according to claim 1, wherein the bright portion is aluminum and the coating layer is alumina (claim 4). However, the ‘690 application does not claim an image forming system that forms an image on a continuous sheet using the toner.
Shiraishi teaches an image forming device configured to form an image on a continuous sheet, with a medium carrying device which is able to detect slack in the printing medium and reduce jam and jam recovery processes requiring a user ([0005]-[0010], [0022]-[0024], Fig 1). Shiraishi further teaches the exposure part for exposing the photosensitive drum is an LED array ([0027]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use the toner of the ‘690 application in an image forming device, using the medium carrying device of Shiraishi, to reduce paper jams and user intervention to clear paper jams.
Regarding claims 8, 9, 12, and 14, the modified ‘690 application claims all limitations as set forth above. Shiraishi further teaches a method of forming an image using the image forming device, supplying a continuous sheet to an image formation apparatus, forming a toner image, transferring and fusing the image to the continuous sheet ([0041]-[0045]).
This is a provisional nonstatutory double patenting rejection.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiraishi (US 20110194861).
Regarding claims 1-7, Shiraishi discloses an image forming device configured to form an image on a continuous sheet, with a medium carrying device which is able to detect slack in the printing medium and reduce jam and jam recovery processes requiring a user ([0005]-[0010], [0022]-[0024], Fig 1). Shiraishi further discloses the exposure part for exposing the photosensitive drum is an LED array ([0027]).
The applicant has recited the apparatus, toner cartridge, and process cartridge claims as also containing or comprising a specific toner. 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.
Claims 1-2, 4-9, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi (US 20110194861) in view of Kaneko (US 20170139337).
Regarding claims 1-2 and 4-7, assuming arguendo the toner is a material limitation of the image forming system, Shiraishi discloses an image forming device configured to form an image on a continuous sheet, with a medium carrying device which is able to detect slack in the printing medium and reduce jam and jam recovery processes requiring a user ([0005]-[0010], [0022]-[0024], Fig 1). Shiraishi further discloses the exposure part for exposing the photosensitive drum is an LED array ([0027]).
Kaneko teaches a toner including a binder resin and a plate shaped pigment having a silica coated layer on it and an aspect ratio of 20-125 (abstract, [0009]). Kaneko further teaches the preferable thickness of the silica-coated layer is about 0.02µm ([0034]). Kaneko further teaches the plate shaped pigment is an aluminum pigment ([0032]-[0036]). Kaneko further teaches when the aspect ratio is less than 20, or more than 125 the pigment loses brightness ([0029]-[0030]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the image forming system of Shiraishi uses a toner having a silica coated plate shaped pigment with an aspect ratio of 20-125, as taught by Kaneko, to ensure proper brightness.
Regarding claims 8-9, and 11-14, modified Shiraishi discloses all limitations as set forth above. Shiraishi further discloses a method of forming an image using the image forming device, supplying a continuous sheet to an image formation apparatus, forming a toner image, transferring and fusing the image to the continuous sheet ([0041]-[0045]).
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi (US 20110194861) in view of Kaneko (US 20170139337) as applied to claims 1 and 8 above, and further in view of Sugiura (US 20020136973).
Regarding claims 3 and 10, modified Shiraishi discloses all limitations as set forth above. Kaneko notes external additives may be added to the toner ([0062]). However, Kaneko does not indicate the size of the external additives.
Sugiura teaches a toner comprising external additives with a particle diameter of 100 nm or less to prevent background fouling or scattered images after long periods of use (abstract, [0025]-[0029], [0053]-[0054]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to incorporate an external additive with a particle diameter of 100 nm or less, as taught by Sugiura, into the toner of modified Shiraishi to prevent background fouling and scattered images even after long periods of use.
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi (US 20110194861) in view of Kaneko (US 20170139337) as applied to claims 1 and 8 above, and further in view of Shibata (JP 2003295502).
Regarding claims 3 and 10, assuming arguendo the external additives are larger than the toner particles, modified Shiraishi discloses all limitations as set forth above. Kaneko notes external additives may be added to the toner ([0062]). However, Kaneko does not indicate the size of the external additives.
Shibata teaches a toner comprising external additives having an average particle diameter, dx1, of 0.1-20 µm ([0010]). Shibata further teaches by incorporating the external additives having strictly controlled particle size into the toner fluidity, electrical properties, and cleanability is improved ([0009], [0014]). Shibata further teaches when the particle size of 0.1-20µm ensures aggregation of the external additive does not occur, hindering fluidity, and cleaning performance is maintained ([0019]). 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 modified Shiraishi had external additives with a particle diameter of 0.1-20µm, as taught by Shibata, to improve toner fluidity and cleaning efficiency.
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
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
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