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 .
The amendment dated 07/29/2026 has been considered and entered. The response was considered but was not found to be persuasive over Aoki et al. (US 2017/0363979). The rejections over Hirano et al. (JP 2018-87970) were a mislabeling and are hereby withdrawn. The proper reference of Yamashita et al. (WO 2014/097761) is hereby applied. The amendment requires the presence of the siloxane at 0.001 to 10% by mass of solids content of the composition which necessitates new grounds of rejections.
Claim Rejections - 35 USC § 102/103
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.
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 – 11, 13 – 21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Aoki et al. (US 2017/0363979) or, in the alternative, under 35 U.S.C. 103 as obvious over Aoki et al. (US 2017/0363979 A1)
In regard to claims 1 – 4, Aoki teaches toner composition comprising an organic polysiloxane resin C which is present at from 5 to 50% in the resin fine particles (abstract). The resin comprises monomers X, Y and Z [0099]. In one embodiment, monomer X has a structure of a formula ii) which comprises a group analogous to formula A) of claim 1, when R11 is and formula 1-1) of claim 3 [0111, 0259]. In one embodiment, monomer Y has a formula iii) which comprises a group analogous to the polyester of claim 1, and B-1) of claim 2, when p is 5 and q is 10 and R21 is hydrogen, and similarly analogous to formula 2-1) of claim 4, when L2 is a single bond [0261].
The resin thus provides the leveling agent of the claim. Since the toner composition can primarily comprise the resin fine particles as solid components, the amount of component C overlaps the claimed limitation.
In regard to claim 5, Aoki teaches the resin and the claimed monomer wherein x is analogous to n of the claim and which ranges from 3 to 160 in the examples [0259].
In regard to claims 6, 7, Aoki teaches the presence of vinyl monomers such as methyl acrylate, methyl methacrylate, etc., which provides the limitation 3-1) when R31 is C1-alkyl, R32 is hydrogen or methyl.
In regard to claim 8, Aoki teaches X is present at from 20 to 50% by mass in the monomeric composition [0115].
In regard to claim 9, Aoki teaches X and Y combined had been present at from 45 to 90% by mass of the monomeric composition [0142].
In regard to claim 10, Aoki teaches the resin which does not require the presence of fluorine atoms.
In regard to claim 11, Aoki teaches the resin comprising a weight average molecular weight (Mw) of from 50,000 to 500,000, with the ratio of the weight average (Mw) to the number average (Mn) molecular weights is from 1 to 4 [0040 – 0042].
In regard to claim 13, Aoki teaches the toner composition having the claimed ingredients and thus appears to provide the resist composition having the leveling agent as claimed.
In regard to claim 14, Aoki teach toner composition which are generally used on paper articles and thus provides the article comprising the resin.
In regard to claims 15 – 20, Aoki teaches the composition having the claimed limitation as previously stated.
In regard to claim 21, Aoki teaches the toner composition which are known to be used on articles such as paper and thus provides the claimed limitation.
Claims 1, 3, 13 – 15, 19, 21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Yamashita et al. (WO 2014/097761) or, in the alternative, under 35 U.S.C. 103 as obvious over Yamashita et al. (WO 2014/097761)
In regard to claims 1, 3, Hirano teaches resist composition for imprinting on a resist material comprising curable resin or a curable monomer, cross-linking catalyst, and mold release agent (abstract). The composition comprises cross-linking agents such as silicon compounds such as dimethylpolysiloxane methacrylate (as a component e), wherein the siloxane methacrylates has a structure, wherein the monomers can comprise one or both ends having acryloyl groups, thus providing monomers having the silicone structure of A of the claim 1 and the structure 1-1) of claim 3, and dimethacylate ester (i.e., polyester) monomer according to polymerizable monomer 2) of the claim [0076].
The composition also optionally comprises a polyester as a component c) of the crosslinking agent which alternatively provides the polymerizable monomer 2) of the claim [0073]. The crosslinking agent such as the polyester or the polysiloxane is/are present at amounts of from 0.1 to 50% of the curable resin (i.e., solid composition) [0087]. Thus, the amount of the siloxane in the solid composition will be obvious and overlapped.
In regard to claim 11, Hirano teaches the composition comprising the polymer having the molecular weight as claimed [0075].
In regard to claim 13, Hirano teaches the resist composition having the polymer as previously stated.
In regard to claims 14, 21, Hirano teaches the use of the composition on a resist material (article) as previously stated.
In regard to claims 15, 19, Hirano teaches the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Aoki does not teach a coating composition having 0.001 to 10% of the silicone polymer in the solid content. The argument is not persuasive.
Toners are coating compositions. The resin component of the toner is the only required solid in the composition absent of the solvent. Since the polysiloxane is present at 5 to 50% in the resin, then it overlaps the claimed range.
Applicant argues that Hirano et al. (JP 2018-87970) fails to teach the resist composition with the leveling agent as claimed. The argument is moot as Hirano has not been relied upon for making the current rejections. The mislabeled rejection was over Yamashita et al. (WO 2014/097761) rather than Hirano et al. (JP 2018-87970). Thus, Yamashita is herein applied and the claims are further rejected as necessitated by the amendment.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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