CTNF 18/605,957 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. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 07-30-05 The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Claim 5 , lines 5-6, recite “ a developing means comprising toner for developing the electrostatic latent image formed on the electrostatic latent image bearer for form a toner image”. This claim limitation uses the term “means” as a generic placeholder that is modified by functional language and is not modified by sufficient structure, material, or acts for performing the claimed function. Accordingly, the claim invokes 112(f). Because the claim invokes 112(f), the specification was consulted to determine whether it discloses the structures that correspond to the claimed functions in a way that one skilled in the art would understand which disclosed structures will perform the claimed functions. Based on paragraphs [0134]-[0145] of the instant specification, there appears to be sufficient disclosure of corresponding structure for the recited function of “a developing means . . . for developing the latent image”. Claim 6 , lines 4-5, recite “ a developing step to develop the electrostatic latent image formed on the electrostatic latent image bearer to form a toner image using toner”. This claim limitation uses the term “step” as a generic placeholder that is modified by functional language and is not modified by sufficient structure, material, or acts for performing the claimed function. Accordingly, the claim invokes 112(f). Because the claim invokes 112(f), the specification was consulted to determine whether it discloses the structures that correspond to the claimed functions in a way that one skilled in the art would understand which disclosed structures will perform the claimed functions. Based on paragraphs [0134]-[0145] of the instant specification, there appears to be sufficient disclosure of corresponding structure for the recited function of “a developing step to develop the electrostatic latent image”. Specification 06-16 AIA Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The abstract of the disclosure is objected to because the phrase “Toner may comprise” is indefinite as it is unclear whether the limitations following the phrase are part of the claimed invention. Therefore, it is recommended to amend this line to omit the word “may” and recite, for example, “A toner comprising toner particles that comprise a binder resin;”. Additionally, it is unclear what “coarse particle of 20 µm or more” means. Based on evaluation method disclosed in paragraph [0187] of the instant specification, this limitation will be interpreted as referring to the number of toner particles (coarse particles) having a particle diameter of 20 µm or more in a 10 mg sample of the toner. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). 06-31 AIA The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Claim Objections 07-29-01 AIA Claim s 1-8 are objected to because of the following informalities: The claims appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware in the claims. Claim 1 , line 1, recites “Toner comprising toner particles”, when it should recite “ A toner comprising toner particles”. Additionally, there is a space missing between “2” and “g” in line 2. Claim 3 , line 1, recites “the toner according to claim s 1”, when it should recite “the toner according to claim 1”. Claims 2 and 4-8 are objected to because they fully incorporate the subject matter of an objected claim . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 , lines 4-5, recite “the toner has a number content of coarse particle of 20 µm or more from 10 to 250 in 10 mg of the toner”. It is unclear what “coarse particle of 20 µm or more” means. Based on evaluation method disclosed in paragraph [0187] of the instant specification, this limitation will be interpreted as referring to the number of toner particles (coarse particles) having a particle diameter of 20 µm or more in a 10 mg sample of the toner. Additionally, the basis of the “number content” … “from 10 to 250” is unclear. That is, it is unclear if the “content” is in terms of mass%, weight%, volume%, or if it strictly refers to a numerical quantity of the coarse particles. While the method of measuring the “number content” of the coarse particles is disclosed in paragraph [0187] of the specification, the phrase “number content” does not appear to be explicitly defined. To overcome this issue, it is recommended to omit the term “content”, as the specification appears to refer to the number of coarse particles as a numerical quantity (see [0014], [0191]-[0192] of the instant specification). Similarly, claim 2 , lines 1-2, recite “the number of the coarse particles of 25 µm or more per 2g of the toner is 25 or less”. It is unclear what “coarse particles of 25 µm or more” means. Based on evaluation method disclosed in paragraph [0188] of the instant specification, this limitation will be interpreted as referring to the number of toner particles (coarse particles) having a particle diameter of 25 µm or more in a 2 g (2,000 mg) sample of the toner. Additionally, there is insufficient antecedent basis for “the number” in line 1. It is unclear if “a number content ” recited in claim 1 , line 4, and “the number” recited in claim 2 , line 2, refer to the same parameter. Claim 5 , line 1, recites “ The image forming apparatus comprising:” There is insufficient antecedent basis for this limitation in the claim. To overcome this issue, it is recommended to amend the preamble to recite “ An image forming apparatus comprising:”. Claim 6 , line 1, recites “ The image forming method comprising:” There is insufficient antecedent basis for this limitation in the claim. To overcome this issue, it is recommended to amend the preamble to recite “ An image forming method comprising:”. Claims 3-4 and 7-8 are rejected because they fully incorporate the subject matter of an indefinite claim. Claim Rejections - 35 USC § 102 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 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. 07-27-aia AIA Claim s 1-3 and 7-8 are rejected under 35 U.S.C. 102( a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oyama et al. (US PGP 2017/0248857 A1) . Oyama teaches a method for producing a toner for developing electrostatic images (i.e., “a developer”), comprising a sieving step of removing coarse particles from colored resin particles by supplying the colored resin particles to a sieve using an air flow ([0009]). The volume average particle diameter (Dv) of the colored resin particles supplied to the sieve using the air flow is taught to be in a range of from 4 to 11 µm (which reads on the corresponding range recited in instant claim 1 ), and the content of coarse particles having a volume average particle diameter (Dv) of 20 µm or more in the colored resin particles is taught to be 0.2% or more by volume ([0014]). The colored resin particles are taught to contain a binder resin and a colorant as essential components ([0053]) (which reads on the corresponding limitation recited in instant claim 1 and claim 7 ). In the examples, the colored resin particles further contained an ester wax ([0124]) (which reads on the corresponding limitation recited in instant claim 8 ). In the examples, colored resin particles having a Dv of 6.0 µm were prepared and subjected to sieving such that the content of the coarse particles was 0.4% by volume ([0137]). While the content of the coarse particles is taught in terms of volume rather than number, such a small volume content would likely correspond to a number content within the scope of claim 1 , when a sample of 10 mg of toner particles is measured according to the disclosed evaluation method. Similarly, such a small volume content would likely correspond to a number content of coarse particles having a volume average particle diameter of 25 µm or more within the scope of claim 2 , when a much larger sample of 2,000 mg (2 g) of toner particles is measured according to the disclosed evaluation method, including under the assumption that no coarse particles having volume average particle diameter of 25 µm or more are present. 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).” Alternatively, Oyama emphasizes the importance of removing large diameter coarse particles contained in the colored resin particles, from the viewpoint of achieving high printing performance, as the presence of coarse particles is known to cause white spots or filming ([0054]). According to MPEP § 2144.05, “[D]ifferences 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).” See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). Therefore, even if, arguendo , the claims are shown to not be anticipated by Oyama, it still would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the printing performance of Oyama’s toner by experimenting with different mesh sizes to control the number of coarse particles removed, as Oyama emphasizes the need to reduce the content of coarse particles which cause white spots or filming. In doing so, the skilled artisan would have necessarily arrived at the claimed number content, absent any evidence of criticality or unexpected results on the record. According to MPEP § 2144.05, “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See also In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.")” . 07-27-aia AIA Claim s 1-8 are rejected under 35 U.S.C. 102( a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nagao et al. (US PGP 2009/0232551 A1) . Nagao teaches a developer including a toner comprising toner particles including a binder resin, a colorant, and a wax ([0419]) (which reads on the corresponding limitations recited in instant claim 1, claim 3, claim 7, and claim 8 ). The toner is taught to be stored in a toner cartridge, which is removable from the main body of an image forming device ([0189]) (which reads on the corresponding limitation recited in instant claim 4 ). The image forming device is taught to be used in an image forming method and comprises an electrophotographic photoreceptor, a charge apparatus, an exposure apparatus, and a developing apparatus ([0186]) (which reads on the corresponding limitations recited in instant claim 5 and claim 6 ). The toner particles are taught having a volume average particle diameter of 4 µm or more, or preferably 5 µm or more, and 10 µm or less, or preferably 8 µm or less ([0545]) (which reads on the corresponding limitation recited in instant claim 1 ). The volume fraction of the particles having a particle diameter of 25 µm or more (coarse particles) is taught to be 1% or less, preferably 0.5% or less, more preferably 0.1% or less, and most preferably 0.05% or less. Similarly, the volume fraction of particles having a particle diameter of 15 µm or more (coarse particles) is taught to be 2% or less, preferably 1% or less, and most preferably 0.1% or less. Nagao teaches that the smaller the ratio of coarse particles contained in the toner, the more stable the image quality ([0547]-[0548]). While the content of the coarse particles is taught in terms of volume rather than number, such a small volume content would likely correspond to a number content within the scope of claim 1 , when a sample of 10 mg of toner particles is measured according to the disclosed evaluation method. Similarly, such a small volume content would likely correspond to a number content of coarse particles having a volume average particle diameter of 25 µm or more within the scope of claim 2 , when a much larger sample of 2,000 mg (2 g) of toner particles is measured according to the disclosed evaluation method, including under the assumption that no coarse particles having volume average particle diameter of 25 µm or more are present, as Nagao teaches that this is the most preferable scenario. 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).” Alternatively, Nagao emphasizes the importance of removing large diameter coarse particles contained in the toner, from the viewpoint of achieving less toner usage and more stable image quality ([0547]). According to MPEP § 2144.05, “[D]ifferences 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).” See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). Therefore, even if, arguendo , the claims are shown to not be anticipated by Nagao, it still would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the printing performance of Nagao’s toner by experimenting with different coarse particle contents, as Nagao emphasizes the need to minimize the presence of coarse particles to reduce toner usage and improve image stability. In doing so, the skilled artisan would have necessarily arrived at the claimed number content, absent any evidence of criticality or unexpected results on the record. According to MPEP § 2144.05, “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See also In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.")” . 07-21-aia AIA Claim s 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Oyama et al. (US PGP 2017/0248857 A1), in view of Nagao et al. (US PGP 2009/0232551 A1) . The teachings of Oyama and Nagao are discussed above and incorporated herein. While Oyama teaches that the toner is used in electrophotographic image forming devices such as copying machines, facsimiles, and printers ([0001]), Oyama appears to be silent to go into detail about the suitable image formation devices and image formation methods. Absent any teachings of specific image formation apparatuses required to use the toner of Oyama, it is reasonable to assume that Oyama’s toner is compatible with any type of the image forming devices explicitly listed above. 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 Oyama in the toner cartridge, image formation device, and image formation method of Nagao, with a reasonable expectation of success of forming a printed image. 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, Amber Orlando can be reached on (571) 270-3149. 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 06/11/2026 Application/Control Number: 18/605,957 Page 2 Art Unit: 1737 Application/Control Number: 18/605,957 Page 3 Art Unit: 1737 Application/Control Number: 18/605,957 Page 4 Art Unit: 1737 Application/Control Number: 18/605,957 Page 5 Art Unit: 1737 Application/Control Number: 18/605,957 Page 6 Art Unit: 1737 Application/Control Number: 18/605,957 Page 7 Art Unit: 1737 Application/Control Number: 18/605,957 Page 8 Art Unit: 1737 Application/Control Number: 18/605,957 Page 9 Art Unit: 1737 Application/Control Number: 18/605,957 Page 11 Art Unit: 1737 Application/Control Number: 18/605,957 Page 12 Art Unit: 1737 Application/Control Number: 18/605,957 Page 13 Art Unit: 1737 Application/Control Number: 18/605,957 Page 14 Art Unit: 1737 Application/Control Number: 18/605,957 Page 15 Art Unit: 1737 Application/Control Number: 18/605,957 Page 16 Art Unit: 1737 Application/Control Number: 18/605,957 Page 17 Art Unit: 1737 Application/Control Number: 18/605,957 Page 18 Art Unit: 1737
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