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 § 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 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okita et al. (US PGP 2018/0335712 A1).
Okita teaches an electrostatic latent image developing toner including a plurality of toner particles each including a core and a shell layer covering a surface of the core. The core is taught to contain a crystalline polyester resin, a non-crystalline polyester resin, and a carnauba wax ([0007]). Each of the toner particles are taught to include an external additive that adheres to a surface of the toner mother particle ([0021]) (which reads on the corresponding limitation recited in instant claim 1).
In order to easily obtain preferable toner cores, the toner cores are taught to be produced by a pulverization method ([0121]) (which reads on the corresponding limitation recited in instant claim 1). In order to obtain a toner suitable for image formation, the toner is taught to have a volume median diameter of at least 4 µm and no greater than 9 µm ([0059]) (which reads on the corresponding limitation recited in instant claim 1).
The intensity (peak height) of an absorbance peak appearing at a wavenumber of 701 cm-1 ± 1 cm-1 on a FT-IR spectrum of the toner plotted through FT-IR analysis according to an ATR method is at least 0.0100 and no greater than 0.0250 ([0026]) (which falls within the corresponding range recited in instant claim 1).
The crystalline polyester is taught to include at least one alcohol, at least one carboxylic acid, at least one styrene-based monomer, and at least one acrylic acid-based monomer ([0046]). In the examples, the crystalline polyester resin of Example 5 included 1,4-butanediol and 1,6-hexanediol as alcohol components, fumaric acid as the carboxylic acid component, styrene as the styrene-based monomer component, and n-butyl methacrylate as the acrylic acid-based monomer component (Table 3) (which reads on the corresponding limitations recited in instant claim 5 and claim 6). The content of the styrene monomer in the crystalline polyester resin of Example 5 was about 2.13% by mass with respect to all repeating units in the crystalline polyester resin1 (which reads on the corresponding limitation recited in instant claim 5).
The crystalline polyester of Example 5 was taught to exhibit a softening point of 90 ºC, a melting point of 83 ºC, an acid value of 3.0 mgKOH/g, a hydroxyl value of 22.0 mgKOH/g, a mass average molecular weight Mw of 43500, and a number average molecular weight Mn of 3890 (Table 3) (which reads on the corresponding limitations recited in instant claim 7 and claim 8).
Similarly, the crystalline polyester resin (a) of the applicant’s examples also included 1,4-butanediol and 1,6-hexanediol as alcohol components, fumaric acid as the carboxylic acid component, styrene as the styrene-based monomer component, and n-butyl methacrylate as the acrylic acid-based monomer component (Table 2).
The crystalline polyester (a) is disclosed as exhibiting a softening point of 88.8 ºC, a melting point of 82.0 ºC, an acid value of 3.1 mgKOH/g, a hydroxyl value of 19.0 mgKOH/g, a mass average molecular weight Mw of 27500, and a number average molecular weight Mn of 3620 (Table 2).
In the examples, the non-crystalline polyester resin included bisphenol A propylene oxide adduct as an alcohol component and n-dodecenyl succinic anhydride, terephthalic acid, and trimellitic anhydride as carboxylic acid components ([0167]) (which reads on the corresponding limitations recited in instant claim 3 and claim 4). The content of the trimellitic anhydride monomer in the non-crystalline polyester resin was about 4.07% by mass with respect to all repeating units in the non-crystalline polyester resin2 (which reads on the corresponding limitation recited in instant claim 3). The non-crystalline polyester resin was taught to contain a tetrahydrofuran (THF) insoluble component in an amount of 8.2% by mass ([0167]) (which reads on the corresponding limitation recited in instant claim 1).
Similarly, the non-crystalline polyester resin A of the applicant’s examples also included bisphenol A propylene oxide adduct as an alcohol component and n-dodecenyl succinic anhydride, terephthalic acid, and trimellitic anhydride as carboxylic acid components (Table 1).
In Okita’s examples, the toner of example TA-9 included the crystalline polyester resin of Example 5 in an amount of 80 g and the non-crystalline polyester resin in an amount of 10 g (Table 1). Similarly, the toner of the applicant’s Example 1 was disclosed as containing 80 g of the non-crystalline polyester A and 10 parts of the crystalline polyester (a) (Table 3).
Okita teaches performing ultrasonic treatment on the toner using an ultrasonic disperser at an output power of 100 W and a frequency of 28 KHz to remove external additives from the toner mother particle ([0197]). However, Okita appears to be silent to teach the content of THF-insoluble component in the binder resin after the ultrasonic treatment is performed, let alone when ultrasonic treatment is performed at a higher output of 200 W, as claimed.
However, the toner particles of Okita were produced using a sufficiently similar method including sufficiently similar binder resin components containing sufficiently similar monomer compositions in similar amounts. Therefore, the toner of Okita would be expected to necessarily exhibit a similar content of THF-insoluble content remaining in the toner after performing ultrasonic treatment under the claimed conditions, and thus would be expected to read on the corresponding range recited in instant claim 1. Applicant is respectfully invited to demonstrate or prove otherwise.
According to the instant specification, the percentage content of the first repeating units (tri- or higher-basic carboxylic acid) in the non-crystalline polyester resin is disclosed as preferably being 1.5% by mass or more and no greater than 7.5% by mass. When in this range, the specification discloses that the solubility of the non-crystalline polyester resin in tetrahydrofuran can be adjusted accordingly (pg. 12, line 28 and pg. 13, lines 1-6). As discussed above, the content of the tribasic carboxylic acid (trimellitic anhydride) in Okita’s non-crystalline polyester resin was about 4.07% by mass, which falls within this disclosed range necessary to achieve the desired elasticity of the non-crystalline polyester resin in THF.
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).”
Moreover, instant claim 1 is directed toward a toner (i.e., a product), not a method of performing ultrasonic treatment on a toner (i.e., a process). 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.
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 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Okita et al. (US PGP 2018/0335712 A1), in view of Takemori et al. (US PGP 2014/0147782 A1).
The teachings of Okita are discussed above and incorporated herein. Okita appears to be silent to teach or suggest the mass average molecular weight of the non-crystalline polyester resin, or of any other resins which may be included in the toner particles.
However, given the similarities between the types and proportions of the monomers in the non-crystalline polyester resin of Example 5 and the applicant’s non-crystalline polyester resin A discussed above, the non-crystalline polyester resin of Okita would have necessarily been expected to exhibit a mass average molecular weight within the range recited in instant claim 2.
Alternatively, Takemori teaches that toner particles should preferably include a binder resin having a mass average molecular weight of 50,000 or more and 150,000 or less, in view of obtaining a toner having sufficient fixability within a wide temperature range ([0026]) (which reads on the corresponding range recited in instant claim 2).
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 a resin having a mass average molecular weight within the range taught by Takemori as a binder resin in the toner particles of Okita, in view of improving the fixing properties of the toner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2016/0291493 A1 to Okita et al. teaches an electrostatic image developing toner including a plurality of toner particles each containing a binder resin. The toner particles each contain as the binder resin, a crystalline polyester resin and a non-crystalline polyester resin. An FT-IR spectrum of the electrostatic latent image developing toner obtained through FT-IR analysis based on an ATR method has an absorbency peak of at least 0.0100 and no greater than 0.0250 in a wave number range of 701 cm-1 ± 1 cm-1 (Abstract, [0016]).
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
08/07/2026
1 69 g styrene / (1560 g 1,4-butanediol + 162 g 1,6-hexanediol + 1390 g fumaric acid + 69 g styrene + 54 g n-butyl methacrylate) = 0.0213 * 100% = 2.13%
2 140 g trimellitic anhydride / (1750 g BPA-PO + 750 g DDSA + 800 g terephthalic acid + 140 g trimellitic anhydride) = 0.0407 * 100% = 4.07%
Prosecution Insights