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 § 112
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.
Claims 5 and 10 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 5 recites that the method further includes using a basic compound having a neutralization rate represented by the following expression (1):
Expression (1): neutralization rate (%) = mb x n x 56.1 / Mwb / AV x 1000
where, “mb” is an amount (g) of the basic compound used per 1 g of the resin,
“n” is a valence of the basic compound,
“Mwb” is a molecular weight of the basic compound, and
“AV” is an acid value (mgKOH/g) of the resin.
However, it is unclear what the variable “n” pertains to. For example, “a valence” could refer to the number of valence electrons, or the valency of the molecule itself. In the instant specification, ammonia (NH3) and sodium hydroxide (NaOH) are taught to be suitable examples of the basic compound (see [0051] and [0064] of the instant specification). Both Ammonia (NH3) and sodium hydroxide (NaOH) are understood to contain 8 valence electrons, but have an overall valency of 0 (as a neutral compound).
In the Applicant’s examples, the resin particle dispersion (P14) used 3.3 parts of 10% ammonia water as the basic compound with 100 parts of the amorphous polyester (A) (see [0163] of the instant specification). The amorphous polyester (A) was disclosed as having exhibited an acid value “AV” of 13.0 mgKOH/g (see [0136] of the instant specification).
According to Table 1, the polyester resin particle dispersion (P14) had a neutralization rate according to expression (1) of 60%. However, it is unclear how the Applicant arrived at this neutralization rate using either interpretation of the “valence” of the basic compound (NH3).
Under the first assumption where n = 8 (based on the valence electrons of ammonia in the ammonia water), the expression (1) becomes:
neutralization rate (%) = (3.3 parts ammonia / 100 parts polyester (A)) x 8 x 56.1 / 17.031 g/mol ammonia / 13.0 mgKOH/g polyester (A) x 1000 = 66.89%
Under the second assumption where n = 0 (based on the valency of ammonia in the ammonia water), the expression (1) becomes:
neutralization rate (%) = (3.3 parts ammonia / 100 parts polyester (A)) x 0 x 56.1 / 17.031 g/mol ammonia / 13.0 mgKOH/g polyester (A) x 1000 = 0%
Similarly, the resin particle dispersion (P1) used 0.4 part of 25% sodium hydroxide aqueous solution as the basic compound with 200 parts of the amorphous polyester (A) (see [0155] of the instant specification). As mentioned above, the amorphous polyester (A) was disclosed as having exhibited an acid value “AV” of 13.0 mgKOH/g (see [0136] of the instant specification).
According to Table 1, the polyester resin particle dispersion (P1) also had a neutralization rate according to expression (1) of 60%. However, it is unclear how the Applicant arrived at this neutralization rate using either interpretation of the “valence” of the basic compound (NaOH).
Under the first assumption where n = 8 (based on the valence electrons of sodium hydroxide in the aqueous solution), the expression (1) becomes:
neutralization rate (%) = (0.4 parts sodium hydroxide / 200 parts polyester (A)) x 8 x 56.1 / 39.997 g/mol sodium hydroxide / 13.0 mgKOH/g polyester (A) x 1000 = 1.73%
Under the second assumption where n = 0 (based on the valency of sodium hydroxide in the aqueous solution), the expression (1) becomes:
neutralization rate (%) = (0.4 parts sodium hydroxide / 200 parts polyester (A)) x 8 x 56.1 / 39.997 g/mol sodium hydroxide / 13.0 mgKOH/g polyester (A) x 1000 = 0%
Clarification is respectfully requested. Claim 10 is rejected because it fully incorporates the subject matter of claim 5.
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitagawa (US PGP 2012/0115080 A1).
Kitagawa teaches a toner for developing an electrostatic image comprising a binder resin having an acid value of from 10 mgKOH/g to 20 mgKOH/g and carbon black having a surface carboxyl group density of from 2 x 10-6 mol/m2 to 8 x 10-6 mol/m2, wherein the toner is prepared in an aqueous medium ([0012]) (which reads on the corresponding limitations recited in instant claim 1).
The preparation method of the toner is taught to include preparation of an aqueous dispersion containing the resin particles and the carbon black whereby the binder resin or the carbon black is dispersed in an aqueous medium with a mechanical shearing force, ultrasonic wave, or the like. The resin particle dispersion and the carbon black dispersion are taught to include additives such as a surfactant, a polymeric dispersant, and an inorganic dispersant, which are added upon performing emulsification or dispersion ([0104]-[0109]). The preparation method of the toner is taught to include aggregation of the resin particles and the carbon black, thereby providing aggregated particles in the aqueous dispersion. In the aggregation step, aggregated particles containing the particles of the respective components are formed by adding an aggregating agent to the aqueous dispersion under heating ([0119]-[0120]) (which reads on the corresponding limitations recited in instant claim 1, claim 6, claim 7, claim 8, claim 9, and claim 10).
In the examples, a toner was produced by an emulsion-aggregation method including initially preparing a polyester resin particle dispersion (which reads on the corresponding limitation recited in instant claim 2 and claim 7) ([0189]-[0210]).
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The polyester resin particles of the polyester resin dispersion 1 used in the preparation of the toner of Example 1 were taught to have an acid value of 12.5 mgKOH/g, a surface carboxyl group density of 3 x 10-6 mol/m2 and a volume average particle size of 140 nm, the polyester resin particles of the polyester resin dispersion 2 used in the preparation of the toner of Example 2 were taught to have an acid value of 10 mgKOH/g, a surface carboxyl group density of 2.5 x 10-6 mol/m2, and a volume average particle size of 150 nm, and the polyester resin particles of the polyester resin dispersion 3 used in the preparation of the toner of Example 3 were taught to have an acid value of 20 mgKOH/g, a surface carboxyl group density of 5.1 x 10-6 mol/m2, and a volume average particle size of 170 nm ([0193]-[0199], Table 1) (which reads on the corresponding limitations recited in instant claim 1 and claim 3).
In the preparation of each polyester resin dispersion, 5 parts of aqueous ammonia is taught to have been added per 100 parts of the polyester resin ([0195]). In other words, each dispersion used 0.05 part of basic compound (ammonia) per 1 part of polyester resin. As mentioned above, the polyester resin dispersion 1 exhibited an acid value of 12.5 mgKOH/g.
Similarly, the instant specification discloses that 3.3 parts of ammonia water was added per 100 parts of amorphous polyester resin (A) in the resin particle dispersion (P14) ([0163]). In other words, the resin particle dispersion (P14) used 0.033 part of basic compound (ammonia) per 1 part of polyester resin. The polyester resin of the resin particle dispersion (P14) was disclosed as exhibiting an acid value of 13.0 mgKOH/g (Table 1).
Therefore, while the calculation of the neutralization rate is unclear (see the 112(b) rejection above), the neutralization rate of at least Kitagawa’s polyester resin dispersion 1 would have been expected to have been sufficiently similar to that of the neutralization rate of at least the Applicant’s resin particle dispersion (P14), and thus would necessarily satisfied the corresponding neutralization rate recited in instant claim 5 (and incorporated into instant claim 10). The Applicant is respectfully invited to prove or demonstrate otherwise.
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).”
Kitagawa appears to be silent to explicitly teach or suggest the volume particle size distribution index GSDv of the polyester resin particles. However, the volume average particle size distribution index GSDv of the toner is taught to be 1.30 or less, in view of improving the resolution of the image ([0095]-[0096]). Since the polyester resin particles serve as the binder resin in the toner, and are used in the formation of the toner base particles, the polyester resin particles would likely have exhibited a similar average particle size distribution index GSDv as the final toner product, and thus would necessarily also have had a GSDv of 1.30 or less (which reads on the corresponding limitation recited in instant claim 3 and claim 8).
Kitagawa also appears to be silent to teach or suggest a melt viscosity of the polyester resin particles at a temperature of 105 ºC and a shear rate of 2.6 s-1. However, given the similarities between Kitagawa’s polyester resin particles and the Applicant’s resin particles (e.g., production method using the basic compound, monomer components, acid value, volume average particle size, and carboxy group density), Kitagawa’s polyester resin particles would have been expected to necessarily exhibit a melt viscosity similar to that of the Applicant’s resin particles when measured at the claimed conditions, and thus would necessarily satisfied the corresponding melt viscosity property recited in instant claim 4 (and incorporated into instant claim 9). See MPEP § 2112.01 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent No. 5,888,686 to Hirose et al. teaches a toner for developing an electrostatic latent image prepared by polymer particles having a carboxyl group on the surface (surface carboxyl group) in the range of 5 x 10-11 mol/cm2 to 3 x 10-9 mol/cm2, or 5 x 10-7 mol/m2 to 3 x 10-5 mol/m2 (Col. 1, lines 54-62). The polymer particles are taught to be formed of a styrene-acrylic resin (Col. 12, lines 15-45).
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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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
08/26/2026
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