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 1-20 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 presently recites:
“A carrier for electrostatic image development, comprising:
magnetic particles having internal pores; and
a resin composition disposed in at least some of the internal pores and containing a resin and inorganic particles including at least one selected from the group consisting of silica, alumina, and calcium carbonate.”
Based on the way the claim is currently written, it is unclear if the resin composition disposed in at least some of the internal pores contains the resin and inorganic particles, or the carrier overall contains the resin and inorganic particles.
According to at least paragraph [0022] of the instant specification, it appears that the resin composition disposed in the internal pores contains the resin and the inorganic particles.
To overcome this issue, it is recommended to amend the claim to recite, for example:
“A carrier for electrostatic image development, comprising:
magnetic particles having internal pores; and
a resin composition disposed in at least some of the internal pores, the resin composition containing a resin and inorganic particles including at least one selected from the group consisting of silica, alumina, and calcium carbonate.”
Claims 2-20 are rejected because they fully incorporate the subject matter of an indefinite claim.
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 1-2, 6-8, 11-12, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagayama et al. (JP 2021-081514-A1) (references herein made with respect to English machine translation attached).
Nagayama teaches an electrophotographic image forming carrier comprising core material particles and a coating layer covering the core material particles. The internal porosity of the carrier is taught to be 0.0% or more and 2.0% or less ([0008]). In other words, the core material particles include internal pores.
A developer comprising a toner and the carrier, a process cartridge, an image forming apparatus, and an image forming method are also discussed ([0064]-[0065], [0100], Fig. 1) (which reads on the corresponding limitations recited in instant claim 11, claim 12, claim 16, claim 17, claim 18, claim 19, and claim 20).
In the examples, the carrier of Example 3 included Mn-Mg-Sr ferrite core particles having an internal porosity of 2.1% ([0076]) (which falls within the corresponding range recited in instant claim 2).
In other examples, the carrier of Example 10 was prepared by coating porous Mn-Mg-Sr ferrite core particles with a coating layer forming solution comprising a resin liquid including an acrylic resin solution, a silicone resin solution, aminosilane, tungsten oxide-doped tin oxide, and alumina. Each component of the resin liquid was taught to be dispersed in a homomixer to prepare the coating layer forming solution, which was then applied to the ferrite core particles using a spiral coater and then dried (which reads on the corresponding limitation recited in instant claim 8). The obtained carrier was taught to be calcined in an electric furnace, and, after cooling, it was crushed using a sieve ([0074], [0079], [0083]).
Similarly, the carrier of Example 24 was prepared by coating porous Mn ferrite core particles with a coating layer forming solution comprising a resin liquid including an acrylic resin solution, a silicone resin solution, aminosilane, tungsten oxide-doped tin oxide surface-treated alumina, and barium sulfate. The coating layer forming solution and carrier was prepared according to the same method described above ([0074], [0085], [0097]).
While not explicitly stated, at least some of the pores of the ferrite core particles of Example 10 and Example 24 would have been expected to contain resin and alumina (which reads on the corresponding limitations recited in instant claim 1).
As discussed above, the coating layer of the examples contained an acrylic resin and a silicone resin. The acrylic resin is taught to be a crosslinked product of an acrylic resin and an amino resin ([0048]-[0049]). In other words, the coating layer includes a resin having a nitrogen atom (i.e., crosslinked acrylic resin) and a resin not having a nitrogen atom (i.e., silicone resin) (which reads on the corresponding limitations recited in instant claim 6 and claim 7).
Claims 1, 4-8, 11, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugahara et al. (US PGP 2016/0306301 A1).
Sugahara teaches a magnetic carrier including a magnetic carrier core and a resin covering layer formed on a surface of the magnetic carrier core. The resin covering layer is taught to contain a resin component and an inorganic fine particle, where the inorganic fine particle contains an oxide of a typical metal element or a carbonate of a typical metal element (Abstract). The magnetic carrier core is taught to include a ferrite particle having a porous shape and having a resin contained in its voids ([0036]).
A developer comprising a toner and the carrier, a process cartridge, an image forming apparatus, and an image forming method are also discussed ([0085]-[0090], Fig. 1) (which reads on the corresponding limitations recited in instant claim 11, claim 14, claim 15, claim 16, claim 17, claim 18, claim 19, and claim 20).
In the examples, the porous magnetic carrier core 1 was prepared including a filling step of mixing the porous magnetic carrier core with a silicone resin composition commercially known as “SR2140” including a silane coupling agent to fill the pores of the magnetic core with the silicone resin ([0163]-[0178], Table 3).
The filling resin in the examples did not include conductive particles (which reads on the corresponding limitation recited in instant claim 4). Additionally, while the silicone resin “SR2140” is understood to not include a nitrogen atom itself, the filling resin was taught to include an aminosilane as an additive. In other words, the filling resin included a nitrogen atom via the aminosilane additive (which reads on the corresponding limitation recited in instant claim 5 and claim 6).
The resin-filled magnetic carrier core particles were then coated with a coating layer including an acrylic resin, carbon black, and inorganic particles to prepare a coat carrier ([0185]-[0188]). The inorganic particles are taught to include silica, alumina, and calcium carbonate having particle diameters ranging from 44 nm to 100 nm (see inorganic particles 3, 5, 8, 12, 15, and 18 in Table 1) (which reads on the corresponding limitation recited in instant claim 5).
While not explicitly stated, at least some of the pores of the magnetic core particles would have been expected to contain resin and inorganic particles including silica, alumina, or calcium carbonate (which reads on the corresponding limitations recited in instant claim 1).
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.
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 3, 9-10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nagayama et al. (JP 2021-081514-A1) (references herein made with respect to English machine translation attached), in view of Yaguchi et al. (US PGP 2014/0248557 A1).
The teachings of Nagayama are discussed above and incorporated herein. Nagayama appears to be silent to teach or suggest a ratio of a total area of the inorganic particles to a total area of the resin, or a ratio of an area of the inorganic particles in the coating layer to an area of the inorganic particles in the filling resin. Yaguchi teaches a carrier including a magnetic core and a cover layer located on the surface of the magnetic core. The cover layer is taught to include a resin and a filler (Abstract). The filler is taught to include inorganic particles like alumina and silica ([0054]-[0055]).
The area ratio of the filler is taught to be 30 to 85%, in view of preventing abrasion of the cover layer even when the carrier is used in a developing device over a long period of time ([0051]) (which reads on the corresponding limitation recited in instant claim 9). Additionally, the revealing rate of the core is taught to be no greater than 10% and the ratio of the diameter of the carrier core to the particle diameter of the filler is taught to be from 1:1 to 1:0.003, in view of controlling the electric resistance of the carrier and achieving suitable fixation of the filler ([0048], [0057]).
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 optimized the abrasion resistance, electric resistance, and fixation of the carrier by experimenting with different area ratios, revealing rates, and diameter ratios within the respective ranges taught by Yaguchi in the carrier of Nagayama. In doing so, the skilled artisan would have arrived at the claimed ratio of a total area of the inorganic particles to a total area of the resin recited in instant claim 3, and the claimed relationship between claimed area ratio A and the claimed area ratio B recited in instant claim 9 and claim 10.
According to MPEP § 2144.05, "[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)”.
Claims 3, 9-10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sugahara et al. (US PGP 2016/0306301 A1), in view of Yaguchi et al. (US PGP 2014/0248557 A1).
The teachings of Sugahara are discussed above and incorporated herein. Sugahara appears to be silent to teach or suggest a ratio of a total area of the inorganic particles to a total area of the resin, or a ratio of an area of the inorganic particles in the coating layer to an area of the inorganic particles in the filling resin. Yaguchi teaches a carrier including a magnetic core and a cover layer located on the surface of the magnetic core. The cover layer is taught to include a resin and a filler (Abstract). The filler is taught to include inorganic particles like alumina and silica ([0054]-[0055]).
The area ratio of the filler is taught to be 30 to 85%, in view of preventing abrasion of the cover layer even when the carrier is used in a developing device over a long period of time ([0051]) (which reads on the corresponding limitation recited in instant claim 9). Additionally, the revealing rate of the core is taught to be no greater than 10% and the ratio of the diameter of the carrier core to the particle diameter of the filler is taught to be from 1:1 to 1:0.003, in view of controlling the electric resistance of the carrier and achieving suitable fixation of the filler ([0048], [0057]).
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 optimized the abrasion resistance, electric resistance, and fixation of the carrier by experimenting with different area ratios, revealing rates, and diameter ratios within the respective ranges taught by Yaguchi in the carrier of Sugahara. In doing so, the skilled artisan would have arrived at the claimed ratio of a total area of the inorganic particles to a total area of the resin recited in instant claim 3, and the claimed relationship between claimed area ratio A and the claimed area ratio B recited in instant claim 9 and claim 10.
According to MPEP § 2144.05, "[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)”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2009/0258311 to Nakao et al. teaches a carrier prepared by adding resin particles, a binder, a dispersant, a wetting agent, and water to a raw material powder, we pulverizing the mixture, drying the pulverized product to give granulated powder, calcinating the granulated powder, and then sintering the granulated powder to prepare a carrier core material having an internally hollow structure, and coating the carrier core material with a resin (Abstract).
The resin particles are taught to include silicon resin particles and may be substituted with silica particles ([0062], [0081]). In the examples, the silica particles are taught to be contained inside of the carrier core ([0084]).
However, Nakao teaches that the carrier core has a hollow structure, not a porous structure having internal pores, as claimed.
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
09/30/2026
Prosecution Insights