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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 5-7, 13-14, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/826,417 (reference application) (hereinafter “the ‘417 application”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instantly claimed toner set is anticipated by the toner set of the ‘417 application.
For instance, both claim sets recite an electrostatic image developing toner set comprising:
a white toner including white toner particles containing a polyester resin and a white colorant; and
a non-white color toner including color toner particles containing a vinyl resin, a polyester resin, and a color colorant,
wherein a mass ratio C of the polyester resin to the vinyl resin in the color toner particles is 0.7 or more and 10 or less (claim 1 of both applications).
In both claim sets, the mass ratio C of the polyester resin included in the colored toner particles to the vinyl resin included in the colored toner particles is 2 or more and 6 or less (claim 2 of both applications) and the white toner particles contain a vinyl resin (claim 5 of the instant application and claim 4 of the ‘417 application).
In both claim sets, a relationship between a mass ratio W of the polyester resin to the vinyl resin in the white toner particles and the mass ratio C of the polyester resin to the vinyl resin in the color toner particle satisfies -0.6 ≤ W – C ≤ 5.6 (claim 6 of the instant application and claim 5 of the ‘417 application), or 0 ≤ W – C ≤ 4 (claim 7 of the instant application and claim 6 of the ‘417 application).
Both claim sets also recite an electrostatic image developer set, a toner cartridge set, a process cartridge, an image forming apparatus, and an image forming method comprising the white toner and the non-white color toner (claims 13-14 and 17-20 of the instant application and claims 11-20 of the ‘417 application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 5-7, 13-14, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/826,394 (reference application) (hereinafter “the ‘394 application”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instantly claimed toner set is anticipated by the toner set of the ‘394 application.
For instance, both claim sets recite an electrostatic image developing toner set comprising:
a white toner including white toner particles containing a polyester resin and a white colorant; and
a non-white color toner including color toner particles containing a vinyl resin, a polyester resin, and a color colorant,
wherein a mass ratio C of the polyester resin to the vinyl resin in the color toner particles is 0.7 or more and 10 or less (claim 1 of both applications).
In both claim sets, the mass ratio C of the polyester resin included in the colored toner particles to the vinyl resin included in the colored toner particles is 2 or more and 6 or less (claim 2 of both applications) and the white toner particles contain a vinyl resin (claim 5 of the instant application and claim 4 of the ‘394 application).
In both claim sets, a relationship between a mass ratio W of the polyester resin to the vinyl resin in the white toner particles and the mass ratio C of the polyester resin to the vinyl resin in the color toner particle satisfies -0.6 ≤ W – C ≤ 5.6 (claim 6 of the instant application and claim 5 of the ‘394 application), or 0 ≤ W – C ≤ 4 (claim 7 of the instant application and claim 6 of the ‘394 application).
Both claim sets also recite an electrostatic image developer set, a toner cartridge set, a process cartridge, an image forming apparatus, and an image forming method comprising the white toner and the non-white color toner (claims 13-14 and 17-20 of the instant application and claims 11-20 of the ‘394 application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, lines 5-6, recite “wherein a mass ratio C of the polyester resin to the vinyl resin in the color toner particles is 0.7 or more and 10 or less”. However, based on the way the claim is currently written, it is unclear if the polyester resin of the mass ratio C refers to the polyester resin of the white toner particles, the color toner particles, or both. Based on paragraph [0027] of the instant specification, the mass ratio C appears to be directed at the polyester resin and the vinyl resin of only the color toner particles.
To overcome this rejection, is recommended to amend the claim to recite, for example, “wherein a mass ratio C of the polyester resin in the color toner particles to the vinyl resin in the color toner particles is 0.7 or more and 10 or less”, or “wherein, in the color toner particles, a mass ratio C of the polyester resin to the vinyl resin is 0.7 or more and 10 or less”.
Claim 2, lines 2-3, recite “wherein the mass ratio C of the polyester resin to the vinyl resin in the color toner particles is 2 or more and 6 or less”. As discussed above, it is unclear if the polyester resin of the mass ratio C refers to the polyester resin of the white toner particles, the color toner particles, or both.
To overcome this rejection, is recommended to amend the claim to recite, for example, “wherein the mass ratio C of the polyester resin in the color toner particles to the vinyl resin in the color toner particles is 2 or more and 6 or less”, or “wherein, in the color toner particles, the mass ratio C of the polyester resin to the vinyl resin is 2 or more and 6 or less”.
The same type of clarifying amendment is recommended for polyester resin of the mass ratio W and the polyester resin of the mass ratio C recited in claim 6 and claim 7.
Claim 3, lines 2-3, recite “a variance P parameter determined by measuring the white colorant by a block method is 0.85 or more and 1.00 or less”. Similarly, claim 4, lines 2-3, recite “the variance P parameter determined by measuring the white colorant by the block method is 0.90 or more and 1.00 or less”.
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However, it is unclear what constitutes “a block method”. The skilled artisan would not be able to readily ascertain how the variance P parameter value is obtained, or what it represents, based on how the claims are currently written.
According to [0042] of the instant specification, the specific block method used to determine the variance parameter P value involves calculating the variance P parameter by utilizing equations (P1) and (P2) below:
where in the equations (P1) and (P2), n represents the number of blocks (= 4), and bi represents the area (µm2) of the white colorant in a block i.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also, according to MPEP § 2173.05, “Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.”
Accordingly, to overcome this rejection, it is recommended to amend claim 3 and claim 4 to sufficiently define the block method used to determine the variance P parameter value, such as by including the equations (P1) and (P2) used in the block method disclosed in [0042] of the instant specification in addition to any other parameters of the block method which are necessary to properly define the metes and bounds of the variance P parameter value.
Claims 5 and 8-20 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ueda et al. (US PGP 2022/0397838 A1).
Ueda teaches an electrostatic latent image developing toner set including a white toner including white toner particles comprising a binder resin and a white pigment, and a colored toner including colored toner particles comprising a binder resin and a colored colorant other than white ([0035]).
An developer set including the white toner and the colored toner, a toner cartridge set including the developer set, an image forming apparatus including a process cartridge containing the developer set, and an image forming method including forming a white image and a color image are also described ([0196]-[0207], [0252], [0258]) (which reads on the corresponding limitations recited in instant claims 13-20).
The binder resin of the white toner particles and the binder resin of the colored toner particles are taught to be the same in some embodiments and include an amorphous resin and a crystalline resin ([0059], [0186], [0190]). The amorphous resin is taught to include a vinyl resin and the crystalline resin is taught to include a crystalline polyester resin ([0061]-[0062]) (which reads on the corresponding ranges recited in instant claim 1 and claim 5).
The total content of the amorphous resin in the binder resin of the colored toner particles is taught to be 70 to 90 mass% and the total content of the crystalline resin in binder resin of the colored toner particles is taught to be 10 to 30 mass%, in view of achieving sufficient fixed image strength and chargeability ([0192]). When a styrene acrylic resin and an amorphous polyester resin are used as the amorphous resin in the colored toner particles, the content of the styrene acrylic resin is taught to be 30 to 70 mass% and the content of the amorphous polyester resin is taught to be 30 to 70 mass% ([0193]). In other words, the mass ratio of the styrene acrylic resin (vinyl resin) to the amorphous polyester resin (polyester resin) in the colored toner particles ranges from 0.429 to 2.331 (which reads on the corresponding ranges recited in instant claim 1 and claim 2).
According to MPEP § 2144.05, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Similarly, the total content of the amorphous resin in the binder resin of the white toner particles is taught to be to be 70 to 95 mass% and the total content of the crystalline resin in binder resin of the colored toner particles is taught to be 5 to 25 mass%, in view of achieving sufficient fixed image strength and chargeability ([0095). When a styrene acrylic resin and an amorphous polyester resin are used as the amorphous resin in the white toner particles, the content of the styrene acrylic resin is taught to be 70 to 90 mass% and the content of the amorphous polyester resin is taught to be 10 to 30 mass% ([0097]). In other words, the mass ratio of the styrene acrylic resin (vinyl resin) to the amorphous polyester resin (polyester resin) in the white toner particles ranges from 2.33 to 92.
Therefore, the difference between the mass ratio of the styrene acrylic resin (vinyl resin) to the amorphous polyester resin (polyester resin) in the white toner particles to the mass ratio of the styrene acrylic resin (vinyl resin) to the amorphous polyester resin (polyester resin) in the colored toner particles ranges from 1.90 to 6.673 (which reads on the corresponding limitations recited in instant claim 6 and claim 7). See MPEP § 2144.05 above.
The white colorant is taught to include surface-treated titanium dioxide ([0049]-[0050]). The average primary particle diameter of the titanium dioxide particles is taught to be 0.15 to 0.35 µm, in view of providing high whiteness and hiding properties (which reads on the corresponding ranges recited in instant claim 9 and claim 10). The content of the surface-modified titanium dioxide particles (white colorant) in the white toner particles is taught to be from 1.5 to 50 mass% ([0058]) (which reads on the corresponding limitation recited in instant claim 8). See MPEP § 2144.05 above.
Ueda appears to be silent to explicitly teach or suggest the claimed variance P parameter value, the claimed area fraction of the white colorant, or the claimed proportion of the white colorant with a particle size of 100 nm or less. However, paragraph [0042] of the instant specification discloses that a variance P parameter closer to 1 (e.g., within the claimed ranges) indicates that the dispersibility of the white colorant is high.
Since the white toner particles of both Ueda and the Applicant utilize an amorphous polyester resin a styrene acrylic resin, and surface-treated titanium oxide as a white colorant having similar particle sizes in similar amounts, and are produced according to similar methods, the white toner particles of Ueda would be expected to necessarily exhibit a variance P parameter when measured using the disclosed block method within the scope of claim 3 and claim 4, an area fraction of the white colorant within the scope of claim 9 and claim 10, and the proportion of white colorant with a particle size of 100 nm or less within the scope of claim 11 and claim 12 (see [0223], [0229], [0211] and [0234] of Ueda and [0169]-[0172], [0177]-[0183], and Table 1 of the instant specification). The Applicant is respectfully invited to demonstrate or prove otherwise.
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).”
As discussed above, the mass ratio of the styrene acrylic resin (vinyl resin) to the amorphous polyester resin (polyester resin) in the colored toner particles ranges from 0.429 to 2.33 based on the specified ranges of the styrene acrylic resin and the amorphous polyester resin in the colored toner particles.
Ueda appears to only teach one production example of the colored toner particles. In this production example, 60 parts by mass of the amorphous polyester resin dispersion (in terms of solid content) to 270 parts by mass of the styrene acrylic resin dispersion (in terms of solid content) were used. In other words, the mass ratio of the amorphous polyester resin to the styrene acrylic resin in the example was 0.222, which falls outside of the claimed range recited in instant claim 1.
However, according to MPEP § 2123, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
Even if, arguendo, the claims were considered to not be anticipated by the broader disclosure of Ueda, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have experimented with different proportions of the amorphous polyester resin and the styrene acrylic resin in the colored toner particles, in view of improving the fixed image strength and chargeability of the toner.
Moreover, 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.").
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. 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
09/01/2026
1 StAc max / PES min = 70 mass% / 30 mass% = 2.33
StAc min / PES max = 30 mass% / 70 mass% = 0.429
2 StAc max / PES min = 90 mass% / 10 mass% = 9
StAc min / PES max = 70 mass% / 30 mass% = 2.33
W max – C max = 9 – 2.33 = 6.67
W min – C min = 2.33 – 0.429 = 1.90
Prosecution Insights