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 1-6 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 “a ratio of an equivalent circular area diameter to a maximum length (the equivalent circular area/the maximum length) and which is an average value, is 0.915 or more and 1.000 or less”.
However, it is unclear what the “maximum length” refers to. That is, the maximum length could reasonably be interpreted as referring to a maximum length of the colorant, the release agent, or the external additive.
According to paragraph [0018] on pg. 6 of the instant specification, the maximum length is defined as “the maximum length between two points on the profile of a projected image of the [toner] particle”.
Therefore, the overcome this rejection, claim 1 could be amended to recite, for example, “a ratio of an equivalent circular area diameter to a maximum length of the toner (the equivalent circular area/the maximum length) and which is an average value, is 0.915 or more and 1.000 or less”.
Claims 2-6 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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akazaki et al. (US PGP 2019/0227450 A1).
Akazaki teaches a toner for developing electrostatic images comprising colored resin particles comprising a binder resin and a colorant, and an external additive (Abstract) (which reads on the corresponding limitations recited in instant claim 1).
The external additive is taught to include inorganic fine particles A having a number average primary particle diameter of from 36 nm to 100 nm, inorganic fine particles B having a number average primary particle diameter of from 17 nm to 25 nm, inorganic fine particles C having a number average primary particle diameter of 6 nm to 14 nm, and organic fine particles D having a number average primary particle diameter of from 0.3 µm to 2.0 µm ([0085], [0092], [0095], [0105]) (which reads on the corresponding limitations recited in instant claim 4, claim 5, and claim 6).
A content of the inorganic fine particles A is taught to be 0.1 part by mass to 2.5 parts by mass, a content of the inorganic fine particles B is taught to be 0.1 part by mass to 2.0 parts by mass, a content of the inorganic fine particles C is taught to be 0.05 part by mass to 2.0 parts by mass, and a content of the organic fine particles D is taught to be 0.05 part by mass to 2.0 parts by mass, where each content range is with respect to 100 parts by mass of the colored resin particles ([0088], [0093], [0098], [0109]) (which reads on the corresponding limitations recited in instant claim 4, claim 5, and claim 6).
Akazaki teaches that the average circularity of the colored resin particles is preferably from 0.96 to 1.00, and that thin line reproducibility in printing may deteriorate when the average circularity is less than 0.96 ([0080]-[0081]). However, Akazaki appears to be silent to teach the average circularity of the final toner product.
That is, the circularity range taught by Akazaki appears to refer to the circularity of the raw toner base particle (i.e., the colored resin particles) rather than that of the final finished toner that has been blended with the external additive package. To the contrary, instant claim 3 is directed at the average circularity of the toner (comprising an external additive) and not the average circularity of the colored resin particles.
Since the colored resin particles of Akazaki are subjected to external addition treatment with multiple different sized organic and inorganic fine particles (i.e., A, B, C, and D) in various amounts (discussed above), the shape and surface roughness of the final finished toner product would be expected to be different than that of the pre-treated colored resin particles due to the protrusions created by the inorganic fine particles embedded into the surface of the colored resin particles.
Akazaki also appears to be silent to explicitly teach an equivalent circular area diameter of the toner, a maximum length of the toner, or a maximum inscribed circle diameter of the toner. Therefore, Akazaki is silent to teach a ratio of the equivalent circular area diameter of the toner to the maximum length of the toner (defined as “compactness” in instant claim 1), or a ratio of the maximum inscribed circle diameter of the toner to the equivalent circular area diameter of the toner (as recited in instant claim 2).
However, the method of producing the toner and colored resin particles taught by Akazaki appears to be nearly identical to the method of producing the toner and colored resin particles disclosed in the instant specification.
For instance, the production method of the colored resin particles in both Akazaki’s Example 1 and the Applicant’s Example 1 include a first step of preparing a polymerizable monomer composition, a second step of obtaining a suspension, a third step of polymerization, a fourth step of washing, filtering, dehydrating, and drying ([0024]-[0071] of Akazaki and [0027]-[0077] of the instant specification).
In the first step of preparing the polymerizable monomer composition, both preparation methods utilize 77 parts of styrene and 23 parts of n-butyl acrylate as polymerizable monomers, 7 parts of carbon black as a colorant, 1.6 parts of a quaternary ammonium salt as a charge control agent, 5 parts of hexaglycerin octabehenate and 5 parts of paraffin wax commercially known as “AA6” as release agents, 0.6 part of divinylbenzene as a crosslinking agent, and 1.5 parts of t-dodecyl mercaptain as a molecular weight modifier ([0138]-[0139] of Akazaki and [0101] of the instant specification). Both preparation methods prepare an aqueous dispersion medium by adding a solution of 6.2 parts of sodium hydroxide dissolved in 50 parts of water with 10.2 parts of magnesium chloride dissolved in 250 parts of water to prepare a magnesium hydroxide colloid dispersion ([0140] of Akazaki and [0102] of the instant specification).
In the second step of obtaining a suspension, both preparation methods combine the polymerizable monomer composition with the magnesium hydroxide colloidal dispersion in the first step, add 4.4 parts of t-butylperoxy diethylacetate as a polymerization initiator, and subject the mixture to high-speed shearing and stirring at a rotational frequency of 15,000 rpm for 10 minutes using an emulsifying and dispersing machine commercially known as “MILDER” to obtain a suspension in which droplets of the polymerizable monomer is dispersed ([0141] of Akazaki and [0103] of the instant specification).
In the third step of polymerization, both methods add the suspension to a reactor furnished with stirring blades and stir at 90 ºC to initiate a polymerization reaction. When the polymerization conversion rate reached almost 100%, 2 parts of methyl methacrylate as a polymerizable monomer for the shell and 0.3 parts of 2,2’-azobis(2-methyl-N-(2-hydroxyethyl)-propionamide) commercially known as “VA-086” as a polymerization initiator for the shell dissolved in 10 parts of water was added to the suspension and the reaction was continued for 4 hours at 90 ºC to obtain colored resin particles having a core-shell structure ([0142] of Akazaki and [0104] of the instant specification).
In the fourth step of washing, filtering, dehydrating, and drying, both preparation methods subjected the aqueous dispersion to acid washing with sulfuric acid at room temperature until the pH of the dispersion reached 6.5 or less, filtered the aqueous dispersion using filtration separation, and then re-slurried with 500 parts of water several times. The solids were then placed in a dyer and dried at 45 ºC for 48 hours to obtain the colored resin particles ([0143] of Akazaki and [0105] of the instant specification).
Finally, both preparation methods performed external addition treatment by mixing 100 parts of the colored resin particles with 1.3 parts of silica fine particles commercially known as “H05TA” having a primary particle diameter of 50 nm (inorganic fine particles A), 0.5 part of silica fine particles commercially known as “TG-7120” having a primary particle diameter of 20 nm (inorganic fine particles B), 0.2 part of silica fine particles commercially known as “TG-820F” having a primary particle diameter of 7 nm (inorganic fine particles C), and 0.1 part of zinc stearate fine particles commercially known as “SPZ-100F” having a primary particle diameter of 0.5 µm (organic fine particles D), in a high-speed stirring machine commercially known as “FM MIXER” at a peripheral speed of 32.2 m/s for 6.0 minutes to obtain a toner ([0144] of Akazaki and [0106] of the instant specification).
According to Table 1 of the instant specification, the toner of Applicant’s Example 1 exhibited an equivalent circular area diameter of 7.5 µm, a circularity of 0.942, a compactness of 0.955, and a ratio of a maximum inscribed circle diameter to an equivalent circular area diameter of 0.946.
Since the toner in Akazaki’s Example 1 was produced using nearly an identical method, contained the same polymerizable monomer compositions for the core and shell components and included the same external additive package as the Applicant’s Example 1, Akazaki’s toner would have been expected to necessarily exhibit a sufficiently similar equivalent circular area diameter, average circularity, compactness, and ratio of a maximum inscribed circle diameter to an equivalent circular area diameter as the toner of Applicant’s Example 1, and thus would have been expected to exhibit the corresponding properties recited in instant claim 1, claim 2, and claim 3. The Applicant is respectfully invited to prove or demonstrate otherwise.
According to MPEP § 2112, once a reference teaching a product that appears to be substantially identical is made the basis of a rejection, and the Office presents evidence or reasoning to show necessity or inherency, the burden of proof shifts to the Applicant. That is, "the 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). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
Moreover, something which is old does not become patentable upon the discovery of a new property. That is, "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Applicant is further advised that unknown properties of a previously disclosed prior art composition do not need to be recognized at the relevant time of disclosure. That is, “[t]here is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.")”.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al. (US Patent No. 6,746,809 B1).
Sato teaches a toner for development of electrostatic images comprising at least a binder resin and a colorant (Abstract). The toner is taught to be substantially spherical and exhibits a spheroidicity (Sc/Sr) of from 1.0 to 1.3, where Sc represents a circle supposing that the absolute maximum length of particles is a diameter and Sr represents a substantial projected area of the particles (Col. 4, lines 43-49).
The Sc value is understood to correspond to the claimed “maximum length” of the toner, and the Sr value is understood to correspond to the claimed “circular area diameter” of the toner. Therefore, the reciprocal of Sato’s spheroidicity parameter (Sr/Sc) can be calculated as ranging from 0.77 to 11 (which reads on the corresponding “compactness” recited in instant claim 1).
The toner is taught to further include two or more external additives for the purpose of improving flowability, abrasion property, or the like, and includes inorganic particles like silica and organic resin particles like zinc stearate. The amount of the external additive is taught to preferably be 0.1 to 6 parts by weight per 100 parts by weight of the polymerized toner (Col. 16, lines 16-51).
Sato appears to be silent to explicitly teach a suitable range for the equivalent circular area diameter of the toner (corresponding to the Sr value), a maximum length of the toner (corresponding to the Sc value), or a maximum inscribed circle diameter of the toner. Therefore, Akazaki is silent to teach an equivalent circular area diameter of the toner (recited in instant claim 1) or a ratio of the maximum inscribed circle diameter of the toner to the equivalent circular area diameter of the toner (recited in instant claim 2). While Sato explicitly states that the toner particles are “substantially spherical”, Sato also appears to be silent to teach the average circularity of the toner.
However, the method of producing the toner and toner particles taught by Sato appears to be sufficiently to the method of producing the toner and colored resin particles disclosed in the instant specification.
For instance, the production method of the colored resin particles in both Sako’s Example 3 and the Applicant’s Example 1 include a first step of preparing a polymerizable monomer composition, a second step of obtaining a suspension, a third step of polymerization, a fourth step of washing, filtering, dehydrating, and drying (Col. 21, lines 45-65, Col. 22, lines 1-65 of Sato and [0027]-[0077] of the instant specification).
According to Table 1 of the instant specification, the toner of Applicant’s Example 1 exhibited an equivalent circular area diameter of 7.5 µm, a circularity of 0.942, a compactness of 0.955, and a ratio of a maximum inscribed circle diameter to an equivalent circular area diameter of 0.946.
Since the toner in Sato’s Example 3 was produced using a sufficiently similar method, contained the same polymerizable monomer compositions for the core and shell components and may include a similar external additive package, Akazaki’s toner would have been expected to necessarily exhibit a sufficiently similar equivalent circular area diameter, average circularity, compactness, and ratio of a maximum inscribed circle diameter to an equivalent circular area diameter as the toner of Applicant’s Example 1, and thus would have been expected to exhibit the corresponding properties recited in instant claim 1, claim 2, and claim 3. The Applicant is respectfully invited to prove or demonstrate otherwise. See MPEP § 2112 above.
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US Patent No. 6,746,809 B1), in view of Akazaki et al. (US PGP 2019/0227450 A1).
The teachings of Sato and Akazaki are discussed above and incorporated herein. As discussed above, Sato teaches that the toner may include two or more external additives for the purpose of improving flowability, abrasion property, or the like, including inorganic particles like silica and organic resin particles like zinc stearate. Additionally, the amount of the external additive is taught to preferably be 0.1 to 6 parts by weight per 100 parts by weight of the polymerized toner (Col. 16, lines 16-51).
In Sato’s Example 3, 0.6 parts of colloidal silica commercially known as “RX200” were taught to be externally added to the toner particles (Col. 23, lines 4-9). While Sato does not appear to teach using inorganic particles in combination with organic resin particles in the examples, this does not necessarily constitute a teaching away from the broader teachings discussed above, as Sato explicitly teaches that the external additive may contain two or more additives including inorganic particles and organic resin particles. 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).”
Also, as discussed above, Akazaki teaches an external additive package including inorganic fine particles A, B, and C and organic fine particles D. The external additive package of Akazaki is taught to be used to control the conditioned bulk density of the toner to be within a specific range such that the toner exhibits improved flowability and suppressed toner leakage ([0017], [0084], [0100], [0131]).
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 applied the external additive package of Akazaki to the toner particles of Sato, in view of controlling the conditioned bulk density of the toner and achieving the benefits taught by Sato.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent No. 7,541,127 B2 to Ieda teaches a toner for developing electrostatic images comprising a colored particle containing a binder resin and a colorant and an external additive. The toner is taught to have a volume average particle diameter of 4.0 to 8.0 µm and an average circularity of 0.940 to 0.980 (Abstract).
The external additive is taught to include an inorganic microparticle (A) having a small particle diameter with a number average primary particle diameter of from 5 to 14 nm, an inorganic microparticle (B) having a medium particle diameter with a number average primary particle diameter of from 15 to 90 nm, and a particle (C) having a large particle diameter with a number average primary particle diameter of from 100 to 500 nm. The particle (C) is taught to be an organic resin particle (claim 1 and claim 4).
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
09/17/2026
1 If Sc/Sr = 1 to 1.3, then Sr/Sc = 1/1 to 1/1.3 = 1 to 0.77.
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