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 .
Response to Amendment
Claim 1 is amended to reflect the limitation of original Claim 5. Claims 4 and 5 are cancelled accordingly. Claims 6 and 12 remain cancelled, and Claim 17 remains withdrawn. New Claim 19 has been added. As addressed below, new Claim 19 appears to contain subject matter not present in the as-filed Specification or previous listings of claims.
Response to Arguments
Applicant's arguments filed 2026-03-18 have been fully considered but they are not persuasive.
Applicant argues that because Sakai teaches large-diameter particles which are surface-treated, and Sakai’s large-diameter particles have a size range outside that stated for the silica particles in Claim 1, that it would not be obvious to apply the surface treatment to particles with a diameter smaller than 100 nm. However, a person having ordinary skill in the art would appreciate that, while Sakai does not explicitly teach surface treatment of silica particles having a smaller size than 100 nm, that the effects of surface treatment would still be exerted, at least in part, on such particles. Therefore, one of ordinary skill in the art would not be discouraged from applying the surface treatment taught by Sakai to silica particles having a diameter lying in the range stated in Claim 1, and such a combination would be obvious.
Applicant also argues that the surface-treated silica particles resulting from the combination of Sakai and Kudo would not possess the nitrogen-containing compound inside the pores of the silica particles, as required by Claim 1. This assertion is based in part on the argument presented in Applicant’s remarks filed 2025-12-15 alongside a request for continued examination following final rejection. There, Applicant alleges that treatment of hydrophobized silica particles with HMDS would prevent another nitrogen element-containing compound from entering the pores of the silica particles. However, the amended claims filed as part of that RCE did not allow for the nitrogen element-containing compound to be a silazane, the class to which HMDS belongs. Therefore, the non-final rejection dated 2026-01-12 following the RCE did not rely on a silica particle having been surface-treated with HMDS. Therefore, Applicant’s argument as to why the nitrogen element-containing compound (which does not belong to the class of silazanes) would not be contained inside the pores of the silica particles is mooted. As described in the updated rejection below, the porous sol-gel silica particles of Kudo, treated in the manner described by Sakai, would contain the nitrogen element-containing compound inside the pores, and the nitrogen element-containing compound would not remain only at the surface of the silica particles. For these reasons, the rejections below are not withdrawn.
Claim Rejections - 35 USC § 112
Claim 19 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 19 recites a range for the content of the nitrogen element-containing compound with respect to the amount of the silica particles. However, this quantity is not described in the as-filed Specification, and measured values are not reported for the disclosed preparative examples. Instead, the content of the nitrogen element-containing compound with respect to the amount of silica particles in terms of N atoms is described (Specification, [0102]). The method of measurement given for this parameter (Specification, [0103]) makes clear that this is a different parameter than a mass ratio of the addition amount of the nitrogen element-containing compound and the silica particles. Note the difference between the Mass (parts) for the N-containing compound of Table 1-1 (Specification, [0241]) and the Content (in terms of N atoms) of the N-containing compound of Table 1-3 (Specification, [0243]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 – 3, 7 – 11, 13, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al (JP 2001-194825) in view of Sakai et al (JP 2005-202132) (machine translations of which referred to henceforth).
Kudo teaches silica fine particles used as an external additive for a toner ([0008]), and a toner bearing the externally added silica particles ([0050], [0061]). Kudo teaches that the silica fine particles comprise hydrophobic silica fine particles treated with an agent selected from a group containing at least quaternary ammonium salts ([0009]). The silica particles may be prepared by the sol-gel method ([0012]), and they may be made hydrophobic by treatment with an alkyltrialkoxysilane (trifunctional silane) ([0012], [0019]). The hydrophobized silica particles may also be treated with a quaternary ammonium salt ([0026]). Kudo teaches that the silica fine particles preferably have a particle size in the range of 10 – 5,000 nm ([0025]), encompassing the range stated in Claim 1.
Sakai teaches a toner comprising toner particles comprising at least a binder resin, a colorant, a release agent, and an external additive ([0015]). The external additive includes large-diameter particles which are surface-treated with a charge control agent ([0015]). Sakai teaches that externally added particles surface-treated with a charge control agent stabilize charging, thereby improving the fluidity, charging properties, developability, transferability, cleaning properties, and fixing of the toner ([0020]).
The externally added particles may be inorganic particles, and silica is pointed out as an example ([0025]). Sakai describes a method of pre-treating the particles with an alkoxysilane or polysiloxane before treatment with the charge control agent, resulting in more uniform treatment of the particles with the charge control agent ([0027]). Sakai gives as examples of alkoxysilane treatment agents methyltrichlorosilane, octyltrichlorosilane, and octyltrimethoxysilane ([0030]). It is preferable to add 0.15 – 45 parts by mass of alkoxysilane surface treatment agent relative to 100 parts of inorganic particles to be treated ([0033]).
A charge control agent is then added to the particles that have been treated with the alkoxysilane agent ([0034]). Sakai points out quaternary ammonium salts as preferable charge control agents ([0035]). The charge control agent is preferably added in an amount of 3 – 30 parts by mass relative to 100 parts of particles to be treated, which ensures a resultant content of 0.1 – 10% by mass of the charge control agent in the treated particles ([0038]). Sakai describes a heating and drying step in which the treated particles are heated at 40 - 150°C, resulting in conversion of the alkoxysilane treatment agent into an organosilane reaction product ([0039]).
Example Silica particles 1 (Specification, Table 1-1) has a trifunctional silane addition amount (50 parts of silane agent relative to 1,000 parts of TMOS substrate) which would lie in the range taught by Sakai. While an amount of base silica particles to be treated is not mentioned in the instant application, the range of addition amount taught by Sakai would result in a similar amount of the “adhering structure” as described in the instant application (Specification, [0084]). In addition, Example Silica particles 1 has an addition amount of the N-containing compound lying in the range taught by Sakai for the addition amount of the charge control agent.
Example Silica particles 1 has a reported value for B (volume of the pores having a diameter of 1 – 50 nm after baking at 350°C) (Specification, Table 1-2) lying in the range stated in Claim 1. In addition, this example has a reported value for the ratio B/A (Table 1-2) lying in the range stated in Claim 1.
In preparing the toner of Kudo, one of ordinary skill in the art would have been motivated to improve the fluidity, charging properties, developability, transferability, cleaning properties, and fixing of the toner by adopting the surface treatment method for externally added silica particles taught by Sakai. Such a toner would comprise toner particles and silica particles having a surface bearing the reaction product of a trifunctional silane coupling agent, wherein a quaternary salt (representing a nitrogen-containing compound as described in Claim 1) is adsorbed onto the pores of said reaction product. Such silica particles, being produced and surface-treated by similar methods to those used to prepare Example Silica particles 1, would necessarily possess similar values for the volume of pores having a diameter of 1 – 50 nm before and after baking at 350°C. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to prepare the toner of Kudo wherein the externally added silica particles are surface-treated by the method taught by Sakai, resulting in a toner comprising silica particles having values for A and B/A lying in the ranges stated in Claim 1.
Where Example Silica particles 1 possess a value of B/A (Specification, Table 1-2) lying in the range stated in Claim 2, the toner of Kudo having externally added silica particles surface-treated as taught by Sakai would inherently also possess a value of B/A lying in the range stated in Claim 2.
Where Example Silica particles 1 possess a value of B (Specification, Table 1-2) lying in the range stated in Claim 3, the toner of Kudo having externally added silica particles surface-treated as taught by Sakai would inherently also possess a value of B lying in the range stated in Claim 3.
All but 3 of the 44 preparative examples disclosed in the instant application (Specification, Table 1-2) have a reported degree of circularity lying in the ranges stated for Claim 7 and Claim 8. The silica fine particles of Kudo, prepared in a substantially similar way to those of the instant application (that is, by the sol-gel method), would therefore inherently possess a value for the average circularity of the particles lying in the ranges stated in Claim 7 and Claim 8.
Where Example Silica particles 1 possess a value for the volume resistivity (Specification, Table 1-2) lying in the range stated in Claim 9, the toner of Kudo having externally added silica particles surface-treated as taught by Sakai would inherently also possess a value for volume resistivity lying in the range stated in Claim 9.
Where Example Silica particles 1 possess a value of Ra/Rb (Specification, Table 1-2) lying in the range stated in Claim 10, the toner of Kudo having externally added silica particles surface-treated as taught by Sakai would inherently also possess a value of Ra/Rb lying in the range stated in Claim 10.
Where Example Silica particles 1 possess a value of C/D (Specification, Table 1-3) lying in the range stated in Claim 11, the toner of Kudo having externally added silica particles surface-treated as taught by Sakai would inherently also possess a value of C/D lying in the range stated in Claim 11.
Kudo teaches that the toner bearing the treated silica fine particles as an external additive may be used as a one-component developer, or may be mixed with a carrier and used as a two-component developer ([0051]), satisfying Claim 13.
As mentioned above, Sakai gives as examples of alkoxysilane treatment agents methyltrichlorosilane, octyltrichlorosilane, and octyltrimethoxysilane ([0030]), all reading on General formula (TA) of Claim 18.
Claims 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al (JP 2001-194825) in view of Sakai et al (JP 2005-202132), further in view of Tanabe et al (JP 2018-159864) (machine translations of which referred to henceforth).
The above discussions of Kudo and Sakai are incorporated herein.
Neither of Kudo or Sakai appears to teach a toner cartridge, a process cartridge, or an image forming apparatus.
Tanabe discloses a developer, which may be a one-component or two-component developer ([0114]), and a toner cartridge, a process cartridge, and an image forming apparatus ([0001]) which may be used with the toner or developer.
Tanabe teaches a toner cartridge which contains the toner, and which is detachable from an image forming apparatus ([0142]). In the absence of an apparatus taught by Kudo or Sakai, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the toner of Kudo having silica particles surface-treated as taught by Sakai with the toner cartridge of Tanabe, satisfying Claim 14.
Tanabe teaches a process cartridge which contains the developer; which comprises a developing unit which develops an electrostatic image formed on an electrostatic image holding member; and which is detachable from an image forming apparatus ([0138]), satisfying Claim 15.
Tanabe describes an image forming apparatus comprising an image holding member, a charging unit, an electrostatic charge image forming unit, a developing unit which contains the developer and develops an electrostatic image held on the image holding member, a transfer unit, a cleaning unit, and a fixing unit ([0120]), satisfying Claim 16.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grant S Seiler whose telephone number is (571)272-3015. The examiner can normally be reached 9:30 - 5:30 Pacific.
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/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 04/27/2026
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