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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2026-02-19 has been entered.
Response to Amendment
Claim 1 has been amended to reflect the limitations of Claim 5, as well as limitations moved from Claim 6 and Claim 7. Of the pending Claims 1 – 11, non-elected Claims 9 – 11 remain withdrawn from consideration (see Restriction Requirement dated 2025-04-29, and Applicant’s Response to Restriction Requirement dated 2025-06-23).
Response to Arguments
Applicant submitted Remarks alongside the RCE (see above) regarding the final rejection dated 2025-11-26. Therein, Applicant argues that it would not be obvious to one of ordinary skill in the art to apply the silicone resin particles taught by Chiba, since Chiba makes no mention of a toner set or the relative amounts of external additives comprised in the various toners of a set. However, since a toner set, the notion of which is well-known in the art, is comprised of multiple individual toners, it is obvious to apply a teaching regarding an individual toner to one or more of the toners which are part of a set. Applicant further asserts that, since Chiba teaches a motivation for externally adding the silicone resin particles to a toner, that a practitioner of ordinary skill would necessarily apply that teaching to each of the toners comprising a set. However, again, since the toner set comprises several individual toners, it would be considered obvious to apply a teaching to at least one of those component toners, without any necessity for application to another. Applicant also asserts that the application of Chiba’s teaching to one toner of a set and not to all the rest represents hindsight reasoning. Again, where Chiba teaches an external additive applied to a single toner, and where a toner set comprises several individual toners, there is motivation to apply that teaching to one or more of those component toners. Chiba does not teach application to each toner in a set, and so one of ordinary skill in the art would not require motivation not to apply Chiba’s teaching to each individual toner of a set. In addition, as discussed in the updated rejection below, applying the teachings of Chiba to a toner set by selecting to which individual toners and in what amounts to add the silicone resin particles represents routine experimentation. Finally, Applicant argues that Ieda does not teach a toner set or any of the features of the external additives of the present invention. However, Ieda was not required in the prior office action to teach any structural or chemical feature, but to establish a teaching of the relationship between the well-known feature of the flowability with the more obscure internal friction angle. For these reasons, the updated rejection below is maintained.
Claim Objections
Applicant is advised that should Claim 1 be found allowable, Claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1 – 8 are rejected under 35 U.S.C. 112(b) as failing to set forth the subject matter which the inventor or a joint inventor regards as the invention. Claims 1 - 8 are indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. In particular, Claim 1 and Claim 4 recite limitations in terms of the internal friction angle Θ, which is a physical property and not a chemical or structural feature, of the first and second toners of the set. Claims 2, 3, and 5 – 8 each depend, directly or indirectly, on Claim 1, and therefore also reflect this limitation.
Ex parte Slob, 157 USPQ 172, states, “Claims merely setting forth physical characteristics desired in an article, and not setting forth specific composition which would meet such characteristics, are invalid as vague, indefinite, and functional since they cover any conceivable combination of ingredients either presently existing or which might be discovered in the future and which would impart said desired characteristics.” Also, “it is necessary that the product be described with sufficient particularity that it can be identified so that one can determine what will and will not infringe.” Benger Labs, Ltd v. R.K. Laros Co., 135 USPQ 11, In re Bridgeford 149 USPQ 55, Locklin et al. v. Switzer Bros., Inc., 131 USPQ 294; furthermore, “Reciting the physical and chemical characteristics of the claimed product will not suffice where it is not certain that a sufficient number of characteristics have been recited that the claim reads only on the particular compound which applicant has invented.” Ex parte Siddiqui, 156 USPQ 426, Ex parte Davission et al., 133 USPQ 400, Ex parte Fox, 128 USPQ 157.
Claim Rejections - 35 USC § 103
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.
Claims 1 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over Uchinokura et al (JP 2002-278143) (machine translation of which is referred to herein) in view of Chiba et al (US PGP 2019/0212667), further in view of Ieda (US PGP 2007/0099102).
Uchinokura teaches an image forming method and apparatus ([0021]) which use color toners ([0023]), which include at least yellow, cyan, and magenta ([0024]). Uchinokura discusses the development of successive toner images on an image bearing member ([0024] – [0027]), rendering the collection of colored toners used analogous to a toner set. Uchinokura teaches that the toners each contain at least a binder resin, a colorant, and external additives ([0025]). The external additives include silica and titania particles ([0025]). Uchinokura teaches that each of the external additives may be added in amounts within preferred ranges ([0062] – [0064]). Uchinokura also teaches that the toners may contain a charge control agent ([0066]), and discloses a preparative example having a charge control agent ([0080]). Uchinokura teaches that toners earliest in the development order (analogous to a first toner) have a larger addition amount of external additive than toners later in the development order (analogous to second toners) ([0025] – [0027]). Uchinokura links addition of external additives to the fluidity of the toner ([0006], [0012], [0062], [0065]), but does not appear to make mention of the friction angle of the toner (either by name or by its representation by Greek letter theta). Uchinokura also does not appear to teach externally added silicone resin particles.
Chiba teaches a toner comprising colored toner particles comprising a binder resin, a colorant, a charge control agent, and external additives ([0012]). The external additives include external additive A, external additive B, and external additive C.
External additive A is silica particles having a number-average particle diameter of 5 – 30 nm and being hydrophobically treated by a hydrophobizing agent belonging to at least one of the classes of aminoalkyl silanes, silane coupling agents, and silicone oil. External additive A of Chiba appears to be substantially the same as silica particles A of the instant application. Chiba teaches that external additive A imparts excellent flowability and transferability to the toner ([0021]). External additive A is preferably added in an amount of 0.1 – 2.0 parts by mass relative to 100 parts of toner particles ([0031]).
External additive B is silicone resin particles having a ratio of measured BET surface area to calculated BET surface area (BS/TS) of 3 – 30 and a number-average particle diameter of 50 – 1,000 nm. External additive B of Chiba appears to be substantially the same as the silicone resin particles of the instant application. Chiba teaches that external additive B allows the toner to have appropriate charge properties under a wide range of temperature and humidity conditions ([0033]). External additive B is preferably added in an amount of 0.1 – 1.0 parts by mass relative to 100 parts of toner particles ([0042]).
External additive C is silica particles having a number-average particle diameter of 31 – 200 nm and being hydrophobically treated by a hydrophobizing agent belonging to at least one of the classes of aminoalkyl silanes, silane coupling agents, and silicone oil. External additive C of Chiba appears to be substantially the same as silica particles B of the instant application. Chiba teaches that external additive C imparts improved flowability to the toner, and suppresses fogging and print soiling ([0052]), even in the presence of external additive A. External additive C is preferably added in an amount of 0.1 – 3.0 parts by mass relative to 100 parts of toner particles ([0055]).
Chiba also does not appear to make mention of the friction angle of the toner.
Ieda teaches that the internal frictional angle (identical to the internal friction angle of the instant application) is a proxy for the flowability of a toner ([0041] – [0042]). A low frictional angle corresponds to higher flowability, and a high frictional angle corresponds to lower flowability ([0044] – [0045]).
In seeking to improve the flowability of the toners in the set taught by Uchinokura, one of ordinary skill in the art would have been motivated to incorporate the external additives A and C of Chiba, which are silica particles reading on the instant silica particles A and B of the instant application. Where Uchinokura teaches that toners earlier in the set should have a larger amount of external additive than toners later in the set, imparting greater flowability to the earlier toners, and understanding, as taught by Ieda, that the internal friction angle of a toner is a proxy for its flowability, the earlier (first) toner of Uchinokura bearing the silica particles of Chiba would therefore possess a lower frictional angle than the later (second) toners, satisfying instant Formula (1). In addition, since Uchinokura teaches preferred ranges for the addition amounts of the various external additives, it would have been obvious to optimize the flowability of the first and second toners by routine experimentation within these ranges, resulting in a toner set satisfying Formula (2).
In addition, in seeking to impart favorable charging properties under a wide range of temperature and humidity conditions to any of the toners in the set taught by Uchinokura, one of ordinary skill in the art would have been motivated to externally add the silicone particles of Chiba to at least one of those toners. Moreover, Chiba makes no mention of a toner set, and so does not require all toners in a set to bear externally added silicone resin particles if any one toner does. In addition, externally adding the silicone resin particles of Chiba only to the first toner, and not to the second toners, would have been an obvious optional configuration for conforming to the teaching of Uchinokura that the toners of the set earlier in the development order have a larger external addition amount than those later in the development order.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the first and second toners of Uchinokura with the externally added silica particles of Chiba, and to modify the first toner of Uchinokura with the silicone resin particles of Chiba, resulting in a toner set described by Claim 1.
Uchinokura teaches that the color toner set described above is meant for use in a full-color image forming method using a printer, wherein a toner image is transferred from an image carrier to an intermediate transfer member ([0001]). In addition, Uchinokura describes the sequential transfer of a toner image formed by a first toner (earlier in the development order) and a toner image formed by a second toner (later in the development order) to the intermediate transfer medium ([0024] – [0025]), satisfying Claim 2.
Uchinokura allows any of yellow, cyan, or magenta to be the earliest (first) toner in the development order, satisfying Claim 3.
As discussed above, since Uchinokura teaches preferred ranges for the addition amounts of the various external additives, it would have been obvious to optimize the flowability of the first and second toners by routine experimentation within these ranges, resulting in a toner set wherein the first and second toners have internal friction angles in the ranges stated in Claim 4.
As discussed above, Chiba’s external additive B is silicone resin particles having a ratio of measured BET surface area to calculated BET surface area (BS/TS) of 3 – 30 and a number-average particle diameter of 50 – 1,000 nm, satisfying Claim 5.
In the course of optimizing the relative flowability of the toners in the set of Uchinokura as modified with the silicone particles and hydrophobizing agent of Chiba, one of ordinary skill in the art would have undertaken routine laboratory experimentation varying the addition amount of silica particles to the first and second toners in the set. 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 set of Uchinokura, modified with the externally added silicone particles and the hydrophobizing agent of Chiba, such that the addition amounts of hydrophobic silica particles having a diameter of 10 – 30 nm (analogous to silica particles A of the instant application) and the hydrophobic silica particles having a diameter of 31 – 200 nm (analogous to silica particles B of the instant application) on the first and second toners of the set satisfied the inequalities stated in Claim 6 and Claim 7.
Chiba teaches that the circularity of toner particles is preferably 0.94 – 0.995, which improves transferability of the toner ([0085]). In seeking to improve the transferability of the toners in the set taught by Uchinokura, one of ordinary skill in the art would have been motivated to control the circularity of the toner particles in the range taught by Chiba. 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 set of Uchinokura wherein the circularity of each toner in the set has a circularity lying in a range overlapping that stated in Claim 8.
Conclusion
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.
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, Jonathan Johnson can be reached at 571-272-1177. 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.
/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 03/18/2026