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 has been amended to incorporate the limitations of Claim 2 and Claim 6. Claims 2 and 6 are accordingly canceled. Claim 7 is amended to maintain proper dependency. New Claim 12 has been added. Claims 1, 3, 4, 7, 8, and 12 are pending in the present application. Non-elected Claims 9 – 11 remain withdrawn from consideration (see Restriction Requirement dated 2025-04-29, and Applicant’s Response to Restriction Requirement dated 2025-06-23). No new subject matter has been added.
Response to Arguments
Applicant’s arguments regarding the rejection under 35 U.S.C. §112(b) (non-final rejection dated 2026-03-20) are persuasive. The rejection is accordingly withdrawn.
Applicant’s arguments regarding the rejection under 35 U.S.C. §103 have been fully considered, but are not persuasive. Applicant argues, in essence, that the teaching by Uchinokura (primary reference cited in the rejection under §103) of a greater addition amount of external additives to the first toner than to the second toner(s) represents a teaching away from the limitation of Claim 1 which recites a greater addition amount of silica particles A to the second toner(s) than to the first toner. The argument is reflected regarding the addition amounts of silica particles B to the first and second toners.
However, as noted in the updated rejection below, Uchinokura teaches that the addition amount of the external additives is greater in the first toner than in the second toner(s) ([0025]). Where the external additives taught by Uchinokura include particles other than silica ([0025] – [0027], [0061]), the teaching of Uchinokura does not necessitate that the addition amount of the silica particles is greater in the first toner than in the second toner(s). That is, it would be acceptable, given the teaching of Uchinokura, for the addition amount of silica particles to be greater in the second toner(s) than in the first toner, while the addition amounts of an external additive other than silica particles result in the first toner having a greater addition amount in total of the external additives greater than in the second toner(s). Therefore, Uchinokura does not teach away from the relative addition amounts of silica particles A in the first toner and second toner(s) as recited in Claim 1, or those amounts of silica particles B recited in Claim 7.
Applicant further argues that a practitioner of ordinary skill in the art would not, in the course of routine experimentation, prepare a toner set wherein the addition amount of silica particles A (or silica particles B, for that matter) is greater in the second toner(s) than in the first toner, since that would require a reversal of the teachings of Uchinokura. However, as described above, the relative addition amounts of silica particles to the first and second toner(s) recited in Claims 1 and 7 do not require a reversal of the teachings of Uchinokura, which surround the relative addition amounts of a total of external additives to the first and second toner(s). Therefore, the rationale of routine experimentation laid out in the updated rejections below is not invalidated.
For these reasons, the updated rejections below are not withdrawn.
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.
Claims 1, 3, 4, 7, 8, and 12 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 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]).
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. 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.
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, Uchinokura’s teaching would allow the addition amount of silica particles to the second toner(s) to be greater than the addition amount of silica particles to the first toner, so long as the total amount of external additives (including at least silica particles and silicone resin particles) added to the first toner was greater than that for the second toner(s).
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 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.
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 amount of 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 inequality stated in 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.
Uchinokura discloses the preparation of black toner particles having an average diameter of 6.5 µm ([0080]); yellow toner particles having an average diameter of 6.6 µm ([0082]); magenta toner particles having an average diameter of 6.8 µm ([0084]); and cyan toner particles having an average diameter of 6.9 µm, all lying in the range stated in Claim 12. In addition, Chiba teaches a preferable range for the volume-average diameter of the toner particles of 3 – 10 µm, encompassing the range stated in Claim 12.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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 06/17/2026
Prosecution Insights