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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2025-11-28 has been entered.
Response to Amendment
Independent Claim 1 has been amended to specify that the protective layer of the first external additive particle is a multi-layer protective layer, and to reflect inclusion of first silica particles in the external additive. Claim 2 has been cancelled. Claim 3 remains as originally presented. Claim 4 is amended to specify second external additive particles as the fluorine-containing particles. Claim 5 is amended to depend on Claim 1, and to specify fluororesin particles as the fluorine-containing particles. Claim 6 is amended to specify that the silica base particle is a second silica particle.
Independent Claim 7 has been amended to reflect inclusion of first silica particles in the external additive. Claims 8 and 9 remain as previously presented. Claim 10 is amended to specify second external additive particles as the fluorine-containing particles. Claim 11 is amended to specify fluororesin particles containing PTFE as the fluorine-containing particles. Claim 12 is amended to specify that the silica base particle is a second silica particle.
Independent Claim 13 has been amended to reflect inclusion of first silica particles in the external additive. Claim 14 remains as previously presented. Claim 15 is amended to specify second external additive particles as the fluorine-containing particles. Claim 16 is amended to specify fluororesin particles containing PTFE as the fluorine-containing particles. Claim 17 is amended to specify that the silica base particle is a second silica particle.
New Claims 18, 19, and 20, depending on Claims 1, 7, and 13, respectively, have been added, reflecting fluororesin particles containing perfluoroalkoxy fluororesin as the fluorine-containing particles.
No new subject matter has been added.
Response to Arguments
Applicant's arguments filed 2025-11-28 have been fully considered but they are not persuasive.
Applicant argues that Ono, cited in the rejection of independent Claim 1, teaches as preferred embodiments external additive particles having a surface treatment layer of silicone oil disposed on a protective layer, analogous to multi-layer protective layer on the first external additive particles of the present invention, and therefore fails to teach an outer layer of the multi-layer protective layer containing a component derived from a silane coupling agent. However, as mentioned in the prior office action, Ono explicitly teaches that the surface treatment layer may be formed from a silane coupling agent, and even goes on to discuss preferred types and examples of silane coupling agents (see rejections below). Ono’s teaching of a silane coupling agent as a surface treatment layer on the first external additive particles is not invalidated by a separate and later discussion of preferred embodiments not including a silane coupling agent.
Applicant also argues that neither of Yamashita or Katayama, cited in the rejection of independent Claims 1, 7, and 13, teaches first silica particles having a number-average diameter of 20 – 300 nm. This limitation was not part of the claims which were rejected in the prior office action, and so no treatment of first silica particles was given. This limitation which has been added by the most recent amendments is addressed in the rejections below.
Finally, Applicant argues that even though Yamashita, the primary reference in the rejection of Claim 12, teaches the option of using the toner as a one-component developer, that the toner resulting from combining the teachings of Yamashita with Ueda (the secondary reference) necessarily results in a toner for use in a two-component developer, thereby failing to read on Claim 12. Where Claim 12 depends on Claim 7, and the limitation regarding a one-component developer is recited in Claim 7, the combined references would allegedly fail to read on independent Claim 7 as well. However, in addition to the fact that the primary reference, Yamashita, teaches the use of the toner as a one-component developer (as helpfully pointed out by Applicant), the teachings of Ueda are not dependent on the toner being used in a two-component developer. The teachings of Ueda relate to structural features of the toner which impart favorable properties to the same, regardless of the format of developer in which the toner is utilized. In addition, Ueda describes the toner as an invention independent from its use in a two-component developer, and the use of said toner as a one-component developer would have been
obvious to a person of ordinary skill in the art.
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, 3, 5, 7 – 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ono (JP 2020-129031) in view of Katayama et al (JP 2009-128778) (machine translations referred to henceforth).
Ono teaches a developer containing a toner, which includes toner particles. The toner particles contain a mother particle and an external additive ([0016]). The external additive of Ono comprises a substrate, a conductive layer, a protective layer, and a surface treatment layer ([0016]). The substrate (or base particle) of the external additive may be aluminum oxide (alumina) ([0027]). Ono teaches that the conductive layer, which covers the substrate, preferably contains a metal oxide having conductivity, and gives antimony-doped tin oxide as an example ([0031]). Ono teaches that the protective layer, which covers the conductive layer, may be derived from a titanate coupling agent ([0035]). Isopropyltriisostearoyl titanate is given as an example of a titanate coupling agent ([0036]). Ono also teaches that the protective layer may contain a melamine resin, a urethane resin, or aluminum hydroxide ([0035]). Ono teaches that the surface treatment layer, which covers the protective layer, is derived from a silane coupling agent or silicone oil ([0040]). The protective layer of Ono formed from melamine resin, urethane resin, or aluminum hydroxide, in tandem with the surface treatment layer of Ono formed from a silane coupling agent or silicone oil, is analogous to the multi-layer protective layer of Claim 1 of the instant application. Ono teaches that the number-average particle size of the external additive is preferably 30 – 350 nm ([0025]), reading on the range stated in Claim 1.
Ono describes formation of the conductive layer on the substrate by treating the base particles in an aqueous suspension with a hydrochloric acid solution of SnCl4 and SbCl3 added in parallel with aqueous ammonia ([0072]), a procedure substantially identical to that described in the Specification of the instant application (Specification, page 30, line 25 – page 31, line 16). Ono describes formation of the protective layer, covering the conductive layer, by treating the previously obtained particles with methylol melamine ([0079]), in a procedure substantially identical to that described in the Specification of the instant application (Specification, page 26, line 10 – page 27, line 7). Ono describes formation of the protective layer, covering the conductive layer, by treating the previously obtained particles with urethane resin ([0080]), in a procedure substantially identical to that described in the Specification of the instant application (Specification, page 27, line 8 – page 28, line 4). Ono describes formation of the protective layer, covering the conductive layer, by treating the previously obtained particles with polyaluminum chloride ([0081]), in a procedure substantially identical to that described in the Specification of the instant application (Specification, page 28, lines 5 – 26), resulting in a protective layer of aluminum hydroxide. Ono describes formation of the surface treatment layer, covering the protective layer, by treatment of the previously obtained particles with isobutyl(triethoxy)silane ([0082]), a procedure substantially identical to that described in the Specification of the instant application (Specification, page 28, line 28 – page 29, line 10), resulting in a surface layer containing a component derived from a silane coupling agent.
The external additive particles taught by Ono having a protective layer of methylol melamine, urethane resin, or aluminum hydroxide, and a surface layer formed from a silane coupling agent, would be substantially identical to first external additive particles E, F, and G of the instant application (Specification, page 34, table 2), which have reported values for powder specific resistance of 24 - 25 Ω·cm (Specification, page 37, Table 3, Example 14). Therefore, the external additive particles of Ono would necessarily or inherently possess a powder specific resistance in the range stated in Claim 1. Ono teaches that the toner particles preferably have another external additive in addition to the coated aluminum oxide particles previously described ([0022]).
Ono teaches the optionality of including silica particles in the external additive ([0049]), but does not appear to teach a preferred particle size. Ono does not appear to teach an external additive comprising fluorine-containing particles.
Katayama teaches a toner comprising toner mother particles and an external additive which includes polytetrafluoroethylene (PTFE) fine particles, which are fluorine-containing particles, having a diameter of 100 – 1000 nm ([0009]). Katayama teaches that incorporation of PTFE particles alongside silica and/or alumina fine particles as the external additive helps to suppress separation of the metal oxide particles from the toner base particles ([0018]), thereby improving chargeability and suppressing the appearance of fogging ([0011]). Katayama also teaches that the silica particles added alongside the PTFE particles have a mean particle size of 50 – 300 nm, reading on the range stated in Claim 1 ([0011]).
In seeking to improve the chargeability and suppress fogging effects of the toner of Ono, 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 toner of Ono to include the external additive of Katayama in addition to that taught by Ono, thereby preparing a toner described by Claim 1.
As discussed above, the PTFE particles of Katayama have a particle diameter of 100 – 1000 nm, overlapping the range stated in Claim 3.
The Specification of the instant application lists PTFE as an example of a fluororesin (Specification, page 13, line 14). Therefore, the PTFE particles of Katayama are fluororesin particles, satisfying Claim 5.
Katayama teaches the use of a toner as a one-component developer ([0003], [0062]). In addition, the toner of Ono, before being mixed with a carrier, would constitute a one-component developer. Therefore, the toner of Ono including the external additive of Katayama would be a one-component developer, satisfying Claim 7.
As discussed above, the external additive particles of Ono may have a protective layer of methylol melamine, urethane resin, or aluminum hydroxide, and an outer layer containing the product of a silane coupling agent, reading on the two-layer protective layer of Claim 8.
As discussed above, Katayama’s PTFE, which are fluorine-containing particles, have a diameter of 100 – 1,000 nm, encompassing the range stated in Claim 9.
As discussed above, PTFE particles are fluororesin particles, and therefore read on Claim 11.
Claims 13, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020-112649) in view of Katayama et al (JP 2009-128778) (machine translations referred to henceforth).
Yamashita teaches a toner comprising toner particles, each of which includes a toner mother particle containing a binder resin and an external additive ([0006]). The external additive taught by Yamashita includes composite particles, which include a base material particle and a conductive particle attached to the surface of the base material particle ([0019]). The base material particles may be alumina particles, and preferably have a number-average primary particle size of 100 – 250 nm ([0069], [0071]). The conductive particles may be antimony-doped tin oxide (ATO) particles ([0079]), which preferably have a number-average primary particle size of 10 – 40 nm ([0078]). These ATO particles in combination with the alumina base material particles would have a composite particle diameter of in the range of about 120 – 330 nm, overlapping the range stated in Claim 13. The composite particles of Yamashita are preferably surface-treated ([0082]) with a titanate coupling agent ([0083]). Isopropyltriisostearoyl titanate is given as an example of a titanate coupling agent ([0085]). Yamashita does not appear to teach another layer or coating on top of the titanate coupling layer, which therefore represents an outermost single-layer protective layer derived from a titanate coupling agent. Yamashita teaches a preferred volume resistivity of the conductive particles (ATO) as low as 1 Ω·cm ([0080]), which would allow the composite particles to have a value for powder specific resistance lying in the range stated in Claim 13.
Yamashita teaches that other external additive particles may be included in the toner ([0091]), but does not appear to teach fluorine-containing particles, or silica particles having a number-average diameter of 20 – 300 nm.
Katayama teaches a toner comprising toner mother particles and an external additive which includes polytetrafluoroethylene (PTFE) fine particles, which are fluorine-containing particles, having a diameter of 100 – 1000 nm ([0009]). Katayama teaches that incorporation of PTFE particles alongside silica and/or alumina fine particles as the external additive helps to suppress separation of the metal oxide particles from the toner base particles ([0018]), thereby improving chargeability and suppressing the appearance of fogging ([0011]). Katayama also teaches that the silica particles added alongside the PTFE particles have a mean particle size of 50 – 300 nm, reading on the range stated in Claim 13 ([0011]).
In seeking to improve the chargeability and suppress fogging effects of the toner of Yamashita, 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 toner of Yamashita to include the external additive of Katayama in addition to that taught by Yamashita, thereby preparing a toner described by Claim 13.
As discussed above, the PTFE particles of Katayama have a particle diameter of 100 – 1000 nm, overlapping the range stated in Claim 14.
As discussed above, PTFE particles are fluororesin particles, and therefore read on Claim 16.
Claims 1, 4, 6, 7, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ono (JP 2020-129031) (machine translation referred to henceforth) in view of Ueda et al (US PGP 2019/0056679).
The above discussion of Ono is incorporated herein.
Ueda teaches a toner having an external additive comprising silica particles (Abstract). Ueda teaches that the silica particles are preferably coated with silicone oil ([0015]), which helps to suppress cleaning failure ([0015]), improve initial transferability ([0017]), and improve charge stability ([0019]). Ueda teaches that the number-average primary particle diameter of the silica particles is preferably 5 – 300 nm ([0053]). Ueda gives fluorine-modified silicone oil as an example of a silicone oil which can be used to treat the surfaces of the silica particles ([0055]). These particles are analogous to the fluorine-containing particles of Claim 1, the “second external additive” particles of Claim 4, and the “second silica particles” of Claim 6.
Ueda also teaches that large-diameter silica particles, other than those treated with fluorine-modified silicone oil just discussed, are preferably also added as an external additive ([0141]). These silica particles preferably have a number-average particle diameter of 70 – 250 nm, reading on the range stated in Claim 1, and may be surface treated or not surface treated ([0141]). These particles are analogous to the “first silica particles” of Claim 1.
In seeking to improve the charge stability and transferability, and to suppress cleaning failure of the toner of Ono, 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 toner of Ono to include the external additive of Ueda, in addition to that taught by Ono, thereby preparing a toner described by Claim 1, Claim 4, and Claim 6.
As discussed above, the toner of Ono, before being mixed with a carrier, would constitute a one-component developer. Similarly, Ueda teaches that a two-component developer can be obtained by mixing the toner with a carrier ([0169]). Ueda then gives the understanding that a toner, before being mixed with a carrier, constitutes a one-component developer. Therefore, the toner of Ono including the external additive of Ueda would be a one-component developer, satisfying Claim 7.
Where, as discussed above, Ueda’s silica particles treated with fluorine-modified silicone oil are analogous to the “second external additive”, and the base of said particles, being silica, are analogous to “second silica particles”, they would read on Claim 10 and Claim 12.
Claims 13, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020-112649) (machine translation referred to henceforth) in view of Ueda et al (US PGP 2019/0056679).
The above discussions of Yamashita and Ueda are incorporated herein.
As mentioned above, Yamashita’s treated alumina particles read on the “first external additive” particles of Claim 13. As also mentioned above, Ueda’s silica particles treated with fluorine-modified silicone oil read on “fluorine-containing particles”, and Ueda’s large-diameter silica particles read on the “first silica particles”.
In seeking to improve the charge stability and transferability, and to suppress cleaning failure of the toner of Yamashita, 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 toner of Yamashita to include the external additive of Ueda, in addition to that taught by Yamashita, thereby preparing a toner described by Claim 13.
Where, as discussed above, Ueda’s silica particles treated with fluorine-modified silicone oil are analogous to the “second external additive”, and the base of said particles, being silica, are analogous to “second silica particles”, they would read on Claim 15 and Claim 17.
Claims 1, 7, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ono (JP 2020-129031) in view of Tanabe et al (JP 2017-198946) (machine translations referred to henceforth).
The above discussion of Ono is incorporated herein.
Tanabe teaches a toner comprising toner particles, silica particles, and lubricant particles ([0009]). Lubricant particles are added to a toner to reduce the wear of a cleaning blade on an electrophotographic image carrier ([0026]). Tanabe teaches that negatively chargeable lubricant particles and positively chargeable lubricant particles are used in combination ([0071]), and the negatively chargeable lubricant particles may be resin particles of perfluoroalkoxy fluororesin ([0074]). These particles are analogous to the fluorine-containing particles of Claim 1.
Tanabe teaches that the silica particles have an abrasive role, and remove lubricant film from the surface of the electrophotographic image carrier ([0029]). To control fixation of the silica particles to the toner particles and to impart a scraping function so that the silica particles can remove the lubricant film from the image carrier, the silica particles preferably have an average particle diameter of 80 – 200 nm ([0029]). These silica particles are analogous to the “first silica particles” of Claim 1.
In preparing the toner taught by Ono, one of ordinary skill in the art would have been motivated to reduce the wear on an electrophotographic image carrier by incorporating the externally added lubricant particles and silica particles taught by Tanabe, in addition to the external additive taught by Ono, thereby preparing a toner described by Claim 1.
As discussed above, the toner of Ono, before being mixed with a carrier, would constitute a one-component developer. In addition, Tanabe teaches the optionality of using a toner as a one-component developer ([0114]). Therefore, the toner of Ono including the external additive of Tanabe would be a one-component developer, satisfying Claim 7.
As mentioned above, the negatively chargeable lubricant particles taught by Tanabe may be perfluoroalkoxy fluororesin particles, reading on Claim 18 and Claim 19.
Claims 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020-112649) in view of Tanabe et al (JP 2017-198946) (machine translations referred to henceforth).
The above discussions of Yamashita and Tanabe are incorporated herein.
In preparing the toner taught by Yamashita, one of ordinary skill in the art would have been motivated to reduce the wear on an electrophotographic image carrier by incorporating the externally added lubricant particles and silica particles taught by Tanabe, in addition to the external additive taught by Yamashita, thereby preparing a toner described by Claim 13.
As mentioned above, the negatively chargeable lubricant particles taught by Tanabe may be perfluoroalkoxy fluororesin particles, reading on Claim 20.
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.
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/GRANT STEVEN SEILER/ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 12/22/2025