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 Arguments
Applicant's arguments filed 2026-05-08 have been fully considered but they are not persuasive. First, Applicant argues, in essence, that, since the silane treatment agents pointed out as particularly preferable by Kaneeda (which do not read on Formula 1 of instant Claim 1) yield somewhat poorer performance in the evaluations of preparative examples in the instant application, the properties of fog suppression and image density stability would not necessarily flow from the combined teachings of Yamada, Kaneeda, and Obara.
However, Kaneeda’s stated preference for a particular silane treatment agent (e.g. octyltrimethoxysilane or HMDS) does not negate the teaching of another silane treatment agent (e.g. ethyl(triethoxy)silane or butyl(trimethoxy)silane) as suitable for the purpose of hydrophobization. Nor does such a stated preference constitute teaching away from other suitable silane treatment agents. The MPEP states:
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
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). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
MPEP §2123 (II)
Therefore, as detailed in the rejection below, one of ordinary skill in the art would be taught by Kaneeda that silane coupling agents having ethyl, propyl, or butyl groups (reading on instant Formula 1 of Claim 1) are suitable for hydrophobically treating silica particles. As previously stated (non-final rejection dated 2026-02-24), Kaneeda teaches that the hydrophobized silica particles are insensitive to low- and high-humidity conditions, imparting stable charging properties to a toner and enhancing the quality of printed images (Abstract, [0004], [0046]). As also previously stated, generation of fogging results from a drop in toner charge under high-humidity, and a decrease in image density results from an increase in toner charge under low-humidity, as described by the instant disclosure (Specification, [0003]). Thus, as taught by Kaneeda, the silane treatment agents would impart humidity-insensitive charge stability to the toner, from which would necessarily flow suppression of fogging and enhancement of image stability, making those results not unexpected.
Second, Applicant argues the criticality of the silane treatment agents bearing ethyl, propyl, or butyl groups. This criticality argument is mooted by the discussion above, showing that such treatment agents are taught by Kaneeda, and that the results achieved are not unexpected. However, for the sake of completeness, instant examples pointed out by Applicant as being treated with octyltrimethoxysilane is not drastically inferior in evaluations to other preparative examples. Developer 8 (treatment with octyltrimethoxysilane) scored AA in the fog evaluation, and failed the image density evaluation by a slim margin (measured value of 0.021, where a passing value is <0.020). Where only one example of R1 = C8H17 is presented, without varying the value of n or the treatment amount, and where no examples of R1 having 5 - 7 carbons is presented, it is not wholly convincing that R1 having 2 – 4 carbons is critical to evaluation performance in both fog suppression and image density stability.
Applicant’s third argument is roughly similar to the first, and for the reasons stated above, the teachings of Kaneeda would pertain. Where Kaneeda teaches that hydrophobic treatment of the silica particles makes them insensitive to humidity, imparting stable charging properties to the toner, and where Kaneeda further teaches that the stable charging property enhances the stability and quality of printed images, the suppression of fog and the improvement of image stability would not be unexpected to one of ordinary skill in the art.
Finally, Applicant makes note of the scope of the results with respect to scope of Claim 1. This argument is mooted by the discussion above showing that the results are not unexpected in light of the teachings of Kaneeda alongside Yamada and Obara.
For these reasons, the rejections stated in the prior office action and restated 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.
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 and 3 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al (US PGP 2020/0081362) in view of Kaneeda et al (US PGP 2017/0168409), further in view of Obara et al (US PGP 2019/0354032).
Yamada teaches a toner including at least a binder resin and a colorant (Abstract). The base particles of the toner have an external additive ([0194]), which may be silica or titania particles, and which may be used alone or in combination ([0195]). The externally added particles are preferably hydrophobized by a surface treatment agent ([0199]). Yamada teaches that the toner may be mixed with a carrier and used as a two-component developer ([0267]). Yamada does not appear to teach silane coupling agents having linear alkyl groups of 2 – 4 carbons as hydrophobizing agents for the externally added metal oxide particles.
Kaneeda teaches a hydrophobic silica powder for use as an external additive with toner particles (Abstract, [0007]). The hydrophobic silica of Kaneeda imparts upon the toner to which it is externally added stable charging property leading to stable quality of printed images ([0015]). Kaneeda teaches hydrophobically surface-treating the silica with silane coupling agents ([0024]). Among the examples of silane coupling agents given by Kaneeda are: ethyl(triethoxy)silane, ethyl(trichloro)silane, ethyl(trimethoxy)silane, butyl(triethoxy)silane, butyl(trimethoxy)silane, propyl(triethoxy)silane, propyl(trimethoxy)silane, diethyl(diethoxy)silane, diethyl(dimethoxy)silane, triethyl(ethoxy)silane, triethyl(chloro)silane, triethyl(methoxy)silane, tripropyl(ethoxy)silane, tripropyl(chloro)silane, and tripropyl(methoxy)silane ([0028]), all of which read on Formula (1) of Claim 1. Neither of Yamada or Kaneeda appears to teach the iron element content on the surface of a carrier particle.
Obara teaches a two-component developer, including a toner base particle bearing an external additive, and a carrier particle, which includes a core material and a covering section, analogous to a shell portion ([Abstract]). Obara teaches that the exposed area of the core material particle of the carrier, analogous to the iron element content measured by XPS in the instant application, is preferably 4 – 15% ([0023]), the same as the range given by Expression (1) in Claim 1. Obara teaches that having the exposed area greater than 4% prevents too high of adhesion between the toner particle and the carrier particle, which would deteriorate the turnover of toner particles and lead to fogging and poor image quality. Further, having the exposed area less than 15% prevents a reduction in the amount of charge of the toner particle, which would lead to deteriorated image quality ([0023]). Obara measures the exposed area of the core material particle by a substantially identical method to that used in the present application to measure the iron element content in the instant application. That is, Obara compares the amount of iron measured by XPS to the amount of carbon measured by XPS on the surface of the carrier particle ([0024]). In addition, Obara exemplifies the production of a Carrier Particle 1 ([0188] – [0189]) by a method substantially identical to that for the production of Carrier Particles 3 of the instant application (Specification, [0285]). Obara reports an exposed area for the resultant carrier particle of 8.2% ([0189]), the same value as that reported for the iron element content Carrier Particles 3 of the instant application (Specification, page 47, Table 3), supporting the interpretation that these differently named parameters are in fact the same measurement.
In preparing the toner of Yamada, one of ordinary skill in the art would have been motivated to enhance the charging properties of the toner particles by treating the externally added metal oxide particles (which may be silica and/or titania) as taught by Kaneeda. One of ordinary skill in the art would have been motivated to also suppress image fogging and enhance image quality by using such a toner as part of a two-component developer alongside the carrier taught by Obara. 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 a two-component developer comprising the toner of Yamada, wherein the externally added silica and/or titania particles are surface-treated as taught by Kaneeda, and the carrier of Obara, resulting in a two-component developer satisfying Claim 1.
Obara teaches that the preferable shape factor, SF-1, of the core material particles of the carrier is 115 – 150, the same as the range of Claim 3.
Obara points out the option of preparing a core-shell structured toner particle ([0116]), and then details the steps of such a procedure ([0117] – [0124]). In addition, an exemplified toner base particle of Obara has a core-shell structure ([0156]), satisfying Claim 4.
Obara teaches that the binder resin of the toner base particle preferably contains 50 – 80% by mass of amorphous resin ([0073]), and that the content of vinyl resin in the amorphous resin is preferably more than 50% by mass ([0072]). Obara forms the exemplified core-shell structured toner particle from a core containing 87% by mass of “resin fine particle SPI” ([0156]), which is an amorphous vinyl resin ([138] – [147]), and a shell composed entirely of “resin fine particle D1”, which is an amorphous polyester resin ([0150] – [0154]). Therefore, the core-shell toner particle of Obara has a core with an amorphous vinyl resin as a main component, and a shell with an amorphous polyester resin as a main component, satisfying Claim 5.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al (US PGP 2020/0081362) in view of Kaneeda et al (US PGP 2017/0168409), further in view of Obara et al (US PGP 2019/0354032), further in view of Horiuchi et al (US PGP 2011/0287353).
The above discussions of Yamada, Obara, and Kaneeda are incorporated herein.
Neither Obara nor Kaneeda appears to teach an image forming apparatus. Yamada discloses an image forming apparatus, but does not teach a cleaning unit.
Horiuchi teaches an image forming apparatus ([0307]) which contains at least: a charging unit that charges an electrostatic image bearing member ([0313]); a latent electrostatic image bearing member and a latent electrostatic image forming means ([0311] – [0312]); a developing unit ([0325]); a transferring unit ([0332]); a fixing apparatus ([0335]); and a cleaning means ([0342]). Horiuchi teaches that the apparatus may be used with a one-component or two-component developer ([0328]).
Therefore, 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 two-component developer comprising the toner of Yamada, wherein the externally added silica and/or titania particles are surface-treated as taught by Kaneeda, and the carrier of Obara, with the image forming apparatus of Horiuchi, satisfying Claim 7.
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 06/02/2026
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