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, see the Response, filed 09/29/2025, with respect to the rejection(s) of claim(s) 1-9 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the prior art set forth below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2 187 264 (henceforth EP ‘264) in view of JP 2003-167380 (henceforth JP ‘380) and further in view of Asakawa (US PGP 2018/0017884).
EP ‘264 teaches a toner comprising a binder resin and a release agent (wax; [0044-47]). The toner is further taught to have a circularity of 0.97 or greater ([0117]) and an average surface roughness of 75.3 to 236.9 nm ([0131]). The toner is further taught to have an external additive deposited on the surface of the toner ([0048] and [0064-99]). In embodiments the external additive is taught to be Aerosil RX 50, which is a silica ([0064-99]). EP ‘264 teaches that the binder resin may be a polyester but does not teach a crystalline polyester. The toner base particle is further taught to comprise an inorganic filler ([0049]). The toner is further taught to be prepared by a method of dissolving or dispersing the binder resin in an organic solvent to prepare an oil phase in water ([0050-53]). Additionally, the toner is taught to be housed in a storage container and used in an image forming apparatus that reads on the limitations recited by the Applicant in pending claims 8-9 ([0015-41]). EP ‘264 does not teach a BET surface area for the toner particles.
JP ‘380 teaches a toner comprising an average value of the specific surface area of the toner base particles in the range of 0.6 to 3.0 m2/g (Abstract). It is taught that when the BET specific surface area is within the strange it is easy to stably manufacture the toner particles while improving transferability and fluidity of the toner (see “Best Mode for Carrying Out the Invention” section of the provided translation). The use of inorganic filler particles is further taught to improve glossiness and viscoelasticity of the toner (ibid). Additionally, JP ‘380 also teaches the use of external additives and further teaches that said external additives should have an average primary particle diameter of from 30 to 200 nm in order to improve fluidity and transferability of the toner (ibid).
Asakawa teaches a toner comprise a surface morphology with a first and second domain. The first domain is taught to have an arithmetic mean height of 10 to 50 nm and the second domain is taught to have an arithmetic meant height of 70 to 100 nm ([0032]). The surface morphology therefore reads on the Applicant’s limitation of an arithmetic mean heigh or 40 nm or more. Asakawa further rteaches that the arithmetic mean heigh of the surface of the toner is a result effective variable that controls both high-temperature preservability and low-temperature fixability ([0032]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have imparted the toner of EP ‘264 with a BET specific surface area within the range taught by JP ‘380, an arithmetic mean height optimized with the ranges taught by Asakawa, internal inorganic filler particles as taught by JP ‘380 and to have utilized external additives with particle sizes within the range taught by JP ‘380. This would have improved the manufacturing, transferability, preservability, fixability, fluidity and image quality of the toner of JP ‘380. Furthermore, optimizing the result effective variable of the particle size of the external additive as taught by JP ‘380 in the toner of EP ‘264 as well as the result effective variable of the surface roughness would have been obvious to anyone of ordinary skill in the art at the time of the effective filing date of the instant application. The ranges of the surface roughness (75.3 to 236.9 nm) and external additive particle size (30 to 200 nm) are such that values within the range of 1 to 3 would have been achieved through routine optimization in perfecting these result effective variables.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2 187 264 (henceforth EP ‘264) in view of JP 2003-167380 and further in view of Asakawa (US PGP 2018/0017884) as applied to claims 1-4 and 6-9 above, and further in view of Nosella et al. (US PGP 2015/0118610).
The complete discussions of EP ‘264, Asakawa and JP ‘380 above are included herein. EP ‘264 does not teach the use of a crystalline polyester resin as a component of the toner particles.
Nosella teaches a toner comprising both a styrene-acrylate resin and a polyester resin (Abstract). The polyester resin is further taught to be a crystalline polyester resin and is taught to be contained in the toner in an amount of from about 3 to about 10 percent by weight of the total weight of the toner core ([0016-17]). It is taught that by combining a styrene-acrylate resin with a polyester resin toner exhibiting improved surface morphology, blocking and percent heat cohesion can be obtained ([0002]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date to have imparted the toner of EP ‘265 as modified by JP ‘380 above with the crystalline polyester resin taught by Nosella et al. in an amount of about 3 to 10 percent by weight.
Conclusion
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 01/06/2026
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