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 04/07/2026 have been fully considered but they are not persuasive. The Applicant has argued that the arithmetic mean heigh taught by Asakawa represents a shell thickness and therefore is fundamentally distinct from the arithmetic mean height, Sa, recited in claim 1. In response the Examiner would like to point to Figure 3 of Asakawa reproduced below:
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In Figure 3 12a represents a lower shell layer (first domain) and 12b represents an upper shell layer (second domain, [0034-40]). The first shell layer is taught to have a “thickness” of between 10 and 50 nm and the second shell layer is taught to have a “thickness” of 70 to 100 nm ([0034]). The “thickness” of the two shell layer is taught to represent an arithmetic mean heigh ([0032]). As can be seen from 12b in Figure 3 above, the second “shell” layer is not a continuous shell but rather discreet protrusions which read on the arithmetic mean heigh recited in pending claim 1 and as defined by the Applicant in the instant specification. As such, the protrusions represented by 12b in Figure 3 represent a surface roughness profile that is measured by arithmetic mean heigh of said protrusions from the surface of the core particles and therefore read on the Applicant’s pending claims 1 and 14.
The Applicant has further argued that the three parameters of average circularity, arithmetic mean height Sa and BET specific surface area within their respective specified ranges recited in the instant claims provide synergistic effects that would not have been expected based on the teachings of theses properties in separate references. The Applicant further argues that the toner of the present claims does not merely optimize a single variable but instead discovers a specific, non-obvious “sweet spot” where three distinct morphology parameters intersect to achieve both high-level transferability and high-level cleanability. The Applicant did not point to any data to corroborate this assertion in the Response, but it is assumed that the Applicant is relying on the data in Table 1-1 of the instant specification to support this assertion. Table 1-2 shows the results for inventive Toners 1-11 and Comparative Toners 1-8 (see Table 1-1). While Table 1-2 does appear to show improvements in certain properties in the inventive toners over the comparative toners, the data is not commensurate in scope with the claims. The inventive and comparative toners all utilize the same toner components and method of production and therefore show improvements in the specific toner that the Applicant has invented when all of the properties recited in pending claim 1 are within the recited ranges. However, pending claim 1 is drawn to any toner having a base particle and release agent that meets said properties. The data shown by the Applicant in the instant specification is insufficient to extrapolate the improvements shown in Table 1-2 to all toners comprising the myriad different compositions known in the toner arts rather than just the specific toner the Applicant has invented. As such, the Applicant’s arguments are not found to be persuasive. The Applicant can overcome this rejection by reciting the specific toner disclosed in the inventive examples such that the claims are commensurate in scope with the data relied upon by the Applicant. For all these reasons, the Applicant’s arguments are not found to be persuasive and the rejections are maintained as set forth below. New rejections are additionally added to address the Applicant’s newly added claims as well as claims that were overlooked in the prior Office Action. As such, this action is made non-final.
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, 6-10, 14 and 16 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]) as well as a hydrocarbon wax ([0047]). 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 teaches 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, 15 and 19 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 and further in view of Asakawa (US PGP 2018/0017884) as applied to claims 1-4, 6-10, 14 and 16 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]). The crystalline polyester resin is further taught to have a weight average molecular weight of from about 3,000 to 80,000 ([0030]). 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.
Claim(s) 11-12 and 17-18 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) as applied to claims 1-4, 6-10 and 14 above, and further in view of Sawada et al. (US PGP 2009/0142093).
The complete discussions of EP ‘264, JP ‘380 and Asakawa above are included herein. While EP ‘264 teaches an internal filler the use of the filler materials recited in claims 11-12 and 17-18 are not taught.
Sawada teaches a toner comprising a toner mother particle comprising an inorganic filler for controlling the shape of the toner. The inorganic filler is taught to be montmorillonite which is taught by the Applicant to have a smectite crystal structure (see [0093-94] of Sawada and p. 36 ln. 9-20 of the instant specification). The inorganic filler is taught to allow for the easy formation of concavities and convexities on the surface of the toner that are taught to be desirable by Asakawa and to further improve the chargeability of the toner ([0093-94]). The inorganic filler particles are taught by Sawada to account for from 0.1 to 10 parts by weight per 100 parts by weight resin of the toner ([0093]). 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 improved the toner of EP ‘264 as modified above by utilizing the inorganic filler particles taught by Sawada as the inorganic filler particles in said modified toner.
Claim(s) 13 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, 6-10, 14 and 16 above, and further in view of Ishizuka et al. (US PGP 2011/0070539).
The complete discussions of EP ‘264, Asakawa and JP ‘380 above are included herein. EP ‘264 teaches the use of a polyester binder resin and hydrocarbon wax but does not teach the use of a styrene modified polyolefin.
Ishizuka teaches a toner comprising a polyester resin, a polyethylene wax and a polyolefin-polyvinyl based graft copolymer (Abstract). The graft copolymer is further taught to be a styrene modified polyolefin and is taught by Ishizuka to improve the compatability between the polyester resin and the wax ([0048] and [0052]). 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 utilized the styrene modified polyolefin graft copolymer in the modified toner of EP ‘264, as set forth above, in order to improve the compatibility of the binder resin and the wax.
Claim(s) 20 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 EP 1 160 631 (henceforth EP ‘631).
The complete discussions of EP ‘264, EP ‘380 and Asakawa above are included herein. While EP ‘264 teaches the use of a hydrocarbon wax the disclosure is silent regarding suitable melting temperature of said wax.
EP ‘631 teaches a toner comprising a hydrocarbon wax that is able to demonstrate good fixability over a wide temperature range and shows excellent developing characteristics over a wide variety of environmental factors ([0023]). The hydrocarbon wax is taught to have a melting point of 65 to 130 C in order to enhance the plasticizing effect of the wax to the toner thereby improving toner fixability ([0077-78]). As such, , 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 improved the toner of EP ‘264 as modified above by utilizing the hydrocarbon wax with the melting point taught by EP ‘631 as the release agent in said modified toner.
Conclusion
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 07/04/2026
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