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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026-01-23 has been entered.
Response to Arguments
Following the final rejection dated 2025-11-14, Applicant filed a response after final action (dated 2025-12-29), which included Applicant remarks and amendments to the claims. The amendments were not entered on the grounds of having introduced a new limitation not previously examined (see Advisory Action dated 2026-01-13). The claims as presently filed (in the RCE dated 2026-01-23, see above) reflect the limitations introduced by the non-entered amendments contained in Applicant’s response after final action, and the remedy of a typographical error therein. Applicant’s arguments in the remarks filed in the response after final action will be addressed here.
The examiner agrees with Applicant’s assertion in the remarks dated 2025-12-29 that the amendment to Claim 1, identifying a styrene-acrylic resin as the type of vinyl resin in the binder resin and specifying the contents of the different monomer units contained therein, brings the scope of the claims into alignment with the scope of the examples disclosed in the Specification.
However, Applicant’s argument that the subject matter of the claims achieves unexpected results is not persuasive. Applicant argues, in essence, that even though each of the results are either taught in the prior art or appear not to arise in a critical way from the claimed properties, the achievement by the claimed invention of these results simultaneously represents an unexpected result. This argument does not overcome the reasons pointed out in the office action dated 2025-11-14 why the claimed invention does not achieve unexpected results.
From MPEP 716.02(c):
II. EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS
"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) (resultant decrease of dental enamel solubility accomplished by adding an acidic buffering agent to a fluoride containing dentifrice was expected based on the teaching of the prior art); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a process of sterilizing a polyolefinic composition which contains an antioxidant with high-energy radiation. Although evidence was presented in appellant’s specification showing that particular antioxidants are effective, the Board concluded that these beneficial results would have been expected because one of the references taught a claimed antioxidant is very efficient and provides better results compared with other prior art antioxidants.).
From MPEP 716.02(d):
II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
As discussed in the office action dated 2025-11-14, Matsushima teaches the control of several toner parameters aimed at improving low-temperature fixability and improving thermal-resistant storage property. Kadonome teaches the improvement of cleaning properties of the toner. As also discussed in that office action, several examples from Table 5 of the instant application achieve suppression of fogging following a durability test, despite not possessing all the features of Claim 1.
Therefore, since the claimed features are not critical to the suppression of fogging following a durability test, that cannot represent an unexpected result, regardless of what combination of other results arise alongside it. The remaining discussed evaluation results (low-temperature fixability, heat-resistant storability, and image streaking and cleaning performance), being taught by the prior art references cited, also cannot represent unexpected results, even when they arise in combination together or alongside some other result. For these reasons, the updated rejections below are not withdrawn.
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.
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, 2, 4, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushima et al (US PGP 2019/0094732) in view of Washino (US PGP 2019/0056678), further in view of Hashimoto et al (US PGP 2021/0181647).
Matsushima teaches a toner comprising a binder resin, which contains a polyester resin and a vinyl resin ([0009]). Matsushima teaches that the binder resin preferably contains an amorphous polyester resin as a main component (meaning greater than 50% by mass) ([0073]). Matsushima teaches phthalic acid, isophthalic acid, and terephthalic acid as polyvalent carboxylic acids which may be used as monomers in the amorphous polyester ([0078]). In addition, Matsushima teaches bisphenol A (BPA) and ethylene oxide or propylene oxide adducts thereof as polyvalent alcohols which may be used as monomers in the amorphous polyester ([0083]). Both of these groups constitute monomers having a cyclic structure. Matsushima teaches that the weight-average molecular weight of the amorphous polyester resin is preferably 5,000 – 100,000 ([0088]). The amorphous polyester of Matsushima, being the main component of the binder resin and having a cyclic structure, would therefore constitute at least 51% by mass of the THF-soluble fraction of the toner having a molecular weight of at least 2,000. Matsushima teaches that the vinyl resin is preferably a styrene-acrylic resin ([0039]), and gives several examples of styrenes as monomers ([0042]). Also taught are alkyl (meth)acrylates, and lauryl (meth)acrylate is specifically pointed out ([0044]), reading on formula (1) of the instant application.
Matsushima teaches that the binder resin of the toner may contain a crystalline polyester resin in addition to the amorphous polyester ([0069] – [0070]). Matsushima also teaches a preference for inclusion of a crystalline polyester resin ([0093]). In describing diols that may be used to form the crystalline polyester resin, Matsushima teaches ethylene glycol ([0100]), which results in a monomer unit of formula (A) of Claim 1. In describing dicarboxylic acids that may be used to form the crystalline polyester, Matsushima teaches succinic, adipic, pimelic, azelaic, sebacic, nonane dicarboxylic, dodecanedioic, undecane dicarboxylic, and dodecane dicarboxylic acids ([0097]), all of which read on formula (B) of Claim 1.
Matsushima teaches a preferred circularity of the toner of 0.92 – 1.00 ([0166]), encompassing the range stated in Claim 1. The optionality of a core-shell structured toner is taught ([0155]), but Matsushima does not appear to teach a preferred material for a shell layer.
Washino teaches a toner having a core-shell structure ([0012]). Washino teaches that the shell layer preferably contains a thermosetting resin, from the viewpoint of making the shell sufficiently hard ([0035]). Particular preference is given to a thermosetting resin which is a vinyl copolymer containing at least 2-vinyl-2-oxazoline and related derivatives ([0036]). Such a resin would constitute a vinyl resin having an oxazoline group.
Neither Matsushima nor Washino appears to teach preferred contents for the various monomers which make up the vinyl resin.
Hashimoto teaches a toner having a binder resin, which comprises a first crystalline resin and a second amorphous resin (Abstract). The second amorphous resin may be a vinyl resin or a vinyl-hybrid resin ([0125]). Hashimoto teaches monomers which may be incorporated into the amorphous vinyl resin, which include styrenes ([0133]) and acrylates, including dodecyl (lauryl) acrylate ([0134]). In describing the styrene-based monomers which may be contained in the vinyl resin, Hashimoto teaches that their content should not exceed 95% by weight of the vinyl resin monomers ([0149]), allowing the content of a styrene monomer unit in the vinyl resin to encompass the range stated in Claim 1. Therefore, the content of other monomers, including the acrylate esters (including lauryl acrylate), may be at least as low as 5% by weight, reading on the range stated in Claim 1. In addition, Hashimoto exemplifies as a second resin a styrene-acrylic resin having 10% by mass of lauryl acrylate (Page 22, Table 4, Example #20), reading on the range stated in Claim 1.
In preparing the toner of Matsushima as modified by Washino, and lacking guidance as to preferred contents of monomers in the vinyl resin, a practitioner of ordinary skill in the art would have looked to the prior art for a workable vinyl resin, which comprises long-chain (meth)acrylates and is incorporated as a minor component into a binder resin alongside a crystalline resin. The practitioner would thus be motivated to prepare a vinyl resin as taught by Hashimoto. 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 of Matsushima having the shell taught by Washino, wherein the vinyl resin contained in the binder resin of the core comprises lauryl acrylate with a content as taught by Hashimoto.
In the course of routine experimentation, one of ordinary skill in the art would arrive at a toner comprising a toner particle substantially similar to any of instant examples 1 – 4 and 6 – 9 of the instant application (Specification, page 48, Table 3). Each of these examples possesses a value for loss elastic modulus G’’ of 2.3 x 107 – 4.5 x 107 Pa. Therefore, the toner of Matsushima having the shell taught by Washino and the vinyl resin composed as taught by Hashimoto would inherently possess a value for G’’ lying in a similar range, reading on the range stated in Claim 1.
Matsushima teaches that the vinyl resin should make up 0 – 50% by mass of the binder resin, depending on whether it is used in a color toner or a black toner ([0062]), encompassing the range stated in Claim 2.
Matsushima teaches that the toner contains a release agent ([0115]), and specifically points out behenyl behenate as an example ([0116]), reading on formula (4) of Claim 4.
As reported in the instant application, lauryl acrylate has a value for SP of 18.72 (J/cm3)1/2 (Specification, Table 1). This would be the value of SPm for the toner of Matsushima modified by the shell of Washino as described above, satisfying the range of SPm required by Claim 5. In addition, behenyl behenate has a value for SP of 17.56 (J/cm3)1/2 as reported in the instant application (Specification, Table 2). This would be the value of SPw for the toner of Matsushima modified by the shell of Washino as described above. Therefore, the difference between SPm and SPw for such a toner would be 1.16, satisfying formula (a) of Claim 5.
As mentioned above, Hashimoto teaches that the second amorphous resin may be a hybrid of a vinyl-based and polyester resin ([0125]). Hashimoto further teaches that the content of such a resin should not be more than 70 % by mass, allowing the hybrid resin to represent the main component of the toner particle, and satisfying Claim 9.
Claims 6, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushima et al (US PGP 2019/0094732) in view of Washino (US PGP 2019/0056678), further in view of Hashimoto et al (US PGP 2021/0181647), further in view of Kadonome et al (US PGP 2017/0307991).
The above discussions of Matsushima, Washino, and Hashimoto are incorporated herein.
Matsushima teaches that an external additive to the toner may be organic particles, but does not appear to teach the type or preparation of such ([0149]).
Kadonome teaches a toner having an external additive (Abstract). Among the particles that may serve as an external additive, organic fine particles are mentioned. Kadonome teaches that these serve to improve charging performance, fluidity, or the cleaning properties of the toner ([0154]). Kadonome teaches that the organic fine particles may be composed of a styrene-acrylic resin ([0192]). One of the externally added organic fine particles exemplified by Kadonome is “large-diameter external additive E5” ([0302]), which is a “crosslinked vinyl-based resin” particle composed of monomers including methyl methacrylate, styrene, and divinylbenzene ([0303]), the same monomers which compose the particles of the instant application. Kadonome exemplifies a toner having these particles as an external additive ([0324] and page 22, Table 4, toner #12).
In preparing the toner of Matsushima modified with the shell of Washino and having the vinyl resin composed as taught by Hashimoto, a practitioner of ordinary skill would have been motivated to incorporate the externally added organic particles as taught by Kadonome, which impart improved charging performance, fluidity, and cleaning properties to the toner. 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 of Matsushima having the shell taught by Washino, and externally added with the organic particles of Kadonome, which are fine particles of crosslinked styrene-acrylic resin, resulting in a toner satisfying Claims 6 and 7.
Where Kadonome does not appear to teach preferred contents of specific monomer units in the crosslinked styrene-acrylic resin fine particles, it would have been obvious to one of ordinary skill in the art, through routine experimentation, to adjust the content ratios of various monomer units, arriving at a content of styrene in the particles lying in the range stated in Claim 10.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al (US Patent 10,732,532) in view of Washino (US PGP 2019/0056678).
Sugawara teaches a toner comprising toner base particles which include at least a binder resin. The binder resin includes a hybrid resin having a polyester segment and a styrene-acrylic segment (Abstract). Sugawara describes the components of the polyester segment of the hybrid resin (col. 6, line 21), and points out alkylene oxide adducts of BPA as preferable diol components of the polyester (col. 6, lines 30 – 44). Phthalic acid and its isomers are pointed out as preferable dicarboxylic acid components of the polyester (col. 7, lines 6 – 17). Thus, the polyester segment of the hybrid resin would have a cyclic structure in its main chain.
Sugawara describes the components of the styrene-acrylic (a type of vinyl resin) segment of the hybrid resin (col. 7, line 59), and states a preference for incorporation of (meth)acrylate ester monomers in the vinyl segment (col. 8, lines 30 – 37). Dodecyl (meth)acrylate is pointed out as a preferable monomer (col. 8, lines 47 – 51), reading on formula (1) of Claim 1. Sugawara teaches that the content of (meth)acrylic monomers to be polymerized in the styrene-acrylic resin is preferably 5 – 50% by mass (col. 8, lines 57 – 60), resulting in a monomer unit content overlapping the range stated in Claim 1. Further, Sugawara teaches that the content of styrene-based monomers (which may be styrene) to be polymerized in the styrene-acrylic resin is preferably 50 – 95% by mass (col. 8, lines 5 – 9), encompassing the range stated in Claim 1.
Sugawara teaches that another resin besides the hybrid resin may be included in the toner particle (col. 12, lines 22 – 24), and states a preference for a polyester resin (col. 12, lines 47 – 49). A crystalline polyester resin is described (col. 14, line 26), and monomer units including adipic acid, suberic acid, azelaic acid, sebacic acid, 1,9-nonanedicarboxylic acid, 1,10-decanedicarboxylic acid, 1,12-dodecanedicarboxylic acid, and 1,14-tetradecanedicarboxylic acid are pointed out as examples of dicarboxylic acid monomers which may be included in the crystalline polyester (col. 14, lines 35 – 40), which read on formula (B) of Claim 1. Ethylene glycol is pointed out as an example of a diol which may be used in the crystalline polyester resin (col. 14, lines 60 – 61), reading on formula (A) of Claim 1. Sugawara teaches that the content of the crystalline resin relative to the whole binder resin is preferably 2 – 40% by mass.
Sugawara teaches that the toner preferably has an average circularity of 0.91 – 0.98 (col. 18, lines 61 – 63), encompassing the range stated in Claim 1.
Sugawara teaches that the toner particles may have a core-shell structure, for the purpose of reducing gloss non-uniformity (col. 18, lines 22 – 34), but does not appear to teach a preferred material for the shell layer.
Washino teaches a toner having a core-shell structure ([0012]). Washino teaches that the shell layer preferably contains a thermosetting resin, from the viewpoint of making the shell sufficiently hard ([0035]).
In preparing the toner of Sugawara, a practitioner of ordinary skill in the art would have looked to the prior art for guidance as to an appropriate shell layer for the toner. The practitioner would therefore be motivated to incorporate the shell layer as taught by Washino, for the purpose of having a sufficiently hard shell layer. 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 of Sugawara having the shell layer taught by Washino. In the course of routine experimentation, one of ordinary skill in the art would arrive at a toner comprising a toner particle substantially similar to instant example 5 (Specification, page 48, Table 3). This example possesses a value for loss elastic modulus G’’ of 4.0 x 107 Pa. Therefore, the toner of Sugawara having the shell taught by Washino would inherently possess a similar value for G’’ lying in the range stated in Claim 1.
The toner of Sugawara having the shell layer of Washino, comprising a hybrid resin of a vinyl resin segment bonded to a polyester resin segment, satisfies Claim 9.
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 02/19/2026