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 Amendment
Claim 1 has been cancelled, and Claims 2 – 10 have been amended to be dependent instead on amended Claim 11. New Claims 12 – 20 are also dependent on Claim 11. In addition, Claim 11 has been amended with a further limitation on the content of foamable particles relative to the amount of toner.
The Specification has been amended on page 32 at lines 11 - 20 as suggested in the prior office action. The written description of Example 1-3 on page 33 has been amended so that the reported value for the decrease rate of surface roughness before and after release now aligns with the values in Figure 2. However, the description of Example 1-4 still contains a reported value for surface roughness before and after release which does not align with Figure 2 (see objection below). No new subject matter has been added.
Response to Arguments
Applicant’s arguments, see remarks filed 2025-09-30, with respect to the rejections of claims 2 - 11 under 35 U.S.C. §102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Kurita et al, Matsuoka, and Sawada et al (see rejection below).
Specification
The disclosure is objected to because of the following informalities:
The written description of Example 1-4 (originally page 32, line 35 – page 33, line 5) contains a reported value for surface roughness before and after release which does not align with Fig. 2. The description gives a value of 65%, where the bar chart in Fig. 2 appears to have a value of 95.9%.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8 – 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 8 – 10 are dependent on Claim 11, which recites a developer. The developer of Claim 11 comprises an adhesive medium, foamable particles, a toner, and a carrier. One of ordinary skill in the art would understand that when such a developer is used to develop an electrostatic image, the adhesive medium, the foamable particles, and the toner all simultaneously and together form a toner image on the image bearing member. Claims 8 – 10, however, recite the formation of multiple layers of images on a recording medium, which comprise, separately from one another, an adhesive medium, foamable particles, and a second toner. This would imply the use of at least a first developer and a second developer. Therefore, Claims 8 – 10 expand, and do not further limit, the subject matter of Claim 11, upon which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 11, 2 - 5, and 17 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kurita et al (US PGP 2004/0037578) in view of Matsuoka (JP 2005-227523) (a machine translation of which is referred to henceforth).
Kurita discloses an image forming apparatus capable of forming an image with multiple types of toners (Abstract). Kurita describes a foaming toner ([0093] – [0095]) which contains at least a binder resin and a foaming agent in the toner particles. Toner particles, comprising a binder resin, represent an adhesive medium, as described in the instant application (Specification, page 15, lines 17 – 19). Further, the foaming toner (analogous to a foamable toner) represents foamable particles, as described in the instant application (Specification, page 15, lines 28 – 29). Where Kurita allows for a developer comprising plural types of colored or colorless and foaming or non-foaming particles ([0011]), a developer as taught by Kurita may comprise: a colorless toner representing an adhesive medium; a foamable toner representing foamable particles; and a colored toner representing a toner, as recited in Claim 11.
Kurita discloses image forming steps including: formation of an electrostatic latent image on an image bearing member ([0042] – [0044]); development of the electrostatic latent image on the image forming member with a developer to form a toner image ([0045] – [0046]); transfer of the toner image to a recording medium ([0047]); and fixing of the toner image to the recording medium ([0049]). Kurita does not appear to teach a carrier as part of the developer, or a content of foamable particles relative to the toner of 0.5 – 5% by mass.
Matsuoka teaches a toner for forming a three-dimensional image which comprises at least a foaming agent ([0016]), and may also contain an antimicrobial, deodorant, or antifouling agent. Matsuoka teaches that the foaming agent should be added to the toner for forming a three-dimensional image in an amount of 1 – 30% by weight with respect to the toner ([0036]), overlapping the range stated in Claim 1, allowing the other agents to be expressed at the surface of the three-dimensional image ([0037]). Matsuoka teaches that the toner for forming a three-dimensional image may be part of a two-component developer, which comprises a carrier ([0082]).
In preparing the developer and carrying out the image forming method taught by Kurita, one of ordinary skill in the art would have been motivated to incorporate an antimicrobial, deodorant, or antifouling agent into the foamable toner representing foamable particles, as taught by Matsuoka. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add foamable particles in an amount taught by Matsuoka, alongside another of the agents mentioned above, and to incorporate a carrier into the developer taught by Kurita. Where the developer of Kurita as modified by Matsuoka reads on the developer recited in Claim 11, the image forming method of Kurita reads on the image forming method of Claim 11.
Where the foaming toner of Kurita represents foamable particles, and a colorless toner represents an adhesive medium, these two components are mixed independently in the developer of Kurita as modified by Matsuoka, satisfying Claim 2.
As mentioned above, the colorless toner of Kurita may represent an adhesive medium satisfying Claim 3, Claim 4, and Claim 5.
Matsuoka teaches a foaming agent having the form of a microcapsule ([0040]), containing a low-boiling point substance encapsulated in a wall material, which may be a polymer containing units of at least one of acrylonitrile and methyl methacrylate ([0041]). The low-boiling point substance contained in the microcapsules imparts thermal expansion property, satisfying Claim 17 and Claim 18.
Matsuoka teaches that the foamable particles comprised in the foaming toner are not substantially exposed on the surface of the toner, satisfying Claim 19.
Matsuoka teaches a fixing temperature of 140°C – 250°C, overlapping the range stated in Claim 20.
Claims 6, 7, and 12 - 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kurita et al (US PGP 2004/0037578) in view of Matsuoka (JP 2005-227523), further in view of Sawada et al (US PGP 2022/0066344).
The above discussion of Kurita and Matsuoka is incorporated herein.
Sawada teaches a toner having excellent fixing and image fastness on a plastic film ([0007]). Sawada teaches that the toner is preferably white or transparent (substantially the same as being colorless) so as to reduce impairment of coloration of other toners present in the image ([0071]). The toner of Sawada contains a polyolefin as a binder resin ([0014]). The polyolefin does not have an exothermic peak in a cooling process after first heating in DSC measurement, but does have an exothermic peak in the range of 0 - 30°C upon second heating in DSC. The toner has an exothermic peak in the range of 40 - 70°C in a cooling process after first heating in DSC.
In carrying out the image forming method of Kurita using the developer of Kurita as modified by Matsuoka, one of ordinary skill in the art would have been motivated to improve the fixing property and image fastness by incorporating the colorless toner of Sawada as the adhesive medium in the developer. Therefore, it would have been obvious to one of ordinary skill in the art to carry out the image forming method of Kurita, using the developer of Kurita as modified by Matsuoka and by Sawada, such that the developer has a heating profile covering the requirements of Claim 6.
The polyolefin of the binder resin of Sawada is preferably a maleic acid-modified polyolefin having at least a polypropylene block in the main chain ([0021]), satisfying Claim 7.
Sawada teaches that the bonding resin (the same as a binder resin) of the colorless toner preferably comprises a polyester resin, satisfying Claim 12.
Sawada teaches that the maleic acid-modified polyolefin may preferably contain one or more blocks of polyethylene or polybutylene, satisfying Claim 13.
Sawada teaches that the content of the maleic acid-modified polyolefin in the toner is preferably in the range of 2.1% - 30% by weight, encompassing the range stated in Claim 14.
Sawada teaches that the melting point of the maleic acid-modified polyolefin is preferably 60°C – 100°C, reading on the range stated in Claim 15.
Sawada teaches that the weight-average molecular weight of the maleic acid-modified polyolefin is preferably 60,000 – 100,000, reading on the range stated in Claim 16.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 11/26/2025