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
The amendments filed 11/27/2025 have been entered. Claims 1-20 remain pending. Claim 1 is amended.
Response to Arguments
Applicant’s arguments, see page 9-14, filed 11/27/2025, with respect to claims 1-20 have been fully considered and are persuasive. The rejection of claims 1-20 has been withdrawn.
Applicant argues the amended claim specifies “the average primary particle size of the silica particles (A) is 20 nm or more and 100 nm or less” and Nagatsuka uses Aerosil R972, which has an average primary particle size of 16 nm. Examiner agrees, the specified silica is not within the claimed range.
Applicant also argues the claimed specific range provides unexpectedly superior results. Specifically when the ratio NMo/NSi of the net intensity NMo measured by X-ray fluorescence analysis to the net intensity NSi of silicon measured by x-ray fluorescence analysis is within the range of 0.035-0.45, the problem of color unevenness. Examiner agrees, the data shown in Tables 4-6, page 76-78, in the Instant Specification clearly show the criticality of the range of 0.035-0.45 for the ratio NMo/NSi in view of reducing color unevenness in the formed toner images.
Applicant argues the combination of Watanabe and Uchino lacks motivation and teaches away. Applicant notes Watanabe teaches silica having high circularity, and Uchino teaches silica having low circularity. Examiner agrees, instead of teaching a combination of particles having different circularity the references teach away from each other.
Applicant's arguments, see page 9-14, filed 11/27/2025, with respect to claims 17-19 have been fully considered but they are not persuasive.
Applicant argues the 35 USC 103 rejections relating to the toner, however Applicant does not address the 35 USC 102 rejection of claims 17-19. Examiner notes that Applicant has not addressed the argument that toner/developer is not a material limitation of a toner cartridge, process cartridge, and image forming apparatus because the toner and/or developer is not a permanent fixture of the apparatus.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haneda (US 5426489).
Regarding claim 17-19, Haneda discloses an image forming apparatus comprising a photoreceptor, a charger for charging the photoreceptor, a laser unit for exposing the photoreceptor, forming a latent image on the surface, a developing unit, a transfer roller and a fixing member (abstract, figures 1 and 2, Col 7 line 41-51, Col 10 line 22-36). Haneda further discloses a process cartridge comprising a developing device, which can be taken out as a unit from the image forming apparatus (Col 13 line 5-14). The developing device is loaded with a developer (Col 13 line 32-41).
The applicant has recited the apparatus, toner cartridge, and process cartridge claims as also containing or comprising the toner of pending claims 1 and 16. However, since a developer, or toner, is a material that is consumed by the apparatus and is not a permanent fixture of the apparatus, its inclusion in the apparatus claims does not represent a material limitation on the apparatus. Multiple different developers may be used in any xerographic apparatus and therefore the limitations of the developer in the present claims do not represent material limitations on the apparatus because the developer with these limitations could be substituted by another developer and not alter the mechanical functioning of the apparatus. § MPEP 2115. In accordance with MPEP 2114 an apparatus in a claim must be recited structurally and therefore the type of toner to be used possesses no patentability, only the material properties of the apparatus are patentable. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Additionally, a claim containing a recitation in respect to the manner that an apparatus is intended to be used does not differentiate the claim from prior art. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In further regards to the toner, MPEP 2115 states that, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
The toner is a material worked upon and consumed by the image forming apparatus. A material portion of the apparatus must be a permanent fixture of the apparatus that is not permanently changed by the regular operation of the apparatus. The toner, during the course of the imaging process, is changed from a particulate material to a melted and fused material. During fixing, heat and/or pressure is applied to the toner to bind it to the recording material such that the toner cannot be recovered and re-used in the apparatus. Therefore, the toner cannot be claimed as a structural member of the apparatus.
Allowable Subject Matter
Claims 1-16 and 20 allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
Applicant has shown unexpectedly superior results for a toner comprising silica particles added to the exterior of the toner particle. The silica particles containing a nitrogen element containing compound which contains molybdenum, and the ratio of NMo/NSi of the net intensity of molybdenum measured by x-ray fluorescence to the net intensity of silicon measured by x-ray fluorescence is 0.035-0.45. Applicant’s data teaches the claimed toner results in reduced color unevenness in images formed using the toner.
Further search and consideration have not revealed any new prior art that reads on the claims as currently amended. As such, the applicant’s arguments have been found to be persuasive and the claims are allowed.
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.
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/C.C.S./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737