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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026-02-25 has been entered.
Response to Amendment
Claims 1 and 12 have been amended to reflect the limitation surrounding the internally added inorganic oxide particle having a sharp portion, which has been moved from amended Claim 14. Claim 7 has been cancelled. No new subject matter has been added.
Response to Arguments
Applicant’s arguments, see remarks filed 2026-01-23, with respect to the final rejection dated 2025-11-26, have been fully considered and are persuasive. In particular, Applicant argues that the pulverization step disclosed by Takahashi et al (US PGP 2011/0229812) would not result in silica particles having a pointed portion as recited in the amended claims. Applicant cites relevant passages from Takahashi, as well as technical data sheets submitted alongside the remarks and the RCE. Where silica particles having a pointed portion are not taught by any of the other references cited in the prior office action, the rejection of the presently amended claims under 35 U.S.C. §103 has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 – 6 and 8 – 14 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 1 recites an inorganic oxide which is internally added to the toner particle and possesses a sharp portion, and may be selected from the oxides of any of Si, Mg, Al, Ti, and Sr. However, no preparative example having an oxide of Mg, Al, Ti, or Sr having a sharp portion is disclosed in the instant Specification. As seen in instant Table 1, inorganic oxide particles 1, 2, 3, and 4 are oxides of Ti, Mg, Sr, and Al, respectively. These are included only in example toners 1 – 4 (instant Table 3), which do not contain an organic oxide having a sharp portion (instant Table 4). Only example toners 8 – 11, 13, and 14 contain inorganic oxides having a sharp portion (Table 4), and these toners each contain inorganic oxide particles 5, 6, or 7 (Table 3), each of which is an oxide of Si (Table 1). Therefore, it would not be clear to one of ordinary skill in the art that the inventor or a joint inventor, at the time the application was filed, had possession of a toner having an internally added oxide of any of Mg, Al, Ti, or Sr having a pointed portion. Claims 2 – 6, 8 – 11, 13, and 14 each depend directly on Claim 1. Claim 12 recites a method of producing a toner having all the limitations recited in Claim 1, and so it would not be clear to one of ordinary skill in the art that the inventor or a joint inventor, at the time the application was filed, had carried out that method.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 4, 6, 8, and 10 – 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 12 of copending Application No. 17,808,807 in view of Kobori et al (US PGP 2021/0286282), further in view of Kikushima (US PGP 2014/0322644).
Claim 12 of copending Application No. 17,808,807 recites silica externally added to toner particles, and depends on Claim 1, which recites a toner comprising toner particles, which comprise a binder resin, and internally added silica particles having an average particle diameter of 0.4 – 3.0 µm and a pointed portion (analogous to the instant sharp portion). Claim 12 of copending Application No. 17,808,807 does not appear to recite a wax or a wettability parameter.
Kobori teaches a toner having a toner particle, which comprises a binder resin and an inorganic fine particle ([0007]). Kobori teaches that the inorganic fine particle is preferably internally added to the toner particle, as well as present on the surface of the toner particle, analogous to an external additive ([0018]). Kobori teaches that the inorganic fine particle is preferably silica ([0020]), reading on the list of inorganic oxides recited in instant Claim 1. Kobori also teaches that the toner particle may contain a wax ([0034]). Kobori teaches that the wax serves to improve the low-temperature fixability and resistance to winding of the toner ([0035]). Kobori teaches that the toner may be produced by an emulsion agglomeration method (the same as emulsion aggregation).
Kikushima teaches a toner formed by an emulsion aggregation process, and having hydrophobicity controlled within a specified range (Abstract). Kikushima states a preference for the emulsion aggregation method over a pulverization method ([0007]), and teaches that keeping the hydrophobicity below a certain level can help retain stable image density of printed images ([0008]) and suppresses the deterioration of storage stability of the toner ([0014]). Specifically, the toner should have a hydrophobicity, as measured by methanol wettability, of 5 – 40% ([0011]), encompassing the range stated in Claim 1. Wettability is measured by Kikushima in a similar fashion ([0161] – [0162]) to that described in the instant application.
In preparing the toner described by Claim 12 of copending Application No. 17,808,807, one of ordinary skill in the art would have been motivated to improve the low-temperature fixability and resistance to winding of the toner by incorporating the wax as taught by Kobori, and to preserve stable printed image density and storage stability of the toner by controlling the wettability as taught by Kikushima. Therefore, it would have been obvious to one of ordinary skill in the art to prepare the toner described by Claim 12 of copending Application No. 17,808,807 incorporating the wax taught by Kobori and having wettability controlled in the range taught by Kikushima, resulting in a toner described by Claim 1 of the instant application.
Kobori teaches that the wax contained in the toner particle may be hydrocarbon-based wax or ester-based wax ([0034]), satisfying Claim 2.
Kobori teaches a toner production method which comprises melt-kneading of toner particle components, followed by grinding and pulverizing of the resulting cooled resin composition ([0047] – [0051]). The toner of Kobori as modified by Kikushima would thus have pulverization interfaces near the inorganic oxide particles internally contained in the resin composition, as taught by the instant application (Specification, [0061]). Therefore, the toner described by Claim 12 of copending Application No. 17,808,807 incorporating the wax taught by Kobori and modified by Kikushima would necessarily have silica (inorganic oxide) particles nearer to the surface of the toner particles than are the domains of wax, satisfying Claim 3. In addition, as there is no lower limit to the distance an internally added silica particle may be from the surface of the toner particle, the shortest distance from a silica particle to the surface of a toner particle would necessarily be less than the major axis of a silica particle, satisfying Claim 4.
The internally added silica particles of Claim 12 of copending Application No. 17,808,807, possessing a pointed portion (analogous to the instant sharp portion), would necessarily possess a value for SF-1 lying in the range stated in Claim 6.
As discussed above, the inorganic fine particle of Kobori is preferably silica, satisfying Claim 8.
Kobori teaches that the binder resin of the toner particles may be styrene-acrylate or styrene-methacrylate resin ([0024]), satisfying Claim 10.
In preparative examples, Kobori discloses two different resins for use in the binder resin, Polyester L ([0158]) and Polyester H ([0167]). Both of these different resins are incorporated into the binder resin of a toner particle ([0168]). These two resins, having different monomer compositions and different reaction times, would have different peak weight-average molecular weight values. Therefore, THF-soluble portion of the binder resin exemplified by Kobori would have 2 or more peaks or shoulders in the distribution of weight-average molecular weight between 3,000 and 2,000,000, satisfying Claim 11.
Kobori teaches a toner production method which comprises melt-kneading ([0047] – [0051]), satisfying Claim 12.
Claims 5 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 12 of copending Application No. 17,808,807 in view of Kobori et al (US PGP 2021/0286282), further in view of Kikushima (US PGP 2014/0322644), further in view of Nishikawa et al (US PGP 2020/0183296).
The above discussions of Claim 12 of copending Application No. 17,808,807, Kobori, and Kikushima are incorporated herein.
Nishikawa teaches a toner comprising a toner particle and an external additive, wherein the toner particles contain internally added inorganic fine particles (Abstract). The number-average primary diameter of the inorganic particles is preferably 50 – 500 nm ([0168]), whereas the number-average primary particle diameter of the external additive particles is preferably 30 – 200 nm ([0019]). Nishikawa teaches that the diameter of the inorganic fine particles must be greater than that of the external additive ([0168]). Nishikawa teaches that this relationship promotes propagation of external stresses from the external additive to the internally contained fine particles ([0168]), which prevents the external additive from becoming embedded into the surface of the toner particle ([0075]). The internally added inorganic fine particles of Nishikawa may be silica ([0169]), as may the external additive ([0176]).
In preparing the toner described by Claim 12 of copending Application No. 17,808,807 incorporating the wax taught by Kobori and having wettability controlled in the range taught by Kikushima, one of ordinary skill in the art would have been motivated to suppress embedding of the external additive in the surface of the toner particles by controlling the diameters of the external additive particles and the internally added inorganic fine particles as taught by Nishikawa. 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 described by Claim 12 of copending Application No. 17,808,807 incorporating the wax taught by Kobori and having wettability controlled in the range taught by Kikushima, and with the internally added inorganic fine particles having a larger primary diameter than the external additive particles as taught by Nishikawa, resulting in a toner satisfying Claim 5.
Nishikawa teaches that the externally added silica fine particles may be produced by a sol-gel method, satisfying Claim 13.
Claims 9 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 12 of copending Application No. 17,808,807 in view of Kobori et al (US PGP 2021/0286282), further in view of Kikushima (US PGP 2014/0322644), further in view of Takahashi et al (US PGP 2011/0229812).
The above discussions of Claim 12 of copending Application No. 17,808,807, Kobori, and Kikushima are incorporated herein.
Takahashi teaches a toner with an external additive having a value of SF-1 of 130 – 150 and a number-average primary particle diameter of 80 – 1,000 nm ([0016]). Takahashi teaches that controlling the SF-1 of the external additive in this range prevents migration of the external additive particles off of the surface of the toner particle ([0075]). Silica is given as an example of metal oxide particles which may be used as the external additive ([0081]). Takahashi also teaches that the toner particles may contain an internal additive ([0028]), which may be an inorganic powder ([0042]). Examples are disclosed ([0191] – [0212]) wherein silica particles having number-average particle diameters ranging from 70 – 1,200 nm are prepared. In addition, the preparation of these particles comprises a pulverization step ([0192]). The silica particles of Takahashi undergo a drying procedure before being pulverized ([0192]). The drying step would reduce the moisture content in the silica particles to a low level. Thus, the heating loss between 200°C and 400°C as measured by TGA of the silica particles would necessarily lie in the range stated in Claim 9.
In preparing the toner described by Claim 12 of copending Application No. 17,808,807 incorporating the wax taught by Kobori and having wettability controlled in the range taught by Kikushima, one of ordinary skill in the art would have been motivated to prevent migration of the externally added silica particles off of the toner particle by controlling the value of SF-1 of the silica particles in the range taught by Takahashi. Silica particles prepared by the method taught by Takahashi could be used as the external additive of Kobori. 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 described by Claim 12 of copending Application No. 17,808,807 incorporating the wax taught by Kobori and having wettability controlled in the range taught by Kikushima, and incorporating the externally added silica particles of Takahashi, resulting in a toner described by Claim 9 and Claim 14.
Conclusion
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/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 03/26/2026