DETAILED ACTION
Response to Arguments
Applicant’s arguments, see the Response, filed 10/30/2025, with respect to the rejection of claims 1, 2, 4, 6, and 7 under 35 U.S.C. 102(a)(1) and claims 3, 5, 8, and 9 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made below.
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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujikawa (US PGP 2009-0233212) in view of Matsushita (US PGP 2020-0150583).
Fujikawa teaches a toner with surface roughness of 1.0 nm or more and 30.0 nm or less (Abstract). The toner contains a black colorant such as iron oxide ([0108]) or carbon black ([0117]), a binder resin ([0084]), a releasing agent ([0097]), and an external additive ([0133]). The circularity of the toner particles is preferably 0.960 to 0.985 ([0079]), and exemplary toners 2 and 4 have circularities of 0.980 and 0.985, respectively (Table 1). Exemplary toners 2 and 4 contain iron oxide as the colorant ([0261],[0270]) and have surface roughness (Sa(Bk)) of 12.1 nm and 2.3 nm, respectively (Table 1). As 2.3 nm and 12.1 nm are less than 3 nm on either side of 5 nm and 10 nm, it would be obvious to a person of ordinary skill in the art to produce a toner with a roughness between 2.3 nm and 12.1 nm that is within the claimed range.
Fujikawa is silent regarding a ratio in surface roughness between the color and black toners. Matsushita teaches a toner particle having an organosilicon polymer covering the surface of the particle (Abstract). The toner contains an organic colorant ([0179-189]), a binder resin ([0165]), and a releasing agent ([0176]). The organosilicon polymer is a trifunctional silane ([0155]), which will produce a peak having a T3 unit structure in 29Si-NMR. The exemplary organosilicon polymer comprises methyltriethoxysilane as the polymer ([0276]), therefore the ratio of an area of a peak derived from silicon having a T3 structure to a total area of peaks derived from all silicon elements contained in the organosilicon polymer would be 1.00. The surface roughness (Sa(C)) is not specified, but it would be assumed to be in the range of 15 nm to 25 nm. The specification of the instant application states that for the surface roughness to be high it is preferable to have a surface layer having a protrusion shape formed of an organosilicon polymer ([0022]). Therefore, as the toner of Matsushita and the toners of the instant application have the same kind of organosilicon polymer surface layer they would be expected to have similar surface roughness values. Exemplary toner <1-7> contains the colorant C.I. Pigment blue 15:3 ([0277]), a polyester resin having a molecular weight of 10,000 ([0278]), and the organosilicon polymer surface layer comprised of methyltriethoxysilane ([0283]). The polyester resin would be present at the surface of the toner particle. The circularity is not specified; however, it would be expected to be around 0.973 as the production of Toner Particle A of the instant application is the same as the production of Toner <1-7> ([0272-283]). This toner has improved environmental stability, excellent storage stability, and it is unlikely that the toner performance will be reduced during long term use ([0150]). Therefore, based on these benefits it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have used the colored toner of Matsushita with the black toner of Fujikawa.
Matsushita teaches an image forming apparatus 100 (Figures 1 & 2, [0042-68]) and image forming method comprising forming an image at a first image forming station, forming an image at a second image forming station ([0044]), transferring the toner images to an intermediate transfer body 31, secondarily transferring the toner image onto the surface of a transfer material with a secondary transfer body 33 and fixing the image to the transfer material with a fixing unit 34. Each image forming station comprises an electrophotographic photoreceptor 1, a charging device 2, which charges the photoreceptor, an exposure device 30, the creates a latent image on the photoreceptor, a developing device 3, that develops the latent image, and a primary transfer device 32.
The toner set comprised of the black toner of Fujikawa and the color toner of Matsushita would be expected to have a ratio of Sa(C)/Sa(Bk) of 1.30 to 4.00 as the surface roughness values of each fall within the claimed ranges.
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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/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 02/12/2026