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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/5/2026 has been entered.
Response to Amendment
The amendment filed on 6/5/2026 has been entered. Claims 1-11, 13, and 16 remain pending. Claim 1 has been amended. Claims 17-23 have been added.
Response to Arguments
Applicant’s arguments, see page 7-8, filed 6/5/2026, with respect to the rejection of claims 1-11, 13, and 16 under 35 US 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 Therefore, the rejection has been withdrawn.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 in view of Tanaka (US 20180224763) in view or Awamura (US 20080227018).
Applicant argues the limitation added to claim 1 in the current amendments, regarding the average particle diameter of the modified layered inorganic material, is not disclosed or taught by the Tanaka or Seshita. Examiner agrees, while Seshita teaches inclusion of a modified layered inorganic mineral, but Seshita does not mention the average dispersed particle diameter of the inorganic mineral. Awamura is now relied upon to teach the inclusion of a modified layered inorganic mineral. Awamura further teaches the same particle diameter as the amended claim, as well a step of dispersing the resins, wax and inorganic mineral in a bead mill during production of the oil phase.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11, 13, and 16-23 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “f” in claim 1 is a relative term which renders the claim indefinite. The term “frequency” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 uses the term “frequency” to limit how many of the modified layered inorganic mineral having a volume average particle of 1 µm or more appears, limiting it to “15% or less”. However, it is not clear how the frequency % is determined, the percentage could be a number average, volume average, weight average, etc. Claims 2-11, 13, and 16-23 are all dependent on claim 1, and do not provide further clarification to render the term definite. In the interest of compact prosecution, the examiner will interpret the term “frequency” as number average.
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.
Claims 1-11,13, and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 20180224763) in view or Awamura (US 20080227018).
Regarding claims 1-2, 5, 7-11, and 17, Tanaka discloses a toner comprising external additives containing silica on the surface of the toner, as well as a release agent, and a colorant ([0136], [0153]-[0155]). Tanaka further discloses the toner includes a tetrahydrofuran (THF) insoluble component having two glass transition temperatures during the first temperature rising of DSC, Tga1st and Tgb1st. Tga1st is between -45 to 5°C and Tgb1st between 45-70°C (abstract, [0009], [0020]). Tanaka does not disclose the liberation ratio A of silica from the toner, or the toner base including a modified layered inorganic material in an amount of 0.1-1.4 parts by mass relative to 100 parts by mass of the toner.
However, regarding the liberation ratio, A, of the silica, Tanaka discloses the toner is produced using polyesters A, B, and C ([0020]-[0025]). Tanaka further discloses producing the prepolymer A-1 by mixing 3-methyl-1,5-pentanediol, isophthalic acid, adipic acid, and trimellitic anhydride, with a OH/COOH molar ratio of 1.5, the diol component comprised 100 mol% of 3-methoyl-1,5-pentanediol, the dicarboxylic acid component comprised of 40 mol% isophthalic acid and 60 mol% adipic acid, and 1 mol% trimellitic anhydride. The monomers are mixed with titanium tetraisopropoxide, in an amount of 1000 ppm with respect to the monomers ([0278]). The mixture is heated to 200°C for 4 hours, then heated to 230°C and for 2 more hours, followed by reacting until outflow water has disappeared then for a further 5 hours under reduced pressure of 10-15 mmHg ([0279]-[0280]). The intermediate product is then mixed with isophorone diisocyanate in a molar ratio of isocyanate groups/hydroxyl groups of 2.0, and diluted with ethyl acetate to 50%, and then reacted at 100°C for 5 hours ([0281]-[0282]). This is identical to the method of producing prepolymer A-1 in the Instant Application (Instant Specification page 107-109). Furthermore, the production of prepolymers A-2 and A-3 in Tanaka ([0283]-[0290]) is identical to that of the prepolymer A-2 and A-3 in the Instant Application (page 109-112).
Similar to the production of prepolymer A-1, the production of prepolymer B-1 in Tanaka is identical to that of the Instant Application. Tanaka discloses bisphenol A ethylene oxide 2 mol adduct(BPA EO), bisphenol A propylene oxide 2 mol adduct (BPA PO), terephthalic acid, and adipic acid are mixed and reacted, such that OH/COOH are in a molar ratio of 1.1, with the diol comprising BPA EO 80 mol% and BPA PO 20 mol%, and the dicarboxylic acid components in amounts of 60 mol% terephthalic acid and 40 mol% adipic acid. Titanium tetraisopropoxide is also added in an amount of 1000 ppm with respect to the monomer. The mixture is heated to 200°C for 4 hours, then to 230°C for 2 hours and reacted until outflow water disappeared then reacting an additional 5 hours under a reduced pressure of 10-15 mmHg ([0299]). The intermediate polyester is then mixed with isophorone diisocyanate in a molar ratio of isocyanate groups/hydroxyl groups of 2.0, diluted to 50% with ethyl acetate and reacted at 100°C for 5 hours ([0300]). This is Identical to the method of producing prepolymer B-1 in the Instant Application (Instant Specification page 114-116).
Tanaka further discloses the production of polyester C-1 by mixing BPA EO, BPA PO, terephthalic acid, adipic acid and trimethylol propane, with the molar ratio of the diols BPA EO/BPA PO of 85/15, the ratio of terephthalic acid/adipic acid of 75/25, the amount of trimethylol propane 1 mol%, and the molar ratio of OH/COOH of 1.2. The monomers are reacted at 230°C for 8 hours with titanium tetraisopropoxide in an amount of 500ppm with respect to the monomers, followed by reaction at reduced pressure of 10-15 mmHg for 4 hours then trimellitic anhydride is added in an amount of 1 mol$ with respect to the total resin component and reacted at 180 for 3 hours ([0305]). This is identical to the production of polyester resin C-1 in the Instant Application (Instant Specification page 118-119). Furthermore, the production of polyester resins C-2 and C-3 in Tanaka ([0306]-[0307]) are identical to the production of polyester resins C-2 and C-3 in the Instant Application (page 119-121).
Tanaka further discloses preparation of a master batch, wax dispersion liquid, Ketimine compound, organic fine particle emulsion, and water phase ([0312]-[0314], [0316]-[0318]), which is identical to that of the Instant Application (Instant Specification page 124-127). Tanaka further discloses production of the oil phase mixing 500 parts Wax dispersion, 76 parts prepolymer A-1, 152 parts Prepolymer B-1, 836 parts Polyester C-1, 100 parts Masterbatch, and 2 parts Ketimine compound, mixing in a TK Homomixer at 5000 RPM for 60 minutes ([0315]). The method is the same as that of the Instant Application, except the 1.2 parts modified layered inorganic material is not added (page 125-126). Tanaka further discloses the emulsification step, adding 1200 pats of water phase to the oil phase, mixing by a TK Homomixer at 13000 rpm for 20 minutes, and removing the solvent at 30°C for 8 hours, and maturing at 45°C for 4 hours ([0319]). This process is identical to that of the Instant Application (Instant Specification page 127). The slurry is then washed, filtered, and dried before 0.6 parts of hydrophobic silica, 1000nm, and 1 part titanium oxide, 20nm, and 0.8 parts hydrophobic silica fine powder, 15 nm, are added to 100 parts of the dried toner particles, then mixed by a Henschel mixer to obtain the toner ([0320]-[0326]). This is identical to the washing, filtering, and drying, as well as the external addition treatment of the Instant Application (Instant Specification page 127-129). Furthermore, Tanaka discloses Examples 2-6 with Toner base particles 2-6, produced by adjusting the prepolymer A and polyester resin C used, and the ratio of the prepolymers A and B and polyester resin C used to produce the toner base particles ([0329]-[0333], Table 1 page 24). Similar to Example 1, Examples 2-6 are the same as Examples 2-6 of the Instant Application, except for the modified layered inorganic material (Instant Application page 130-131)
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date that the material properties of the Polyester resins A-1 through A-3, B-1, and C-1 through C-3, including their glass transition temperatures (Tga1st, Tga2nd, Tgb1st, and Tgb2nd), would inherently match those of the resins of the Instant Application due to the identical materials and process used to produce them.
Furthermore, due to the identical process and nearly identical materials, excluding the 1.2 parts layered inorganic material, approximately 0.1% by mass, one of skill in the art would expect the toner of Tanaka Example 1-6 to inherently possess a liberation ratio, A, of the silica to be 0.75-0.95%, matching Example 1-6 of the Instant Application as shown by Table 2-2 (Instant Specification page 139).
Awamura teaches a toner including a modified layered inorganic mineral, which is dispersed with the binder resin, colorant, and releasing agent during production of the oil phase (abstract, [0025], [0028], [0035]). Awamura further teaches the modified layered inorganic mineral has an average dispersed particle diameter of 0.1-0.55 µm, with a particle diameter of 1 µm or more accounting for 15% by volume or less ([0047]-[0448], [0056], [0111], [0194], Claim 3, 4, 11). Awamura further teaches the modified layered inorganic mineral is added in an amount of 0.05-5.0 % by mass of the toner ([0051], [0112], [0195], claim 6). Awamura further teaches the dispersed particle diameter range and amount added improves toner chargeability and fixing performance, while allowing nonspherical toner to be produced ([0111]-[0112]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to incorporate a modified layered inorganic mineral in the toner of Tanaka in an amount of 0.05-5.0 mass% of the toner, with an average dispersed particle size of 0.1-0.55 µm, as taught by Awamura, to improve toner chargeability and fixing performance.
Regarding claim 3, modified Tanaka discloses all limitations as set forth above. Tanaka further discloses the THF insoluble component has a glass transition temperature during the second temperature rising of DSC which is 0-50°C ([0022]).
Regarding claim 4, modified Tanaka discloses all limitations as set forth above. Tanaka further discloses the toner has a glass transition temperature during the first temperature rising of DSC, Tg1st, and a glass transition temperature during the second temperature rising of DSC, Tg2nd, and the value Tg1st-Tg2nd is greater than or equal to 10°C ([0029]).
Regarding claim 6, modified Tanaka discloses all limitations as set forth above. Tanaka further discloses the mass ratio of the polyester resin components (a, b, and c) is preferably 4(a+b)<c (0184]).
Regarding claim 13, modified Tanaka discloses all limitations as set forth above. Tanaka further discloses a developer comprising the toner of the invention ([0213]).
Regarding claim 16, modified Tanaka discloses all limitations as set forth above. Tanaka further discloses an image forming method including an electrostatic latent image forming step forming a latent image on the image bearer, and a developing step developing the latent image into a toner image ([0227], [0231], [0242]).
Regarding claims 18-23, modified Tanaka discloses all limitations as set forth above. The applicant’s claims 18-23 are recited as product-by-process claim. In a product by process claim, so long as the product has the same claimed composition or properties, the method by which it was made or by which the properties were tested is not material. According to the MPEP, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113 [R-1], see In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966).
In the interest of compact prosecution, Tanaka discloses the oil phase is prepared by mixing the wax dispersion, prepolymer A-1, prepolymer B-1, polyester resin C-1, masterbatch, and a ketimine as a curing agent ([0315]).
Awamura further teaches the modified layered inorganic mineral is preferably organic modified montmorillonite or bentonite, with the specific examples using Bentone 57 by Elementis Specialties Inc. and S-Ben WX525 by Hojun Co. ([0190], [0263]-[0267], and [0291]). Awamura further teaches the modified layered inorganic mineral is incorporated into the masterbatch ([0291]). Awamura further teaches the oil phase is produced with a step of dispersing the mixture, with a bead mill ([0293]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Magome (US 20010028988) teaches a toner comprising an inorganic fine powder, preferably silica, with a liberation ratio of 0.1-3% ([0236]-[0237]). Magome further teaches the liberation ratio below 3% results in improved fixing performance ([0237]).
Uchinokura (US 20070218381) teaches a toner comprising modified layered inorganic materials added in an amount of 0.05-2.0 by weight of the toner, with a dispersion diameter of 0.01-0.6 µm ([0035], [0076]).
Yamada (US 20110033796) teaches a toner comprising a modified layered inorganic mineral, the modified layered inorganic mineral has 15% by volume or less with a particle diameter of 1.0 µm or more ([0097]). The modified layered inorganic mineral is included in an amount of 0.1-5% by weight of the toner ([0098]). Yamada further teaches examples of the modified layered inorganic mineral having a volume average particle diameter of 0.4 µm when dispersed in the masterbatch ([0159]).
Yamada (US 20110177440) teaches a toner comprising a modified layered inorganic mineral with a volume average particle diameter of 0.1-0.55 µm in the master batch, and 15% or less by volume with a particle diameter of 1 µm or more ([0137]-[0138]). The modified layered inorganic mineral is included in the toner in an amount of 0.1-5 % by weight ([0139]).
Yamada (US 20130130174) teaches a toner comprising a modified layered inorganic mineral with a volume average particle diameter of 0.1-0.55 µm in the master batch, with 15% or less by volume with an average particle diameter of 1 µm or more ([0103]-[0104]). The modified layered inorganic mineral is included in the toner in an amount of 0.1-5% by weight ([0105]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./ Examiner, Art Unit 1737
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
