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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026-04-16 has been entered.
Claim Rejections - 35 USC § 112
Claims 1 – 6, 8 – 15, and 17 – 20 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a toner comprising alkylsilane-treated silica particles, which comprise a branched aliphatic hydrocarbon of 7 – 18 carbons on the surfaces of the silica particles in an amount of 10 – 1,000 ppm with respect to the amount of silica particles, does not reasonably provide enablement for a toner comprising alkylsilane-treated silica particles and a branched aliphatic hydrocarbon localized anywhere other than the silica particles.
The language of Claim 1, reciting a “toner comprising… a branched aliphatic hydrocarbon” could reasonably convey to one of ordinary skill in the art a toner having the branched aliphatic hydrocarbon existing in the interiors of the toner particles; existing on the surfaces of the toner particles; existing in the interior of the silica particles; existing on the surfaces of the silica particles; or existing in the interiors of or on the surfaces of different externally added particles. The specification provides enablement only for the branched aliphatic hydrocarbon existing on the surfaces of the silica particles.
Claims 2 – 6, 8 – 15, and 17 – 20 depend either directly or indirectly on Claim 1, and also fail to limit the localization of the branched aliphatic hydrocarbon so as to be reasonably enabled by the as-filed specification. Claim 9, which does further limit the localization of the branched aliphatic hydrocarbon, also fails to limit that localization to the surfaces of the silica particles. The language “contained in the silica particles” appears to more likely limit the localization of the branched aliphatic hydrocarbon to the interiors of the silica particles, as opposed to the surfaces.
Similarly, the specification provides enablement for silica particles externally added to the toner particles, but does not reasonably provide enablement for silica particles internally added to the toner particles. The language of Claim 1, reciting a “toner comprising: alkylsilane-treated silica particles” could reasonably convey to one of ordinary skill in the art internally or externally added silica particles. The specification provides enablement only for externally added silica particles. Claims 2 – 6, 8 – 15, and 17 – 20 depend either directly or indirectly on Claim 1, and also fail to limit the localization of the silica particles so as to be reasonably enabled by the as-filed specification.
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 1 – 3, 6, 8, 10 – 12, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shirakawa et al (US PGP 2022/0171305) in view of Kaneeda et al (US PGP 2017/0168409).
Shirakawa teaches a toner comprising an external additive ([0005], [0012]). The specific external additive includes at least a polymer containing sulfur and nitrogen atoms, and also includes a vinyl polymer and a siloxane moiety ([0006]). Shirakawa teaches that an organic solvent may be use in the production of the external additive particles, and isooctane is given as an example ([0083]). Shirakawa teaches that another external additive, other than the particles discussed above, may be added to the toner, and silica particles are given as an example ([0103], [0104]). Externally added silica particles may be surface-treated with a silane compound (reading on an alkylsilane treatment agent). Shirakawa does not appear to give examples of silane treatment agents for externally added silica particles.
Kaneeda teaches a hydrophobic silica powder for use with a toner ([0001]). The hydrophobic silica imparts upon the toner insensitivity to environmental humidity ([0007]). The silica may be hydrophobized by treatment with a silane coupling agent ([0024]). Kaneeda gives as example silane coupling agents dimethyldimethoxysilane, triethylmethoxysilane, trimethylmethoxysilane, hexyltrimethoxy silane, and methyltrimethoxysilane ([0028]).
In preparing the toner of Shirakawa, one of ordinary skill in the art would have been motivated to improve the moisture resistance (insensitivity to humidity) of the toner by treating the externally added silica particles with silane coupling agents as taught by Kaneeda. The resulting silica particles would read on those recited in Claim 1. In addition, where isooctane, a branched aliphatic hydrocarbon having a carbon number lying in the range stated in Claim 1, may be used as a solvent in the preparation of the specific external additive taught by Shirakawa, a trace quantity of isooctane would remain incorporated into the specific external additive. This would allow the content of isooctane to be comprised in the toner in an amount, relative to the amount of silica particles, lying in the range stated in Claim 1.
The silane coupling agents mentioned by Kaneeda read on each of Formula (1), Formula (2), and Formula (3) of Claim 2.
Dimethyldimethoxysilane, trimethylmethoxysilane, and methyltrimethoxysilane, mentioned as silane coupling agents by Kaneeda, satisfy Claim 3.
Isooctane, discussed above, has a carbon number lying in the range stated in Claim 6.
Where a trace quantity of isooctane would remain incorporated into the specific external additive, the ratio of the content of isooctane to the alkylsilane treatment agent of the silica particles would be allowed to lie in the range stated in Claim 8.
The toner of Shirakawa may be used as a one-component developer, or mixed with a carrier and used as a two-component developer, satisfying Claims 10 – 12, Claim 15, and Claim 17.
Claims 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shirakawa et al (US PGP 2022/0171305) in view of Kaneeda et al (US PGP 2017/0168409), further in view of Horiuchi et al (US PGP 2011/0287353).
The above discussions of Shirakawa and Kaneeda are incorporated herein.
Neither of Shirakawa or Kaneeda appears to teach the details of a toner cartridge, a process cartridge, or an image forming apparatus.
Horiuchi describes a process cartridge which may include an image bearing member and a developing means ([0083]), and which is detachably attached to an image forming apparatus ([0084]). The process cartridge may also include a developing unit ([0370]). The developing unit contains a toner ([0327]). Horiuchi further discloses a charging means ([0083]), an image forming means ([0081]), a transferring means ([0081]), and a fixing means ([0094]).
Lacking guidance from Shirakawa and Kaneeda surrounding the details of an image forming apparatus, one of ordinary skill in the art would have been motivated to look to the prior art for a suitable apparatus with which to use the toner of Shirakawa and Kaneeda. Therefore, it would have been obvious to use the apparatus taught by Horiuchi. The developing unit of Horiuchi, which contains a toner, is analogous to the toner cartridge of Claim 18. Further, the process cartridge of Horiuchi reads on that of Claim 19, and the image forming apparatus of Horiuchi reads on that of Claim 20.
Conclusion
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 06/11/2026
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