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 amendment filed 4/1/2026 has been entered. Claims 1 and 3-12 remain pending. Claim 2 has been cancelled. Claims 1, 4-6, 8, and 10-12 have been amended.
Response to Arguments
Applicant’s arguments, see page 6, filed 4/1/2026, with respect to claims 1, 3, 8, and 11 have been fully considered and are persuasive. The rejection of claims 1, 3, 8, and 11 has been withdrawn.
Applicant argues following the amendments, claim 1 of the instant application is substantially different from the claims of the 18/935,468 application. Examiner agrees, the amendments differentiate the claims.
Applicant's arguments, see page 7, filed 4/1/2026, with respect to claim 12 have been fully considered but they are not persuasive.
Applicant acknowledges the separate rejection of claim 12 under 35 USC 102(a)(1). However, the specific rejection is not addressed. Examiner maintains when an image forming device is claimed, the toner used in the image forming device does not represent a material limitation of the device because the toner is consumed during operation of the device, and is not a permanent fixture of the device in view of MPEP 2115 and 2114.
Applicant’s arguments, see page 7-9, filed 4/1/2026, with respect to the rejection(s) of claim(s) 1-12 under 35 USC 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 Therefore, the rejection has been withdrawn.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 Kondo (US 20170115586) in view of Tanaka (US 20180246430) and Hamano (US 20030104296).
Applicant argues Tanaka in view of Matsubara fail to teach the amended limitation of the viscosity of the toner core particles, or the BET specific surface area of the particles. Specifically Matsubara fails to teaches, the amended viscosity range, 1.2*105-1.8*105 Pa*s, is now outside the range taught by Matsubara, 104-105 Pa*s. Examiner agrees the amendments are outside the range of what is taught by Matsubara. Kondo teaches a toner comprising a toner comprising identical polyester resins to those disclosed in the Instant application, with a toner base particles comprising 10-30% by mass of the crystalline polyester. One of skill in the art would recognize the toner base particles of Kondo would be expected to inherently possess a viscosity at 90°C in the range of 120000-180000 Pa*s.
Drawings
The drawings are objected to because the text in the graph of figure 1 is blurry and difficult to read. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugiura (US 20060024604).
Regarding claim 12, Sugiura discloses an image forming apparatus comprising an image bearing member to bear an electrostatic latent image, a developing device to develop the electrostatic latent image with a developer, forming a toner image on the image bearing member, and a transferring device to transfer the toner image onto a receiving material ([0038]-[0041]).
The applicant has recited the apparatus claims as also containing or comprising the toner of pending claim 1. 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.
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, 3-8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (US 20170115586) in view of Tanaka (US 20180246430) and Hamano (US 20030104296).
Regarding claims 1 and 3, Kondo discloses a toner comprising a crystalline polyester resin and an amorphous polyester resin as the binder in the toner base particles (abstract, [0012], [0023]-[0024]). While Kondo does not disclose the viscosity of the toner at 90°C, Kondo produces the amorphous and crystalline polyesters using the same monomers, in the same amounts, with the same process as the Instant application. Kondo produces amorphous polyester resin PA1 using 440 g terephthalic acid, 235 g of isophthalic acid, 7 g of adipic acid, 554g of ethylene glycol, and 0.5g tetrabutoxytitanate as a catalyst, mixed and reacted for 5 hours at 210°C in a nitrogen stream, followed by reacting under reduced pressure for 1 hour. Then 103g of trimellitic anhydride are added and allowed to react at normal temperature for 1 hour, followed by reacting under reduced pressure to collect the resin. 219g of ethylene glycol were collected during the process ([0144]). This is identical to the process of producing the amorphous polyester resin A of the Instant Application (Instant specification [0098], page 32-33). Kondo further discloses preparation of crystalline polyester resin B by adding 132g of 1,6-hexanediol, 230g of 1,10-decanedicarboxylic acid and 3 g of tetrabutoxytitanate as a catalyst to a reaction vessel, mixing and reacting for 5 hours while water is distilled away, at 210°C at normal pressure, followed by reacting continuously under reduced pressure and collecting the resin when the acid value is lower than 2 mg KOH/g ([0146]). This is identical to the process of producing crystalline polyester resin C in the Instant Application (Instant Specification [0099], page 33). Kondo then produces the toner particles Example 1 using polyester resin A 79% by weight, crystalline polyester resin B 10% by weight, CI Pigment Blue 15:3 7% by weight, WEP-3 release agent 5% by weight, and Bontron E-84 as a charge control agent 1% by weight. The materials are pre-mixed for 5 minutes, then melt kneaded, cooled and pulverized ([0150]-[0152]). This process matches that of the Instant Application, however the ratio of amorphous polyester to crystalline is slightly different, 62% amorphous, 25% crystalline (Instant specification [0100]-[0103]).
Regarding the difference in the amount of amorphous and crystalline resin in Kondo’s example, Kondo discloses the content of the crystalline polyester is preferably 10-30 % by mass of the toner, the amorphous polyester is preferably 50-80 % by mass of the toner, and the mass ratio of crystalline polyester to amorphous polyester is 5:95 to 50:50 ([0014], [0056], [0072]). Kondo further discloses when the mass ratio of crystalline polyester to amorphous polyester is between 5:95 and 50:50 impairment of hot offset resistance and low temperature fixability are prevented ([0038]). According to the MPEP, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP 2144.05 II A). One of skill in the art would also expect optimizing the ratio of amorphous and crystalline polyesters would be expected to adjust the viscosity at 90°C as well. Furthermore, the preferred ranges of the mass% of the toner for both the amorphous polyester resin and the crystalline resin disclosed by Kondo covers all exampled taught by the Instant Application (Instant Specification [0103]-[0106]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to optimize the ratio of amorphous polyester resin to crystalline polyester resin in the toner base particles closer to 62% by mass and 25% by mass, respectively, to improve low temperature fixability. Kondo further discloses the toner includes externa additives, selected from a group of additives including silica and barium titanate, all of which have been hydrophobized ([0090]). However, Kondo does not disclose the primary particle size of barium titanate particles or their coverage, or the BET specific surface area of the toner core particles.
Tanaka teaches a toner comprising externals additives including inorganic fine particle A and silica fine particles, as well as a binder resin and a wax ([0055]). Tanaka further teaches the silica and inorganic fine particle A are preferably treated by a hydrophobic treatment ([0103], [0122]). Tanaka further discloses inorganic fine particle A is a titanate having a group 2 element, selected from beryllium, magnesium, calcium, strontium, barium, and radium, with barium titanate fine particles as one of the exemplified particles ([0062]-[0063]). Tanaka further discloses the inorganic fine particles A have a coverage of 5-40 area%, preferably 5-25 area% of the toner and a primary particle diameter of 10-60 nm ([0067]-[0070]). Tanaka further discloses the primary particle diameter of the silica fine particles is 5-50 nm, preferably 5-20 nm ([0058]). Tanaka further teaches by maintaining the inorganic fine particle diameter preferably in the range of 10-60nm, migration of the inorganic fine particle A is inhibited, suppressing melt adhesion to the control member ([0071]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the toner of Kondo includes hydrophobized barium titanate particles, 10-60 nm in diameters, as taught by Tanaka, to prevent particle migration and melt adhesion to the control member.
Hamano teaches a toner with a toner mother particle having a BET specific surface area of 0.6-3 m2/g (abstract, [0017]). Hamano further teaches when the BET specific surface area is less than 0.6 m2/g the toner is not stable, and when it is over 3.0 m2/g the toner becomes less fluid and external additives may be buried due to surface irregularly ([0077]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the toner core particles of Kondo have a BET specific surface area of 0.6-3.0 m2/g, as taught by Hamano, to ensure the toner is stable and external additives are not buried in the surface of the toner.
Regarding claim 4, modified Kondo discloses all limitations as set forth above. Tanaka further teaches measuring the fixing ratio of the inorganic fine particle A, the group 2 element containing titanate. The process involves measuring the amount of the group 2 element using X-ray Fluorescence analysis before and after washing the toner, the fixing ratio being (the intensity of the group 2 element after wash)/(the intensity of the group 2 element before wash) * 100 ([0238]-[0251]). Tanaka further discloses the fixing ratio is 40-100% ([0073]). While the process used by Tanaka is not identical, they are both used to measure the adhesion of the external additive. One of skill in the art would recognize a fixing ration of near 100% would be expected to meet the limitation of (SA2/SB2) *100 is 80% or greater.
Regarding claims 5-6 and 8, modified Kondo discloses all limitations as set forth above. Modified Tanaka does not teach the mobility, (FB/FA)*100, or distribution deviation value BH/BF of the inorganic fine particle A. However, Tanaka does teach the method of preparing the toner, including several examples of attaching the external additives. Example 1 attaches the toner by adding both additives and mixing, but Example 14 produces the toner by first adding inorganic fine particle A, mixing in a Henschel mixer, then adding the silica fine particles, and mixing again ([0401]-[0402], [0404] Table 2 page 20-21).
The method of Toner 14 mirrors that of the Instant Application, mixing the toner core particles with barium titanate first, then mixing the silica in a second addition, resulting in the barium titanate to be ”flowed away by the silica” into the depressions of the toner, increasing the adhesion strength (Instant Specification page 7, 37). Furthermore, the Instant Application details that the barium titanate which flowed away into the depressions results in the proper mobility of the barium titanate particles, and therefore further stirring does not greatly increase the adhesion strength of the barium titanate particles. (Instant Specification page 8) is Therefore, one of skill in the art would expect the toner of modified Kondo to possess a mobility of 1.1 or less, and a similar distribution deviation value BH/BF, to that of the toner of the Instant Application.
Regarding claim 7, modified Kondo discloses all limitations as set forth above. Kondo further discloses the toner is 5-10 µm diameter, preferably 5.5-7.5µm [0023]). Tanaka further teaches the primary particle size of the silica is 5-50 nm and the coverage is 60-95 area% ([0036]).
Regarding claim 11, modified Kondo discloses all limitations as set forth above. Kondo further discloses a developer comprising the toner and a carrier ([0113]).
Claims 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (US 20170115586) in view of Tanaka (US 20180246430) and Hamano (US 20030104296) as applied to claims 1 and 8 above, and further in view of Sugiura (US 20060024604).
Regarding claim 9, modified Kondo discloses all limitations as set forth above. However, Kondo does not disclose a toner with a third external additive.
Sugiura teaches a similar toner comprising multiple external additives including small particulate inorganic material, having a primary particle diameter of 1-20 nm, a large particulate inorganic material having an average primary particle diameter of 30-150 nm, and a medium particulate inorganic material having an average primary particle diameter of 20-50 nm ([0154]). Sugiura further teaches the inorganic materials of the small, medium, and large particulates may be selected from silica and metal oxides, including barium titanate ([0155], [0158]). Sugiura further teaches the inclusion of the first, large particulate inorganic material on the surface of toner increases the distance between toner particles, decreasing van der Waals’ force, enhancing developability, transferability, cleanability and environmental stability of the toner ([0150]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include a large particulate inorganic particulate material with a primary particle diameter of 30-150 nm, as taught by Sugiura, to improve the toner’s developability, transferability, cleanability, and environmental stability.
Regarding claim 10, modified Kondo discloses all limitations as set forth above. As detailed above Tanaka teaches several possible methods of addition, including adding and mixing the inorganic fine particle A with the toner base particles first, and then adding the silica particles (Example 14 Table 2 page 20-21). However, Tanaka has shown different orders of addition were tested, both mixed at the same time, silica first, and inorganic fine particle A first (Table 2 page 20-21). Therefore, in view of Tanaka, it would have been obvious to one of skill in the art to try adding the three external additives in different orders to determine the best order of addition.
Also, while Sugiura does not teach a specific example using multiple sizes of silica, and barium titanate. Sugiura does teach adding the smaller hydrophobized silica (1) to the treated mother toner (1), before adding the larger hydrophobized silica (2) ([0383]-[0384]).
Furthermore, the MPEP states selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930). MPEP 2144.04, IV, C.
Regarding claim 12, modified Kondo discloses all limitations as set forth above. Assuming arguendo the toner is a material limitation of the image forming device, Sugiura teaches an image forming apparatus comprising an image bearing member to bear an electrostatic latent image, a developing device to develop the electrostatic latent image with a developer, forming a toner image on the image bearing member, and a transferring device to transfer the toner image onto a receiving material ([0038]-[0041]).
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.
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
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