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 Specification has been amended throughout to reflect J/g as the correct units for the values of ΔHC, ΔHC1, and ΔHC2. Claims 1 – 3 have been similarly amended. Accordingly, the objections to the Specification and to Claims 1 – 3, raised in the non-final rejection dated 2025-11-03, are withdrawn.
In addition, Claim 1 has been amended to more specifically define the range for the value of the ratio ΔHC1 / ΔHC2, as well as to incorporate the method of measuring those values. Claim 2 has also been amended to more specifically define the range for the value of the ratio ΔHC1 / ΔHC2. New Claim 11 has been added. No new subject matter has been added.
Response to Arguments
Applicant's arguments filed 2026-02-02 have been fully considered but they are not persuasive.
First, Applicant argues that Hirai’s parameters QA and QB are not identical or equivalent to the instant ΔHC1 and ΔHC2-, and cites Hirai’s description of the endothermic amounts as being “an endothermic amount in the region of the peak temperature ± 5°C of the endothermic peak”. However, this description is substantially the same thing as the instant “peak area surrounded by a baseline and an endothermic peak”. A practitioner of ordinary skill would appreciate that these two descriptions of the measurement of an endothermic amount from an endothermic peak in DSC are in effect the same, and would result in very nearly the same, if not identical, values. In addition, as to the condition that an endothermic peak derived from the crystalline resin is obtained when the ratio B/A is less than 0.8, Applicant’s disclosure states that this is the condition for determining that and endothermic peak does derive from a crystalline resin (Specification, [0052]). Where Hirai teaches that QA and QB are endothermic peaks derived from a crystalline resin, and thus would necessarily also satisfy this condition.
Second, Applicant points out that amended Claim 1 now disallows a value of 0 for the ratio ΔHC1 / ΔHC2, where Hirai’s teaching does not. Removal of a single endpoint value from the range does not cause Hirai’s taught range to no longer read on the claimed range, however.
Finally, Applicant asserts that the limitation of Expression (1A) found in Claim 1 gives rise to unexpected results. Applicant points out that example Toner Set No. 10 possesses a value for WP1 – WP2 below the claimed range, and also achieves inferior results in the First toner Color development evaluation. However, the MPEP states:
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
-MPEP 716.02(d) II
Only a single example of a toner set having a value for WP1 – WP2 below the claimed lower limit has been disclosed, so a reliable relationship between that parameter and performance in the First toner Color development evaluation cannot be drawn. In addition, example Toner set No. 10 comprises Black toner 5 as a first toner (Specification, Table II), which possesses a significantly lower input amount of pigment than other example black toners (Specification, Table I). Therefore, the inferior performance of Toner set No. 10 in the First toner Color development evaluation seems just as likely, if not more likely, to be a direct result of the lower pigment content in the first toner, instead of the difference in pigment contents between the first and second toners of a set. That is, it appears unlikely that pairing Black toner 5 as a first toner with a cyan toner having a value for WP2 of 7 or less as a second toner (such that the value WP1 – WP2 was 10 or greater) would rescue the performance of such a toner set in the First toner Color development evaluation. For these reasons, satisfaction of Expression (1A) as recited in Claim 1 cannot be said to give rise to unexpected superior results.
For these reasons, the updated rejection of Claims 1 – 11 below is not withdrawn.
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 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al (JP 2018-045090) (machine translation of which referred to henceforth).
Hirai discloses a toner set comprising a glitter toner and a colored toner. These may be considered analogous to a first toner and a second toner, respectively. Each of the toners comprise toner particles, which in turn comprise a binder resin and a pigment or colorant ([0027]). The glitter toner may contain a crystalline resin, and the color toner does contain a crystalline resin. Hirai teaches that the ratio of the endothermic amount of the endothermic peak as measured by DSC corresponding to the crystalline resin in the glitter toner particles to that of the colored toner particles is preferably 0.05 or less ([0027]), reading on Expression (2A) of Claim 1. As discussed above, the method disclosed by Hirai for determining the endothermic amount of the endothermic peak corresponding to crystalline resin by DSC is substantially the same as that recited in Claim 1. Hirai teaches that the content of the glitter pigment may be 1 – 70% by mass relative to the glitter toner particles ([0095]). In addition, the content of the colorant may be 1 – 30% by mass relative to the colored toner particles ([0110]). This would allow for a difference in pigment or colorant contents of the two toners to lie in a range reading on Expression (1A) of Claim 1. Therefore, in preparing the toner set taught by Hirai, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to prepare a toner set described by Claim 1.
The preferred ratio of the endothermic amounts of the endothermic peaks as measured by DSC corresponding to the crystalline resin contained in the two toner particles taught by Hirai ([0027]) also reads on Expression (2B) of Claim 2.
Hirai teaches that QB, representing the endothermic amount of the endothermic peak as measured by DSC corresponding to the crystalline resin in the colored toner is preferably in the range of 2 – 40 J/g ([0036]). Where the range stated in Claim 3 should have the units J/g, instead of kJ/g, the range taught by Hirai encompasses that stated in Claim 3.
As mentioned above, Hirai teaches that the content of the glitter pigment may be 1 – 70% by mass relative to the glitter toner particles ([0095]), reading on the inequality stated in Claim 4.
Hirai teaches that the content of crystalline resin in the colored toner particle may be 3 – 40% by mass relative to the whole toner particle ([0111]), reading on the ranges stated in Claim 5 and Claim 6.
Hirai teaches that the colored toner particles contain a colorant ([0107]), and gives examples of colorants ([0108]), many of which are organic pigments, satisfying Claim 7.
Hirai introduces the contents of the glitter toner ([0056]), and then lists examples of luster pigments ([0089]), many of which are inorganic pigments, satisfying Claim 8.
Hirai teaches an image forming apparatus which uses the toner set as described above ([0164]), the same as an image forming system, satisfying Claim 9.
Hirai teaches an image forming method which uses the toner set as described above ([0165]), satisfying Claim 10.
Hirai describes a variety of colorants, including organic and inorganic colorants of black, yellow, orange, red, blue, and green ([0108]), reading on the pigments of Claim 11.
Conclusion
THIS ACTION IS MADE FINAL. 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 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 03/31/2026