DETAILED ACTION
Response to Arguments
Applicant’s arguments, see the Response, filed 1/8/2026, with respect to the rejection of claims 1-7 and 9-20 under 35 U.S.C. 103 have been fully considered and are persuasive in regards to the resin particle being included inside the toner particle, rather than being an external additive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made below.
Further regarding the 35 U.S.C. 103 rejection, Applicant argues that Zenitani does not increase the effects of Anno, and therefore there is no motivation to combine them. However, the references do not have to have the same purpose in order for the combination to be obvious. Zenitani teaches that it is beneficial to have the silica particles contain a quaternary ammonium salt in order to prevent triboelectric charging of the silica ([0029-30]). A toner using these silica particles as the external additive may prevent some of the toner from the scattering that is caused by bad charge distribution, as addressed by Anno ([0023]), by lessening the mutual charging between toner particles. Therefore, a person of ordinary skill in the art may choose to use these solutions together to further prevent the image density unevenness.
Regarding the obviousness-type double patenting rejection, claim 1 of copending application 18/300,556 contains all of the limitations of claim 1 of the copending application apart from a binder resin and resin particle included in the toner. Further, a binder resin is an integral component of a toner and a resin particle is also known within the art, as to be obvious to include. Therefore, the claims are not patentably distinct from one another.
Regarding the 35 U.S.C. 112(b) rejection, Applicant argues that the measurement method for the loss tangent values recited in pending claim 8 is clearly described in the specification, and as such a person of ordinary skill in the art would be able to readily ascertain what prior art toners will read on the claim. Further, Applicant cites Ex Parte Kai Ellringmann, Stephen Zollner, Thorsten Krawnikel, & Stefan Wulf, No. 111559,991, 2012 WL 1268906 wherein “applicants are free to claim a product by what it does rather than by what it is in appropriate circumstances”.
The rejection is not contending that the claims cannot recite physical properties, rather, that the properties should be recited in a way wherein a person of ordinary skill in the art can easily ascertain what will or will not infringe. While the specification provides guidance on the testing procedure for determining the properties of claim 8, a person of ordinary skill in the art would not be able to tell which prior art toners read on the claim simply by reading the disclosure. The test would need to be performed on each toner to determine the particular loss tangent values and their relationships to one another.
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 1-7 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Annon (US PGP 2021-0088924) in view of Zenitani (US PGP 2021-0300771) and further in view of Murakami (US Patent No. 9,921,507).
Anno teaches a carrier comprising a core material, and a resin coating layer that contains inorganic particles (Abstract). The inorganic particles are preferably silica ([0074] line 13). The content of the inorganic particles is 10 – 60% by mass based on the total mass of the coating resin layer ([0013]). The average diameter of the inorganic particles is 1 to 80 nm, and preferably 5 to 30 nm ([0080]). Table 2 shows that most of the exemplary particles have an average diameter of 12 nm or 40 nm. The coating layer contains an alicyclic (meth)acrylic resin ([0068] line 1-2), being mostly made of cyclohexyl (meth)acrylate ([0072]).
Anno teaches an image forming apparatus and image forming method ([0120-126]) comprising charging an image holding member, exposing the image holding member with an exposure device to form a latent image, developing the latent image via a developing device with the toner, transferring the toner image to a recording medium with a transfer device, and fixing the image with a fixing device. The image forming apparatus has a process cartridge comprising the developing device that houses the toner and is detachably attached to the image forming apparatus ([0125]).
Anno teaches silica particles externally added to the toner ([0114]), but is silent regarding the particles containing an elemental nitrogen containing compound containing elemental molybdenum. Zenitani teaches a silica particle that includes a quaternary ammonium salt (Abstract) that may be used as an external additive for a toner ([0003]). The silica particles have an average particle diameter of 5 to 100 nm ([0072]), and most exemplary particles have an average diameter of 70 nm (Table 3). The quaternary ammonium salt is represented by general formula (AM), having a nitrogen atom surrounded by 4 R groups and an anion represented by X- ([0079-80]). Examples of the anion X- include MoO4-2 ([0093]), and exemplary silica particle 3 contains TP-415 which contains molybdenum (Table 1). Zenitani does not measure the ratio NMo/NSi of the net intensities of elemental molybdenum and silicon by X-ray fluorescence, however, based off of the amount of the quaternary ammonium dal compound TP-415 added in exemplary silica particles (A2) of the instant application (Table 5) and Example 3 of Zenitani (Table 1), it would be expected to be around 0.10. The amount of quaternary ammonium salt added in Zenitani’s example is based on 100 parts by mass of the solid content of the silica particle suspension ([0187] line 4-6). Similarly, the amount of the molybdenum/nitrogen containing compound in the instant application is with respect to 100 parts by mass of the solid silica base particle suspension ([0398]). Therefore, since both particles contain 4 parts by mass of the TP-415 compound it can be assumed that the ratio NMo/NSi would be the same.
Silica particles tend to have a high electrostatic capacitance on the particle surface, causing electrical resistance of a contact material (the toner particles), and static electricity is accumulated ([0027]). The silica particles of Zenitani prevent this increase in electrostatic capacitance ([0028]). Therefore, 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 modified the toner of Anno to have included the silica particles containing a quaternary ammonium salt of Zenitani as the external additive in order to prevent the accumulation of static electricity in the toner.
Murakami teaches a toner particle including a polyester resin (binder resin) and a styrene (meth)acrylic resin (resin particles) (Abstract). The styrene (meth)acrylic resin has a crosslinked structure (Col. 7 line 40-41). The volume-average particle diameter of the resin particles is preferably 0.1 to 0.6 µm (Col. 12 line 52-56). The exemplary styrene-acrylic resin particles have an average diameter of 102 nm (Col. 24 line 45). A toner with this structure reduces the likelihood of streaky image defects being formed in the direction of rotation of an image carrier (Col. 3 line 47-50). Therefore, 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 modified the toner of Anno to have included the styrene acrylic resin particles of Murakami in order to prevent image defects.
Using the average particle diameter of the silica particles (A) of 70 nm, the average particle diameter of the inorganic particles of 40 nm and the average particle diameter of the resin particles of 102 nm, the ratio DB/DA would be 0.57, and the ratio DB/DC would be 0.39.
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 Jenna Kuipers whose telephone number is (571)272-0161. The examiner can normally be reached Monday - Friday 8:30 - 5:30 PT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 03/26/2026
Prosecution Insights