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 Arguments
Applicant’s arguments, see pg. 4, filed 02/13/2026, with respect to the objection to claim 6, have been fully considered and are persuasive. The objection has been withdrawn.
Applicant’s arguments, see pg. 4-6, filed 02/13/2026, with respect to the rejection of claims 1 and 3-7 under 35 U.S.C. 103 over Saeki et al. and Shima et al. and the rejection of claim 2 under 35 U.S.C. 103 over Saeki et al., Shima et al., and Sriskandha et al., have been fully considered but they are not persuasive.
The Applicant has amended claim 1 to further recite that the toner comprises an external additive on a surface of the toner particle. The Applicant argues that Shima fails to teach or suggest incorporating the linear fatty acid metal salt into the toner particle itself, as recited in amended claim 1. The Applicant further argues that Shima teaches using the linear fatty acid metal salt to treat the surface of a toner external additive, whereas Saeki teaches using fatty acid metal salts in the toner particle. Because of this distinction, the Applicant argues that Saeki and Shima are not combinable for their respective teachings.
The Examiner respectfully disagrees. Initially, Saeki teaches that the toner particles may be used “as is” as a toner, or mixed with known additives as necessary in a mixing apparatus to obtain a toner ([0144]). In the examples, the toner particle is mixed with hydrophobic silica fine powder ([0230]). In other words, the toner of Saeki comprises a toner particle and an external additive (i.e., silica) attached to a surface of the toner particle, as recited by amended claim 1.
While Saeki states that the charge control agent (e.g., a fatty acid metal salt) may be included “in the toner”, this does not necessarily mean that the charge control agent is limited to the toner particle itself. That is, the term “toner” may refer to a toner particle alone or a toner particle including external additives (see [0144] of Saeki).
Even if Saeki was specifically referring to the inclusion of the charge control agent (e.g., fatty acid metal salt) in the toner particles, nowhere does Saeki teach away from the use of external additives surface-treated with specific fatty acid metal salts, such as those described in Shima. Therefore, it is believed that Saeki and Shima are combinable for the reasons discussed in the previous Office action.
Regardless, amended claim 1 merely recites that “the toner particle comprises a linear fatty acid metal salt”. According to MPEP § 2111.03, “the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended.").”
Respectfully, this feature does not limit the inclusion of the linear fatty acid metal as an internal additive in the claimed toner particle and, therefore, does not exclude toner particles found in prior art having external additives surface-treated with a fatty acid metal salt attached to surfaces of the toner particles, as these toner particles could be considered to “comprise” the fatty acid metal salt.
Then, the Applicant argues that combination of features recited by amended claim 1 provides a critical and unexpected benefit. In support of this argument, the Applicant argues that the toner of claim 1 achieves the benefit of improving the hot-offset resistance by comprising the specific linear fatty acid metal salt satisfying the requirements specific in claim 1, and that the data found in the specification demonstrates the criticality and unexpected benefit these effects.
However, the Applicant has not sufficiently explained the data in support of the allegation that the claimed toner exhibits unexpected results in terms of hot-offset resistance. The Applicant has the burden of explaining the data, either in the specification or in a declaration, when arguing unexpected results with regard to the claimed invention (see MPEP 716.02(b)(I) and 716.02(b)(II)). Merely referencing where the examples and comparative examples can be found in the specification is not sufficient to constitute a proper explanation of any alleged unexpected results.
See also MPEP 716.02(b)(I), which states that “the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.").
For the reasons provided above, the rejection of the claims as presented in the previous Office action are maintained.
Claim Objections
Claims 1-7 are objected to because of the following informalities:
Claim 1, lines 1-2, recite “A toner comprising a toner particle and an external additive to a surface of the toner particle”. For purposes of better clarity, it is recommended to amend this limitation to recite, for example, “A toner comprising a toner particle and an external additive attached to a surface of the toner particle”.
Claims 2-7 are objected to because they fully incorporate the subject matter of claim 1.
Appropriate correction is required.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Saeki et al. (US PGP 2019/0384195 A1), in view of Shima et al. (US PGP 2009/0035682 A1).
Saeki teaches a toner comprising a toner particle containing a binder resin. The binder resin is taught to contain a polymer A having a first monomer unit derived from a first polymerizable monomer and a second monomer unit derived from a second polymerizable monomer unit different from the first polymerizable monomer unit (Abstract).
Saeki teaches that the toner particles may be used “as is” as a toner, or mixed with known additives as necessary in a mixing apparatus to obtain a toner ([0144]). In the examples, the toner particle is mixed with hydrophobic silica fine powder ([0230]). In other words, the toner of Saeki comprises a toner particle and an external additive (i.e., silica) attached to a surface of the toner particle (which reads on the corresponding limitation recited in instant claim 1).
The polymer A is taught to be a crystalline resin ([0048]) (which reads on the corresponding limitation recited in instant claim 1). Additionally, a content of the polymer A in the toner is taught to be 40 mass% or more and 100 mass% or less, or preferably 50 mass% to 90 mass% (which falls within the corresponding range recited in condition (iv) of instant claim 1).
The first polymerizable monomer is taught to be selected from the group consisting of (meth)acrylic acid esters having a C18-C36 alkyl group ([0015]). The content of the first monomer unit in the polymer A is taught to be 5.0 mol% or more and 60.0 mol% or less with respect to the total moles of all monomer units in the polymer A ([0016]).
In the examples, the polymer A of Example A16 included 63 parts by mass of behenyl acrylate as the first monomer unit, 7 parts by mass of methacrylonitrile as a second monomer unit, 7 parts by mass of acrylic acid as an additional second monomer unit, and 23 parts by mass of styrene as the third monomer unit (Table 1). Similarly, in the Applicant’s examples, the resin A1 included 80 parts by mass of docosyl acrylate (also known as behenyl acrylate), 18 parts by mass of styrene, and 2 parts by mass of methacrylic acid (See Table 1 of the instant specification).
The behenyl acrylate monomer in Saeki reads on the claimed monomer unit (a) represented by formula (1) and comprises an alkyl group having a carbon number C(a) of 22 (which reads on the corresponding conditions (i) and (iii) recited in instant claim 1). Additionally, a content of the behenyl acrylate in the polymer A of Example A16 was 63.00 mass% (which reads on the corresponding condition (ii) recited in instant claim 1, and falls within the corresponding range recited in instant claim 5).
Saeki teaches that the storage elastic modulus of the toner Gk’(50) at 50 ºC is greater than or equal to 1.0 x107 Pa ([0119]). In other words, the toner of Saeki reads on the expression (2) recited in instant claim 1 where T1 = 50.0. Saeki appears to be silent to teach the loss elastic modulus of the toner at the temperature T1, the ratio tanδ of the loss elastic modulus to the storage elastic modulus at the temperature T1, or the tanδ at a temperature of T1-10. Thus, Saeki is silent to teach the claimed formulae (3) and (4) recited in instant claim 1. Saeki also appears to be silent to teach a temperature T2 at which the storage elastic modulus is 3.0 x 107 Pa or a temperature T3 at which the storage elastic modulus is 3.0 x 106 Pa. Thus, Saeki is silent to teach the claimed formula (5) recited in instant claim 6.
However, provided that the toner of Saeki satisfies the expression (1) and includes a sufficiently similar crystalline polymer A including sufficiently similar monomers in similar proportions, the toner of Saeki would be expected to necessarily satisfy the claimed formulae (3) to (5), and thus would read on the corresponding limitations recited in instant claim 1 and claim 6.
According to MPEP § 2112(V), "[T]he PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of his
[or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977) (footnote and citation omitted).
Saeki also teaches that the toner may include a charge control agent in order to impart a positive or a negative charge to the toner ([0137]). Examples of agents for giving the toner a positive charge are taught to include fatty acid metal salts ([0139]). However, Saeki is silent to teach specific examples of suitable fatty acid metal salts.
Shima teaches a toner additive including fatty acid metal salts. Shima teaches that aluminum, zinc, and sodium are preferrable metals in the fatty acid metal salt, and that di-fatty acid aluminum salts such as aluminum distearate (i.e., a linear fatty acid metal salt comprising a trivalent metal wherein C(b) = 18) are particularly preferred. Shima teaches that the presence of a hydroxy group in the fatty acid metal salt prevents overcharge and suppresses transfer failure of the toner ([0227]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used a di-fatty acid aluminum salt, such as aluminum distearate, as the fatty acid metal salt in the toner of Saeki, in view of preventing overcharge and suppressing transfer failure of the toner. In doing so, the toner of modified Saeki would necessarily read on the corresponding limitations recited in instant claim 1, claim 31, claim 4, and claim 7.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Saeki et al. (US PGP 2019/0384195 A1), in view of Shima et al. (US PGP 2009/0035682 A1), and further in view of Sriskandha et al. (US PGP 2020/0225598 A1).
The teachings of Saeki and Shima are discussed above and incorporated herein. Saeki appears to be silent to teach an amount of a metallic element in the toner. Sriskandha teaches a toner including a chelating agent, which is used to extract metal from the toner particle. The formed toner is taught to comprise a residual metal content of from about 100 ppm to 500 ppm. More specifically, the toner is taught to comprise a residual aluminum amount of from 100 ppm to 500 ppm ([0027]) (which overlaps with the corresponding range recited in instant claim 2). Sriskandha teaches that when the residual metal amount is within this range, coarse toner particles can be prevented which keeps toner gloss from increasing beyond a desirable amount ([0028]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have controlled the amount of metal elements in the toner of Saeki to be within the range taught by Sriskandha, in view of achieving a desirable gloss.
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 Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.A.E./Examiner, Art Unit 1737
03/19/2026
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
1 Behenyl acrylate: C(a) = 22,
Aluminum distearate: C(b) = 18
|22 – 18| = 4, which is less than or equal to 5