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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kamikura (US 20210026265).
Regarding claims 1-2 and 4, Kamikura discloses a toner comprising a toner base particle containing a binder resin, and a protruded portion on a surface of the toner base particle comprising an organosilicon polymer (abstract, [0009]-[0011]). Kamikura further discloses producing a toner base particle dispersion by preparing an aqueous medium with calcium chloride as a dispersion stabilizer. Kamikura then prepares a monomer composition of 60 parts styrene and 6.3 parts Pigment Blue 15:3 and dispersing for 5 hours at 220 rpm. 10 parts styrene, 30 parts n-butyl acrylate, 5 parts polyester and 6 parts hydrocarbon wax are then dissolved and dispersed in the styrene-pigment mixture. The monomer composition is then added to the aqueous medium while being stirred at 12500 rpm with a polymerization initiator, stirring is slowed and polymerization is carried out for 5 hours at 70°C, followed by heating to 85°C for 2 hours, and removal of any residual monomer by heating to 98°C for 3 hours, followed by diluting with water to a 30 mass% particle dispersion([0358]-[0364]). Kamikura further discloses producing an organosilicon compound by mixing 70 parts water with 30 parts methyltriethoxysilane, adjusting the pH to 3.5, and stirring for 1 hour at 60°C ([0394]). Kamikura then discloses 500 parts toner base particle dispersion are mixed with 35 parts organosilicon compound, the pH is adjusted, and the mixture is heated to 50°C and mixed for an hour before adjusting the pH to 9.5 and continuing stirring for another hour to form the protrusions ([0402]-[0403]). Kamikura further discloses the immobilization of the protruded portions is measured by subjecting the toner to a shaking treatment and measuring the mass ratio of organosilicon polymer contained on the toner before and after the shaking treatment, Si1 and Si2 respectively, with Si2/Si1≥0.90 ([0054]-[0060]). In other words (Si1-Si2)/Si1 ≤ 0.10. While the specific shaking treatment is not identical to that of the Instant Claim 1, both teach that the organosilicon polymer protrusions are securely attached to the toner. Furthermore, Kamikura discloses Toner 1 has a value Si2/Si1 of 0.99 (Table 4 page 22). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date that the toner of Kamikura would possess a value (R0-R1)/R0of 0.20 or less.
This process is nearly identical to the production of Toner 6 of the Instant Application, beginning with the production of a similar aqueous medium and organosilicon compound aqueous solution, the organosilicon compound comprising 60 parts water and 40 parts methyltrimethoxysilane. The polymerizable monomer composition is similarly produced starting with dispersing 60 parts styrene and 6.5 parts Pigment Blue 15:3, followed by adding 10 parts styrene, 30 parts butyl acrylate, 4 parts polyester resin and a release agent, then added to the aqueous medium at 70°C while stirring at high speed with a polymerization initiator. The stirring is then slowed and polymerization is carried out for 5 hours at 70°C, then 2 hours at 85°C. (page 52-54, Table 1-3 page 61). The toner base particle dispersion of the Instant Application does include a separate step of adding 0.2 parts 3-methacryloxypropyl trimethoxysilane, followed by heating to remove the residual monomer and diluting with water to 20%. Following dilution the pH of the dispersion was adjusted and 21 parts of the organosilicon compound solution to 500 parts of the toner base particle dispersion. After 30 minutes the pH is adjusted to 9.0 and maintained for 5 hours (aka 300 minutes) (page 54, Table 1-3 page 61).
Kamikura does not disclose the coverage of the organosilicon polymer shell, or the storage elastic modulus of the toner. However, since the toner of Kamikura is produced with a nearly identical method and sufficiently similar composition to that of Applicant’s Toner 6 of the Instant Application, the toner of Kamikura would be expected to inherently possess similar elastic moduli and coverage to that of Toner 6:
Storage elastic modulus of a disc like specimen at 100°C = 49500 Pa
G’base(100) = 11500 Pa
R0 = 0.65.
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 1997) (footnote and citation omitted).
Regarding claim 5, Kamikura discloses all limitations as set forth above. Kamikura further discloses the organosilicon polymer has the structure R-Si3/2, with R representing an alkyl group having 1-8 carbons, an alkylene group having 1-6 carbons, an acyl group having 1-6 carbons, or an aryl group having 6-14 carbons ([0106]-[0107]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kamikura (US 20210026265) as applied to claim 1 above, and further in view of Shimizu (JP H09114134).
Regarding claim 3, Kamikura discloses all limitations as set forth above. Kamikura does not disclose use of a long chain (meth)acrylate in the binder resin.
Shimizu teaches a toner comprising a styrene-acrylic copolymer based binder resin. The styrene-acrylic copolymer comprises 0.5-25 mass% of a (meth)acrylic ester unit having an ester moiety with 8 or more carbon atoms, CnH2n+1 and n≥8, with preferred examples of Lauryl (meth)acrylate, tridecyl (meth)acrylate, and stearyl (meth)acrylate ([0006], [0007]). Shimizu further teaches by including the long chain (meth)acrylic unit the fixing strength of the toner is improved in the low temperature range ([0008]). 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 Kamikura included a long-chain (meth)acrylic ester monomer, as taught by Shimizu, to improve low temperature fixing strength.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kamikura (US 20210026265) as applied to claim 1 above, and further in view of Fukuda (JP H09179341).
Regarding claims 6-7, Kamikura discloses all limitations as set forth above. Kamikura does not disclose an intermediate layer at the surface of the toner base particle.
Fukuda teaches a toner comprising a continuous thin film of a silicon compound on the surface of the toner base particles ([0009]). Fukuda further disclose the thin film has a thickness of several nanometers to several tens of nanometers ([0018]). Fukuda further teaches the silicon compound thin film prevents fusion of toner particles during stirring or storage of the toner, preventing increases in toner particle size and controlling the particle size distribution and improving storage stability ([0010]-[0011]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the toner base particles of Kamikura possessed a thin film of a silicon compound, as taught by Fukuda, to prevent fusion of the toner particles in areas not covered by the organosilicon protruded portions.
Regarding claim 8, modified Kamikura discloses all limitations as set forth above. Fukuda further teaches the silicon compound thin film is produced by adding γ-methacryloxypropyltrimethoxysilane to the toner particle dispersion and allowing it to react ([0029]). According to the Instant Application, imaging toner particles at m/z=247 and m/z=289 confirms the presence of 3-methacryloxypropyltrimethoxysilane and/or 3-methacryloxypropyltriethoxysilane as a constituent monomer (Instant Specification page 40). Therefore, by using γ(3)-methacryloxypropyltrimethoxysilane to form the silicon compound thin film one of skill in the art would expect a peak detected at m/z=247 or 289.
Conclusion
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.
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, Mark Huff can be reached at (571) 272-1385. 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.
/C.C.S./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737