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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-10 are objected to because of the following informalities:
Claim 1, lines 11-12, recite “which corresponds to silicon atom having a structure given by following formula (a)”. There appears to be an “s” missing after “atom”.
The same issue appears in lines 12-13 of claim 7 and claim 8.
Applicant’s cooperation is respectfully requested in correcting any minor errors of which applicant may become aware in the claims.
Claims 2-4, 6, and 9-10 are objected to merely because of their dependency on the above claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishizu et al. (US Pat. No. 9,809,682 B2).
Ishizu teaches a polyalkylsilsesquioxane fine particle having hydrophobicity and having a small particle diameter, an external additive for a toner, and a dry toner for electrophotography using said external additive. The hydrophobized spherical polyalkylsilsesquioxane fine particle is taught to have a particle diameter from 0.05 µm to 0.3 µm (Abstract) (which is identical to the corresponding range recited in instant claim 1, claim 7, and claim 8). The content of the polyalkylsilsesquioxane fine particle with respect to the toner is taught to be from 0.1 mass% to 5.0 mass%, or more preferably from 0.2 mass% to 4.0 mass% (Col. 23, lines 1-19) (which reads on the corresponding range recited in instant claim 9).
The method of manufacturing the polyalkylsilsesquioxane fine particle is taught to comprise: a first step of obtaining a mixture of a raw material solution containing a fine particle precursor selected from the group consisting of (i) a hydrolysate of an alkyltrialkoxysilane, (ii) a partial condensate of the hydrolysate, and (iii) a mixture of the hydrolysate and the partial condensate, and an organic solvent; a second step of mixing the raw material solution with an alkaline aqueous medium containing an organic solvent to subject the fine particle precursor to a polycondensation reaction, to thereby obtain a polycondensation reaction liquid; a third step of mixing the polycondensation reaction liquid with an aqueous solution, to thereby obtain a spherical polyalkylsilsesquioxane fine particle dispersion liquid having dispersed therein a spherical polyalkylsilsesquioxane fine particle; and a fourth step of blending a hydrophobizing agent in the spherical polyalkylsilsesquioxane fine particle dispersion liquid to subject a surface of the spherical polyalkylsilsesquioxane fine particle to hydrophobizing treatment (Col. 9, lines 45-67 and Col. 10, lines 1-11).
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The alkyltrialkoxysilane is taught to be represented by general formula (2), shown below (Col. 10, lines 44-49):
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Additionally, the hydrolysate of the alkyltrialkoxysilane is taught to be represented by general formula (3), shown below (Col. 10, lines 51-62):
The hydrolysate of the alkyltrialkoxysilane compound represented by general formula (3) above obtained by hydrolyzing alkyltrialkoxysilane(s) represented by general formula (2) includes a silanol group (Si-OH). Therefore, the polyalkylsilsesquioxane fine particle is a fine particle of a silicon polymer having a siloxane group and a silanol group.
The method taught by Ishizu is sufficiently similar to the method employed by the Applicant. For instance, in Example 1-1 of Ishizu and the preparation of Fine Particle 1 disclosed in the instant application, both methods produced silicon polymers using the four steps mentioned above. In the first step, both methods teach a hydrolysis process using similar proportions of water and acetic acid with tetrafunctional silane(s) represented by Ishizu’s general formula (2).
In Ishizu’s method, methyltrimethoxysilane was used and in the Applicant’s method, tetraethoxysilane and dimethyldimethoxysilane are used (see Col. 26, lines 50-60 of Ishizu and [0114] of the instant specification). In the second step, both methods teach a polycondensation process using similar proportions of water, ammonia, and methanol and an identical stirring temperature (see Col. 26, lines 61-67 and Col. 27, lines 1-4 of Ishizu and [0114] of the instant specification). In the third step, both methods teach a particle formation process using a similar proportion of water and an identical stirring temperature (see Col. 27, lines 5-15 of Ishizu and [0115] of the instant specification). In the fourth step, both methods teach a hydrophobization process using a similar proportion of hexamethyldisilazane as a hydrophobizing agent (see Col. 27, lines 16-28 of Ishizu and [0116] of the instant specification) (which reads on the corresponding limitation recited in instant claim 3). In Ishizu’s Example 1-1, the degree of hydrophobicity as measured by a methanol titration method was taught to be 57 volume% (see Col. 24, lines 13-25 and Table 1) (which falls within the corresponding range recited in instant claim 6).
Ishizu appears to be silent to teach the proportion of a silicon atom with reference to a total of elements in fluorescent x-ray measurement of the fine particle and/or the limitations (i) and (ii) using the proportions measured in analysis by x-ray photoelectron spectroscopy under the conditions specified in instant claim 1, claim 2, claim 7, and claim 8. Ishizu also appears to be silent to teach or suggest the Young’s modulus of the fine particle, as recited in instant claim 4.
However, the method of producing and surface treating the polyalkylsilsesquioxane fine particle taught by Ishizu is sufficiently similar to the corresponding method disclosed in the instant specification, as discussed above. Given the close similarities between Ishizu’s method and the Applicant’s method, the polyalkylsilsesquioxane fine particle of Ishizu would have been expected to exhibit sufficiently similar silicon atom proportions as the instantly disclosed fine particle containing silicon when measured under the claimed conditions, and thus would necessarily read on the corresponding limitations recited in instant claim 1, claim 2, claim 7, and claim 8. For the same reason, the polyalkylsilsesquioxane fine particle of Ishizu would have been expected to exhibit a sufficiently similar Young’s modulus as the Applicant’s fine particle, and thus would necessarily read on the range recited in instant claim 4.
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).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ishizu et al. (US Pat. No. 9,809,682 B2), in view of Tominaga et al. (US 2018/0329332 A1).
The teachings of Ishizu are discussed above and incorporated herein. Ishizu appears to be silent to teach the fixing ratio of the polyalkylsilsesquioxane fine particle to the toner particle. However, Tominaga teaches that the fixing ratio of an organosilicon polymer to the toner surface should be at least 90.0% and no more than 100.0% (which falls within the corresponding range recited in instant claim 10). When in this range, there is little peeling or exfoliation of the organosilicon polymer and melt adhesion to members within the cartridge does not occur. As a result, occurrence of development streaks is suppressed ([0052]). The fixing ratio is taught to be adjusted based on the production method, reaction temperature, reaction solvent, and pH used during the formation of the organosilicon polymer ([0053]).
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 adjusted the fixing ratio of the polyalkylsilsesquioxane fine particles of Ishizu, to fall within the range taught by Tominaga, in view of suppressing development streaks.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
01/10/2026