DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 1, 3, 5-9 and 11; “a method for manufacturing resin particles”) in the reply filed on 01/15/2026 is acknowledged. The applicants at page 1 of their Remarks filed 01/15/2026 that search and examination of the entire application including the nonelected claims could be made without serious burden because the subject matter of all claims is sufficiently related that a thorough search for the subject matter of any one of Group of claims.
However, contrary to applicants’ argument, the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries). For instance, the invention of elected Group I is classified in C02F 11/18, whereas the other inventions are classified in different areas of search, e.g., C08J 3/096. In addition, all the inventions clamed are independent or distinct for the reasons provided in the prior Office action mailed 11/28/2025 which the applicants do not dispute.
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 2, 4, 10 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicants timely traversed the restriction requirement in the reply filed on 01/15/2026.
Claim Objections
4. Claim 1 is objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed “the silica particles on surfaces of the resin base particles” with the new phrase “the produced silica particles on surfaces of the resin base particles” to be consistent with the language used prior to this limitation.
The applicants are also advised to replace the claimed “the silica particles containing the quaternary ammonium salt and having hydrophobized surfaces” with the new phrase “the produced silica particles containing the quaternary ammonium salt and having hydrophobized surfaces” since they are silica particles produced from surface-treatment of quaternary ammonium salt by mixing suspension and the salt, and a second surface treatment of organosilicon as mentioned earlier in the same claim (see also paragraphs [0126], [0179] and [0182] of applicants’ published application, i.e., US PG PUB 2024/0002637, for further support).
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to Claim 6: It recites “a proportion (N/silica particles x 100) of an amount N of nitrogen element in the silica particles detected by oxygen-nitrogen analysis is 0.01 or more and 1.0 or less” (Emphasis added). It is not clear whether the proportion is calculated by any formula or the particular formula surrounded by parenthesis since it is not clear from the claim whether or not the formula is required by the claim. Moreover, the present specification merely repeats what it is already in the claim without further explanation (see, for example, paragraph [0101] of applicants’ published application, i.e., US PG PUB 2024/0002637).
Clarification in the next response by applicants will be helpful to better ascertaining the scope of this claim.
Accordingly, the scope of this claim is deemed indefinite.
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.
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.
5. Claims 1, 3, 5-7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of JP 2017-0396181 (hereinafter referred to as “JP ‘618”) in view of Tanaka et al. (US 2014/0106269)2 and MATSUSHITA et al. (US 2014/0147785).
As to Claims 1, 3, 5-6 and 11: JP ‘618 discloses a method for preparing a plurality of toner particles, wherein the toner particles (corresponding to the claimed resin particles) include a toner base particle comprising a binder resin and external additives including silica powders (particles) adhering to the surface of the toner base particle (Paragraphs [0007]-[0008] and [0058]). This method taught by JP ‘618 comprises the steps of producing silica particles by preparing a suspension containing silica particles, wherein the suspension comprises organic solvent and water, surface-treating the silica particles with a quaternary ammonium salt by mixing the suspension and the quaternary ammonium salt, followed by further surface-treating the silica particles with a hydrophobizing agent, such as silicon compounds, e.g., methyltrimethoxysilane (corresponding to the claimed organosilicon compound and silica particles having hydrophobized surfaces), and finally, adhering (attaching) the above silica particles to surfaces of toner base particles comprising binding resin particles (corresponding to the claimed resin base particles) (Paragraphs [0050]-[0060]). JP ‘618 also discloses that the quaternary ammonium salt is represented by the following structural formula:
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wherein R21, R22, R23, and R24 independently represents an alkyl group and X represents a halogen atom, which according to page 21 of the present specification corresponds to the claimed anion (Paragraphs [0022]-[0023] and see also claim 6 of JP ‘618). JP ‘618 further discloses that the number average particle diameter of the silica powder is 0.05 µm or more and 0.50 µm or less (Paragraph [0053]) which is equivalent to 50 to 500 nm, and overlaps with the number average particle diameter of 5 nm or more and 200 nm or less recited in present claim 5. Moreover, JP ‘618 discloses that the proportion of an amount N of nitrogen element in the silica particles detected includes 0.35-2.37 (see, for example, Paragraphs [0066] and [0094]) which overlaps with the proportion of 0.01 or more and 1.0 or less recited in claim 6. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, JP ‘618 does not specifically mention the claimed difference (detection temperature A-detection temperature B) between a detection temperature A and a detection temperature B is more than 50 degrees Celsius, where the detection temperature A is a detection temperature from a pyrolysis product of the quaternary ammonium salt determined by pyrolysis mass spectrometry of the resin particles before cleaning, and the detection temperature B is a detection temperature from the pyrolysis mass spectrometry of the resin particles after cleaning.
Nevertheless, Tanaka et al., like JP ’618 and applicants’ invention, are drawn to the use of silica particles with an amine compound adsorbed on their surfaces for toner applications (Paragraphs [0001] and [0012] of Tanaka et al. and Paragraph [0007] of JP ‘618). Tanaka et al. also disclose that the difference between detection temperature A, where the detection temperature A is a detection temperature from a pyrolysis product of the quaternary ammonium salt determined by pyrolysis mass spectrometry of the resin particles before washing (cleaning), and detection temperature B, where detection temperature B is a detection temperature from the pyrolysis mass spectrometry of the resin particles after washing (cleaning), is, for example, 210 degrees Celsius (which is encompassed by the claimed detection temperature difference of more than 50 degrees Celsius) (Paragraphs [0002] and [0113]-[0117]). Thus, it would have been obvious to one of ordinary skill in the art to employ the claimed detection temperature difference taught by Tanaka et al. in the method of JP ‘618, with a reasonable expectation of successfully using the same for toner purposes.
Additionally, JP ‘618 also does not specifically mention surface-treating the silica particles with the organosilicon compound using a supercritical treatment including the use of supercritical carbon dioxide as required by claims 1 and 11. Nevertheless, MATSUSHITA et al. disclose the step of surface treating silica particles with a hydrophobizing agent including known silicon compounds containing an alkyl group, e.g., a methyl group (organosilicon compound), in supercritical carbon dioxide (supercritical treatment) which provides silica particles with high affinity to binder resin of the toner particles in high temperature and high humidity environment (Paragraphs [0006]-[0007], [0016]-[0020] and [0160]). Thus, it would have been obvious to one of ordinary skill in the art to surface-treat the silica particles with a hydrophobizing agent including organosilicon compound in supercritical carbon dioxide taught by MATSUSHITA et al. in the method of JP ‘618, with a reasonable expectation of successfully providing silica particles with high affinity to binder resin of the toner particles in high temperature and high humidity environment.
As to Claim 7: JP ‘618 does not specify the average pore diameter of its silica particles as required by claim 7. However, Tanaka et al. disclose the use of silica particles having an average pore diameter of 1-5 nm (which overlaps with the claimed average pore diameter of 0.55-2 nm) for the purposes of using the same for toner applications (Paragraphs [0002] and [0023]). Thus, it would have been obvious to one of ordinary skill in the art to use the silica particles having the claimed average pore diameter taught by Tanaka et al. in the method of JP ‘618, with a reasonable expectation of successfully using the same for toner applications.
As to Claim 9: JP ‘618 does not specifically mention mixing the silica particles together with an alcohol-containing solvent to prepare the silica particle suspension as required by claim 9. However, MATSUSHITA et al. disclose the step of mixing a solvent including an alcohol and water, and silica particles to prepare a silica particle dispersion (suspension) used in toner applications (Paragraphs [0007] and [0123]-[0124]). Thus, it would have been obvious to one of ordinary skill in the art to employ the step of mixing a solvent including an alcohol and water, and silica particles to prepare a silica particle suspension taught by MATSUSHITA et al. in the method of JP ‘618, with a reasonable expectation of successfully using the same for toner applications.
6. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over of English Translation of JP 2017-039618 (hereinafter referred to as “JP ‘618”) in view of Tanaka et al. (US 2014/0106269) and MATSUSHITA et al. (US 2014/0147785) as applied to claims 1, 3, 5-7, 9 and 11 above, and further in view of English Translation of JP 2004-1430283 (hereinafter referred to as “JP ‘028”).
The disclosures with respect to JP ‘618, Tanaka et al., and MATSUSHITA et al. in paragraph 5 are incorporated here by reference. They do not specify that their silica particles further contain aluminum atoms as required by claim 8.
However, JP ‘028 discloses doping silica particulate with alumina including aluminum atoms for the purposes of providing the silica particulate with stability for toner applications (Paragraphs [0001] and [0007]-[0012]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to dope the silica particles of with alumina including aluminum atoms taught by JP ‘028 in the method suggested by JP ‘618, Tanaka et al., and MATSHITA et al., with a reasonable expectation of successfully obtaining desired stability for toner purposes.
Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 10/19/2023. Its English translation copies are incorporated in the parent application US Appl. No. 17/157,208.
2 Cited in the IDS submitted by applicants on 10/19/2023.
3 Cited in the IDS submitted by applicants on 10/19/2023.