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. 7-9, filed 07/17/2026, with respect to the objection to the abstract, the objection to the specification, the objection to claims 1-8, the rejection of claims 1 and 4-8 under 35 U.S.C. 103 over Hashimoto et al. and Kinoshita et al., and the rejection of claims 2-3 under 35 U.S.C. 103 over Hashimoto et al., Kinoshita et al., and Mang et al., have been fully considered and are persuasive. Therefore, the aforementioned objections and rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
The Applicant has amended claim 1 to specify that the at least one type of amorphous polyester resin is obtained only from an alcohol component and a carboxylic acid component. New claims 9 and 10 were also presented, which are directed at the proportion of the at least one type of amorphous polyester resin in the binder resin (claim 9), and a content of the conductive fine powder in the silicone resin of the carrier (claim 10). Support for the amendment to claim 1 and new claims 9 and 10 can be found in at least pg. 5, lines 2-3, pg. 13, lines 9 and 14, pg. 6, lines 10-12, pg. 9, lines 7-9, and Table 16 of the originally filed specification.
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 1-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsui et al. (JP 2007264222 A) (references herein made with respect to English machine translation attached) (newly cited), in view of Mutoh et al. (US PGP 2011/0059394 A1) (newly cited), further in view of Shiba et al. (US PGP 2015/0024312 A1) (newly cited), and as evidenced by Chapter 20 of the “Reactive Polymers Fundamentals and Applications” NPL (newly cited).
Mitsui teaches an electrophotographic toner manufactured by a process of melt-kneading a raw material mixture containing 100 parts by mass of a polyester binder resin, 5 to 30 parts by mass of an aromatic petroleum resin, and a synthetic hydrocarbon wax using an open-roll type kneader ([0009]) (which reads on the corresponding limitations recited in instant claim 1). Fischer-Tropsch wax is taught to be a preferable example of the synthetic hydrocarbon wax ([0019]) (which reads on the corresponding limitations recited in instant claim 1).
Mitsui teaches that toners including a petroleum resin as a pulverizing aid in a binder resin made of polyester resin have been proposed to improve pulverizability and fixability. However, Mitsui found that such toners exhibit a decrease in image density in the low-density areas of halftones making uniform image reproduction difficult ([0005]).
Similarly, Mitsui teaches that toners including Fischer-Tropsch wax as a release agent in a binder resin made of polyester resin have been proposed. However, Mitsui found that such toners exhibit poor durability since Fischer-Tropsch wax has poor dispersibility with polyester resins ([0006]).
Accordingly, Mitsui discovered that simultaneously kneading an aromatic petroleum resin and a synthetic hydrocarbon wax, like Fischer-Tropsch wax, with a polyester binder resin “dramatically” improves the durability and fixation of the toner due to the synergistic effect of the aromatic petroleum resin and the synthetic hydrocarbon wax ([0008]).
In the examples, a toner was prepared by combining 100 parts by mass of a polyester resin, 1 part by mass of a charge control agent, 5 parts by mass of a colorant, 5 parts by mass of Fischer-Tropsch wax “H1N4” as the synthetic hydrocarbon wax, and 12.5 parts by mass of a styrene-α-methylstyrene copolymer “FTR-2140” as the aromatic hydrocarbon petroleum resin (which also broadly reads on the claimed “styrene-based resin”) (which reads on the corresponding limitations recited in instant claim 1, claim 2 and claim 3). The raw material mixture was supplied to an open-roll type kneader and kneaded to obtain a kneaded product, before crushing using a feather mill and finely ground using an impact plate type crusher and classified using an airflow classifier to obtain toner particles ([0032], Table 1). In other words, the toner was a “pulverized toner” (which reads on the corresponding limitations recited in instant claim 1). Additionally, the proportion of the polyester resin with respect to the mass of the toner can be calculated as being about 81% by mass1 (which falls within the range recited in instant claim 9).
Mitsui does not appear to sufficiently describe the composition of the polyester binder resin, other than the one used in the examples that was manufactured by “Kao Corporation” ([0032]). However, since Mitsui does not teach or suggest that the polyester resin is a hybrid resin, such as a hybrid resin in which a vinyl-based resin and a polyester resin are bound to each other, it can reasonably be assumed that the polyester resin includes those commonly used in the art, such as a polyester obtained only from an alcohol component and a carboxylic acid component.
For instance, Mutoh teaches that commonly-used amorphous polyester resins are obtained through condensation polymerization using one or more substances selected from divalent alcohol monomers and trivalent or higher-valent polyalcohol monomers and one or more substances selected from divalent carboxylic acid monomers and trivalent or higher-valent polycarboxylic acid monomers ([0073]). In Mutoh’s examples, the amorphous polyester resins were also manufactured by “Kao Corporation” ([0198]).
Therefore, the polyester resin used in Mitsui’s examples (manufactured by “Kao Corporation”) is likely an amorphous polyester resin obtained only from an alcohol component and a carboxylic acid component (which reads on the corresponding limitation recited in instant claim 1). Even if, arguendo, the polyester resin used in Mitsui’s examples was not an amorphous polyester resin, it still would have been prima facie obvious to have used a known amorphous polyester, such as the commonly-used polyester resins described in Mutoh, in the binder resin of Mitsui’s toner, absent any specific teachings in Mitsui of suitable types of polyester resins to be used in the binder resin. See also MPEP § 2144.07, which states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Mitsui appears to be silent to teach that the toner is used in a two-component developer comprising the toner and a carrier, let alone that the carrier includes a silicone resin covering layer comprising a conductive fine powder. In the evaluation tests, the toner was taught to have been installed in a one-component color printer ([0058]). In other words, the toner was used in one-component development.
However, nowhere does Mitsui state that the toner is incapable of being used in combination with a magnetic carrier for use in two-component development. According to MPEP § 2123(II) “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)”.
According to Chapter 20 of the “Reactive Polymers Fundamentals and Applications” NPL, one-component developers are defined as comprising a toner (optionally containing magnetic powder) and two-component developers are defined as comprising a toner (optionally containing magnetic powder) and a magnetic carrier (1st column, pg. 475). In other words, the difference between a one-component developer and a two-component developer is simply the presence (or absence) of a magnetic carrier.
Shiba teaches a developer including a toner, which can be used as a one-component developer including the toner or a two-component developer including the toner and a carrier ([0336]). While one-component developers are taught to have their own advantages, Shiba teaches that two-component developers are advantageous for use in high-speed printers because they improve the service life of the printer ([0337]).
Shiba further teaches that two-component developers are advantageous in that, even when a toner balance is carried out for a long period of time, a variation in the particle diameter of the toner in the developer is reduced, and thus stable developing properties and images can be obtained even in long-term stirring in the developing apparatus ([0339]).
Shiba teaches that the carrier may be properly selected according to its intended purpose but preferably includes a core and a resin layer that covers the core ([0340]). In Shiba’s examples, a carrier was prepared by covering the core with a resin layer including a silicone resin, an amino silane coupling agent, and carbon black (a conductive fine powder). The amino silane coupling agent used was γ-(2-aminoethyl)aminopropyltrimethoxysilane ([0475]) (which reads on the corresponding limitations recited in instant claim 1, claim 4, and claim 5).
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 an amorphous polyester, such as the commonly-used polyester resins described in Mutoh (e.g., obtained through condensation polymerization of an alcohol component and a carboxylic acid component), in the binder resin of Mitsui’s toner, and to have further combined Mitsui’s toner with a resin coated carrier, such as those described in Shiba, to form a two-component developer for use in two-component development. The skilled artisan would have been motivated to so in view of achieving the advantageous effects taught by Shiba, such as the resulting developer being suitable for use in high-speed printers and having improved developing properties.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nagayama et al. (US PGP 2017/0185000 A1) (newly cited), in view of Mitsui et al. (JP 2007264222 A) (references herein made with respect to English machine translation attached), further in view of Mutoh et al. (US PGP 2011/0059394 A1), still further in view of Shiba et al. (US PGP 2015/0024312 A1), and as evidenced by Chapter 20 of the “Reactive Polymers Fundamentals and Applications” NPL.
The teachings of Mitsui, Mutoh, the “Reactive Polymers Fundamentals and Applications” NPL, and Shiba are discussed above and incorporated herein. Mitsui appears to be silent to sufficiently describe a suitable image forming apparatus. As discussed above, Mistui teaches that the toner was installed in a one-component color printer and used in a one-component development method ([0058]).
However, nowhere does Mitsui state that the toner is incapable of being used in combination with a magnetic carrier for two-component development, or in an image forming apparatus configured to accommodate a two-component developer (see MPEP § 2123(II) above).
Nagayama teaches an image forming method using an image forming apparatus including a latent electrostatic image forming step of forming a latent electrostatic image on a latent electrostatic image bearer, a developing step of developing the latent electrostatic image with a developing agent including a two-component developer, to form a visible image, a transfer step of transferring the visible image to a recording medium, and a fixing step of fixing the transferred image transferred onto the recording medium ([0135]) (which reads on the steps recited in instant claim 8).
The image forming apparatus is taught to include a latent electrostatic image bearer, a charger to charge the latent electrostatic image bearer, an irradiator to irradiate the latent electrostatic image bearer with light to form a latent electrostatic image, a developing device to develop the latent electrostatic image formed on the latent electrostatic image bearer with a two-component developing agent to form a toner image, a transfer device used to transfer the toner image formed on the latent electrostatic image bearer onto a recording medium, and a fixing device to fix the toner image transferred onto the recording medium ([0136]) (which reads on the components recited in instant claim 7).
The developing device is taught to include a developing belt and color developing units, where each color developing unit includes a developing agent accommodating member ([0178]) (which reads on the corresponding limitation recited in instant claim 6).
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 the two-component developer of modified Mitsui in the image forming method and image forming apparatus of Nagayama, with a reasonable expectation of success of forming a suitable toner image. The skilled artisan would have been motivated to do so because Mitsui teaches that their toner exhibits improved durability and fixability and Shiba teaches that, when combined with a carrier, two-component developers are known to have improved developing properties.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mitsui et al. (JP 2007264222 A) (references herein made with respect to English machine translation attached), in view of Mutoh et al. (US PGP 2011/0059394 A1), further in view of Shiba et al. (US PGP 2015/0024312 A1), still further in view of Inoue et al. (US PGP 2007/0048650 A1) (newly cited), and as evidenced by Chapter 20 of the “Reactive Polymers Fundamentals and Applications” NPL.
The teachings of Mitsui, Mutoh, the “Reactive Polymers Fundamentals and Applications” NPL, and Shiba are discussed above and incorporated herein. Shiba appears to be silent to teach or suggest a suitable range for the amount of conductive material in the coating layer of the carrier.
Inoue teaches a carrier comprising a core particle and a resin coating layer containing conductive particles (Abstract). The resin coating layer is taught to include silicone resins ([0042]). The conductive particles are taught to include metal-containing powders and carbon black ([0048]).
The content of the conductive particles dispersed in the resin coating layer is taught to be 3 to 40% by weight in in view of controlling the electric resistance of the carrier and suppressing reduction in charge quantity ([0050]) (which overlaps with the corresponding range recited in instant claim 10).
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 experimented with different amounts of the conductive material in the coating layer of Shiba’s carrier within the range taught by Inoue, in view of optimizing the charging characteristics of the carrier. The skilled artisan would have been motivated to do so in view of suppressing the reduction in charge quantity of the carrier.
According to MPEP § 2144.05, “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2016/0179023 to Niinuma et al. teaches a film-forming toner containing a main resin and a low-molecular-weight resin selected from a list including α-methylpolystyrene, aromatic hydrocarbon resins, and C5 and C9 petroleum resins (Abstract). Niinuma teaches that polyester resins and styrene resins widely used as toner resins are brittle and thus cannot be used for label bases as they have inferior film characteristics ([0007]). Additionally, in the examples, carnauba wax was used as the releasing agent ([0052], Table 1).
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 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, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
09/11/2026
1 100 parts polyester / (100 parts polyester + 1 part CCA + 5 parts colorant + 5 parts FT wax + 12.5 parts AHP resin) = 0.8097 x 100% = 81%
Prosecution Insights