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 Amendment
The amendment filed 5/26/2026 has been entered. Claims 1-20 remain pending. Claims 1, 2, and 17 have been amended.
Response to Arguments
Applicant’s arguments, see page 7-8, filed 5/26/2026, with respect to claims 1, 3-12, 14-15, and 17-20 have been fully considered and are persuasive. The rejection of claims 1, 3-12, 14-15, and 17-20 has been withdrawn.
Applicant argues the “Fox equation” would be understood by a person of skill in the art as the original Fox equation, as the other forms are referred to by other names such as the “Miller/Fox equation”. Furthermore, Applicant has amended claims 1 and 17 to include the standard Fox equation. Examiner agrees, the claims are now definite and comply with written description.
Applicant’s arguments, see page 8-9, filed 5/26/2026, with respect to claims 2, 13, and 16 have been fully considered and are persuasive. The rejection of claims 2, 13, and 16 has been withdrawn.
Applicant argues the amended claim 2 specifies the resin particles are encapsulated in the binder resin of the toner, while Kamada specifically teaches the specific resin particles are used as external additives. Examiner agrees, Kamada teaches the particles are solely for use external to the toner particle’s binder resin. Furthermore, it would not be obvious to one of skill in the art to modify Kamada to incorporate the particles inside the main toner particle’s binder resin, as Kamada teaches the resin particles are used to make the surface of the toner hard, without effecting the fixability.
Applicant's arguments, see page 8-9, filed 5/26/2026, regarding claims 19-20, have been fully considered but they are not persuasive.
Applicant does not specifically address the rejection of claims 19-20 under 35 USC 102. As indicated on page 5-6 of the previous Office Action, Kamada discloses both a process cartridge and image forming apparatus with the structural limitations which are claimed. While the claims do include the toner of Claim 1, Toner is not considered a material limitation of a process cartridge or image forming apparatus because it is not a permanent fixture of the apparatus. The toner is worked upon and consumed by the image forming apparatus, and therefore is not a structural member of the apparatus.
Claim Rejections - 35 USC § 102
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 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamada (US 20220291602).
Regarding claims 19-20, Kamada discloses a process cartridge able to store toner, and is
detachably mounted in an image forming apparatus ([0415]). Kamada further discloses an image forming apparatus including an electrostatic latent image bearer, and electrostatic latent image forming unit, a developing unit, a transferring unit, and a fixing unit ([0421]). Kamada further discloses the electrostatic latent image forming unit includes a charging member to charge the surface of the latent image bearer ([0425]).
The applicant has recited the apparatus, toner cartridge, and process cartridge claims as also containing or comprising the toner of pending claim 1. However, since a developer, or toner, is a material that is consumed by the apparatus and is not a permanent fixture of the apparatus, its inclusion in the apparatus claims does not represent a material limitation on the apparatus. Multiple different developers may be used in any xerographic apparatus and therefore the limitations of the developer in the present claims do not represent material limitations on the apparatus because the developer with these limitations could be substituted by another developer and not alter the mechanical functioning of the apparatus. § MPEP 2115. In accordance with MPEP 2114 an apparatus in a claim must be recited structurally and therefore the type of toner to be used possesses no patentability, only the material properties of the apparatus are patentable. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Additionally, a claim containing a recitation in respect to the manner that an apparatus is intended to be used does not differentiate the claim from prior art. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In further regards to the toner, MPEP 2115 states that, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963).
The toner is a material worked upon and consumed by the image forming apparatus. A material portion of the apparatus must be a permanent fixture of the apparatus that is not permanently changed by the regular operation of the apparatus. The toner, during the course of the imaging process, is changed from a particulate material to a melted and fused material. During fixing, heat and/or pressure is applied to the toner to bind it to the recording material such that the toner cannot be recovered and re-used in the apparatus. Therefore, the toner cannot be claimed as a structural member of the apparatus.
Allowable Subject Matter
Claims 1-18 allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The electrostatic toner of the instant claims is not disclosed or taught in the art. Specifically a toner comprising toner particles and external additives, wherein the toner particles include a binder resin and resin particles encapsulated in the resin particles. The resin particles including a styrene-(meth)acrylate copolymer having surface properties which are different than those of the particle as a whole.
Claim 1 claims a difference in the measured glass transition temperature, Tg(E), of the resin particles and the glass transition temperature of the resin particle as calculated by the Fox equation, Tg(C1). Claim 1 further claims the glass transition temperature as calculated by the Fox equation on the basis of the monomer proportions of the whole particle, Tg(C1), is less than the glass transition as calculated by the Fox equation on the basis of the monomer proportions of the surface of the resin particle, Tg(C2).
Claim 2 claims the proportion of styrene in the resin particles, Ws(B), and the proportion of styrene on the surface of the particles, Ws(S), both in mol%, are different. Ws(S) being 40-80 mol%, which is 2-20 mol% higher than Ws(B).
While toners comprising particles produced by multi-stage polymerization, resulting in differing monomer compositions at different depths are known in the art, the closest available art, Kamada (US 20220291602), specifically teaches they are only used as external additives, outside of the toner particle. It would not have been obvious to one of skill in the art to use the particles of Kamada as internal additives. The sole reasoning for adding the particles in Kamada is taught to be for producing a shell with a higher glass transition temperature over a toner core with a binder having a lower glass transition temperature to improve heat resistant storage stability while maintaining low temperature fixability ([0013], [0016]). These improvements would not be expected to maintained if the particles were encapsulated in the binder resin of the toner particle.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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/C.C.S./Examiner, Art Unit 1737
/PETER L VAJDA/Primary Examiner, Art Unit 1737 07/31/2026
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