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 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.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga et al. (US PGP 2020/0209773 A1), in view of Hirama et al. (U.S. Pat. No. 5,981,131) and Barthel et al. (US Pat No. 5,686,054).
Tominaga teaches a toner including a toner particle containing a binder resin and an external additive. The toner is taught to contain a polyvalent metal compound being at least one selected from the group consisting of aluminum, iron, and magnesium (which reads on the corresponding limitation recited in instant claim 1). A content of the metal element derived from the polyvalent metal compound in the toner is taught to be from 0.080 to 20.000 µmol/g ([0008]-[0013]) (which reads on the corresponding range recited in instant claim 1). When the polyvalent metal compound contains aluminum, the aluminum content is taught to preferably be 0.100 to 0.320 µmol/g ([0041]) (which reads on the corresponding range recited in instant claim 3).
The external additive is taught to include hydrophobic silica particles ([0002], [0263]). In the examples, sodium chloride is taught to be used as an aggregating agent ([0259]). Therefore, it can reasonably be assumed that the final product of the toner particles includes sodium element, which is a monovalent metal (which reads on the corresponding limitation recited in instant claim 6).
Tominaga appears to be silent to teach or suggest the number-average particle diameter of the silica particles and/or the claimed area ratio when peaks corresponding to a silicon atom represented by formulae (1) to (3) in DD/MAS measurement of solid 29Si-NMR of the silica particles.
Hirama teaches an electrostatic developer comprising a toner component and organic or inorganic oxide particles, such as silica, which are subjected to a hydrophobic treatment with a dimethylcyclopolysiloxane. The dimethylcyclopolysiloxane is taught to preferably be octamethylcyclotetrasiloxane (OCTS) (Col. 3, lines 9-15). The treatment of the silica with a dimethyl cyclopolysiloxane, particularly OCTS, is taught to reduce or eliminate the undesirable phenomenon of ghosting (Col. 3, lines 9-15).
The amount of OCTS used for surface treatment is taught to be 0.01 to 100 parts by weight based on 100 parts by weight of the inorganic oxide powder (Col. 7, lines 62-67). Examples of commercially available inorganic oxides treated with OCTS are taught to include silica particles such as Aerosil R104 and R106 (Col. 8, lines 33-36). The surface treated inorganic oxide particles are taught to be used in an amount of from 0.01 to 5 parts by weight with respect to 100 parts by weight of the toner particles (Col. 8, lines 25-31) (which reads on the corresponding range recited in instant claim 5).
Hirama teaches that the method of surface treating the inorganic oxide powder is preferably the method disclosed in U.S. Pat. No. 5,686,054 (hereinafter “Barthel”) (see MPEP § 2163.07(b)). In Example 4, Barthel teaches surface treating silica particles with OCTS (Col. 13, lines 20-42). The supplying time is taught to be 15 minutes at a temperature of 180 ºC and then reacting the mixture at 300 ºC for 120 minutes (Col. 13, lines 33-35). Barthel does not appear to specify the particle diameter of the silica particles treated in Example 4. However, Barthel teaches that the silica particles used in the treatment process have a primary particle size of up to 250 nm (Col. 3, lines 50-55) (which reads on the corresponding range recited in instant claim 1).
Similarly, in the Applicant’s Example 3, silica particles having a primary particle size of 80 nm were surface treated with octamethylcyclotetrasiloxane for 13 minutes and reacted at 300 ºC for 120 minutes (see Table 3 of the instant specification). Given the similarities between the two surface treatment methods, the surface treated silica particles of Barthel would necessarily exhibit sufficiently similar peaks corresponding to a silicon atom represented by formulae (1) to (3) in DD/MAS measurement of solid 29Si-NMR of the silica particles, and thus would be expected to satisfy the corresponding inequalities recited instant claim 1, claim 2, and claim 3.
According to MPEP § 2112, “[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).”
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 silica particles surface treated with OCTS of Hirama and Barthel as the silica particles in the toner of Tominaga, in view of reducing or eliminating ghosting.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tominaga et al. (US PGP 2020/0209773 A1), in view of Hirama et al. (U.S. Pat. No. 5,981,131) and Barthel et al. (US Pat No. 5,686,054), and further in view of Koide et al. (US PGP 2019/0294066 A1).
The teachings of Tominaga, Hirama, and Barthel are discussed above and incorporated herein. Modified Tominaga appears to be silent to teach or suggest the weight average molecular weight Mw and/or the ratio Mw/Mn of the weight average molecular weight to the number average molecular weight of the toner in gel-permeation chromatography measurement of the tetrahydrofuran-soluble component of the toner.
Koide teaches a toner having a Mw of from 25,000 to 60,000 and a Mw/Mn ratio of from 5 to 10 (Abstract) (which reads on the corresponding limitation recited in instant claim 4). Koide teaches that a toner having a THF-soluble portion satisfying these properties is excellent in fixability and economical to produce ([0081]-[0083]). Koide teaches that the properties of the THF-soluble portion of the toner can be controlled by using a polyester resin as a binder resin ([0050]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to adjusted the Mw and the Mw/Mn of the toner of modified Tominaga to fall within the corresponding ranges taught by Koide, in view of improving the fixability and production costs of the toner.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tominaga et al. (US PGP 2020/0209773 A1), in view of Hirama et al. (U.S. Pat. No. 5,981,131) and Barthel et al. (US Pat No. 5,686,054), and further in view of Kamae et al. (US PGP 2019/0384196 A1).
The teachings of Tominaga, Hirama, and Barthel are discussed above and incorporated herein. Modified Tominaga appears to be silent to teach or suggest the content of a monovalent metal with respect to a content of the polyvalent metal and the monovalent metal in the toner.
Kamae teaches a toner including a monovalent metal and a polyvalent metal (Abstract, [0153]). The monovalent metal is taught to preferably be at least one selected from the group consisting of Na, Li, and K, in view of suppressing development stripes and improving low-temperature fixability ([0153]). The amount of monovalent metal is taught to be preferably 50% by mass or more and 90% by mass or less based on the total amount of the polyvalent metal and the monovalent metal, in view of suppressing development stripes and improving charge retention property ([0154]-[0155]) (which reads on the corresponding limitation recited in instant claim 7).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to adjusted the content of monovalent metal in the toner of modified Tominaga to fall within the corresponding range taught by Kamae, in view of suppressing development stripes and improving charge retention property.
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
02/07/2026