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 pgs. 5-10, filed 07/15/2026, with respect to the rejection of claims 1-4 and 6 under 35 U.S.C. 103 over Morales-Tirado et al. and Jugle et al., the rejection of claim 5 under 35 U.S.C. 103 over Morales-Tirado et al., Jugle et al., and Sata et al., and the rejection of claim 7 under 35 U.S.C. 103 over Suganuma, Morales-Tirado et al., and Jugle et al., have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
The Applicant has amended independent claim 1 to further recite that the fluororesin particles have a number average primary particle diameter that is greater than a number average primary particle diameter of the specific external additive particles, and the number average primary particle diameter of the specific external additive particles is at least a number average primary particle diameter of the silica particles. The claim was also amended to omit the definition of the claimed detachment fraction of the silica particles. New claims 8-12 were presented and are directed at various properties of the claimed silica particles, fluororesin particles, and specific external additive particles. New claims 13-14 were presented and include the definition of the detachment fraction previously recited in original claim 1.
Support for the amendment to claim 1 and new claims 8-14 can be found in at least pages 33-34 and 37 (Table 2) of the originally filed specification, and original claim 1.
By way of background, Morales-Tirado was cited for teaching, inter alia, a toner comprising at least one surface additive including silica particles and having a degree of attachment between base treated raw toner particles and the at least one surface additive of from about 10% to about 40%. The degree of attachment between the base-treated raw toner particle and the surface additives was taught to refer to the percentage of surface additives that remain attached to the surface of the raw toner particle after it has been sonicated, and was based on the percentage of additive remaining on the base-treated raw toner particle surface was taught to refer to the initial amount of additive that was on the base-treated raw toner particle before it was sonicated (see [0069] of Morales-Tirado).
The Office action interpreted Morales-Tirado’s attachment fraction as corresponding to the claimed detachment fraction, which was defined as being a percentage (100 x M2/M1) of a mass M2 of silica particles that have separated from the toner mother particles after ultrasonication to a mass M1 of the silica particles included in the toner particles before the ultrasonication, the ultrasonication occurring under specific, previously defined conditions.
In response, the Applicant argues that Morales-Tirado’s attachment rate is distinct from the claimed detachment fraction as Morales-Tirado’s attachment fraction is based on the mass M3 of the silica particles remaining on the toner mother particles after sonication relative to the mass M1 of the silica particles included in the toner before sonication, whereas the claimed detachment fraction is based on the mass M2 of the silica particles that have separated from the toner after sonication relative to the mass M1 of the silica particles included in the toner before sonication.
The Applicant then argues that the mass M2 of the silica particles that have separated from the toner after sonication of Morales-Tirado’s toner can be determined by subtracting the mass M1 of the silica particles included in the toner before sonication by the mass M3 of the silica particles remaining on the toner mother particles after sonication. The Applicant argues that, under this determination, the claimed detachment fraction Morales-Tirado can be calculated as ranging from 60% to 90%, which falls well outside of the claimed range of 5% to 22%.
The Examiner agrees. That is, Applicant has persuasively shown that Morale-Tirado’s attachment rate is calculated using different parameters than the how the claimed detachment fraction was originally defined. However, the definition of the claimed detachment fraction was omitted from claim 1 in the most recent amendment. In other words, there is nothing in amended claim 1 that distinguishes the claimed detachment fraction from Morales-Tirado’s attachment rate. Absent any definition in claim 1, Morales-Tirado’s attachment rate could be interpreted as reading on the claimed detachment rate, as both terms ordinarily pertain to the degree of attachment of the silica particles, but the distinction from Morales-Tirado’s M3 and the previously claimed M2 used to define the respective degrees of attachment is no longer present.
Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
According to MPEP § 2173.05, “[a]lthough a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.”
Newly presented claims 13 and 14 now include portions of the definition of the claimed “detachment fraction” previously recited in original claim 1. However, it is now unclear if the “detachment fraction” recited in amended claim 1 is the same or different from the detachment fractions defined in new claims 13 and 14, as dependent claims are intended to specify a further limitation of the subject matter claimed which may include alternative embodiments of the claimed invention. In other words, the detachment fraction recited in amended claim 1 is now considered indefinite because the Applicant has presented multiple different definitions of the claimed “detachment fraction” (in claim 13 alone, and in claim 14 which incorporates claim 13), when only a single definition of the claimed detachment fraction was provided in the originally filed specification (see pg. 13 of the instant specification).
According to MPEP § 2111.01, “[a]n applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change" in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).”
Also, according to MPEP § 2173.05(a), “[t]he meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained.”
To overcome these issues, it is recommended to reincorporate the definition of the claimed “detachment fraction” (of the silica particles) in claim 1.
Accordingly, the rejections of the claims based on Morales-Tirado have been updated for claim dependencies and to address the recitation of the new limitations regarding the relationships between the particle sizes of the particles and the omission of the definition of the claimed “detachment fraction” in amended claim 1. Additionally, a rejection of the claims based on newly discovered reference Satoh is applied. As discussed in this rejection below, the Satoh’s “liberation ratio” is understood to read on the original definition of the claimed “detachment fraction”, as clarified by the Applicant in the remarks.
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.
Claims 1-14 are 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.
Evidence that claim 1 fails to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant, regards as the invention can be found in the reply filed 07/15/2026.
In that paper, the inventor or a joint inventor, or for pre-AIA applications the applicant, has stated on pg. 8:
“In contrast, in the present specification the “detachment fraction of the silica particles” is a percentage (100 x M2/M1) of a mass M2 of the silica particles that have separated from the toner mother particles after ultrasonication to a mass M1 of the silica particles included in the toner particles before the ultrasonication (see pg. 5 of the present specification)”.
This statement indicates that the invention is different from what is defined in amended claim 1 because the amendment to claim 1 has broadened the scope of the “detachment fraction” by omitting this definition from the original claim and reciting it in a dependent claim.
As discussed above, newly presented claims 13 and 14 now include portions of the definition of the claimed detachment fraction previously recited in original claim 1. However, it is now unclear if the detachment fraction recited in amended claim 1 is different from the detachment fractions defined in new claim 13 or claim 14. In other words, the detachment fraction recited in amended claim 1 is also considered indefinite because the Applicant has presented multiple different definitions of the claimed detachment fraction (in claim 13 alone, and in claim 14 which incorporates claim 13), when only a single definition of the claimed detachment fraction was provided in the originally filed specification (see pg. 13 of the instant specification).
According to MPEP § 2111.01, “[a]n applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change" in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).”
Also, according to MPEP § 2173.05(a), “[t]he meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained.”
To overcome these issues, it is recommended to reincorporate the definition of the claimed “detachment fraction” (of the silica particles) in claim 1.
Claims 2-12 are indefinite because they fully incorporate the subject matter of a rejected claim.
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 1-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Morales-Tirado et al. (US PGP 2014/0272697 A1) (previously cited), in view of Ciccarelli et al. (US Patent No. 6,190,815 B1) (newly cited), further in view of Jugle et al. (US Patent No. 3,983,045) (previously cited), and even further in view of Sata et al. (US Pat. No. 5,683,845) (previously cited).
Morales-Tirado teaches a toner composition comprising blended toner particles comprising base-treated raw toner particles including at least one surface additive attached to a surface of the base-treated raw toner particles (Abstract).
The toner is taught to be used in an image development system including single component development or two component development ([0072]). While Morales-Tirado teaches that magnetites may be used as colorants in the toner ([0032]), none of the toners in the examples appear to have included a magnetic material. Therefore, the toner composition produced in the examples were non-magnetic. In other words, the toner composition of Morales-Tirado was likely used for non-magnetic one-component development (which reads on the corresponding limitation recited in instant claim 6).
A degree of attachment between the bare toner particles and the at least one surface additive is taught to be from 10 to 40% ([0005]). The degree of attachment is taught to refer to the percentage of surface additives that remain attached to the surface of the raw toner particle after it has been sonicated at different levels of energy and the percentage of additive remaining on the base-treated raw toner particle surface is based on the initial amount of additive that was on the base-treated raw toner particles before it was sonicated ([0069]).
Morale-Tirado’s attachment rate appears to be calculated using different parameters than how the detachment fraction is defined in new claim 13 or new claim 14. However, the definition of the claimed detachment fraction was omitted from claim 1 in the most recent amendment. In other words, there is nothing in amended claim 1 that distinguishes the claimed detachment fraction from Morales-Tirado’s attachment rate. Absent any definition in claim 1, Morales-Tirado’s attachment rate could be interpreted as reading on the claimed detachment rate, as both terms ordinarily pertain to the degree of attachment of the silica particles, but the distinction from Morales-Tirado’s attachment rate based on the mass of the silica particles remaining on the toner mother particles after sonication and the detachment fraction defined in new claims 13 and 14 based on the mass of the silica particles that have separated from the toner after sonication is no longer present.
The surface additive is taught to include silica particles, such as those described in U.S. Pat. No. 6,190,815 (to Ciccarelli et al.) and 6,004,714 ([0064]). Other additives are taught to include strontium titanates, such as those described in U.S. Pat. No. 3,983,045 (to Jugle et al.) ([0064]). In the examples, the base-treated raw toner particles were surface treated with silica particles, conductive particles, and lubricant particles ([0082]), and the toner particles exhibited a degree of attachment of 13% when sonication was performed at 56 ºC ([0090]). The residual amount of silica after sonicating the toner is taught to show that the degree of attachment can be controlled by adjusting the amount of base and by varying the temperature.
Morales-Tirado appears to be silent to teach or suggest the particle size of the silica. However, as discussed above, Morales-Tirado teaches that surface additives including silica particles described in U.S. Pat. No. 6,190,815 (to Ciccarelli et al.) may be suitably used, and that these additives are “totally incorporated by reference” ([0064]).
Ciccarelli teaches a toner comprised of a resin, colorant, and a coated silica. The coated silica is taught to have a primary particle size of about 25 nm to about 55 nm (Abstract) (which reads on the corresponding range recited in instant claim 8). The coated silica is taught to be used in the toner in an amount of from 1 weight% to about 10 weight%, and preferably 2 weight% to 5 weight% (Col. 5, lines 1-14 and Col. 6, lines 16-23) (which reads on the corresponding range recited in instant claim 9). The use of such silica is taught to improve the stable triboelectric charging characteristics, toner flow through, and triboelectric properties of the toner (Col. 1, lines 19-36).
Also, as discussed above, Morales-Tirado teaches the use of lubricant particles and conductive particles as a toner surface additive, but appears to be silent to teach fluororesin particles as a specific example of the lubricant particles, or a suitable particle size of the conductive particles. However, Morales-Tirado states that additives described in U.S. Pat. No. 3,983,045 (to Jugle et al.) may be suitably used, and that these additives are “totally incorporated by reference” ([0064]).
Jugle teaches a developer comprising toner particles including friction-reducing particles and abrasive fine particles externally added to the surface of the toner particles (Abstract). The friction-reducing particles are taught to include low molecular weight fluororcarbon compounds, such as short chain telomers of tetrafluoroethylene, and polytetrafluoroethylene powder (Col. 7, lines 25-30) (which corresponds to the claimed “fluororesin particle” recited in instant claim 1). The content of the friction-reducing particles is taught to preferably be 0.1% to 2.0% by weight with respect to the mass of the toner particles (Col. 10, lines 23-38) (which reads on the corresponding limitation recited in instant claim 4).
The abrasive fine particles are taught to include barium titanate and/or strontium titanate (Col. 8, lines 34-40) (which corresponds to the “specific external additive” recited in instant claim 1). The particle size of the abrasive fine particle is taught to be in the submicron range of from 1 to 500 nm, and preferably from 10 to 100 nm (Col. 9, lines 2-5) (which reads on the corresponding limitation recited in instant claim 3). The content of the abrasive fine particles is taught to preferably be 0.1% to 2% by weight with respect to the mass of the toner particles, in view of achieving desirable results (Col. 10, lines 59-63) (which reads on the corresponding range recited in instant claim 2).
In addition to the suggested ranges for the respective content ranges of the friction-reducing particles and the abrasive fine particles, Jugle states that one skilled in the art would be able to readily determine the optimum ratios of the dual additives (i.e., the friction-reducing particles and the abrasive fine particles) by monitoring the thickness of the residual friction-reducing film (Col. 10, lines 53-55).
Both Morales-Tirado and Jugle appear to be silent to teach or suggest a suitable range for the size of the lubricant particles (e.g., fluororesin particles).
Sata teaches a toner containing toner particles including an external additive containing polytetrafluoroethylene particles (Abstract). The polytetrafluoroethylene particles are taught to have an average primary particle size of 0.05 µm (50 nm) or more and 0.5 µm (500 nm) or less, and preferably 0.15 µm (150 nm) or more and 0.45 µm (450 nm) or less (Col. 3, lines 28-33) (which reads on the corresponding range recited in instant claim 5).
Sata teaches that, when the average primary particle size of the PTFE particles is 0.05 µm or more, the PTFE particles externally added to the surface of the toner particle are not likely to be embedded in the toner particle during continuous printing, thereby maintaining advantageous effects. When the primary particle size is 0.5 µm or less, the particles are not easily detached from the toner particles, thereby making it possible to achieve desirable effects (Col. 3, lines 33-44).
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 silica particles having a particle size within the range taught by Ciccarelli, as the silica particles in Morales-Tirado, in view of achieving the benefits taught by Ciccarelli. Moreover, Morales-Tirado explicitly states the silica particles of Ciccarelli may be suitably used as the silica particles.
It would have also been obvious to have used fluororesin particles like fluorocarbon compounds and/or polytetrafluoroethylene, like those taught by Jugle and Sata, and titanates like barium titanate and/or strontium titanate, like those taught by Jugle, as external additives for the toner of Morales-Tirado, in view of achieving the beneficial effects taught by Sata and Jugle. Moreover, Morales-Tirado explicitly states the additives of Jugle may be suitably used as the other additives.
Finally, it would have been obvious to someone of ordinary skill in the art to have optimized the respective contents of the, silica particles, lubricant, and abrasive particles using the corresponding ranges suggested by Ciccarelli and Jugle for guidance, as Jugle explicitly states that one skilled in the art would have been readily able to determine optimum content ranges of additive particles by adjusting, for example, the thickness of the residual friction-reducing film. In doing so, the skilled artisan could have arrived at the claim relationships between the silica particles, lubricant, and abrasive particles recited in instant claim 10, claim 11, and claim 12.
Also, in doing so, the relationships between the primary particle diameters of the silica particles, lubricant (fluororesin particles), and abrasive particles (barium titanate/strontium titanate) as recited in instant claim 1 of Morales-Tirado’s modified toner would necessarily be satisfied. For example, Ciccarelli’s silica particles are taught to have a particle size range of preferably 25 nm to 55 nm, Sata’s PTFE (fluororesin) particles are taught to have a particle size range of preferably 150 nm to 450 nm, and Jugle’s abrasive particles (barium titanate/strontium titanate) are taught to have a particle size range of preferably 10 nm to 100 nm. In other words, the fluororesin particles would have a particle size that is larger than the particle size of the abrasive particles and the abrasive particles would have a particle size that is at least the particle size of the silica particles.
According to MPEP 2144.05, “"[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)”.
See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Suganuma (US PGP 2009/0180811 A1) (previously cited), in view of Morales-Tirado et al. (US PGP 2014/0272697 A1) (previously cited), further in view of Ciccarelli et al. (US Patent No. 6,190,815 B1) (newly cited), still further in view of Jugle et al. (US Patent No. 3,983,045) (previously cited), and even further in view of Sata et al. (US Pat. No. 5,683,845) (previously cited).
The teachings of Morales-Tirado, Ciccarelli, Jugle, and Sata are discussed above and incorporated herein. Before proceeding with the teachings of the prior art, it should be noted that claim 7, lines 4-6 and 8-13, recite functional language limitations.
According to MPEP § 2114(II), "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”.
However, in view of promoting compact prosecution, the functional language of these limitations will still be considered.
Morales-Tirado teaches that the toner may be used in a variety of imaging devices including printers and copy machines ([0072]) but appears to be silent to teach the specific components of suitable imaging devices. However, absent any teachings of a specifically required image forming apparatus, the toner of modified Morales-Tirado would be expected to be compatible with any operational image forming apparatus that is configured to utilize a one-component developer.
Suganuma teaches an image forming apparatus comprising a developing device including a developer container configured to store a developer and a developing unit provided below the developer container. The developing unit includes a developer bearing member rotatably provided facing a latent image bearing member, configured to bear the developer to be supplied to the latent image bearing member, and a restriction member pressed against the developer bearing member to restrict an amount of the developer borne by the developer bearing member ([0010]-[0011]). The developing device is taught to use toner as a one-component developer, and either magnetic toner or non-magnetic toner may be used ([0054]) (which reads on the corresponding components 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 have used the toner of modified Morales-Tirado in image forming apparatus of Suganuma, with a reasonable expectation of success in producing an operational toner image without hindering the desired improvements taught by the previously cited prior art.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Satoh et al. (US PGP 2020/0272066 A1) (newly cited), in view of Jugle et al. (US Patent No. 3,983,045) (previously cited), and further in view of Sata et al. (US Pat. No. 5,683,845) (previously cited).
The teachings of Jugle and Sata are discussed above and incorporated herein. Satoh teaches a toner including toner particles, each toner particle including a toner base particle and inorganic particles of a fluorine-containing aluminum compound and particles of a silicon compound (Abstract, [0019]). The toner is taught to be suitable for use in a developer for one-component development (as recited in instant claim 6), and is used in an image forming method using an image forming apparatus including the structural features recited in instant claim 7 ([0269]-[0325], Fig. 1).
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The liberation ratio of the inorganic particles is taught to be 10% or more and 60% or less in view of maintaining excellent image quality over time ([0021]). The liberation ratio is taught to be defined by the following formula (1):
The liberation ratio is taught to be measured by sonicating a dispersion of toner particles including external additives using an ultrasonic homogenizer and measuring the mass of the free inorganic particles that have been detached from the toner base particles ([0022]-[0024]) (which reads on the corresponding “detachment fraction” recited in instant claim 1 and claim 13).
Satoh does not appear to teach the sonication conditions recited in instant claim 14. However, claim 1 is directed at a product, not a method. It has long been upheld that product-by-process claims are not limited to the manipulations of the recited steps (e.g., ultrasonification conditions), only the structure implied by the steps.
According to MPEP § 2113, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”.
The particles of a silicon compound are taught to include silica ([0057]). The silicon compound particles are taught to have a number average primary particle diameter of 50 nm or more and 200 nm or less, and preferably 75 nm or more and 175 nm or less ([0058]) (which reads on the corresponding range recited in instant claim 8). The liberation ratio of the silicon compound particles is specifically taught to be 10% or more and 30% or less, and preferably 15% or more and 25% or less, in view of preventing spent carrier and photoconductor filming ([0061]-[0062], [0336]) (which reads on the corresponding range recited in instant claim 1).
In the examples, the toner of Example 1 included silica particles having an average particle size of 20 nm in an amount of 2% by mass and exhibiting a liberation ratio of 6% (Table 2-1) (which reads on the corresponding limitation recited in instant claim 1, claim 8 and claim 9).
The toner is taught to further include other particles including fluoropolymers (fluororesin) and other inorganic particles including titanates like barium titanate and strontium titanate ([0067]-[0070]) (which reads on the corresponding limitations recited in instant claim 1). The amount of the other particles is taught to be 0.1% by mass or more and 5% by mass or less, and preferably 0.3% by mass or more and 3% by mass or less ([0071]) (which reads on the corresponding limitation recited in instant claim 2 and claim 4).
Satoh appears to be silent to teach or suggest a suitable particle size for the other particles including the fluoropolymer, barium titanate, and strontium titanate. However, as discussed above, Sata teaches that a suitable particle size range for fluoropolymer (PTFE) particles is preferably 0.15 µm (150 nm) or more and 0.45 µm (450 nm) or less (Col. 3, lines 28-33) and Jugle teaches that a suitable particle size range for abrasive particles including barium titanate and strontium titanate is to be in the submicron range of from 1 to 500 nm, and preferably from 10 to 100 nm (Col. 9, lines 2-5) (which reads on the corresponding limitations recited in instant claim 3 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 fluoropolymer particles having a particle size within the range taught by Sata, and titanates like barium titanate and/or strontium titanate having a particle size within the range taught by Jugle, as the other external additives for the toner of Satoh, in view of achieving the beneficial effects taught by Sata and Jugle.
It would have also been obvious to someone of ordinary skill in the art to have optimized the respective contents of the, silica particles, fluoropolymers, and titanate particles using the corresponding ranges suggested by Jugle for guidance, as Jugle explicitly states that one skilled in the art would have been readily able to determine optimum content ranges of additive particles by adjusting, for example, the thickness of the residual friction-reducing film. In doing so, the skilled artisan could have arrived at the claim relationships between the silica particles, fluoropolymers, and titanate particles recited in instant claim 10, claim 11, and claim 12.
Also, in doing so, the relationships between the primary particle diameters of the silica particles, fluoropolymer particles (fluororesin particles), and titanate particles (barium titanate/strontium titanate) as recited in instant claim 1 of Satoh’s modified toner would necessarily be satisfied. For example, Satoh’s silica particles “NX90G” are taught to have a particle size range of 20 nm, Sata’s fluoropolymer (PTFE) particles are taught to have a particle size range of preferably 150 nm to 450 nm, and Jugle’s abrasive particles (barium titanate/strontium titanate) are taught to have a particle size range of preferably 10 nm to 100 nm. In other words, the fluoropolymer particles would have a particle size that is larger than the particle size of the abrasive particles and the abrasive particles would have a particle size that is at least the particle size of the silica particles.
According to MPEP § 2144.05, “"[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)”.
See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").
Regarding the number average primary particle diameter and mass content ranges recited in the dependent claims, Applicant is kindly reminded that MPEP § 2144.05 states “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).”
Further, according to MPEP § 716.02, “[e]vidence of unobvious or unexpected advantageous properties, such as superiority in a property the claimed compound shares with the prior art, can rebut prima facie obviousness. "Evidence that a compound is unexpectedly superior in one of a spectrum of common properties . . . can be enough to rebut a prima facie case of obviousness." No set number of examples of superiority is required. In re Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987)”.
However, according to MPEP § 716.02(b)(I) and § 716.02(b)(II), the Applicant has the burden of explaining the data, either in the specification or in a declaration, when arguing unexpected results with regard to the claimed invention.
Additionally, “whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent No. 5,486,443 to Grande et al. teaches a toner comprised of resin particles, magnetite, carbon black, a rhodamine charge additive, wax, and a surface mixture of silica, strontium titanate and polyvinylidene fluoride (Abstract).
In the examples, the external additive mixture included silica, such as those commercially available as AEROSIL, strontium titanate, and polyvinylidene fluoride. Each additive was taught to be present on the toner in an amount of 0.50 to about 2.0 by weight of the toner.
The silica is taught to be present in an amount of about 1 percent by weight, the strontium titanate was taught to be present in an amount of 0.5 to about 1.25 percent by weight, and the polyvinylidene fluoride was taught to be present in an amount of 0.25 to about 2.0 percent by weight.
An example of a suitable silica is taught to be Wacker HDK 2050 EP, an example of a suitable strontium titanate is taught to be SrTiO3 Code No. 218 having an average diameter of 1.3 µm, and example of a suitable polyvinylidene fluoride is taught to be KYNAR 210F or 310F (Col. 8, lines 34-47).
However, Grande appears to be silent to teach a degree of attachment of the silica particles to the toner particle, let alone before and after subjecting the toner particles to ultrasonic vibration.
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.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
09/25/2026
