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. 4-8, filed 07/13/2026, with respect to the rejection of claims 1-2 and 4-8 under 35 U.S.C. 103 over Yamasaki et al. and Obara et al., and the rejection of claims 3 and 9 under 35 U.S.C. 103 over Yamasaki et al., Obara et al., and Law et al., have been fully considered and are persuasive. Therefore, the aforementioned rejections have been withdrawn.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 inorganic fine particles A have a number average primary particle size of 610 to 650 nm. The Applicant argues that Obara, which was relied upon in the previous Office action for teaching the use of boron nitride particles (corresponding to the claimed “inorganic fine particles A”) as an external additive for toner, teaches away from the claimed range. Specifically, the Applicant notes that paragraph [0025] of Obara states that the number average primary particle size of the boron nitride particles is preferably from 10 to 500 nm, in view of firmly fixing the boron nitride particles onto the surface of the colored particles.
The Examiner agrees. However, upon further search and consideration, a new reference (US PGP 2009/0130580 A1 to Dojo et al.) was discovered which teaches this limitation. Specifically, Dojo teaches a toner including hexagonal boron nitride particles having a median diameter (D50) of 0.5 µm (500 nm) or more and 8.0 µm (8000 nm) or less, which improve the charge stability and lubricity of the toner particles (Abstract, [0035]-[0038]) (which overlaps with the corresponding range recited in instant claim 1). Dojo teaches that when the boron nitride particles have a median diameter (D50) of less than 0.5 µm (500 nm), the toner may have low lubricity and releaseability ([0037]).
According to MPEP § 2144.05, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
The Applicant also argues that the data in the instant specification demonstrates unexpected results resulting from the combined features of claim 1. Specifically, the Applicant argues that toners formulated with group 13 nitride particles within the specific 610 to 650 nm range recited by claim 1 exhibit remarkably superior image density maintenance rate compared to examples falling outside of this range. The Applicant notes that the toners of Example 1 (including 610 nm hexagonal boron nitride particles) and Example 2 (including 650 nm hexagonal boron nitride particles) achieved the highest performance across all evaluations, demonstrating “A” ratings for image density maintenance rate, while the four Comparative Examples exhibited unacceptable toner evaluations.
The Examiner respectfully disagrees. That is, there is insufficient evidence to demonstrate that the claimed number average primary particle size range is critical to achieving the desired features of the claimed invention, or any unexpected results relative to the prior art range.
According to MPEP § 2144.05, “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). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.").
As the Applicant previously noted, the toners of Examples 1 and 2 each included inorganic fine particles A having a number average primary particle size of 610 to 650 nm. Both of the toners of Examples 1 and 2 exhibited evaluations ranks of “A” across the board in terms of image density maintenance rate, transfer stability, initial charge, and charge stability (see Table 4 of the instant specification).
However, the toners of Examples 3-9 each included inorganic fine particles A having a number average primary particle size outside of the claimed range of 610 to 650 nm, yet also exhibited superior evaluations ranks of “A” across the board in terms of image density maintenance rate, transfer stability, initial charge, and charge stability (see Table 4 of the instant specification). For instance, the toner of Example 8 included hexagonal boron nitride particles having a number average primary particle size of 296 nm, and the toners of Example 7 and Example 9 included hexagonal boron nitride particles having a number average primary particle size of 2000 nm (see Table 2 and Table 3 of the instant specification). According to the results in Table 4, the toners of Examples 7-9 performed just as well as the toners of Examples 1-2.
Accordingly, new grounds of rejections are presented below to incorporate the teachings of newly cited reference Dojo, in place of previously cited Obara. The teachings of Dojo are sufficient to support a new obviousness rejection since there is no showing of criticality of the claimed range (see MPEP § 2144.05).
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 1-2, 4-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US PGP 2012/0052430 A1), in view of Dojo et al. (US PGP 2009/0130580 A1) (newly cited).
Yamasaki teaches an electrostatic image developing toner including a toner particle that includes a core particle containing a binder resin and a coating layer containing a resin having a crosslinked structure derived from at least one of boric acid and boric acid derivatives ([0008]). In addition to being contained in the coating layer, Yamasaki teaches that the boron crosslinked resin may also be contained in the core particle ([0016]).
Therefore, the toner particles would have been expected to necessarily exhibit a peak derived from boric acid when subjected to attenuated total reflection infrared (ATR-IR) spectroscopy when using germanium as an ATR crystal (which reads on the corresponding limitation recited in instant claim 1).
The toner particles would have also been expected to necessarily exhibit a carbonyl group-derived peak when the toner is subjected to ATR-IR spectroscopy, as the binder resin of the toner comprises a polyester resin ([0175]-[0194]). According to paragraph [00152] of the instant specification, the absorption peak of the carbonyl group is derived from the binder resin component contained in the toner particles.
The toner particles are taught to include an external additive added to surfaces of the toner particle. Examples of the external additive are taught to include inorganic particles ([0109]) (which reads on the corresponding limitation recited in instant claim 1). Examples of suitable inorganic particles are taught to include silicon nitride ([0110]). According to Table 2 of the instant specification, silicon nitride can have a hexagonal crystal structure in X-ray diffraction analysis.
While silicon nitride is named, Yamasaki appears to be silent to teach inorganic particles made of a nitride of a group 13 element of the periodic table (e.g., boron, aluminum, gallium, indium, thallium, nihonium) as specific examples of the external additive.
Dojo teaches a toner containing boron nitride particles having a median diameter (D50) of 0.5 µm (500 nm) or more and 8.0 µm (8000 nm) or less in an amount of 0.05 part by mass or more and 1.00 part by mass or less (Abstract) (which corresponds to the “inorganic fine particles A” recited in instant claim 1 and claim 5 and reads on the corresponding range recited in instant claim 4). Dojo teaches that when the boron nitride particles have a median diameter (D50) of less than 0.5 µm (500 nm), the toner may have low lubricity and releaseability ([0037]).
According to MPEP § 2144.05, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
The boron nitride particles are taught to have a crystal structure of a hexagonal system, resembling graphite, where particles stand interlaminar-bonded by van der Waals force and are readily slidable over one another (which reads on the corresponding limitation recited in instant claim 1). However, compared to graphite, the boron nitride particles have high electrical resistance which reduces the affect on the charge quantity of the toner and hence stabilizes the chargeability of the toner ([0034]). The boron nitride particles are further taught to improve the lubricity of the toner particles, which improves cleaning of the toner particles ([0036]).
The boron nitride particles are taught to be produced by a known method, including a method in which boric acid, boric anhydride, borax or the like is heated in an atmosphere of ammonia gas or nitrogen gas, and a method in which a boric acid derivative and a nitrogen-containing compound such as melamine, urea, or guanidine are mixed and heated in an atmosphere of a reducing gas or an inert gas. The particle diameter and particle size distribution of the boron nitride particles are taught to be controlled using an air classifier or the like ([0038]).
According to paragraph [0040] of the instant specification, boron nitride produced by reacting boric acid anhydride (B2O3) and ammonia (NH3) contains trace amounts of oxygen atoms. The amount of oxygen atoms is disclosed as being controlled by, for example, the raw materials.
Therefore, the boron nitride particles of Dojo would have necessarily contained oxygen within the range recited in instant claim 7, given the similarities in reaction processes. See also Table 2 of the instant specification, where all of the hexagonal boron nitride particles produced by reacting boric acid anhydride and ammonia exhibited an oxygen content of from 0.05 to 2.97.
Given the similarities between boron nitride and graphite discussed above, the boron nitride particles would necessarily exhibit a graphitization index GI within the range recited in instant claim 6, as the graphitization index is understood to measure how closely a carbon material’s structure resembles perfectly ordered graphite. See also Table 2 of the instant specification, where all of the hexagonal boron nitride particles exhibited a GI value of from 1.60 to 10.0.
The boron nitride particles would also necessarily exhibit a ratio (D/T) of the longer diameter D to the thickness T within the range recited in instant claim 2 and claim 10, given the graphite-like structure and reaction process described above. According to paragraph [0029] of the specification, a D/T ratio within the range of from 6.0 to 20.0 indicates that the boron nitride particles are flat.
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 boron nitride particles of Dojo as external additives in the toner of Yamasaki, in view of improving the charge stability and lubricity of the toner particles.
In doing so, the boron nitride particles of modified Yamasaki would be expected to necessarily exhibit similar adhesion properties when the toner is measured by the claimed adhesion measurement method recited in instant claim 8, as Dojo’s boron nitride particles fall within the scope of the claimed inorganic fine particles A as discussed above. The Applicant is respectfully invited to demonstrate otherwise.
According to MPEP § 2112(V), "[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).
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US PGP 2012/0052430 A1), in view of Dojo et al. (US PGP 2009/0130580 A1) (newly cited), and further in view of Law et al. (US Pat. No. 5,385,798).
The teachings of Yamasaki and Dojo are discussed above and incorporated herein. Yamasaki appears to be silent to teach or suggest a suitable range for the content of boric acid with respect to the mass of the toner particles, or a ratio (IB/IC) of an intensity of the boric acid-derived peak IB to an intensity of the carbonyl-group peak IC when the toner is measured under ATR-IR spectroscopy.
Law teaches a toner composition comprising resin, pigments particles, optional surface additives, and boric acid or salts thereof (Abstract). The boric acid is taught to be incorporated into the toner, present on the toner surface, or present on toner surface additives (Col. 6, lines 22-25). The amount of the boric acid in the toner, or on the toner surface, is taught to be from 0.1 to 10 weight%, and preferably 1 to 3 weight%, in view of providing effective charge enhancing properties (Col. 6, lines 7-21) (which reads on the corresponding range recited in instant claim 3).
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 adjusted the boric acid content of modified Yamasaki’s toner to fall within the range taught by Law, in view of providing a suitable amount for improving charge enhancing properties.
In doing so, the toner particles of modified Yamasaki would be expected to necessarily exhibit a ratio IB/IC within the range recited in instant claim 9, given the similarities between the content of boric acid. According to [0053] of the specification, the claimed IB/IC ratio of from 0.02 to 0.30 is indicative of the amount of boric acid in the vicinity of the surfaces of the toner particles. The Applicant is kindly invited to demonstrate otherwise.
According to MPEP § 2112(V), "[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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2005/0058926 A1 to Kawakami et al. a toner having toner particles including an inorganic fine powder. The inorganic fine powder is taught to have a primary-particle average particle diameter of from 30 nm to 300 nm, and has particles having at least one of a cubic particle shape, a cube-like particle shape, a rectangular particle shape, and a rectangle-like particle shape having a perovskite type crystal. The inorganic fine powder is taught to have particles and agglomerates having particle diameters of 600 nm or more and in a content of 0% to 1% by number (Abstract).
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 on (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
08/08/2026
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