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. 5-10, filed 08/04/2026, with respect to the rejection of claims 12-13 under 35 U.S.C. 112(b), the rejection of claims 1, 5-6, 8, 11, and 14-15 under 35 U.S.C. 102(a)(1) over Owada et al. and as evidenced by the “ATLAS 100 Silica Composite Datasheet”, the rejection of claims 2-3 and 9 under 35 U.S.C. 103 over Owada et al., Sasaki et al., and as evidenced by the “ATLAS 100 Silica Composite Datasheet”, the rejection of claims 4 and 10 under 35 U.S.C. 103 over Owada et al., Shibata et al., and as evidenced by the “ATLAS 100 Silica Composite Datasheet”, the rejection of claim 7 under 35 U.S.C. 103 over Owada et al., Yoon et al., and as evidenced by the “ATLAS 100 Silica Composite Datasheet”, the rejection of claim 12 under 35 U.S.C. 103 over Owada et al., Ueda et al., and as evidenced by the “ATLAS 100 Silica Composite Datasheet”, and the rejection of claim 13 under 35 U.S.C. 103 over Owada et al., Yoon et al., Motohashi et al., and as evidenced by the “ATLAS 100 Silica Composite Datasheet”, 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 Therefore, the aforementioned rejections have been withdrawn.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.
Applicant has amended independent claims 1, 8, and 15 to further recite the negative limitation “wherein the external additive is free of titanium dioxide”. According to MPEP § 2173.05(i), “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
The MPEP further states, “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining.").”
Paragraphs [0016] and [0025] of the originally filed specification disclose that the external additive according to the claimed invention may use tin oxide, aluminum oxide, and the silica-polymer composite “without using titanium oxide”. Additionally, none of the external additives in the examples on Table 1 contained titanium oxide. Therefore, the negative limitation recited in the amended claims complies with the requirements of 35 U.S.C. 112(a) and 112(b), as there is support for this element in the originally filed specification.
Applicant has also amended dependent claim 4 to broaden the scope of the type of silica from requiring a fumed silica and a sol-gel silica to a fumed silica or a sol-gel silica. Support for this amendment can be found in at least paragraph [0021] of the originally filed specification, which states “examples of silica may include . . . fumed silica and/or sol-gel silica”.
Finally, Applicant has presented new claim 16 directed at the individual amounts of the tin oxide, the aluminum oxide, and the silica-polymer composition. Support for this new claim can be found in at least paragraphs [0011], [0014], and [0020] 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 1-11 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (US PGP 2016/0179024 A1) (newly cited).
Nishikawa teaches a toner containing an external additive including an organic-inorganic composite fine particle containing an inorganic fine particle embedded in a resin fine particle (Abstract). The toner is taught to be used in a fixation apparatus (including a cartridge/storage) to print a toner image on paper ([0157]-[0158]) (which reads on the corresponding limitation recited in instant claim 15).
The structure of the organic-inorganic composite fine particle is taught to make it easier to enhance the chargeability and fluidity of the toner ([0029]-[0031]). The average particle diameter of the organic-inorganic composite fine particle is taught to be 30 nm or more and 500 nm or less, in view of improving the low-temperature fixability and development performance of the toner ([0064]) (which reads on the corresponding limitation recited in instant claim 5 and claim 11).
The toner is taught to contain additional additives other than the organic-inorganic composite fine particles. The additional additive is taught to preferably include a fluidity modifier to improve the fluidity and chargeability of the toner ([0066]). Examples of suitable fluidity modifiers are taught to include silica fine powders, alumina fine powders, and tin oxide (which reads on the corresponding limitations recited in instant claim 1, claim 6, claim 8, claim 14, and claim 15).
Nishikawa teaches that the fluidity modifiers may be treated with a silane compound or a silicone oil ([0068]-[0072]) (which reads on the corresponding limitation recited in instant claim 2). The average primary particle diameter of the fluidity modifier is taught to be 5 nm or more and 30 nm or less, in view of ensuring high chargeability and fluidity ([0071]) (which reads on the corresponding limitations recited in instant claim 3, claim 4, claim 9, and claim 10). Additionally, the amount of the fluidity modifier is taught to be 0.01 parts by mass or more and 3 parts by mass or less ([0073]) (which reads on the corresponding limitations recited in instant claim 16).
In the examples, the organic-inorganic composite fine particle 1 contained an organo-silica sol as the inorganic fine particle and a crystalline polyester resin 1 as the resin fine particle ([0137]). A toner comprising a toner particle 1 containing a binder resin, colorant, and a wax was mixed with the organic-inorganic composite fine particle 1 and fumed silica to externally add the organic-inorganic composite fine particle 1 and fumed silica to surfaces of the toner particles ([0142]-[0148], Table 2) (which reads on the corresponding limitation recited in instant claim 7). None of the external additives in the examples contained titanium oxide (which reads on the corresponding limitations recited in instant claim 1, claim 8, and claim 15).
Nishikawa does not appear to teach the use of tin oxide and alumina fine powder in combination with the organic-inorganic composite fine particle in the external additive of the toner. However, this does not necessarily teach away from using such a combination. 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).”
Also, discussed above, both the organic-inorganic composite fine particle and the fluidity modifiers are taught to improve the chargeability and fluidity of the toner. According to MPEP § 2144.06(I), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations 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 optimized the chargeability and fluidity of Nishikawa’s toner by experimenting with different combinations and amounts of the known fluidity modifiers taught by Nishikawa in the external additive of the toner. The skilled artisan would have been just as motivated to use tin oxide and alumina as any of the other fluidity modifiers listed in paragraph [0068], as they are all taught to improve the fluidity and chargeability of the toner.
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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (US PGP 2016/0179024 A1) (newly cited), in view of Ueda et al. (US PGP 2017/0212440 A1) (previously cited).
The teachings of Nishikawa are discussed above and incorporated herein. Nishikawa appears to be silent to teach or suggest the X-ray fluorescence intensities of tin (Sn) and/or aluminum (Al) in the toner. Therefore, Nishikawa fails to teach or suggest the condition recited in instant claim 12.
Ueda teaches a toner containing at least one of aluminum (Al), magnesium (Mg), and tin (Sn) (Abstract). The net intensities of the metal elements Al, Mg, and Sn in the toner particles are taught to be measured by a wavelength dispersive X-ray fluorescence spectrometry analyzer ([0094]).
The ratio (IAl + IMg / ISn) of the net intensity IAl of Al and the net intensity IMg of Mg divided by the net intensity ISn of Sn is taught to be 0.8 to 2.5, from the viewpoint of enhancing the fracture resistance of the toner and preventing an excess increase in gloss of images ([0016]). In a case where the toner particle contains Al but does not contain Mg, the net intensity of Al is taught to be within a range of 2.0 to 6.0 kcps ([0013], [0017]). In the case where the toner particle does not contain Mg, IMg is equal to 0 kcps. In other words, the ratio becomes (IAl / ISn) = 0.8 to 2.5. Inversely, (ISn / IAl) must then range from 0.4 (1/2.5) to 1.25 (1/0.8) (which overlaps with the corresponding range recited in instant claim 12).
In the examples, the toner of Example 1 contained elemental Al and Sn, but did not contain elemental Mg (Table 2). The ratio (IAl + IMg / ISn) was taught to be 1.60. Since the toner did not contain elemental Mg, IMg is equal to 0 kcps. In other words, the ratio becomes (IAl / ISn) = 1.60. Therefore, (ISn / IAl) = 1/1.60 = 0.625 (which falls within the corresponding range recited in instant claim 12).
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).”
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 net intensities of elemental tin (Sn) and elemental aluminum (Al) in the toner of Nishikawa to fall within the range taught by Ueda, in view of achieving the desirable effects taught by Ueda (e.g., enhancing the fracture resistance of the toner and preventing an excess increase in gloss of images).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (US PGP 2016/0179024 A1) (newly cited), in view of Yoon et al. (US PGP 2022/0206406 A1) (previously cited), further in view of Motohashi et al. (JP 2019191324 A) (references herein made with respect to English machine translation previously attached) (previously cited).
The teachings of Nishikawa are discussed above and incorporated herein. Nishikawa appears to be silent to teach or suggest the X-ray fluorescence intensities of tin (Sn), aluminum (Al), and/or silicon (Si) in the toner. Therefore, Nishikawa fails to teach the conditions recited in instant claim 13.
Yoon teaches a toner including an external additive containing silica particles and tin oxide particles (Abstract). The silica particles and tin oxide particles are taught to be used such that the X-ray fluorescence intensity of tin oxide [Sn] and the X-ray fluorescence intensity of silicon [Si] measured by X-ray fluorescence (XRF) spectrometry satisfy the following condition (4) ([0030]) (which encompasses the corresponding range recited in instant claim 13):
0.00 < [Sn] / [Si] ≤ 1000
By using the combination of external additives satisfying this condition, developing properties, transferring properties, photoreceptor background contamination inhibiting properties, and developing durability are improved ([0028]-[0032]).
Motohashi teaches a toner including an external additive containing silica particles and aluminum oxide particles ([0029], [0204], [0206]). When fluorescent X-ray (XRF) analysis is performed on the toner, the net intensities of aluminum and silicon are measured. The proportion of the net intensity IAl of aluminum to the net intensity ISi of silicon is taught to satisfy the following formula (4) ([0030]):
IAl / ISi ≥ 0.52
The proportion IAl / ISi in the formula (4) is taught to preferably be within the range of 0.57 to 0.74 ([0030]) (which falls within the corresponding range recited in instant claim 13). When in this range, charge transfer of the toner is taught to be improved.
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).”
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 net intensities of elemental tin (Sn), elemental aluminum (Al), and elemental silicon (Si) in the toner of Nishikawa to fall within the respective ranges taught by Yoon and Motohashi, in view of achieving the desirable effects taught by the respective references (e.g., improving developing properties, transferring properties, photoreceptor background contamination inhibiting properties, and developing durability).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2021/0356878 A1 to Mizuguchi et al. teaches a toner comprising a toner particle including an external additive containing silica fine particles ([0118]). In the examples, silica-polymer composite particles commercially known as “ATLAS 100” were used in combination with hydrophobic silica fine particles as external additives ([0178]).
However, Mizuguchi is silent to teach or suggest that the external additive can also include tin oxide and aluminum oxide.
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
09/21/2026
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