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 .
Specification
The abstract of the disclosure is objected to because the abstract states the external additives have "an average . A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: the specification states the external additives have "an average .
Appropriate correction is required.
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 1-8 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.
Claim 1 states “the external additive contains an inorganic particle... having an average circularity of from 350 to 1,000 nm”. Circularity is not measured in nanometers, and the Description of the Embodiments in the Instant specification states the particles have “a particle diameter of from 350 to 1,000 nm.” on both Instant Specification page 3 and 4. The Instant Specification further details the importance of the particle diameter for the inorganic particle, indicating when smaller than 350 nm, or larger than 1,000 nm, the particle may detach from the toner particle, or reduced frictional charging between toner particles occurs, both of which decrease the charge of the toner, Instant Specification page 10. Other than repeating the limitation of the claim, the circularity of the inorganic particles used as an external additive is not detailed in the application.
Claims 2-8 are dependent on claim 1, and do address the “average circularity” limitation of claim 1 further.
In the interest of compact prosecution, the limitation “having an average circularity of from 350 to 1,000 nm” will be interpreted as “having an average particle diameter of from 350 to 1,000 nm”, in line with the Description of the Embodiments in the Instant Specification.
Double Patenting
Claims 1-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/323,377 in view of Nakamura (US 6416914).
Regarding claims 1-4 the ‘377 Application claims A toner comprising: mother toner particles each comprising: a binder resin; a releasing agent; and a charge control agent; and an external additive comprising hydrophobized polymethylsilsesquioxane particles with an average particle diameter of from 0.100 to 0.150 μm, wherein the mother toner particles have an average circularity of 0.95 or less. (claim 1). The ‘377 Application does not claim an external additive containing an inorganic particle selected from barium sulfate, magnesium hydroxide, or magnesium oxide having an average particle size of 3500-1000 nm.
Nakamura teaches a similar toner comprising a large particle diameter external additive, enabling the toner to suppress fouling while maintaining long life and high transfer efficiency (Col 4 line 62 to Col 5 line 4). Nakamura further teaches the external additive is selected from a group including magnesium oxide and barium sulfate, is 0.005-2 µm (aka 5-2000 nm) in diameter, and added in an amount of 0.01-5% by weight of the toner (Col 13 line 23-40). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include large external inorganic external additives, as taught by Nakamura, in the toner of the ‘377 Application to suppress fouling while maintaining long life and high transfer efficiency of the toner.
Regarding claim 5, the modified ‘377 Application claims all limitations as set forth above. The ‘377 Application further claims The toner according to claim 1, wherein a proportion of the hydrophobized polymethylsilsesquioxane particles is from 0.05 to 3 parts by mass to 100 parts by mass of the toner. (claim 2).
Regarding claim 6, the modified ‘377 Application claims all limitations as set forth above. The ‘377 Application further claims A toner accommodating unit containing the toner of claim 1. (claim 3)
Regarding claim 7, the modified ‘377 Application claims all limitations as set forth above. The ‘377 Application further claims An image forming apparatus comprising: a latent electrostatic image bearer; a latent electrostatic image forming device configured to form a latent electrostatic image on the latent electrostatic image bearer; a developing device configured to develop the latent electrostatic image formed on the latent electrostatic image bearer with the toner of claim 1 to obtain a visible image; a transfer device configured to transfer the visible image onto a transfer medium; and a fixing device configured to fix the visible image transferred to the transfer medium. (claim 4)
Regarding claim 8, the modified ‘377 Application claims all limitations as set forth above. The ‘377 Application further claims An image forming method comprising: forming a latent electrostatic image on a latent electrostatic image bearer; developing the latent electrostatic image formed on the latent electrostatic image bearer with the toner of claim 1 to obtain a visible image; transferring the visible image formed on the latent electrostatic image bearer to a transfer medium; and fixing the visible image on the transfer medium. (claim 5)
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 4 of copending Application No. 18/402,756 in view of Nakamura (US 6416914).
Regarding claims 1-3, the ‘756 Application claims A toner comprising: a mother toner particle comprising: a binder resin; a release agent; and a charge control agent; and an external additive comprising: a hydrophobized poly methylsilsesquioxane particle, wherein the toner has a glass transition temperature of from 48 to 60 degrees C., and a temperature of 1.0 g of the toner is from 54 to 65 degrees C. when the 1.0 g of the toner is pushed in 0.1 mm by a piston of a flow tester in heating the 1.0 g of the toner from 40 degrees C. at a temperature rising speed of 3 degrees C. per minute under a load of 22.5 kgf. (claim 1). The ‘756 Application further claims The toner according to claim 1, wherein the mother toner particle is a pulverized toner and has an average circularity of 0.96 or less. (claim 4). The ‘756 Application does not claim an external additive containing an inorganic particle selected from barium sulfate, magnesium hydroxide, or magnesium oxide having an average particle size of 3500-1000 nm.
Nakamura teaches a similar toner comprising a large particle diameter external additive, enabling the toner to suppress fouling while maintaining long life and high transfer efficiency (Col 4 line 62 to Col 5 line 4). Nakamura further teaches the external additive is selected from a group including magnesium oxide and barium sulfate, is 0.005-2 µm (aka 5-2000 nm) in diameter, and added in an amount of 0.01-5% by weight of the toner (Col 13 line 23-40). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include large external inorganic external additives, as taught by Nakamura, in the toner of the ‘756 Application to suppress fouling while maintaining long life and high transfer efficiency of the toner.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (US 6416914).
Regarding claims 1-2, Nakamura discloses a toner comprising a circularity of 0.92-0.98 (abstract, Col 6 line 4-27). Nakamura further discloses the toner comprises a binder resin (Col 10 line 46-49), a wax (aka release agent) (Col 12 line 31-58), and a charge control agent (Col 11 line 47 to Col 12 line 14). Nakamura further discloses the toner comprising a large particle diameter external additive, enabling the toner to suppress fouling while maintaining long life and high transfer efficiency (Col 4 line 62 to Col 5 line 4). Nakamura further discloses the external additive is selected from a group including magnesium oxide and barium sulfate, is 0.005-2 µm (aka 5-2000 nm) in diameter, and added in an amount of 0.01-5% by weight of the toner (Col 13 line 23-40).
Regarding claims 6-7, Nakamura discloses a toner container, containing the toner (#13 Fig. 2, Col 20 line 67 to Col 21 line 2). Nakamura further discloses an electrophotographic printer comprising a photosensitive material drum for bearing a latent image, an image forming unit with exposure device for forming a latent image on the photosensitive material drum, a developing device for forming a visual toner image on the photosensitive drum, a transfer device for transferring the toner image onto a paper recording medium, and a fixing device to adhere the image to the paper (Col 19 line 1 to Col 20 line 14).
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.
Regarding claims 6-7, assuming arguendo the toner is a material limitation of the toner accommodating unit and image forming apparatus, Nakamura discloses all limitations as set forth above. Nakamura further discloses a toner container, containing the toner (#13 Fig. 2, Col 20 line 67 to Col 21 line 2). Nakamura further discloses an electrophotographic printer comprising a photosensitive material drum for bearing a latent image, an image forming unit with exposure device for forming a latent image on the photosensitive material drum, a developing device for forming a visual toner image on the photosensitive drum, a transfer device for transferring the toner image onto a paper recording medium, and a fixing device to adhere the image to the paper (Col 19 line 1 to Col 20 line 14).
Regarding claim 8, Nakamura discloses all limitations as set forth above. Nakamura further discloses an image formation process using the toner comprising charging the image carrier and forming a latent image, developing the latent image with a developing agent (aka the toner), transferring the image onto a recording medium, and fixing the transferred mage onto the recording medium (Col 8 line 11-30).
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.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 6416914) in view of Ishizu (US 20160319077).
Regarding claims 3-4, Nakamura discloses all limitations as set forth above. However, Nakamura does not discloser the external additive further comprising hydrophobized polymethylsilsesquioxane particles.
Ishizu teaches a hydrophobized polyalkylsilsesquioxane fine particle and a toner using the particle as an external additive ([0002]). Ishizu further teaches polymethylsilsesquioxane is the preferred polyalkylsilsesquioxane ([0012], claim 2). Ishizu further teaches the polyalkylsilsesquioxane particle has a median diameter of 0.05-0.3 µm (aka 50-300 nm) ([0013], claim 1 and 6-7). Ishizu further teaches when the diameter of the polyalkylsilsesquioxane fine particle is within the 0.05-0.3 µm range, the toner has improved transferability and durability ([0034]-[0035]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the toner of Nakamura further includes hydrophobized polymethylsilsesquioxane particles as external additives with a median particle diameter of 50-300 nm, as taught by Ishizu, to improve transferability and durability of the toner.
Regarding claim 5, modified Nakamura discloses all limitations as set forth above. Ishizu further teaches the polyalkylsilsesquioxane fine particles are added to the toner in an amount of 0.1-5 mass% ([0107]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Several other applications teach similar toners having circularities which overlap the claimed range which also comprise inorganic external additives as claimed in claim 1, including:
Watanabe (US 20100081075) teaches a toner having 20-80% of the toner particles with a circularity of 0.95 or less ([0231]). As well as external additives selected from a group comprising magnesium oxide and barium sulfate, with a primary particle diameter of 5-2000 nm ([0178]).
Watanabe (US 20050277044) teaches a toner with an average circularity of 0.90 to 1.00 ([0183]). Further teaching the toner includes inorganic particulate, which may include magnesium oxide or barium sulfate, with a particle diameter of 5-2000 nm, which is used as an external additive ([0104]-[0107]).
Nanya (US 20060269860) teaches a toner which has an average circularity of 0.90-0.96 ([0028]). The toner further comprises external additives with a diameter of 5-2000 nm, selected from a group including magnesium oxide and barium sulfate ([0114]-[0115]).
Terui (US 20200026208) teaches a toner comprising an organosilicon polymer forming protrusions on the toner surface, the polymer formed from the structure R-SiO3/2 ([0017]-[0019], [0022], claim 1). The protrusions have a height/diameter of 40-300 nm ([0022]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (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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/C.C.S./Examiner, Art Unit 1737
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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