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 .
Claim Objections
Claims 1-10 are objected to because of the following informalities:
Claim 1, line 11, recites “fumed silica particles that are surface-treated polydimethylsiloxane”, when it should recite (for example): “fumed silica particles that are surface-treated with polydimethylsiloxane”.
Claim 9, line 6, recites “wherein the electrophotographic toner has D50 particle size from 3 µm to 9µm”, when it should recite (for example): “wherein the electrophotographic toner has a D50 particle size from 3 µm to 9 µm”.
Claims 2-8 and 10 are objected to because they fully incorporate the subject matter of claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 5, 7-11, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Veregin et al. (US PGP 2021/0263435 A1), in view of Kakehi et al. (US Pat. No. 10,599,061 B1), further in view of Ishizuka et al. (US PGP 2020/0292950 A1), and as evidenced by Bejta et al. (US PGP 2010/0040969 A1).
Veregin teaches a toner including a parent toner particle comprising at least one resin, an optional colorant, an optional wax, and a surface additive formulation comprising: at least one medium silica surface additive having an average primary particle diameter of 30 to 50 nm, at least one large silica surface additive having a volume average primary particle diameter of 80 to 120 nm, at least one positive charging surface additive selected from the group consisting of a titanium dioxide surface additive and a non-titanium dioxide positive charging metal oxide surface additive having a volume average primary particle size of 8 to 30 nm, and optionally a small silica surface additive having a volume average primary particle diameter of 8 to 16 nm ([0002]).
The medium silica is taught to include surface treated silica particles comprising an alkyl silane, such as polydimethylsiloxane (PDMS) and hexamethyldisilazane (HDMS) ([0110]). Two or more medium silica particle are taught to be used in combination ([0112]-[0113]).
The large silica is taught to include sol-gel silica particles Shin Etsu “X24-9163A” and Cabot Corporation “TG-C191” ([0116]). According to Table 3, both “X24-9163A” and “TG-C191” have a particle size of 115 nm (which reads on the “large sol-gel silica particles having a particle size of 90 nm to 130 nm” recited in instant claim 1).
The small silica is taught to be selected from any suitable or desired silica having a desired particle size, and includes polydimethylsiloxane (PDMS) treated silica. A specific example of the small silica is taught to include Evonik “RY200”, which is a fumed silica surface treated with polydimethylsiloxane and having a particle size of 12 nm ([0123]) (which reads on the “fumed silica particles that are surface-treated with polydimethylsiloxane” recited in instant claim 1).
The non-titanium dioxide positive charging metal oxide is taught to be selected from the group consisting of alkyl silane treated aluminum oxide, polydimethylsiloxane treated aluminum oxide, and combinations thereof. A specific example of the non-titanium dioxide positive charging metal oxide is taught to include Evonik “C805”, which is an aluminum oxide surface treated with octylsilane and having a particle size of 13 nm ([0125], Table 1) (which reads on the “aluminum oxide particles” recited in instant claim 1 and the corresponding limitations recited in instant claim 2, claim 7, and claim 13). According to Bejat, the aluminum oxide “C805” is known to have a specific surface area of 100 m2/g (Table 6a) (which reads on the corresponding limitation recited in instant claim 2 and claim 13).
In the examples, medium fumed silica “RY50” surface treated with polydimethylsiloxane (PDMS) having a particle size of 40 nm was used as one of the medium silicas (which corresponds to the “fumed silica particles having a particle size of from 30 nm to 50 nm surface treated with polydimethylsiloxane” recited in instant claim 11). The titanium dioxide was excluded from the external additive package when the aluminum oxide was used (which reads on the corresponding limitation recited in instant claim 8). Additionally, the toner was taught to contain 9 wt.% of polymethylene wax (releasing compound), 7 wt.% of “NIPex 35” and BP15:3 pigment particles (colorant), and 72 wt.% of core particles (polymer particles). The toner was further taught to have a particle size of 5.6 µm ([0171]) (which reads on the corresponding limitations recited in instant claim 9). The toner particles in the examples were taught to be loaded into the toner cartridge of a Xerox 700 Digital Color Press and used to form an image ([0164]-[0172]) (which reads on the corresponding limitations recited in instant claim 10, claim 11, and claim 15).
Veregin appears to be silent to teach or suggest the use of sol-gel silica as examples of the medium silica. Commercially available fumed silica particles are taught to be suitable examples of the medium silica ([0110], Table 1). However, this does not necessarily constitute a teaching away from using other types of silica particles as medium silica, such as sol-gel silica particles, so long as they have a particle size of 30 nm to 50 nm. 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)”.
Kakhehi teaches a toner including inorganic particles externally added to the toner particles (Abstract). Kakhei teaches that the external additive includes sol-gel silica particles since they quickly become charged to an intended degree when stirred in a developing apparatus (Col. 10, lines 5-10). The average primary particle size of the sol-gel silica particles is taught to preferably be 20 nm or more and 90 nm or less, and most preferably 30 nm or more and 80 nm or less, in view of achieving a suitable attachment rate to the toner particle surface (Col. 10, lines 60-67, Col. 11, lines 1-4).
Veregin also appears to be silent to teach or suggest the specific surface area of the toner particles. Ishizuka teaches that the measured value of the specific surface area of toner particles is preferably 0.5 m2/g or more and 10.0 m2/g or less, and more preferably 0.6 m2/g or more and 8.0 m2/g or less, in view of suppressing contamination of the recording medium. The calculated specific surface area of the toner particles is taught to preferably be 0.4 m2/g or more and 5 m2/g or less, and more preferably 0.5 m2/g or more and 4 m2/g or less. The measured specific surface area and the calculated specific surface areas are taught to be controlled to be within a specific range in view of suppressing clogging of the transfer residual toner recovery route ([0119]-[0122]).
Veregin also appears to be silent to teach or suggest the circularity of the silica particles. Ishizuka teaches that the average circularity of the silica particles is preferably 0.75 or more and 1.0 or less, and most preferably 0.92 or more and 0.98 or less, in view of controlling the adhesion force of the toner particles ([0139]-[0140]) (which reads on the corresponding limitation recited in instant 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 a sol-gel silica particle, such as those taught by Kakehi, as a medium silica particle in the external additive pack of Veregin, and to have adjusted the specific surface area of the toner particles to fall within the range taught by Ishizuka, in view of improving the attachment rate of the external additives and suppressing contamination of the recording medium. It would have also been obvious to have used sol-gel silica particles having a circularity within the range taught by Ishizuka, in view of improving the adhesion forces of the toner particles.
Allowable Subject Matter
Claims 3-4, 6, 12, 14, and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2012/0129089 A1 to Kmiecik-Lawrynowicz et al. teaches a toner composition comprising a surface additive package including sol-gel silica, a PDMS silica, an organic spacer such as PMMA, and two HMDS silicas (Abstract). The toner particles are taught to have a BET surface area of from 0.5 m2/g to about 1.4 m2/g, and preferably from 0.7 m2/g to 1.0 m2/g ([0088]).
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
08/18/2026
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