CTFR 18/749,980 CTFR 94408 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 amended claims 7 and 11-13 with claim 1 being cancelled and claims 2-6, 8 and 9 are amended to maintain dependency and/or better idiomatic usage or format. The previous rejection of claim 12 as being a substantial duplicate of claim 1 is now rendered moot as claim 1 is cancelled. This objection is withdrawn. Claims 2-6 are now dependent on independent claim 12 while claims 8-10 are dependent on independent claim 7. The previous rejections of claims 1-3 under 35 U.S.C. §112(b) which ostensibly were corrected still remain because independent claim 12 recites in the 4 th paragraph the phrase “adhering the sheets” without an antecedent basis because only one sheet is previously recited and there does not appear to the examiner a plurality of sheets but only “a sheet”. This phrase also occurs in claim 11 (4 th paragraph) “means for adhering the sheets” and claim 13 “adhering the sheets”. See 35 U.S.C. §112(b) rejections below. Regarding the previous rejections under 35 U.S.C. §103 of claims 2-13 (claim 1 having been cancelled), the applicant has amended these claims whereby the independent claim 12 recites the relationship between the toners such that the claims recite the controlling of the laying sequence of the two toner layers constituting the image pattern for adhesion and the particular relationship between he characteristic of the toners composing each toner layer. In particular, that there is a first unfixed toner layer formed on a first surface of a sheet followed by a second unfixed toner layer formed on the first unfixed toner layer where “the image pattern for adhesion” has “a fixed toner image derived from the second unfixed toner layer on a surface thereof”. Independent claims 11 and 13 recite similar new limitations as does independent claim 12. Independent claim 7 drawn to a toner set is amended to recite that the second image pattern for adhesion is formed on the same or a different sheet and each of these alternatives have a recitation of narrower limitations: “whereby when the second image pattern for adhesion is formed on the same sheet as the first image pattern for adhesion, that sheet is adhered to itself, and when the second image pattern for adhesion is formed on a different sheet than the first image pattern for adhesion, both sheets are adhered to each other.” Claim 7 is further amended to include the functionality of the toner set to include: “the first forming the first and second image patterns for adhesion each comprise forming on a first surface of a target sheet a first unfixed toner layer using a first toner, forming on the first unfixed toner layer a second unfixed toner layer using a second toner, and forming on the target sheet an image pattern for adhesion by performing heating from a surface of the second unfixed toner layer to fix the first and second unfixed toner layers to the target sheet,” Applicant argues that the H1 and H2 that are the calorific values of the first and second toners respectively are a critical feature in that when these components are satisfied with the range of heating and cooling temperature recited by claims 12, 7 and 11 where the range of 6.0<H2<24.0 and H1<H2 is satisfied controls the release property and the adhesion strength such that as a result, both adhesion strength and hot offset resistance can be achieved simultaneously and this is not taught or suggested by the prior art even taken collectively. Applicant argues that the secondary reference, Shimano (US 9,785,071 B2) IDS 10/09/2024 while specifying caloric values for a toner having a shell-core structure to determine a degree of compatibility A which is an index of compatibility between an amorphous resin A and a crystalline resin and a degree of compatibility B which is an index of compatibility between an amorphous resin B and the crystalline resin, and while Shimano’s degrees of compatibility specify compatibility among components contained in a single toner, it does not specify this among plural toners as they are recited in the pending claims.(Applicant Arguments/Remarks 03/12/2026 pp. 10-14). The examiner counter argues that these limitations found in the claimed methods (claims 12 and 11 and dependent claims) and the claimed toner set (claim 7 and dependent claims), do not distinguish these ranges such that it would be nonobvious to one with ordinary skill in the art and there does not appear to the examiner that the ranges of 6.0<H2<24.0 and H1<H2 which were close but not overlapping ranges and were determined to be close enough that one skilled in the art would have expected them to have the same properties and further being motivated to confirm that the composition of these toner resins have similar properties are nonobvious (See Shimano Col. 12 ll. 29-41). To summarize, it is not clear to the examiner how the obvious determination of a degree of calorific compatibility between components in a single toner, as in Shimano, applied to components of plural toners changes it to a nonobvious determination. As to independent claim 13, the applicant states claim 13 recites that the first and second toners comprise a hydrocarbon wax whereby the range of 5.8<W2<13.1 and W1<W1 denote the parts by mass content of the wax and where the secondary reference used is Nakagawa ((US 9,904,193 B2) IDS 10/09/2024,and that because Nakagawa explicitly teaches that Wa/Wb is intended to fall in a specific range in order to maintain a stable dispersion state of the hydrocarbon wax in one toner, it therefore does not teach or suggest controlling the characteristics and the relationship of the wax content of the first and second toners. (Applicant Arguments/Remarks 03/12/2026 pp. 14-15). The examiner maintains that the wax content as recited by claim 13 would be met by Nakagawa because it discloses wax content in toner as mass % and is per 100 parts by mass of a binder resin (Col 9 ll. 15-17) and further teaches that the W1 satisfies the relationship and range of 0.1</=Wb/Wa</=2.0 for the wax content and, therefore, it would have been obvious to one with ordinary skill in the art to use the expressions as recited: 5.8 < W2 < 13.l and W1<W2 since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art and the skilled artisan would be motivated to maintain the dispersibility of the wax within their binder formulations (Col. 10 ll. 53-57). 07-30-03-h AIA Claim Interpretation 07-30-03 AIA The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 07-30-05 The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. 07-30-07 This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: 1) "means for forming a first unfixed toner layer", 2) "means for forming a second unfixed toner layer", 3) "means for forming an image pattern", and 4) "means for adhering the sheets" in claim 11. Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof. If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function. Additionally, independent claim 12 recites in the alternative in the 4 th paragraph: “a stacked configuration of the image pattern for adhesion formed on a same sheet or a different sheet”. However, dependent claim 2 recites that “the second image pattern for adhesion is formed on the different sheet” where an alternative “or a different sheet” recited in claim 12 4 th paragraph is the antecedent basis. For the purposes of compact prosecution, the examiner will interpret that claim 2 is dependent on the alternative antecedent basis of “a different sheet”. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 12, 11 and 13 and dependent claims 2-6 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. 07-34-05 AIA Claim 12 recites the limitation " the sheets " in the 4th paragraph in the claim where it recites “adhering the sheets” . There is insufficient antecedent basis for this limitation in the claim. 07-34-05 AIA Claim 11 recites the limitation " the sheets " in the 4th paragraph of the claim where it recites “means for adhering the sheets” . There is insufficient antecedent basis for this limitation in the claim. 07-34-05 AIA Claim 13 recites the limitation " the sheets " in the 4th paragraph in the claim where it recites “adhering the sheets” . There is insufficient antecedent basis for this limitation in the claim. Claims 2-6 rejected under 35 U.S.C. § 112(b) through dependency on claim 12. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 2-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (JP2013043751A) with machine translation IDS 12/26/2024 in view of Shimano (US 9,785,071 B2) IDS 10/09/2024 . Regarding Claim 12 , Watanabe discloses a method for producing an adhered product (abs, paragraphs [0009] [0030] pattern is formed to form a sheet or a sheet group which is different in adhesive strength in one sheet bundle; where adhesion is also referred to as stapling) and further discloses forming on a first surface of a sheet a first unfixed toner layer using a first toner (paragraphs [0011] [0012]) adhesive toner pattern); forming on the first unfixed toner layer a second unfixed toner layer using a second toner (Figs. 4, 5 paragraphs [0019] [0036] image is transferred onto the paper P that fixes the image on the paper onto which the image has been transferred and an inversion unit that inverts the paper so that an image can also be formed on the back side of the paper; adhesive toner pattern Pc is formed on each of the opposing surfaces of the overlapping sheets of paper). forming an image pattern for adhesion on the sheet, by performing heating from a surface of the second unfixed toner layer to fix the first and the second unfixed toner layers to the sheet, the image pattern for adhesion having a fixed toner image derived from the second unfixed toner layer on a surface thereof; (Fig. 1 paragraph [0019] a fixing unit – 105 that fixes the image on the paper – P onto which the image has been transferred by applying heat and pressures and an inversion unit – 106 that inverts the paper – P so that an image can also be formed on the back side of the paper – P); and adhering the sheets to obtain an adhered product, by performing heating in a stacked configuration of the image pattern for adhesion formed on a same sheet or a different sheet (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of pater P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure). However, Watanabe does not disclose a testing procedure for determining the calorimetry of the first and second toner and the conditions for the testing as recited in claim 12. Shimano discloses a toner and a method for producing toner with a resin mixture A and a resin mixture B for at least two toners (Col. 12 ll. 42-67) and the degree of compatibility are compared between them using a method of thermal analysis with a differential scanning calorimeter (DSC). Shimano teaches that this degree of compatibility between the at least two toners that utilizes a calculation degree of compatibility A (%) = 100 – (100 X Δ H ( A ))/ (Δ H ( C ) X ( C )/100) & degree of compatibility B (%) = 100 – (100 X Δ H ( B ))/ (Δ H ( C ) X ( D )/100) where Δ H ( A ) and Δ H ( C ) represent an exothermic quantity (J/g) of a resin mixture A and Δ H ( B) and Δ H ( C ) represent an exothermic quantity (J/g) of a resin mixture B (Col. 2 ll. 32-59) where these exothermic quantities are from the calorific values obtained by DSC in the cooling step (ii) below with the execution of the two steps (i) and (ii): This is executed with a heating step carried out in the measurement range from 0 °C to 100 °C at a ramp rate of 10 °C/ min (Col. 13, ll. 3-13), which is encompassed by the recitation of claim 1 of a temperature raising step of raising a temperature from 20°C to 180°C at a rate of 10°C/min. and with a cooling step at holding for 15 minutes at 100 °C, and cooling is carried out at a ramp down rate of 10 °C/min from 100 °C to 0 °C (Col. 13, ll. 13-15) which is not explicitly encompassed by the recitation of claim 1 of a cooling step of holding at 180°C for 10 minutes, followed by cooling from 180°C down to 20°C at a rate of 10°C/min, where the H1 and the H2 defined above are calorific values in a range from 35 °C to 75 °C of an exothermic peak in the DSC curve obtained in this cooling step. Since these are close but not overlapping ranges, it would have been obvious to one having ordinary skill in the art at the time the invention was made to these parameters for the test, since the claimed ranges and the prior art ranges are close enough that one skilled in the art would have expected them to have the same properties and further being motivated to confirm that the composition of these toner resins have similar properties (Col. 12 ll. 29-41). Moreover, it would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Watanabe with the teachings of Shimano, whereby an adhesion method of fixing and adhering a first and second toner layer to form sheets in a stacked configuration, as disclosed by Watanabe, would include a thermal analyses in order to determine from calorimetry a calorific value which is derived from an exothermic peak of the cooling step and using a similar thermal analysis as found in Shimano, in order to determine if these first and second toners are compatible with each other. The skilled artisan would be motivated to pursue this sequence of steps, and the DSC analysis as taught by Shimano because this verifies that the at least two toners are compatible in their properties and, therefore, with each other (Col. 12 ll. 29-41). and that the toners are capable of low-energy fixing and fixability and have a satisfactory developing performance (Col. 2 ll. 16-22). Regarding Claim 2, the combination of Watanabe and Shimano disclose all the limitations of claim 12 and Watanabe further discloses that the second image pattern for adhesion is formed on the different sheet and the adhered product is obtained by heating in stacked configuration comprising the fixed toner image of the first image pattern for adhesion formed on the sheet, and the fixed toner image of the second image pattern for adhesion formed on the different sheet, whereby the sheet is adhered to the different sheet (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of paper P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure). Regarding Claims 3 and 4, the combination of Watanabe and Shimano disclose all the limitations of claim 12 but while Shimano discloses a DSC thermal analysis to ascertain the calorific value from the exothermic peak in the DSC curve, and provides comparative results as to each toner property as to degree of compatibility, and while Shimano discloses that the exothermic quantity of an exothermic peak (Δ H ( A) in J/g, is measured (Col. 13 ll. 5-17), Shimano is silent as to comparing the calorific values differences between the at least two toners such that (H2-H1) is at least 1.5 (J/g) or that the H1 is 2.0 to 18.0 (J/g). However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use a range of parameters for the DSC thermal analysis to evaluate the adhesion method of forming the first and second toners, as taught in Shimano, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. This is also the case with the range of exothermic peaks or calorific values for HA where obtaining this optimum value of a result effective variable involves only routine skill in the art. As stated above concerning Shimano, one would have been motivated to these ranges of result effective variables for the difference of claim 3 and the H1 value of claim 4 in order to determine the degree of compatibility for whether the two toners have close properties to be fixed with each other on the sheet (Col. 12 ll. 29-41). Regarding Claim 5 , the combination of Watanabe and Shimano disclose all the limitations of claim 12 and Watanabe and Shimano further disclose the first toner, and the second toner comprise a wax (Watanabe, paragraph [0036] wax components in the toner fused together) (Shimano, Col. 21 l. 59-Col. 22. l. 8 Preparation of Wax Dispersion). Regarding Claim 6 , the combination of Watanabe and Shimano disclose all the limitations of claim 12 and Shimano further discloses that the first toner is a black toner comprising a carbon black (Col. 10 l. 33). Regarding Claim 7 , Watanabe discloses a toner set (Fig. 9 paragraph [0027] so-called toner staple, which binds sheets with toner, considered the toner set) used in an adhesion method (abs, paragraphs [0009] [0030] where adhesion is also referred to as stapling) and further discloses forming a first image pattern for adhesion on a sheet, and forming a second image pattern for adhesion on the same or a different sheet (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of paper P1 or the top of paper – P3 and the bottom of paper – P1), the second image pattern for adhesion optionally being formed simultaneously with the first image pattern for adhesion (paragraphs [0011] [0012]) adhesive toner pattern formed in stack); and obtaining an adhered product by heating a stack of the first image pattern for adhesion and the second image pattern for adhesion formed on a same sheet or a different sheet, whereby when the second image pattern for adhesion is formed on the same sheet as the first image pattern for adhesion, that sheet is adhered to itself, and when the second image pattern for adhesion is formed on a different sheet than the first image pattern for adhesion, both sheets are adhered to each other (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets), wherein forming the first and second image patterns for adhesion each comprise forming on a first surface of a target sheet a first unfixed toner layer using a first toner, forming on the first unfixed toner layer a second unfixed toner layer using a second toner, and forming on the target sheet an image pattern for adhesion by performing heating from a surface of the second unfixed toner layer to fix the first and second unfixed toner layers to the target sheet (Fig. 9 paragraphs [0019] [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of paper P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure and heat is applied to the adhesive toner pattern portion Pc from the top of paper P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure) , wherein the first and second image patterns for adhesion each having on a surface thereof, a fixed toner image derived from the second unfixed toner layer (paragraph [0052] adhesive toner patterns Pc1, Pc2 and Pc3 have different toner area ratios) the toner set comprising: the first toner and the second toner separately (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of pater P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure), However, Watanabe does not disclose a testing procedure for determining the calorimetry of the first and second toner and the conditions for the testing as recited in claim 7. Shimano discloses a toner and a method for producing toner with a resin mixture A and a resin mixture B for at least two toners (Col. 12 ll. 42-67) and the degree of compatibility are compared between them using a method of thermal analysis with a differential scanning calorimeter (DSC). Shimano discloses a toner and a method for producing toner with a resin mixture A and a resin mixture B for at least two toners (Col. 12 ll. 42-67) and the degree of compatibility are compared between them using a method of thermal analysis with a differential scanning calorimeter (DSC). Shimano teaches that this degree of compatibility between the at least two toners that utilizes a calculation degree of compatibility A (%) = 100 – (100 X Δ H ( A ))/ (Δ H ( C ) X ( C )/100) & degree of compatibility B (%) = 100 – (100 X Δ H ( B ))/ (Δ H ( C ) X ( D )/100) where Δ H ( A ) and Δ H ( C ) represent an exothermic quantity (J/g) of a resin mixture A and Δ H ( B) and Δ H ( C ) represent an exothermic quantity (J/g) of a resin mixture B (Col. 2 ll. 32-59) where these exothermic quantities are from the calorific values obtained by DSC in the cooling step (ii) below with the execution of the two steps (i) and (ii): (i) This is executed with a heating step carried out in the measurement range from 0 °C to 100 °C at a ramp rate of 10 °C/ min (Col. 13, ll. 3-13), which is encompassed by the recitation of claim 1 of a temperature raising step of raising a temperature from 20°C to 180°C at a rate of 10°C/min. and (ii) with a cooling step at holding for 15 minutes at 100 °C, and cooling is carried out at a ramp down rate of 10 °C/min from 100 °C to 0 °C (Col. 13, ll. 13-15) which is not explicitly encompassed by the recitation of claim 1 of a cooling step of holding at 180°C for 10 minutes, followed by cooling from 180°C down to 20°C at a rate of 10°C/min, where the H1 and the H2 defined above are calorific values in a range from 35 °C to 75 °C of an exothermic peak in the DSC curve obtained in this cooling step. Since these are close but not overlapping ranges, it would have been obvious to one having ordinary skill in the art at the time the invention was made to these parameters for the test, since the claimed ranges and the prior art ranges are close enough that one skilled in the art would have expected them to have the same properties and further being motivated to confirm that the composition of these toner resins have similar properties (Col. 12 ll. 29-41). Moreover, it would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Watanabe with the teachings of Shimano, whereby an adhesion method of fixing and adhering a first and second toner layer to form sheets in a stacked configuration, as disclosed by Watanabe, would include a thermal analyses in order to determine from calorimetry a calorific value which is derived from an exothermic peak of the cooling step and using a similar thermal analysis as found in Shimano, in order to determine if these two toners are compatible with each other. The skilled artisan would be motivated to pursue this sequence of steps, and the DSC analysis as taught by Shimano because this verifies that the at least two toners are compatible in their properties and, therefore, with each other (Col. 12 ll. 29-41). and that the toners are capable of low-energy fixing and fixability and have a satisfactory developing performance (Col. 2 ll. 16-22). Regarding Claims 8 and 9, the combination of Watanabe and Shimano disclose all the limitations of claim 7 but while Shimano discloses a DSC thermal analysis to ascertain the calorific value from the exothermic peak in the DSC curve, and provides comparative results as to each toner property as to degree of compatibility, and while Shimano discloses that the exothermic quantity of an exothermic peak (Δ H ( A) in J/g, is measured (Col. 13 ll. 5-17), Shimano is silent as to comparing the calorific values differences between the at least two toners such that (H2-H1) is 1.5 (J/g) or more, or that the H1 is 2.0 to 18.0 (J/g). However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use a range of parameters for the DSC thermal analysis to evaluate the adhesion method of forming the first and second toners, as taught in Shimano, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. This is also the case with the range of exothermic peaks or calorific values for HA where obtaining this optimum value of a result effective variable involves only routine skill in the art. As stated above concerning Shimano, one would have been motivated to these ranges of result effective variables for the difference of claim 8 and the H1 value of claim 9 in order to determine the degree of compatibility for whether the two toners have close properties to be fixed with each other on the sheet (Col. 12 ll. 29-41). Regarding Claim 10 , the combination of Watanabe and Shimano disclose all the limitations of claim 7 and Shimano further discloses that the first toner is a black toner comprising a carbon black (Col. 10 l. 33). Regarding Claim 11, Watanabe discloses an adhesion apparatus (abs, paragraph [0001] stapling device and an image forming device), comprising: means for forming on a first surface of a sheet a first unfixed toner layer using a first toner (paragraphs [0011] [0012]) adhesive toner pattern); means for forming on the first unfixed toner layer a second unfixed toner layer using a second toner (Figs. 4, 5 paragraphs [0019] [0036] image is transferred onto the paper P that fixes the image on the paper onto which the image has been transferred and an inversion unit that inverts the paper so that an image can also be formed on the back side of the paper; adhesive toner pattern Pc is formed on each of the opposing surfaces of the overlapping sheets of paper), means for forming an image pattern for adhesion on the sheet by performing heating from a surface of the second unfixed toner layer to fix the first unfixed toner layer and second unfixed toner layers to the sheet (Fig. 1 paragraph [0019] a fixing unit – 105 that fixes the image on the paper – P onto which the image has been transferred by applying heat and pressures and an inversion unit – 106 that inverts the paper – P so that an image can also be formed on the back side of the paper – P), the image pattern for adhesion having a fixed toner image derived from the second unfixed toner layer on a surface thereof (paragraph [0052] adhesive toner patterns Pc1, Pc2 and Pc3 have different toner area ratios); and means for adhering the sheets to obtain an adhered product by performing heating a stacked configuration of the image pattern for adhesion formed on a same sheet or different sheets (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of pater P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure). However, Watanabe does not disclose a testing procedure for determining the calorimetry of the first and second toner and the conditions for the testing as recited in claim 12. Shimano discloses a toner and a method for producing toner with a resin mixture A and a resin mixture B for at least two toners (Col. 12 ll. 42-67) and the degree of compatibility are compared between them using a method of thermal analysis with a differential scanning calorimeter (DSC). Shimano teaches that this degree of compatibility between the at least two toners that utilizes a calculation degree of compatibility A (%) = 100 – (100 X Δ H ( A ))/ (Δ H ( C ) X ( C )/100) & degree of compatibility B (%) = 100 – (100 X Δ H ( B ))/ (Δ H ( C ) X ( D )/100) where Δ H ( A ) and Δ H ( C ) represent an exothermic quantity (J/g) of a resin mixture A and Δ H ( B) and Δ H ( C ) represent an exothermic quantity (J/g) of a resin mixture B (Col. 2 ll. 32-59) where these exothermic quantities are from the calorific values obtained by DSC in the cooling step (ii) below with the execution of the two steps (i) and (ii): This is executed with a heating step carried out in the measurement range from 0 °C to 100 °C at a ramp rate of 10 °C/ min (Col. 13, ll. 3-13), which is encompassed by the recitation of claim 1 of a temperature raising step of raising a temperature from 20°C to 180°C at a rate of 10°C/min. and with a cooling step at holding for 15 minutes at 100 °C, and cooling is carried out at a ramp down rate of 10 °C/min from 100 °C to 0 °C (Col. 13, ll. 13-15) which is not explicitly encompassed by the recitation of claim 1 of a cooling step of holding at 180°C for 10 minutes, followed by cooling from 180°C down to 20°C at a rate of 10°C/min, where the H1 and the H2 defined above are calorific values in a range from 35 °C to 75 °C of an exothermic peak in the DSC curve obtained in this cooling step. Since these are close but not overlapping ranges, it would have been obvious to one having ordinary skill in the art at the time the invention was made to these parameters for the test, since the claimed ranges and the prior art ranges are close enough that one skilled in the art would have expected them to have the same properties and further being motivated to confirm that the composition of these toner resins have similar properties (Col. 12 ll. 29-41). Moreover, it would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Watanabe with the teachings of Shimano, whereby an adhesion method of fixing and adhering a first and second toner layer to form sheets in a stacked configuration, as disclosed by Watanabe, would include a thermal analyses in order to determine from calorimetry a calorific value which is derived from an exothermic peak of the cooling step and using a similar thermal analysis as found in Shimano, in order to determine if these first and second toners are compatible with each other. The skilled artisan would be motivated to pursue this sequence of steps, and the DSC analysis as taught by Shimano because this verifies that the at least two toners are compatible in their properties and, therefore, with each other (Col. 12 ll. 29-41). and that the toners are capable of low-energy fixing and fixability and have a satisfactory developing performance (Col. 2 ll. 16-22) . 07-21-aia AIA Claim (s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (JP2013043751A) with machine translation IDS 12/26/2024 in view of Nakagawa (US 9,904,193 B2) IDS 10/09/2024 . Regarding Claim 13 , Watanabe discloses an adhesion method (abs, paragraphs [0009] [0030] where adhesion is also referred to as stapling): forming on a first surface of a sheet a first unfixed toner layer using a first toner (paragraphs [0011] [0012]) adhesive toner pattern); forming on the first unfixed toner layer a second unfixed toner layer using a second toner (Figs. 4, 5 paragraphs [0019] [0036] image is transferred onto the paper P that fixes the image on the paper onto which the image has been transferred and an inversion unit that inverts the paper so that an image can also be formed on the back side of the paper; adhesive toner pattern Pc is formed on each of the opposing surfaces of the overlapping sheets of paper); forming an image pattern for adhesion on the sheet by performing heating from a surface of the second unfixed toner layer to fix the first and second unfixed toner layers to the sheet (Fig. 1 paragraph [0019] a fixing unit – 105 that fixes the image on the paper – P onto which the image has been transferred by applying heat and pressures and an inversion unit – 106 that inverts the paper – P so that an image can also be formed on the back side of the paper – P), the image pattern for adhesion having a fixed toner image derived from the second unfixed toner layer on a surface thereof (paragraph [0052] adhesive toner patterns Pc1, Pc2 and Pc3 have different toner area ratios) ; and adhering the sheets to obtain an adhered product by performing heating a stacked configuration of the image pattern for adhesion formed on a same sheet or a different sheet (Fig. 9 paragraph [0027] papers – P1, P2, P3 are stapled together as a stack of sheets and heat is applied to the adhesive toner pattern portion Pc from the top of pater P1 or the top of paper – P3 and the bottom of paper – P1 using a heater – 301 or heaters – 301 and 302 to melt the toner with pressure), However, while Watanabe discloses that at least one toner does comprise wax components (paragraph [0036]), it is silent as to whether it is a hydrocarbon wax and whether there are a formulae or expressions as to the wax content. In the same field of endeavor, Nakagawa discloses a toner comprising a hydrocarbon wax (abs, Col. 2 l. 46-51) and further discloses when W1 (parts by mass) where W1 = Wa which is the mass % of the wax in the toner (Col. 10 l. 52) denotes a content of wax per 100 parts by mass of a binder resin (Col. 9 ll. 15-17 hydrocarbon wax used in an amount of 1.0 part by mass or more and 30.0 parts by mass or less with respect to 100 parts by mass of the binder resin), and Nakagawa further teaches that the W1 satisfies the relationship of 0.1</=Wb/Wa<=2.0 where Wb is the mass % content of the wax dispersant in the toner where the Wb/Wa falls within this range. (Col. 10 ll. 51-54). But Nakagawa does not disclose that W1 denotes a content of wax in the first toner and W2 denotes a content of wax in the second toner and satisfies the expression 5.8≤W2≤13.1 and W1<W2 when W1 (parts by mass) is a content of wax per 100 parts by mass of a binder resin in the first toner and W2 (parts by mass) is a content of wax per 100 parts by mass of a binder resin in the second toner. However, it would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified Watanabe with Nakagawa whereby the first toner and the second toner comprise a hydrocarbon wax in Watanabe but moreover each have a content of wax per 100 parts by mass of a binder resin in the first toner (W1) and a content of wax per 100 parts by mass of a binder resin in the second toner using the criteria and teachings of Nakagawa and it would be obvious to use the expression (3) and (4) above. Even though Nakagawa uses different criteria for the wax content than recited, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use the expressions (3) and (4) above to define the content of wax by mass of the binder resin in the first toner and the content of wax by mass of the binder resin in the second toner since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. One would have been motivated to determine these expressions for the wax content (W1 and W2) for the two toners of Watanabe for the purpose of maintaining the dispersibility of the wax within their binder formulations (Col. 10 ll. 53-57). Conclusion 07-40 AIA 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 WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /WAYNE K. SWIER/ Examiner, Art Unit 1748 . /Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748 Application/Control Number: 18/749,980 Page 2 Art Unit: 1748 Application/Control Number: 18/749,980 Page 3 Art Unit: 1748 Application/Control Number: 18/749,980 Page 4 Art Unit: 1748 Application/Control Number: 18/749,980 Page 5 Art Unit: 1748 Application/Control Number: 18/749,980 Page 6 Art Unit: 1748 Application/Control Number: 18/749,980 Page 7 Art Unit: 1748 Application/Control Number: 18/749,980 Page 8 Art Unit: 1748 Application/Control Number: 18/749,980 Page 9 Art Unit: 1748 Application/Control Number: 18/749,980 Page 10 Art Unit: 1748 Application/Control Number: 18/749,980 Page 11 Art Unit: 1748 Application/Control Number: 18/749,980 Page 12 Art Unit: 1748 Application/Control Number: 18/749,980 Page 13 Art Unit: 1748 Application/Control Number: 18/749,980 Page 14 Art Unit: 1748 Application/Control Number: 18/749,980 Page 15 Art Unit: 1748 Application/Control Number: 18/749,980 Page 16 Art Unit: 1748 Application/Control Number: 18/749,980 Page 17 Art Unit: 1748 Application/Control Number: 18/749,980 Page 18 Art Unit: 1748 Application/Control Number: 18/749,980 Page 19 Art Unit: 1748 Application/Control Number: 18/749,980 Page 20 Art Unit: 1748 Application/Control Number: 18/749,980 Page 21 Art Unit: 1748 Application/Control Number: 18/749,980 Page 22 Art Unit: 1748 Application/Control Number: 18/749,980 Page 23 Art Unit: 1748 Application/Control Number: 18/749,980 Page 24 Art Unit: 1748 Application/Control Number: 18/749,980 Page 25 Art Unit: 1748 Application/Control Number: 18/749,980 Page 26 Art Unit: 1748 Application/Control Number: 18/749,980 Page 27 Art Unit: 1748
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