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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/14/2026 has been entered.
Response to Arguments
Applicant's arguments filed 06/25/2026 have been fully considered but they are not persuasive. The Applicant has amended pending claim 1 to recite a median particle size D50 of 40-75 nm and an average RTA of 0.06 to 0.19 with an SF-1 of from 110-185. The Applicant has argued that by utilizing silica-polymer composite particles with a D50 of 40-75 toner cohesion percentage is unexpectedly suppressed. Figure 8 and paragraphs 101-103 of the instant specification are relied upon for support of this finding. However, Fomtichev also teaches a range of median particle sizes for the silica-polymer composite particles of 50 to 100 nm ([0061]) and also teaches a range of suitable RTA for the same particles of from 0.01 to 0.1 ([0060]). As such, the Applicant’s recited ranges are known in the prior art and would therefore be expected to inherently possess the same improvements in toner cohesion percentage. Fomitchev does not merely teach a broad range for the average diameter of said particles, but teaches narrower discrete ranges that are suitable for said particles. Broadly, Fomitchev teaches the range of 20 to 500 nm, but also teaches a narrower range within said range of 50 to 100 nm. As such, the Applicant’s recited range is known. The same is true of the RTA range in Fomitchev, wherein a broad range of 0 to about 1 is taught along with a narrower ranges such as from 0.09 to 0.1. Furthermore, Fomitchev pairs the average diameter and RTA properties and therefore teaches that said properties are desirable and necessary in forming the toner particles of Fomitchev. According to the MPEP, “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). (MPEP 2112 [R-3] I)”
The Examiner argued in the prior Office Action that Fomitchev teaches the same types of silica-polymer composite particles formed by the same method recited by the Applicant in pending claim 18. Furthermore, Fomitchev teaches the same narrow ranges of particle size and RTA recited by the Applicant in pending claim 1. As such, the Examiner maintains that the silica-polymer composite particles of Fomitchev would inherently possess the properties taught by the Applicant in the instant specification. Furthermore, according to the MPEP, “Where 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). (MPEP 2144.05 II A) For all of these reasons the Applicant’s arguments are not found to be persuasive and the previously applied rejections are maintained.
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.
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.
Claim(s) 1, 3-11 and 13-24 are rejected under 35 U.S.C. 103 as being unpatentable over Fomitchev et al. (US PGP 2014/0295341) in view of JP 2017-198929 (henceforth JP ‘929).
Fomitchev teaches metal oxide-polymer composite particles comprising a plurality of metal oxide particles in a polymer matrix (Abstract, [0008]). The metal oxide particles are taught to be surface-modified with a first hydrophobizing system comprising a bifunctional component through which the metal oxide particles are covalently bonded to the polymer matrix ([0043]). The polymer matrix may comprise a polymer or copolymer of the first hydrophobizing agent ([0015]). Fomitchev further teaches that the composite particles have an RTA of from 0.1 to about 1 ([0060]) and a volume average diameter of about 20 to 500 nm ([0061]) which is understood to read on and encompass the Applicant’s recited median particle size D50 ranges of 40-75 nm or 100 to 150 nm. Additionally, Fomitchev specifically teaches the narrower particle diameter ranges of 50 to 100 nm and 100 to 150 nm ([0061]). Fomitchev further teaches that the composite particles have a narrow particle size distribution ([0069]), which is understood to read on the Applicant’s unimodal size distribution recited in pending claim 3. Furthermore, the composite particles are taught to have roughness of from 1 to 3 ([0059]). Additionally, the composite particles may contain a second hydrophobic agent ([0043] and [0054]). In embodiments the composite particles comprise 31% by weight of the metal oxide particles ([0072]).
The bifunctional component of the metal oxide-component particles is taught to have the same formula recited by the Applicant in pending claim 9 ([0018-23]). The use of a second monofunctional hydrophobic agent is also taught by Fomitchev and said second hydrophobic agent is taught to have the same formula recited by the Applicant in pending claim 11 ([0045-49]). The Applicant teaches that the monofunctional component of the instant claims be selected from the same compounds as the second hydrophobic agents taught by Fomitchev (see [0015] and [0017] of the instant specification) and therefore the second hydrophobic agents of Fomitchev are understood to inherently have a solubility within the range recited by the Applicant in pending claim 17. The composite particles of Fomitchev are further taught to disposed on the surface of toner particles as external additives ([0063]). Furthermore, as the composite metal oxide particles of Fomitchev are taught to be the same as those disclosed by the Applicant, they would be expected to inherently possess the same tribocharging property with reference to a control toner as recited in pending claim 13 (compare Example 1 [0072] of Fomtichev with Example 1A [0087] of the instant specification). Additionally, Table 5 of Fomitchev demonstrates that tribocharge properties at HH and LL are at least 10% greater (compare Samples 1-3 with the colloidal silica (non-spherical) toner).
Fomitchev additionally teaches the same method of making the metal oxide particles recited by the Applicant in pending claim 18 (see [0039], [0043], [0045] and Examples 1-19 [0071-95]). The method is further taught to include the additional limitations recited in pending claims 20-24 (see [0039], [0043], [0045] and Examples 1-19 [0071-95] of Fomitchev as well as the discussion above). Fomitchev does not, however, teach a suitable SF-1 value for the composite external additive particles.
JP ‘929 teaches a toner comprising toner base particles and organic-inorganic composite fine particles as external additives (Abstract). The composite fine particles are taught to have shape factor SF-1 of 100 or more and 150 or less (see the “<Organic Inorganic composite fine particles>” section of the provided translation). JP ‘929 further teaches that when the composite fine particles have a shape factor within this range it becomes easy to moderately control the frictional charging of the toner (ibid). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have optimized the RTA and particle size of the composite particles of Fomitchev to values within the ranges taught by Fomitchev and to have imparted said composite particles with an SF-1 value within the range taught by JP ‘929.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 07/24/2026
