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 filed 02/06/2026 have been fully considered are persuasive in overcoming the previously applied rejections. The Applicant has amended pending claims 1, 13 and 18 to further limit the ranges of RTA values and to specify an SF-1 value of the composite particles. As Fomitchev does not teach an SF-1 value for the metal oxide composite particles the rejections relying upon Fomitchev are overcome. The Applicant has further argued that the RTA range of Fomitchev is broader than the recited range and that unexpected improvements are derived from the Applicant’s amended range. However, the Applicant has provided no data to substantiate this position. According to the MPEP, objective evidence must be factually supported. In order to be considered, any objective evidence must be accompanied by experimental data that corroborates the objective results (MPEP 716.01(c)). Further search has revealed additional prior art as set forth below. As the Applicant has not supplied any data to corroborate the alleged improvements based on an RTA value within the range of 0.06 to 0.19 over the broader range of 0.1 to 1.0 taught by Fomitchev, or based on particle size ranges of either 40 to 75 nm or 100 to 150 nm over the broader range of 20 to 500 nm taught by Fomtichev the disclosure of Fomitchev is still relied upon as set forth below.
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
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571)272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 04/24/2026
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