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 Amendment
Claims 1 has been amended to reflect the limitation regarding the monomer unit of formula (1-1), which has been moved from amended Claims 6 and 7. Claim 1 has also been amended to reflect a new limitation regarding the viscosity-average molecular weight of the polyarylate binder resin. Claims 4 and 5 have been cancelled, and their limitations are now reflected in new Claims 21 and 22, respectively. Claim 8 has been cancelled, and its limitation is now reflected in new Claim 25. Claims 8 and 9 are also cancelled. New Claims 18 – 20 have been added, as have new Claims 23 and 24, which reflect the limitations of amended Claims 6 and 7, respectively.
Response to Arguments
Applicant's arguments filed 2025-09-30 have been fully considered but they are not persuasive.
Applicant argues that Ishino does not address the molecular weight of the polyarylate binder resin, which relates to a limitation added to amended Claim 1. However, Ishino does state a preferred viscosity-average molecular weight of the polyarylate resin, and the relationship of that parameter to improved abrasion resistance of the photosensitive member ([0112]) (see updated rejection below). In addition, where Ishino teaches a diol monomer unit having the same structure as instant formula (1-1) (as discussed in the prior office action and in the updated rejection below), the polyarylate comprising a monomer unit of formula (1-1) and having a molecular weight in a specific range, as claimed in amended Claim 1, is covered. For these reasons, the rejection of Claims 1 – 3, 6, 7, and 11 - 17 is not withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent Claim 1 states “the polyarylate resin includes repeating units represented by formulas (1), (2), (3), and (4)”, and then states “the repeating unit represented by formula (1) is a repeating unit represented by formula (1-1)”. Thus, Claim 1 already contains the same limitation as that stated in dependent Claim 18, specifically “the repeating units constituting the polyarylate resin consist of the repeating units represented by formula (1-1), (2), (3), and (4)”.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 – 3, 6, 7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ishino et al (US PGP 2020/0041923) in view of Mizushima et al (US PGP 2011/0206411).
Ishino teaches an electrophotographic photosensitive member comprising a conductive substrate and a single-layer photosensitive layer ([0005]). The photosensitive layer contains a charge generating material, a hole transport material, an electron transport material, and a binder resin ([0045]). The binder resin preferably includes a polyarylate resin ([0099]).
Ishino teaches that the polyarylate resin is composed of alternating diol and dicarboxylic acid units, the generic dimeric structure of which is depicted in general formula (20) ([0099]). The photosensitive member of Ishino may contain a single binder resin, or multiple different binder resins ([0098]).
The diol portion has substituents R20 and R21, analogous to R1 and R2 in monomer unit (1) of the instant application, which may independently be H or a C1 - C4 alkyl group. The R22-C-R23 group of formula 20 is analogous to the linking group X in monomer unit (1) of the instant application ([0100]). R22 and R23 may independently be H, phenyl, or a C1 - C4 alkyl group, covering linker (X2) of the instant application. Alternatively, R22 and R23 may together form a ring of structure W, which is identical to linker (X1) of the instant application ([0101]). Together, these limitations cover monomer unit (1) of the instant application. Specifically, where R20 and R21 are both methyl, and where R22-C-R23 forms a six-membered ring, that diol unit is the same as instant formula (1-1). Ishino points out preferred dimers (20-a) and (20-b) ([0105] and page 12), each having a diol monomer unit identical to monomer unit (1-1).
The dicarboxylic acid portion has a group Y between the backbone carbonyls, which may be Y1 (identical to (W1) of the instant application), or Y3 (identical to (W2) of the instant application) ([0100]), together fully covering monomer unit (2). Alternatively, Y may be Y2, which describes a dicarboxylic acid identical to monomer unit 4 of the instant application (1,4-naphthalenedicarboxylic acid).
The polyarylate resin may contain only one, or may contain more than one different repeating units of the dimer represented by formula 20 ([0103]).
Ishino teaches that the viscosity-average molecular weight of the binder resin (a polyarylate resin) is preferably 10,000 – 80,000 ([0112]), encompassing the range stated in Claim 1. By controlling the viscosity-average molecular weight of the binder resin in this range, Ishino teaches that improved abrasion resistance and facility of formation of the photosensitive member are achieved.
Ishino does not appear to teach diol covering monomer unit (3) of the instant application.
Mizushima teaches an electrophotographic photoreceptor containing a conductive substrate and a photosensitive layer ([Abstract]). The photosensitive layer may be a single layer ([0263]), and may comprise a binder resin, a charge-generating substance, and a charge-transporting substance ([0346]). The photosensitive layer at least contains a polyarylate resin ([0265]). The polyarylate resin preferably has a structure of repeating units of a dimer described by Formula 1, which contains alternating units of a diol monomer and a dicarboxylic acid monomer ([0267]). A single resin may be used, or multiple resins may be used in combination. In addition, example Resin 1 (page 46) and example Resin 4 (page 47) demonstrate that a single resin may contain more than one type of diol unit, and may contain more than one type of dicarboxylic acid unit.
The diol portion has a structure -O-Ar1-X-Ar2-O-, wherein Ar1 and Ar2 are preferably 1,4-phenylene groups ([0270]) with optional independent substituents ([0271]). The linker X may be a single bond, an oxygen, or a divalent linker of the form CRaRb ([0276]), wherein Ra and Rb can independently be H, an alkyl group, or together form a ring ([0277]).
The dicarboxylic acid portion has a structure -C(O)-Ar3-(Y-Ar4)k-C(O)-, wherein Ar3 and Ar4 share the same independent limitations as Ar1 and Ar2 above ([0269]), Y shares the same limitations as X above ([0276]), and k is an integer of 0 or greater ([0268]).
Where groups Ar1 and Ar2 of the diol portion are both 1,4-phenylene groups without further substitution, and X is a single bond, monomer unit (3) of the instant application is covered. Mizushima points out preferred dimers, one of which (page 18, [Formula 5], bottom structure) represents diol monomer unit (3) joined with dicarboxylic acid monomer unit (2-2) of the instant application.
Mizushima teaches that the arylene groups which make up the dimer of Formula 1 may be combined in any desired manner or ratio ([0270]).
Therefore, it would have been obvious to one of skill in the art before the effective filing date of the instant application to undertake routine experimentation and prepare the photosensitive member taught by Ishino and incorporate the diol of Mizushima, resulting in a photosensitive member satisfying the requirements of Claim 1.
Ishino teaches a preferable hole transport material represented by formula (HTM-1) ([0096]), which is identical to hole transport material (H-1) of the instant application, and which also reads on general hole transport material formula (23) of the instant application, satisfying Claim 2 and Claim 3.
Ishino’s monomer (20-a) contains a dicarboxylic acid portion identical to monomer unit (2-1), satisfying Claim 6, and (20-b) contains a dicarboxylic acid portion identical to monomer unit (2-2), satisfying Claim 7.
Ishino points out electron transport materials (ETM-1), (ETM-2), and (ETM-3) ([0118]) and page 14), which are identical to (E-1), (E-7), and (E-3), respectively, of the instant application, satisfying Claim 11 and Claim 12.
Claims 13 - 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ishino et al (US PGP 2020/0041923) in view of Mizushima et al (US PGP 2011/0206411), further in view of Horiuchi et al (US PGP 2011/0287353).
The discussion of Ishino and Mizushima above is incorporated herein.
Horiuchi discloses a process cartridge, which includes an electrostatic image bearing member (analogous to the electrophotographic photosensitive member of the instant Claim), and at least one of a charging means, a developing means, a transferring means, a cleaning means, and a discharging means ([0083]). Since the process cartridge configured as taught by Horiuchi could be used with any photosensitive member, it would have been obvious to one of skill in the art before the effective filing date of the present application to assemble the process cartridge of Horiuchi and include the photosensitive member taught by Ishino and Mizushima, resulting in the process cartridge of Claim 13.
Horiuchi also teaches that the process cartridge is detachably attached to the body of an image forming apparatus ([0084]). The image forming apparatus includes at least an electrostatic image forming means (analogous to the light exposure device of the instant Claim) ([0081]), in addition to the components included with the process cartridge. The process cartridge of Horiuchi may also include a cleaning means and/or a discharging means (analogous to the static eliminator of the instant Claim) ([0083]). Horiuchi teaches that the charging unit is preferably a charge roller ([0319]). Horiuchi teaches that the toner in the development unit is charged by friction between the toner and the carrier as they are mixed and agitated ([0327]). Since the image forming apparatus configured as taught by Horiuchi could be used with any photosensitive member, it would have been obvious to one of skill in the art before the effective filing date of the instant application to assemble the image forming apparatus of Horiuchi and include the photosensitive member taught by Ishino and Mizushima, resulting in the image forming apparatus of Claim 14, Claim 15, Claim 16, and Claim 17.
Claims 19 – 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ishino et al (US PGP 2020/0041923) in view of Mizushima et al (US PGP 2011/0206411), further in view of Maruo et al (US PGP 2018/0046100).
The discussion of Ishino and Mizushima above is incorporated herein.
Maruo teaches an electrophotographic photosensitive member including a conductive substrate and a single-layer photosensitive layer. The photosensitive layer contains a charge generating material, a hole transport material, an electron transport material, and a binder resin (Abstract). The binder resin contains a polyarylate resin ([0006]). Maruo teaches that the hole transport material may conform to (HTM6), reading on instant formula (22), or (HTM7), reading on instant formula (21) ([0040], [0046], [0047]). Hole transport material (HTM6-1) is specified, reading on instant (H-4), as well as (HTM7-1), reading on instant (H-6).
In preparing the photosensitive member as taught by Ishino and Mizushima (described above), a practitioner of ordinary skill in the art would be taught by Maruo that hole transport materials of the form (HTM6-1) or (HTM7-1) are preferable as part of a single-layer photosensitive layer comprising a polyarylate binder resin. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to prepare the photosensitive member of Ishino and Mizushima, incorporating the hole transport material of Maruo, resulting in a photosensitive member satisfying Claims 19 – 25.
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 Grant S Seiler whose telephone number is (571)272-3015. The examiner can normally be reached 9:30 - 5:30 Pacific.
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/GRANT STEVEN SEILER/Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 11/25/2025
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