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, see the Response, filed 7/29/2025, with respect to the rejections of claims 1-11, and 13-20 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made below.
The obviousness-type double patenting rejection has been overcome, and as such it is withdrawn.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-4, 7- 9, 13-14, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ogaki (Japanese Patent Application Publication No. 2007-108239) in view of Shimizu (US Patent Application Publication No. 2019-0025721) and further in view of Sekiya (US Patent Application Publication No. 2021-0165337).
Ogaki teaches an electrophotographic photosensitive member ([0061]) comprising a conductive substrate (line 2 support, [0063] a conductive support) and a photosensitive layer (line 2) containing a charge generating material (line 5), a charge transporting material (line 5), and a binder resin including a polyarylate resin including repeating units ([0020-43]). The repeating unit (1) recited in pending claim 1, wherein R1 and R2 each represent a methyl group and X represents a divalent group represented by formula (X1), and repeating unit (2) recited in pending claim 1 are shown in Table 3 of Ogaki ([0029] structure (1-11)). Repeating units (3) and (4) recited in pending claim 1 are shown in Table 6 of Ogaki ([0036] structure (3-10)).
Ogaki does not teach a combination of the repeating units (1-11) and (3-10) in a single embodiment, however, Ogaki does teach that they are suitably combined ([0033-34]). Ogaki teaches combinations of one structure represented by (1-#) and one structure represented by (3-#) in Table 12, examples 11-17. Ogaki teaches that the repeating units (1-11) and (3-10) are functionally equivalent to those utilized in the examples and would therefore be expected to perform similarly to the repeating units used in the embodiments cited in examples 11-17. A reference is not confined to its embodiments, but is available as prior art for all that it discloses. Ogaki teaches that (1-11) and (3-10) may be combined into a single embodiment ([0020-43]). Therefore, it would have been obvious to any person of ordinary skill in the art to before the effective filing date of the instant application to perfect the polyarylate resin by optimizing the combinations of (1-#) and (3-#) through routine experimentation.
Ogaki discloses a molar ratio A:B for the repeating groups (1-#):(3-#), but is silent regarding a suitable range for the ratio ([0033]). Table 12 teaches embodiments of ratios A:B of a repeating unit (1-#) to a repeating unit (3-#) between 7:3 and 5:5. With disclosed ratios 7:3 and 5:5, a ratio in between of 6:4 would likewise be expected to be suitable. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to do routine experimentation to discover the optimum ratio A:B of the repeating groups. For the instant case, if a ratio of 6:4 was to be used, the second percentage, representative of the dicarboxylic acid component in unit (1-11), would be 60%, and the fourth percentage, representative of the dicarboxylic acid component in unit (3-10), would be 40%. Likewise, the first percentage, representative of the diol component of unit (1-11), would be 60%, and the third percentage, representative of the diol component of unit (3-10), would be 40%. The third and fourth percentages each being 40% satisfies the percentage limitations of claims 1, 8-9, and 13. For claim 1, the third percentage is greater than 0% and less than 50%, and the fourth percentage is at least 35% and less than 70%. For claim 8, the fourth percentage is at least 40% and less than 70%. For claim 9, the third percentage is at least 30% and less than 50%. And for claim 13, the third percentage is greater than 30% and less than 50%. This embodiment of the polyarylate resin does not include a repeating unit represented by the formula (5) in claim 14 of the instant application.
Ogaki teaches an image forming apparatus (Fig. 1, [0088-93]) comprising an image bearing member (the electrophotographic photosensitive member, 1), a charger (3), an exposure device (4), a development device (5), and a transfer device (6). A process cartridge may include the photoreceptor (1), a charging unit (3), a developing unit (5), and a transfer unit (6) ([0093], Fig. 1).
Ogaki is silent regarding the viscosity average molecular weight of the polyacrylate resin, and a strain at break, and scratch depth resistance of the photosensitive layer. Shimizu teaches a photosensitive member containing a charge generating material, a hole transport material, an electron transport material, and a binder resin (Abstract). The binder resin has a viscosity average molecular weight of 25,000 – 50,000 in order to improve abrasion resistance and anti-fogging performance ([0072]). The strain at break of the photosensitive layer is 4.9 – 13.0%, and preferably at least 12.5% to further improve abrasion resistance and anti-fogging performance ([0028]). The scratch resistance depth of the photosensitive layer is no greater than 0.50 µm in order to improve anti-fogging performance ([0033]). The ratio of the mass of the binder resin to the mass of the photosensitive layer of the example photoreceptors is 100 parts binder resin to 202 total parts in the layer, or 0.50 ([0156-158]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the photoreceptor of Ogaki in order to have included the viscosity average molecular weight of the binder resin, the strain at break, and the scratch depth resistance of the photosensitive layer, in order to have gained the benefits of improved abrasion resistance and anti-fogging performance.
Ogaki is silent regarding specific electron transport materials for use in the photoreceptor, therefore a person of ordinary skill in the art would be motivated to look to the prior art for a suitable compound. Sekiya teaches an electrophotographic photosensitive member containing an electron transport compound ([0134]). The electron transport compound may be a compound represented by general formula (4), (5), (6), (7), (8), (10), or (12), corresponding to the general formulas (12), (11), (14), (17), (13), (18), and (15) of the instant application ([0146-147]). Specific compound (12-1) of Sekiya is the same as compound (E-8) of the instant application, and is representative of formula (15) of the instant application ([0148]). Exemplary photosensitive member D-28 uses compound (12-1) as the only electron transport material (Table 3). These electron transport materials may improve the photosensitive member, suppressing the exudation of the wax on the surface of the toner ([0146] line 6-9). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the photoreceptor of Ogaki to have included the electron transport material of Sekiya to suppress the exudation of the wax on the surface of the toner when printing.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ogaki, Shimizu, and Sekiya as applied to claims 1, 3-4, 7- 9, 13-14, and 19-22 above, and further in view of Maruo (Japanese Patent Publication No. 6,565,861).
The complete discussions of Ogaki and Shimizu above are included herein. Ogaki and Shimizu do not teach a Vickers hardness.
Maruo teaches a photoreceptor that has excellent fogging resistance ([0007]). The photosensitive layer has a Vickers hardness of at least 18.0 HV ([0008]). Similarly to Shimizu, Maruo teaches a scratch depth resistance of 0.50 µm or less ([0008]), and a viscosity average molecular weight of the binder resin of 35,000 – 40,000 ([0094] line 1-4). Table 1 shows all of these properties, including the Vickers hardness between 19.0 and 23.5, which results in a photoreceptor having excellent fogging resistance with a fogging density of 0.010 or less ([0190]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the photoreceptor of Ogaki and Shimizu to have included the Vickers hardness of Maruo in order to ensure excellent fogging resistance.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ogaki, Shimizu, and Sekiya as applied to claims 1, 3-4, 7- 9, 13-14, and 19-22 above, and further in view of Shimizu (US Patent No 10,359,713).
The complete discussion of Ogaki above is included herein. Ogaki is silent on the polyarylate resin having a particular end group.
Shimizu teaches a polyarylate resin that includes a terminal group (13) (Col. 26, line 40) in which a chain aliphatic group is substituted by at least one halogen (fluoro) group (Col 26, lines 42-43). Including a terminal group substituted by a fluoro group onto a main chain containing no halogen atoms inhibits the generation of white spots in the formed image, the compatibility of the polyarylate resin with the hole transport material improves, the crystallization of the photosensitive layer can be inhibited, and the crack resistance and mechanical strength of the photosensitive layer can be improved (Col. 23, line 19-33). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the polyarylate resin of Ogaki to have included the fluoro substituted end group of Shimizu in order to gain these benefits.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ogaki, Shimizu, and Sekiya as applied to claims 1, 3-4, 7- 9, 13-14, and 19-22 above, and further in view of Azuma (US Patent Publication No 2018-0246402).
The complete discussion of Ogaki above is included herein. Ogaki is silent regarding a repeating unit of formula (1) where R1 and R2 each represent a hydrogen atom and X represents a divalent group represented by the formula (X2).
Azuma teaches a polyarylate resin ([0040]) with a repeating unit (1-11), equivalent to (1) of the instant application, where each R1 represents a hydrogen atom, R2 represents a methyl group, and R3 represents an ethyl group (Pg. 5, resins R-2, R-3, R-5, and R-6). Azuma also teaches the diol component of the repeating unit (1-11) of Ogaki (Pg. 4-5, resins R-1, R-7) and shows that the two are interchangeable. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the diol component in repeating unit (1-11) of Ogaki to include the repeating unit disclosed in Azuma. Modifying Ogaki to include the teachings of Azuma would be useful to make the photosensitive layer have excellent abrasion resistance (Azuma, [0046]).
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ogaki, Shimizu, and Sekiya as applied to claims 1, 3-4, 7- 9, 13-14, and 19-22 above, and further in view of Kitaguchi (WIPO Patent Application Publication No. 2018-079118).
The complete discussion of Ogaki above is included herein. Ogaki teaches a charge transport material ([0077]) that can include many different types of compounds, such as triarylamine compounds and styryl compounds, but is silent regarding any specific compounds. Since the charge transport material disclosed in Ogaki is not specific one would be motivated to look for these materials in the prior art.
Kitaguchi teaches a hole transport material ([0084]) which contains a compound represented by general formula (10), (11) or (12). General formula (10), (11), and (12) of Kitaguchi correspond to general formula (23), (24), and (25) of pending claim 16. Kitaguchi further teaches specific hole transport materials. Hole transport materials (HTM-1), (HTM-2), (HTM-5), (HTM-6), and (HTM-9) corresponds to (H-1), (H-2), (H-9), (H-8), and (H-11) of pending claim 18, respectively. These hole transport materials improve the electrical characteristics, and particularly the sensitivity characteristics, as well as the filming resistance and abrasion resistance of the photoreceptor ([0120]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the photoreceptor of Ogaki and Shimizu to have included the hole transport material of Kitaguchi in order to gain these benefits.
Allowable Subject Matter
Claim 12 is 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
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.
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/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 09/24/2025