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 07/31/2025 have been fully considered but they are not persuasive.
The Applicant has amended independent claims 1 and 10 to further recite that, in the structural formulae (1-1) and (1-2), one of the four alkyl groups represented by R1 to R4 does not have a straight-chain portion having 6 or more carbon atoms and one of the four alkyl groups represented by R5 to R8 does not have a straight-chain portion having 6 or more carbon atoms. The independent claims were also amended to further recite that X/(X+Y) is 0.2 to 0.7, where X represents the number of moles of the first cation contained in the elastic layer (i.e., formulae (1-1) and (1-2)) and Y represents the number of moles of the second cation (i.e., formulae (2-1) and (2-2)).
First, the Applicant argues that Sekiguchi does not teach or suggest selecting two kinds of cations having “extremely limited structures” and combining them with the specified molar ratio. That is, the Applicant appears to argue that the teachings of Sekiguchi are too broad to render the claimed combination of cations as obvious.
The Examiner respectfully disagrees. As discussed in the previous Office action, Sekiguchi teaches that the cation includes ammonium-based ions represented by formula (2) (which corresponds to the claimed cations represented by structural formulae (1-1) and (2-1)) and phosphonium-based ions represented by formula (7) (which corresponds to the claimed cations represented by structural formulae (1-2) and (2-2)). Sekiguchi then teaches specific examples of the cations represented by formula (2), such as an N,N,N-trioctyl-N-methylammonium ion1, and cations represented by formula (7), such as a tributylmethylphosphonium ion2 (see [0039], [0054] of Sekiguchi and pg. 4 of the previous Office action). While Sekiguchi does not appear to teach the use of two cations in combination in the examples, Sekiguchi explicitly states that these cations may be used in combination (see [0055]). The absence of two or more cations in the examples does not constitute a teaching away from the explicit, broader teachings of Sekiguchi.
According to MPEP § 2123(I), “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” MPEP § 2123(II) further states that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
Sekiguchi appeared to be silent to teach or suggest a molar proportion of the cations when used in combination. Accordingly, Tanaka was relied upon for teaching this feature. Specifically, Tanaka taught that the volume resistivity could be improved by controlling the molar amount of a second cation to a first cation to be within the range of about 0.5 to 0.67 (see pg. 5 of the previous Office action). The Applicant does not appear to have addressed the teachings of Tanaka in this regard.
In any event, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Then, the Applicant argues that the data in the specification demonstrates the criticality of the claimed combination of cations. In support of this argument, the Applicant argues that the examples within the scope of claim 1 unexpectedly achieved the improved effect of lowering resistance.
The Examiner respectfully disagrees. Initially, the Applicant has not sufficiently explained the data in support of the allegation that the claimed combination of cations exhibits unexpectedly superior results in terms of the effect of lowering resistance. The Applicant has the burden of explaining the data, either in the specification or in a declaration, when arguing unexpected results with regard to the claimed invention (see MPEP 716.02(b)(I) and 716.02(b)(II)). Merely citing where the examples and comparative examples can be found in the specification is not sufficient to constitute a proper explanation of any alleged unexpected results.
According to MPEP 716.02(b)(I), “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.").
Finally, the Applicant argues that Sekiguchi is silent to teach or suggest the reduction of volume resistance achieved by the claimed invention. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim Rejections - 35 USC § 112
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.
Claims 1-4 and 7-11 are 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.
Claims 1 and 10 recite the limitation “wherein R1 to R8 each independently represent an alkyl group having 1 to 14 carbon atoms, provided that three of the alkyl groups represented by R1 to R4 and the other one does not have a straight-chain portion having 6 or more carbon atoms, and three of the alkyl groups represented by R5 to R8 have a straight-chain portion having 6 or more carbon atoms and the other one does not have a straight-chain portion having 6 or more carbon atoms;”.
It is unclear what “the other one” refers to in the limitation wherein “three of the alkyl groups represented by R1 to R4 and the other one does not have a straight-chain portion having 6 or more carbon atoms”. That is, the group that does not have a straight-chain portion having 6 or more carbon atoms could be interpreted as referring to an alkyl group that is not included in the groups represented by R1 to R4.
To overcome this issue, the limitation referring to the alkyl groups represented by R1 to R4 could be amended to recite, for example, “three of the alkyl groups represented by R1 to R4 have a straight-chain portion having 6 or more carbon atoms and the remaining alkyl group represented by R1 to R4 does not have a straight-chain portion having 6 or more carbon atoms”.
Similarly, for purposes of better clarity, the limitation referring to the alkyl groups represented by R5 to R8 could be amended to recite, for example, “three of the alkyl groups represented by R5 to R8 have a straight-chain portion having 6 or more carbon atoms and the remaining alkyl group represented by R5 to R8 does not have a straight-chain portion having 6 or more carbon atoms”.
Additionally, for purposes of clarity, it is recommended to amend claims 1 and 10 to specify that that, in the relationship (X/X+Y), Y represents the number of moles of the second cation contained in the elastic layer.
Claims 2-4, 7-9, and 11 are indefinite because the fully incorporate the subject matter of an indefinite claim.
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.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi (JP 2019012124 A) (previously cited), in view of Tanaka et al. (US PGP 2020/0172701 A1) (previously cited).
Sekiguchi teaches an electrophotographic member and an electrophotographic apparatus including the electrophotographic member ([0011], [0066]) (which reads on the corresponding limitations recited in instant claim 1 and claim 10). The electrophotographic member is taught to be an intermediate transfer belt having an endless belt shape ([0022], [0070]) (which reads on the corresponding limitation recited in instant claim 9). The electrophotographic member is taught to have a substrate (i.e., a base) and conductive resin layer (corresponding to the claimed elastic layer), wherein the conductive resin layer comprising an ionic liquid having a cation and an anion represented by a formula (1) ([0008], [0020]). The anion represented by the formula (1) is shown below:
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In the formula (1) above, m and n each independently represent an integer of 1 or more and 4 or less ([0010]) (which reads on the anion represented by (CmF2m+1 SO2)(CnF2n+1 SO2)N- recited in instant claim 2). In the examples, ionic liquids comprising bis(trifluoromethanesulfonyl)imide as an anion are used (see [0034] and ionic liquids 1-9 in Table 2-1 and Table 2-2) (which is identical to the anion represented by the formula (3) recited in instant claim 3).
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The cation is taught to include ammonium-based ions represented by formula (2) (which reads on the cation represented by formulae (1-1) and (2-1) recited in instant claim 1 and claim 10) and phosphonium-based ions represented by formula (7) (which reads on the cation represented by formulae (1-2) and (2-2) recited in instant claim 1 and claim 10) ([0035]). The cations represented by formulae (2) and (7) are shown below:
Each of the R groups in the formulae (2) and (7) are taught to independently be a straight-chain or branched-chain alkyl group having 1 to 8 carbon atoms ([0038]-[0039]) (which reads on the corresponding limitations recited in instant claim 4).
Sekiguchi teaches that two or more of the cations may be used at once ([0055]). A specific example of the cation represented by formula (2) is taught to include an N,N,N-trioctyl-N-methylammonium ion3, and a specific cation represented by formula (7) is taught to include a tributylmethylphosphonium ion4 ([0039], [0054]). In the examples, ionic liquids comprising methyltri-n-octyl ammonium (which contains a cation that reads on the claimed formula (1-1)) and tri-n-butylmethylammonium-bis(trifluoromethanesulfonyl)imide (which contains a cation that reads on the claimed formula (2-1)) were used (see [0039] and ionic liquids 1-2 in Table 2-1 and Table 2-2). Sekiguchi appears to be silent to teach that the conductive layer includes a silicon rubber. However, Sekiguchi teaches that any type of resin can be used as the matrix for the conductive layer, as long as it has an amorphous portion ([0026]-[0027]).
Tanaka teaches a curable silicone rubber mixture for an electrophotographic member used in an electrophotographic image forming apparatus ([0001]). Tanaka teaches that silicone resins are known to be used for intermediate transfer belts having an electroconductive elastic layer because they are excellent in following a surface shape of the recording medium ([0002]).
The curable silicone rubber mixture is taught to include an ammonium-based ion as a first cation, an ammonium-based ion as a second cation ([0046]-[0057], [0053]-[0061]) and a bis(trifluoromethanesulfonyl)imide ion as an anion ([0068]) (which reads on the corresponding limitation recited in instant claim 8). A molar amount of the second cation to the first cation is taught to be an equal amount or less, and more preferably a ½ amount or less ([0056]). Accordingly, the claimed ratio X/(X+Y) can be calculated as being from 0.5 to 0.675 ([0056]) (which falls within the range recited in instant claim 1 and claim 10). Furthermore, a total amount of the anion and the cation including the first cation and the second cation is taught to be 0.01 parts by mass to 10 parts by mass with respect to 100 parts by mass of the cured silicone rubber, in view of the volume resistivity of the cured product of the liquid silicone rubber mixture ([0070]).
Sekiguchi also appears to be silent to teach that the anion further includes Cl-. However, Sekiguchi teaches that more than one anion may be used ([0055]). Similarly to Sekiguchi, Tanaka teaches the use of bis(trifluoromethanesulfonyl)imide as a suitable anion. Tanaka further teaches that other suitable anions include those containing Cl-, such as AlCl4- and Al2Cl7-, may be used in combination with the bis(trifluoromethanesulfonyl)imide anion ([0068]-[0069]) (which reads on the corresponding limitation recited in instant claim 11).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used a silicone resin as the matrix resin for the conductive layer of Sekiguchi, and to have further used at least two of the cations represented by the formulae (2) and (7) in the molar amount taught by Tanaka, and an anion containing Cl-, in view of achieving a member that is excellent in following a surface shape of the recording medium and having a uniform electroconductivity. It would have also been obvious to have adjusted the total amount of the ions in the silicone resin to be within the range taught by Tanaka, in view of controlling the volume resistivity of the conductive layer. In doing so, the conductive layer of Sekiguchi modified by the teachings of Tanaka would be expected to satisfy the limitation recited in instant claim 7.6
Conclusion
THIS ACTION IS MADE FINAL. 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 Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (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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/B.A.E./Examiner, Art Unit 1737
10/30/2025
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
1 The N,N,N-trioctyl-N-methylammonium ion is a quaternary ammonium cation with a nitrogen atom bonded to one methyl group (C1 alkyl group) and three octyl groups (C8 alkyl), and corresponds to the claimed structural formula (1-1).
2 The tributylmethylphosphonium ion is a quaternary phosphonium cation with a phosphorus atom bonded to one methyl group (C1 alkyl group) and three butyl groups (C4 alkyl), and corresponds to the claimed structural formula (2-2).
3 The N,N,N-trioctyl-N-methylammonium ion is a quaternary ammonium cation with a nitrogen atom bonded to one methyl group (C1 alkyl group) and three octyl groups (C8 alkyl), and corresponds to the claimed structural formula (1-1).
4 The tributylmethylphosphonium ion is a quaternary phosphonium cation with a phosphorus atom bonded to one methyl group (C1 alkyl group) and three butyl groups (C4 alkyl), and corresponds to the claimed structural formula (2-2).
5 1 mole first cation / (1 mole first cation + 1 mole second cation) = 0.51 mol first cation / (1 mole first cation + ½ mole second cation) = 0.67
6 The instant specification discloses that 5.2 parts by mass of the ammonium-based cation 1 equates to 8.0 mmol based on 100 g of silicone rubber, and 0.76 parts by mass of the ammonium-based cation 2 equates to 2.0 mmol based on 100 g of silicone rubber (see [0040] of the instant specification). Since Tanaka’s range is limited to 10 parts by mass of the total amount of the cations, the amount of cations would be expected to be less than the upper range of 18 mmol.