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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026-02-13 has been entered.
Response to Amendment
Alongside the RCE filed 2026-02-13 (see above), Applicant has filed amendments to the claims and remarks regarding the alleged patentability of those claims in view of the final rejection dated 2025-11-13. Previously presented Claims 2, 9, and 10 have been cancelled. Claims 1 and 7 have been amended to reflect the limitations of cancelled Claim 10. Claims 3 – 6 and 8 remain as previously presented. New Claims 11 and 12 have been added. Thus, Claims 1, 3 – 8, 11, and 12 are pending. No new subject matter has been added.
Response to Arguments
Applicant's arguments filed 2026-02-13 have been fully considered but they are not persuasive. Applicant argues, in part, that the combination of references cited in the prior office action (final rejection dated 2025-11-13) would fail to make obvious the invention as presently claimed, due to M. Ishii’s teaching of “a more homogenized film”, and the difference of the evaluations described in that disclosure from those carried out in the present invention. However, the motivation, as stated in the prior office action, for incorporating the film material taught by M. Ishii as a second layer of a photoreceptor is to improve moisture resistance, a teaching found in the disclosure of M. Ishii. It is therefore irrelevant to the teachings borrowed by the hypothetical practitioner of skill in the art which evaluations were carried out by the inventors who provided those teachings. In addition, it would have been clear to one of ordinary skill in the art that M. Ishii’s teaching of “a more homogenized film” was not meant to describe the structural homogeneity of the film with regard to the content of externally provided metal oxide particles. Instead, the homogeneity taught by M. Ishii appears to be that of the chemical components of the film and their degree of condensation.
Further, Applicant argues that the combination of references cited in the prior office action would not necessarily result in the distribution of metal oxide particles in layer (2) as required by the presently amended claims. Applicant describes three possible regimes of metal oxide particles which may exist in the undercoat layer, and states only that regime (a) can be obtained “by devising the structure of Layers (1) and (2) and the conditions for forming Layer (3).” No further description is given of the properties of layers (1) or (2), or of the layer-forming conditions of layer (3), which affect the resultant metal oxide particle distribution. As described in the prior office action, and in the rejection below, the structures of layers (1) and (2) are made obvious by the cited prior art. As also discussed in the rejection below, the Specification of the instant application gives no guidance as to how this gradient of metal oxide particle content in layer (2) can reliably be achieved. This issue gives rise to the rejection under 35 U.S.C. §112(a) below. In addition, given the lack of such guidance, description, or teaching, the rejection under 35 U.S.C. §103 below is based in part on routine experimentation, which would reasonably be performed by one of ordinary skill in the art.
Claim Rejections - 35 USC § 112
Claims 1, 3 – 8, 11, and 12 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
In particular, Claims 1 and 7 each recite the limitation that the amount of metal oxide contained in a region of layer (2) adjacent to the interface of layer (1) and layer (2) is greater than the amount of metal oxide contained in a region adjacent to the surface of layer (2) opposite that interface. Claims 3 – 6, 8, 11, and 12 are dependent, either directly or indirectly, on Claim 1, and so also reflect this limitation. However, the descriptions of the metal oxide distribution in the undercoat layers of preparative examples (Specification, Table 1 and Table 3) do not clearly support this claimed feature. The description “homogeneously distributed, but a large amount thereof was present near the interface with base” does not indicate a difference in the amount of metal oxide particles in the regions adjacent to either surface of layer (2) (that is, the undercoat layer).
Such a description is at least ambiguous as to the relative amounts of metal oxide particles in the regions adjacent to the surfaces of the undercoat layer, since there is apparently a “large amount” of metal oxide particles in the region adjacent to the interface of the undercoat with the base, but no indication is given of the amount of metal oxide particles in the region adjacent to the opposite surface of the undercoat layer, which may also be “a large amount”. In that case, there would not be a difference, as claimed, in the relative amounts of metal oxide particles in the regions adjacent to each of the surfaces of layer (2).
Alternatively, this description is self-contradictory if, as claimed, the amount of metal oxide particles in a region adjacent to the interface of layer (2) and layer (1) is larger than the amount of the metal oxide particles in the region adjacent to the opposite face of layer (2). By definition, the metal oxide particles would not be “homogeneously distributed”. Therefore, it would not be clear to a practitioner of ordinary skill in the art whether the present invention as described in the Specification possessed, as claimed, a larger amount of metal oxide particles in a region adjacent to the interface of layer (2) with layer (1) than in a region adjacent to the opposite surface of layer (2).
Claims 1, 3 – 8, 11, and 12 are rejected under 35 U.S.C. §112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In particular, Claims 1 and 7 each recite the limitation that the amount of metal oxide contained in a region of layer (2) adjacent to the interface of layer (1) and layer (2) is greater than the amount of metal oxide contained in a region adjacent to the surface of layer (2) opposite that interface. Claims 3 – 6, 8, 11, and 12 are dependent, either directly or indirectly, on Claim 1, and so also reflect this limitation. However, the Specification gives no guidance as to how this gradient of metal oxide particle content in layer (2) can reliably be achieved. The metal oxide particles in the undercoat layer (that is, layer (2)) are described as being provided by the aerosol powder introduced by the AD method during surface layer formation ([0042]), but no details are given as to what factors affect the distribution of metal oxide particles within the undercoat layer, or how a particular distribution can be reliably achieved.
In inspecting the disclosed procedures for forming the surface layers of the preparative examples, no reliable pattern can be discerned which gives rise to the claimed distribution of metal oxide particles in the undercoat layer. That is, the distribution of metal oxide particles in the undercoat layer does not appear to reliably depend on the type of metal oxide particles; the aerosol gas flow rate; the degree of vacuum inside the film formation chamber; the angle between the nozzle and the incipient photoconductor; the distance of the nozzle from the incipient photoconductor; or the coating speed.
Without further guidance or instruction as to which settings or parameters in the surface layer formation step give rise to the claimed distribution of metal oxide particles in the undercoat layer, a practitioner of ordinary skill in the art would not be able to reliably prepare a photoconductor possessing that distribution without recourse to extensive and undue experimentation.
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.
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 – 8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo et al (WO 2019/181176) in view of Y. Ishii et al (WO 2020/022385) (references to English machine translation provided herein), further in view of M. Ishii et al (US PGP 2017/0247571).
Kubo teaches a photoelectric conversion device, analogous to a laminate, including a support, a charge transporting layer, and a ceramic film ([0013]). One embodiment of a photoelectric conversion device may be an electrophotographic photoconductor. The charge-transporting layer contains an organic charge transport material or a sensitizing dye. The ceramic film is formed from ceramic, which may be a metal oxide ([0020]). Kubo teaches that the preferred method of producing the ceramic film is aerosol deposition ([0024]). The charge transport layer having an organic charge transport material of Kubo is analogous to the layer (1) including an organic material of the instant application. The ceramic film of Kubo is analogous to the layer (3) including a metal oxide of the instant application. Kubo does not appear to teach a layer having a siloxane compound and a metal oxide which is in contact with both the charge transport layer and the ceramic film.
Y. Ishii (WO 2020/022385) teaches an electrophotographic photoreceptor ([0001]), which comprises a photosensitive layer located on a conductive substrate, and a surface layer located on the photosensitive layer ([0018]). Kubo teaches that the photosensitive layer may have a first and second surface layer ([0019]). Kubo teaches that the surface layer of the photoreceptor imparts improved moisture resistance, electrical voltage resistance, and overall durability ([0038]). When the surface layer is composed of a first and second surface layer, the two may be made of different materials, and one such material mentioned is silicone oil ([0038]), which is a siloxane compound. Y. Ishii (WO 2020/022385) does not appear to teach a crosslinked siloxane.
M. Ishii (US PGP 2017/0247571) teaches a method of producing a film containing the condensate of a hydrolysable silane compound (Abstract). The film taught by M. Ishii is applied as a treatment to a surface, and is water-repellent ([0019]). One component of the film taught by M. Ishii is a Component (C) ([0083]), which is a hydrolysable silane compound and may be represented by a Formula 13 ([0086]). In the Formula 13, Rd may be an alkyl or aryl group, and X9 is a hydrolysable group ([0087]). Specific examples of groups are pointed out for Rd, including methyl, ethyl, propyl, butyl, hexyl, phenyl, and naphthyl ([0089]). Further, specific hydrolysable silane compounds are pointed out, including dimethyl(dimethoxy)silane, dimethyl(diethoxy)silane, and trimethyl(ethoxy)silane ([0089]). M. Ishii teaches that incorporation of Component (C) into the condensate, crosslinking density of the film controlled, and such a film can have improved water-repellency ([0090], [0109]). The film of M. Ishii thus represents a siloxane compound obtained by crosslinking a silane reagent having a hydrolysable group.
In seeking to improve the moisture resistance, electrical voltage resistance, and/or durability of the photoreceptor taught by Kubo, one of ordinary skill in the art would have been motivated to include a second surface layer as taught by Y. Ishii. In order to further improve the moisture resistance (water repellency) imparted by this second layer, one of ordinary skill in the art would have been motivated to use the film taught by M. Ishii. In the course of routine experimentation, 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 photoreceptor of Kubo having a second surface layer as taught by Y. Ishii, composed of the film of M. Ishii, located between the charge transport layer and the ceramic film. As disclosed by the instant application, metal oxide which is used in the aerosol deposition method of forming the ceramic film becomes included in the layer below the ceramic film (Specification, [0043]). In the case of the photoreceptor of Kubo as modified with the second surface layer of Y. Ishii, composed of the film of M. Ishii, that would necessarily cause metal oxide to be included in the second surface layer, thereby providing a layer having a crosslinked siloxane compound and a metal oxide, analogous to layer (2) of the instant application. In the course of routine experimentation, it would have been obvious to one of ordinary skill in the art to vary the parameters of the aerosol deposition method for forming the ceramic film layer, thereby resulting in a photoreceptor having an undercoat layer (analogous to instant layer (2)) having a greater amount of metal oxide particles in a region adjacent to the interface with the charge transport layer (analogous to instant layer (1)) than in a region adjacent to the opposite face. This layer would be in contact with the charge transport layer (analogous to layer (1) of the instant application) and with the ceramic film (analogous to layer (3) of the instant application), satisfying Claim 1.
Kubo teaches that the ceramic of the ceramic film is preferably a ceramic semiconductor ([0020]), and that the ceramic semiconductor film preferably includes delafossite, satisfying Claim 3.
The charge transport layer of Kubo (analogous to layer (1) of the instant application) includes an organic charge transport material ([0049]), satisfying Claim 4.
The Formula 13 of M. Ishii (discussed above) allows for dimethylsilyl or diphenylsilyl groups to be incorporated in the crosslinked siloxane compound, satisfying Claim 5.
As discussed above, Kubo teaches that the charge transport layer of the photoelectric conversion device is disposed on a support ([0013]), satisfying Claim 6.
Y. Ishii discloses a method of forming a photoreceptor wherein a surface layer is provided onto an existing photosensitive layer ([0111] – [0114]) (analogous to providing a layer (2) on a layer (1)). Kubo teaches the method of forming the ceramic film by the aerosol deposition method ([0025] – [0026]), wherein the ceramic film is the outermost layer ([0034]). In the instance of preparing the photoreceptor of Kubo modified with the second surface layer of Ishii, the ceramic film would be provided onto the silicone oil layer, already disposed on the charge transport layer, satisfying Claim 7.
As mentioned above, Kubo’s photoelectric conversion device, analogous to a laminate, includes a support, satisfying Claim 8. Kubo teaches that the support may be a plastic film ([0035]), satisfying Claim 11 and Claim 12.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GRANT STEVEN SEILER/ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 03/19/2026