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 .
Drawings
The drawings filed 1/6/2023 are accepted.
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 2, 3, and 4 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. Specifically, the claims fail to set forth an X-Ray diffraction method with sufficient detail; the X-ray diffraction results will be dependent upon a number of parameters which are not specified, including wavelength, scattering angle, temperature, etc.
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.
Claim(s) 1 and 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US 3,904,406) in view of Urushihara et al (US 10,331,054).
Takahashi teaches an electrophotographic photosensitive member comprising an electrically conductive layer (col 3, lines 4+) and an insulating layer comprising silica glass (col 3, lines 4+) disposed on an outermost surface on an outer peripheral surface of the conductive base material (see Figures).
Takahashi does not teach there should be an elastic layer between the conductive layer and the insulating layer comprising silica. However, Urushihara teaches a laminate comprising a conductive base layer, a silica glass layer (see all) and an elastic layer therebetween (col 7, lines 55+). The elastic layer provides the elasticity needed for formation of a nip in the element’s contact region Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add an elastic layer between the conductive layer and silica glass layer disclosed in Takahashi. The motivation for doing so would have been to provide the member with sufficient elasticity for the formation of a nip in the contact region thereof.
With regards to claims 5 and 6, Takahashi is understood to read on said claim because the limitations “wherein the silica glass layer or an inorganic layer is a layer of a reaction product of a tetraalkoxysilane” and “wherein the tetraalkoxysilane includes a tetraalkoxysilane having an alkoxy group having 1 to 6 carbon atoms, inclusive,” are understood to be method limitations which do not compositionally or structurally distinguish the claimed invention from the prior art. The courts have held the method of making a product does not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a materially different product. In the present application, no such showing has been made.
With regards to claim 7, Takahashi teaches the conductive member according to claim 1 is a transfer member that contacts a transfer receiving body to transfer an object to be transferred, to the transfer receiving body. Specifically, Takahashi teaches the conductive member is an electrophotographic photosensitive member.
With regards to claim 8, the electrophotographic member of Takahashi is part of a process cartridge (see 0126 of applicant’s disclosure) and is known to be detachably attached to the image forming apparatus (see all).
With regards to claim 9, Takahashi teaches an image forming apparatus characterized in that a photosensitive member whose fundamental construction consists of a substrate, a photoconductive layer and an insulating layer is precharged so that the electrostatic charge may be uniformly imparted thereto, a light image of an original is next projected through a color filter upon the photosensitive member while simultaneously applying a second electrostatic charge thereto, thereby forming an electrostatic latent image, the latent image is then developed with a developing agent of color corresponding to that of the color filter, the developed toner image is then transferred to a blanket roller, the above described steps being repeated so that toner images of different color are transferred to the blanket roller, thereby forming a complete color image, this complete color image is transferred to an image recording member at one time, thereby reproducing a color image of the origin.
With regards to claim 10, Urushihara teaches the rubber may comprise urethane (col 8, lines 1+). Alternatively, claim 10 (and 11) does not require that a resin is present; said claim requires only that the resin is limited to the specified species if the resin (rather than the rubber) is present.
Claim(s) 2, 3, 4, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US 3,904,406) in view of Urushihara et al (US 10,331,054), as applied to claims above, and further in view of “Structure and Properties of Silica Glass Densified in Cold Compression and Hot Compression” (herein referred to as Guerette)
Takahashi n view of Urushihara is relied upon as above, but does not teach the silica layer disposed on the outermost surface on an outer peripheral surface of the conductive base material has a half width of a diffraction peak derived from silicon dioxide of 5° or more and 10 or less as obtained by a powder X-ray diffraction method. However, Guerette teaches that the half width of a diffraction peak derived from silicon dioxide is a result effective variable that relates to the intermediate-range order of silica network (page 2, last full paragraph). Furthermore, intermediate-range order is dependent upon the pressure and temperature at which the silica is quenched (see all; abstract) and effects the elastic modulus and density of the silica . Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the silicon dioxide’s half width of a diffraction peak derived from silicon dioxide in order to optimize the density and elastic modulus of the silica.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. To the extent applicant’s arguments are relevant to the newly applied rejections, said arguments are addressed herein.
Drawing Objections
The amendments to the specification are sufficient to overcome the drawings objections as failing to comply with 37 CFR 1.84(p)(5).
Discussion of Claim Rejections under 35 U.S.C. 112(b)
With regards to the rejection of claims 2, 3, and 4 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 because they fail to set forth an X-Ray diffraction method with sufficient detail, applicant argues the "powder X-ray diffraction method" is an established analytical technique, and the specification provides explicit and sufficient details for a person of ordinary skill in the art to perform the measurement. Applicant argues the claims need not recite every routine experimental variable, particularly because the specification provides clear guidance permitting reproducible measurement of the half-width values. The examiner respectfully disagrees for reasons of record. Furthermore, applicant is reminded that limitations from the specification cannot be read into the claims.
Discussion of Claim Rejections under 35 U.S.C. 102 and 103
With regards to the rejection of Claim(s) 1 and 5-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi and the rejection of Claim(s) 2, 3, and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi and further in view of Guerette, applicant argues the claim has been amended to recite "an elastic layer comprising at least one selected from a rubber material and a resin material, disposed on an outer peripheral surface of the conductive base material." Said argument is noted but is moot in view of the new grounds of rejection. Applicant further argues Takahashi discloses an electrophotographic photosensitive member (a photoreceptor) whereas the subject matter of amended claims 1 and 2 are directed to a conductive member utilized as a transfer member (e.g., a transfer roller or belt). Said argument is noted but is not persuasive as applicant’s arguments are not commensurate in scope with the pending claims; the claims are not limited to transfer members. Thus, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787