DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, and 16, in the reply filed on October 30, 2025, is acknowledged. Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6, 8-12, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U. S. Patent No. 5,395,721 (hereinafter referred to as Kato).
Kato, in the abstract, and in col 4, discloses a transfer layer laminate that includes a substrate, and a resin composition layer (photoconductive layer) that includes a resin (col 5, lines 40-42), a block copolymer (see col 4, lines 31-36) such as P1, that includes segment (X) and segment (Y), wherein one of the copolymerizable monomers can be a polyether (includes the claimed poly(oxyalkylene)) and the other copolymerizable (segment X) can include a fluorinated aliphatic group, see col 8, lines 35-42, and col 13, lines 38-47, and col 14, discloses that the one of the units copolymerized in the block copolymer. Kato, in col 8, discloses lines 11-17, discloses the substrate is a paper substrate and is the same claimed temporary support.
Kato discloses the same claimed formula 1 recited (see col 11, and col 22, lines 50-55), segment X and segment Y block copolymer with linking group, segment X being the fluorine containing group that can be copolymerized with a polyether, wherein the fluorine-containing groups (as disclosed col 13, lines 38-47, and col 14) includes the formula (A) and formula (B) groups, such as -CH2CnF2n+1, wherein n=1-18, and for n=2, includes the claimed formula (A) i.e., -CH2C2F5, and claimed formula (B) as -CH(CF3)2, and therefore Kato discloses the same claimed resin composition layer as the photoconductive layer on the substrate (claims 1-3). Kato, in col 16, discloses structures (a-26), (a-27), (a-28) that have the same claimed structure of formula 1, and formula (C) and are part of the fluorine containing monomeric unit of X (see col 13, lines 38-40), and Kato, in col 11, lines 44-46, discloses that the unit that constitutes X has a molecular weight that is not less than 1000 i.e., at least less than 2000. Kato, in col 4, lines 17-20, 31-33, discloses that the segment X of the block copolymer is part of the photoconductive layer (resin composition layer) and Kato, in col 5, lines 62-68, in col 22, lines 50-53, in col 23, lines 12-22, and in col 29, lines 40-45, discloses that the content of the polymer P (that has the block copolymer units) can be present in the composition as low as 1% by weight based on the total weight of the composition layer, and the polymer (Q) that comprises alkali soluble resin (methacrylate) can be present in an amount of at least 50% by weight based on the total weight of the composition layer (photoconductive layer), and further includes monomeric units that can be copolymerized (inherently includes ethylenically unsaturated group) (claims 4, and 16). Kato, in col 8, lines 37-40, and in col 9, lines 3-5, discloses that the weight -average molecular weight of the polymer (block copolymer, P1) is at least 5000 (claim 5). Kato, in col 6, lines 7-12, in col 11, lines 1-55, in col 22, lines 56-57, and in col 23, and col 24, lines 1-15, discloses that the composition of the polymer P can include addition polymers that include polar groups viz., aliphatic dicarboxylic anhydrides such as maleic anhydrides, and discloses that the units that can be part of the addition polymer as polymerizable units includes methacrylic acid and thereby suggests that the photoconductive composition includes alkali-soluble resin, and water-soluble resin and includes units that are polymerizable (polymerizable compound) (claims 6, 8). Kato, in col 6, lines 9-12, discloses that the photoconductive layer that comprises a resin composition includes a photoconductive compound, and Kato, in col 49, lines 35-50, and in col 51, lines 6-8, and lines 36-38, discloses that the composition of the photoconductive layer (resin composition layer) includes metal oxides, and pigments (claims 9, 11)). Kato, in col 6, lines 7-12, in col 8, lines 7-10, and in col 53, lines 17-50, discloses that the resin layer can be a photoconductive layer that comprises a resin composition and a transfer layer that also comprises a thermoplastic resin composition layer that are formed on a substrate (claimed resin composition layer is two or more layers) (claims 10, and 12).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent No. 5,395,721 (hereinafter referred to as Kato) in view of U. S. Patent Application Publication No. 2003/0077541 (hereinafter referred to as Shibuya).
Kato is discussed in paragraph no. 4, above.
The difference between the claims and Kato is that Kato does not disclose the claimed acid decomposable group or that the composition includes a photoacid generator.
Shibuya, in [0114], discloses the use of an acid-decomposable component as part of the resin and also using a photoacid generator in the composition.
Therefore, it would be obvious to a skilled artisan to modify Kato by including the resin with an acid-decomposable unit and photoacid generator in the resin composition as taught by Shibuya because Kato does not prohibit the use of the claimed components and Shibuya teaches that using a acid-decomposable compound as the part of the component and combining it with a photoacid generator in the composition enables the changing in the solubility property or hydrophilic or hydrophobic property of the photosensitive resin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. 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.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 September 19, 2026.
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