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
The Applicant’s arguments taken with the claim amendments filed concurrently therewith in the Response filed 04/17/2026 are persuasive in overcoming the previously applied prior art rejections. Further search has revealed new prior art as set forth in the newly applied rejections below. The Applicant argued in the Response that the chemical nature of the resin matrix “has a decisive influence on the performance of compound (1) within the photosensitive layer” and further argued that the type of resin affects the dispersion stability of compound (1) based on differences in molecular chain rigidity and surface energy between polycarbonate and polyester resins. However, the Applicant has not pointed to any specific data or teaching to support this assertion. As such, this argument is treated as an argument of counsel. According to the MPEP, objective evidence must be factually supported. In order to be considered, any objective evidence must be accompanied by experimental data that corroborates the objective results (MPEP 716.01(c)). Therefore, this argument is not found persuasive in view of the prior art rejections set forth below.
The Applicant has additionally argued that unexpectedly superior results are obtained as the synergy between the specific polyester structure (A)+(B) and compound (1) at the optimized mass proportions prevents crystallization or aggregation of the compound within the specific (claimed) resin matrix more effectively than a polycarbonate-based system. However, the Applicant has not pointed to any specific data or teaching to support this assertion. As such, this argument is treated as an argument of counsel. According to the MPEP, objective evidence must be factually supported. In order to be considered, any objective evidence must be accompanied by experimental data that corroborates the objective results (MPEP 716.01(c)). Therefore, this argument is not found persuasive in view of the prior art rejections set forth below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 3, 5, 7, 14-15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0475676 (henceforth EP ‘676) in view of Ogaki et al. (US PGP 2017/0242352).
EP ‘676 teaches a photoreceptor comprising a charge transport layer that contains a charge transport material, a polyester resin and a pinhole inhibitor compound that reads on the Applicant’s Formula (1) (Abstract, p. 3 ln. 39 through p. 25 ln. 26). As the pinhole inhibitor EP ‘676 teaches dimethyl terephthalate (p. 31 ln. 55), which the Applicant teaches is a compound that reads on Formula (1) with a melting point of 45 C (see pp. 13-14 of the instant specification). The photoreceptor is taught to be either of a single layer type or a laminated type (p. 25 ln. 18-24). The pinhole inhibitor is taught to be added to the photosensitive layer in an amount that is several percent by weight or less than the weight of the charge generation material (p. 33 ln. 53-54). As the charge generating material is not the entire weight of the layer this will fall within the Applicant’s recited range. Furthermore, when a laminated style photoreceptor is used one of ordinary skill in the art would understand to use a similar amount of the pinhole inhibitor in the charge transport layer. Dimethyl terephthalate is taught by the Applicant to have the following formula and therefore reads on pending claims 5-8:
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EP ‘676 also teaches the same types of charge transport compounds recited by the Applicant in pending claim 18, namely the Applicant’s Formula D2 (p. 2 ln. 41 through p. 25 ln. 17). While EP ‘676 teaches that a polyester resin is particularly preferable for use in the charge transporting layer, EP ‘676 does not teach a specific polyester resin.
Ogaki teaches an electrophotographic photosensitive member including a surface charge transport layer comprising a polyester resin (Abstract). The polyester resin is taught to comprise a dicarboxylic acid monomeric unit and a diol monomeric unit that correspond to the Applciant’s Fomrula (A) and Formula (B), respectively ([0016-27]). The dicarboxylic acid monomeric unit which corresponds to the Applicant’s Formula (A) is taught to include the following formulae:
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476
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These formulae read on the Applicant’s Formula (A) wherein nA1 represents 0 or 1. Ogaki further teaches the following formulae which read on the Applciant’s Formula (B) as suitable diol monomeric units:
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488
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These formulae read on the Applicant’s Formula (B) wherein nB1 is 1. Ogaki teaches that utilizing these polyester resins in the charge transport layer results in a layer with high durability by virtue of increased flexibility thereby resulting in a photoreceptor that synergistically reduces flaws and wear and thus exhibits high durability ([0019-20]). Ogaki further teaches that said photoreceptor can be used in a process cartridge that is detachable from an image forming apparatus or in an image forming apparatus directly. The process cartridge and image forming apparatus both read on the limitations recited by the Applicant in pending claims 19 and 20 ([0060-67]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized the polyester resin of Ogaki et al. in the charge transport layer of EP 676 and to have used the resulting photoreceptor in an image forming apparatus or process cartridge taught by Ogaki et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (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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/PETER L VAJDA/ Primary Examiner, Art Unit 1737 04/22/2026
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