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 10/21/2025 have been fully considered but they are not persuasive. The Applicant has argued that EP ‘676 does not teach an amount of the compound of formula (1) in the charge transport layer that is within the recited range of 0.1 to 7.0% mass percent. In the prior Office Action the Examiner pointed to the disclosure of EP ‘676 teaching that the additive (pinhole inhibitor) is present in an amount of several percent or less based on the weight of the charge generating compound and argued that this would read on said range. Closer inspection of EP ‘676 further reveals that the additive may be present in an amount 0.05 parts based per 1 part of the charge transport compound (p. 32 ln. 10-11). While EP ’676 does not teach a suitable range of the amount in parts by weight of charge transport compound that is suitable in the charge transport layer, EP ‘676 does teach a specific embodiment of such a layer in Example 1 (p. 40). In Example 1 a charge transport layer is formed containing 1.2 parts of a charge transport compound and 1.8 parts of a polycarbonate resin (p. 40). As such, EP ‘676 teaches that a suitable amount in parts by weight of the charge transport compound is 1.2 parts. As such, as suitable amount of the additive would be 1.2 parts x 0.05 = 0.06 parts. The total parts by weight of solid materials in the layer would therefore be 3.06 parts (0.06 parts additive + 1.2 parts charge transport compound + 1.8 parts polycarbonate = 3.06 parts) and therefore the percent by mass of the additive in the charge transport layer would be 2.0% (0.06/3.06 x 100% = 2.0%). As such, EP ‘676 teaches values within the Applicant’s recited range.
The Applicant has further alleged that unexpectedly superior results are achieved by utilizing the recited additive in an amount within the range recited in pending claim 1. However, the data provided by the Applicant in the instant specification (see Tables 2-4) only demonstrates slightly worse results in electrical resistance when no additive is provided in the charge transport layer. This is not deemed sufficient to substantiate that the recited range provides unexpected and improved properties over values outside of the range. For all of these reasons the Applicant’s arguments are not found to be persuasive.
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, 3, 5, 7, 9, 11 and 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0475676 (henceforth EP ‘676).
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). The polyester resins read on the Applicant’s the polyester resin of Formulae (A) and (B) (p. 30 ln. 18-49) and therefore meet the limitations of the Applicant’s pending claims 9-13. 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) and also that the additive may be present in an amount 0.05 parts based per 1 part of the charge transport compound (p. 32 ln. 10-11). While EP ’676 does not teach a suitable range of the amount in parts by weight of charge transport compound that is suitable in the charge transport layer, EP ‘676 does teach a specific embodiment of such a layer in Example 1 (p. 40). In Example 1 a charge transport layer is formed containing 1.2 parts of a charge transport compound and 1.8 parts of a polycarbonate resin (p. 40). As such, EP ‘676 teaches that a suitable amount in parts by weight of the charge transport compound is 1.2 parts. As such, as suitable amount of the additive would be 1.2 parts x 0.05 = 0.06 parts. The total parts by weight of solid materials in the layer would therefore be 3.06 parts (0.06 parts additive + 1.2 parts charge transport compound + 1.8 parts polycarbonate = 3.06 parts) and therefore the percent by mass of the additive in the charge transport layer would be 2.0% (0.06/3.06 x 100% = 2.0%). As such, EP ‘676 teaches values 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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276
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For the polyester resin, EP ‘676 teaches a monomer that reads on the Applicant’s Formula (A1) recited in pending claim 14 and Formulae (B1-B6) recited in pending claim 15 (p. 30):
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686
676
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As suitable polycarbonate resins EP ‘676 teaches the following polycarbonate resins that read on the Applicant’s formulae (Cb1-Cb6):
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506
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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).
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.
Claim(s) 19-20 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0475676 in view of Kawabata et al. (US PGP 2021/0405548).
The complete discussion of EP ‘676 above is included herein. EP ‘676 does not teach a process cartridge or image forming apparatus in which to utilized the photoreceptor described above.
Kawabata teaches a photoconductor that comprises a polycarbonate binder resin in the photosensitive layer (Abstract, [0081-108]). The binder resin is taught to improve the film forming property of the photosensitive layer ({0082]). Kawabata teaches the following general formulas for suitable polycarbonate resins:
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Additionally, Kawabata teaches the following specific formulas for suitable polycarbonate resins which read on the Applicant’s formulae (Cb1-Cb6):
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504
368
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118
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Kawabata therefore teaches a similar photoreceptor to that of EP ‘676. Additionally, Kawabata 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 ([0179-207]). Therefore, as EP ‘676 is silent as to a suitable image forming apparatus or process cartridge for housing the photoreceptor one of ordinary skill in the art would have been motivated to look to the analogous prior art for guidance as to a suitable apparatus or process cartridge. 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 photoreceptor of EP ‘676 in the process cartridge and imaging forming apparatus taught by Kawabata et al.
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.
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 01/15/2026