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 Amendment
Claim 1 and Claim 6 have been amended to narrow the range recited for Bs and Bt, respectively, representing the thickness of the undercoat layer. Claims 1, 2, 5 – 7, 10, 11, 20, 23, 24, and 27 – 36 are pending.
Response to Arguments
Applicant's arguments filed 2026-06-10 have been fully considered but they are not persuasive.
Applicant argues that Noguchi does not specifically teach selection of the dicarboxylic acid of Formula (I-4) (which reads on instant formula (A2)) for the purpose of suppression of ghosts. However, as discussed in the previous office action, Noguchi’s invention is aimed at least in part at the suppression of ghosts. Where Noguchi also teaches a dicarboxylic acid unit of Formula (I) which reads on instant dicarboxylic acid (A2-3) and the group (A2) recited in Claim 1, the ghost suppression effect is not an unexpected result. A direct line need not be drawn between each individual monomer unit taught and the intended effect of the invention to render the result obvious to one of ordinary skill in the art.
Applicant also argues that the claimed thickness of the undercoat layer (Bs) recited in Claim 1 is not specifically taught, but concedes that Noguchi teaches a range of 0.05 – 40 µm. This range encompasses and therefore reads on the claimed range. Further motivation to set the thickness of the undercoat layer in the narrower claimed range is not required to make that range obvious in view of Noguchi’s teachings.
Third, Applicant argues that the combination of features recited in Claim 1 give rise to allegedly unexpected results of ghost suppression simultaneously with suppression of black spots/color spots. However, as discussed in the prior office action, Suzuki et al, Yoshihara, and Lee et al (cited in the previous rejection) each teach the suppression of black spots/color spots. Therefore, where Noguchi teaches the suppression of ghosts, and at least one of the secondary references just listed teaches the suppression of black spots/color spots, those results, even in tandem, are not unexpected.
Applicant argues that the claimed thickness of the undercoat layer (Bt) recited in Claim 6 is not specifically taught, but concedes that Suzuki teaches a range of 20 – 40 µm. This range encompasses and therefore reads on the claimed range. Further motivation to set the thickness of the undercoat layer in the narrower claimed range is not required to make that range obvious in view of Noguchi’s teachings.
Applicant also argues that the combination of features recited in Claim 6 give rise to allegedly unexpected results of suppression of black spots/color spots. However, as discussed in the previous office action, at least Suzuki teaches an invention aimed at least in part at the suppression of black spots/color spots. Again, a direct line need not be drawn between each parameter of each layer of the photosensitive member and the intended effect of the invention to render the result obvious to one of ordinary skill in the art.
Applicant lays out similar arguments regarding the diol units of formula (B1) or (B2) recited in Claim 5 and Claim 10; the thickness of the charge transport layer (As) recited in Claim 24; and the thickness of the single-layer type photosensitive layer (At) recited in Claim 28. These arguments are unpersuasive for the same reasons stated above for Claim 1 and Claim 6.
For these reasons, the rejections below are not withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 2, 5, 11, 20, 23, 24, 29, and 31 - 33 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al (US PGP 2017/0343909) in view of Yoshihara (US Patent 5,376,485), further in view of Lee et al (US PGP 2008/0014519).
Noguchi discloses an electrophotographic photosensitive member ([0001]), analogous to an electrophotographic photoreceptor. Noguchi’s disclosure is aimed, at least in part, at suppression of ghosts ([0013]). The photosensitive member includes a conductive support ([0039]) and an undercoat layer on the support member ([0046]). The photosensitive member also includes a photosensitive layer disposed on the undercoat layer ([0037] – [0038]). The photosensitive layer may be a multilayer photosensitive layer, analogous to a lamination type photosensitive layer ([0037]). The multilayer photosensitive layer includes a charge generating layer and a charge transport layer. The charge transport layer contains a charge transporting material ([0037]) and a polyester resin ([0052]).
Noguchi teaches a preferred thickness of the charge transport layer of 5 – 50 µm ([0061]), and a preferred thickness of the undercoat layer of 0.05 – 40 µm ([0046]).
The charge transport layer of Noguchi includes a polyester resin, which has a structure represented by a general formula (I) and a general formula (II) ([0052]). Noguchi gives as an example of a dicarboxylic acid unit conforming to general formula (I) unit (I-4) ([0025]), which is the same as unit (A2-3) of the instant application, and therefore reading on instant formulae (A) and (A2). Noguchi gives as an example of a diol unit conforming to general formula (II) unit (II-1-6) ([0027]), which is the same as unit (B1-4) of the instant application, and therefore reading on instant formulae (B) and (B1).
Yoshihara teaches a photosensitive member including a support, a charge generating layer, and a charge transport layer (Abstract). Yoshihara identifies and describes the defect of black spots (also referred to as color spots) (col. 1, lines 35 – 45). Yoshihara’s disclosure aims to provide a photosensitive member which has solved the problems previously mentioned (col 2., lines 10 – 18). One feature of the photosensitive member which advances those aims is the thickness of the charge transport layer, which is preferably 22 – 50 µm (col. 5, lines 44 – 45).
Lee teaches a photoreceptor including at least a support and a laminated photosensitive layer comprising a charge generating layer and a charge transport layer ([0013]). The photoreceptor also includes an undercoat layer ([0048]). Lee teaches that the thickness of the undercoat layer should be greater than 0.1 µm, so that the appearance of black spots can be prevented ([0049]).
In preparing the photosensitive member of Noguchi, one of ordinary skill in the art would have been motivated to prevent black spots by further constraining the thickness of the charge transport layer in the range taught by Yoshihara, and by further constraining the thickness of the undercoat layer as taught by Lee. The resulting thickness of the charge transport layer would be 22 – 50 µm, and the resulting thickness of the undercoat layer would be 0.1 – 40 µm, reading on the ranges for As and Bs, respectively, stated in Claim 1. In addition, the resulting range for the ratio As/Bs would be 0.55 – 500, encompassing the range stated in Claim 1.
22
µ
m
40
µ
m
=
0.55
50
µ
m
0.1
µ
m
=
500
This range for the ratio As/Bs also encompasses that stated in Claim 2.
As mentioned above, Noguchi gives as an example of a diol unit conforming to general formula (II) unit (II-1-6) ([0027]), which is the same as unit (B1-4) of the instant application, and therefore reads on instant formula (B1) of Claim 5.
Noguchi teaches a process cartridge which integrally supports the electrophotographic photosensitive member, and which is detachably attachable to an electrophotographic apparatus ([0069]). Where, as discussed above, the photoreceptor of Noguchi is described by instant Claim 1, the process cartridge including said photoreceptor therefore reads on Claim 11.
Noguchi teaches an electrophotographic apparatus (analogous to an image forming apparatus) which includes the described photosensitive member, and at least one of: a charging device; an exposure device (analogous to an electrostatic latent image forming unit, [0072]); a developing device; and a transfer device ([0069] – [0070]). Therefore, the apparatus of Noguchi containing the photoreceptor of Noguchi reads on the apparatus of Claim 20.
As mentioned above, the thickness of the charge transport layer would be 22 – 50 µm, and the resulting thickness of the undercoat layer would be 0.1 – 40 µm, encompassing the ranges stated for As and Bs in Claim 23, Claim 24, Claim 31, and Claim 32. In addition, as mentioned above, the resulting range for the ratio As/Bs would be 0.55 – 500, encompassing that stated in Claim 33.
As mentioned above, Noguchi gives as an example of a dicarboxylic acid unit conforming to general formula (I) unit (I-4) ([0025]), which is the same as unit (A2-3) of Claim 29.
Claims 6, 7, 10, 27, 28, 30, and 34 - 36 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al (US PGP 2017/0343909) in view of Suzuki et al (US PGP 2004/0183883), further in view of Lee et al (US PGP 2008/0014519).
The above discussions of Noguchi et al and Lee et al are incorporated herein.
Noguchi teaches that the photosensitive layer may have a single-layer structure, which includes a charge generating material, a charge transport material, and the polyester resin discussed above ([0067]). This represents simply adding a charge generating material to the charge transport layer described above. The resulting single-layer photosensitive layer would therefore have a preferred thickness substantially similar to that of the charge transport layer of the multilayer embodiment.
Suzuki teaches an electrophotographic photoreceptor comprising at least a support and a photosensitive layer (Abstract). Suzuki gives an example of a single-layer photosensitive layer, which may include both a charge generating material and a charge transport material ([0205] – [0206]). The thickness of the single-layer photosensitive layer is preferably 30 – 45 µm, preventing black spots (also referred to as color spots) ([0207]).
In preparing the photosensitive member of Noguchi having a single-layer photosensitive layer, one of ordinary skill in the art would have been motivated to prevent black spots by constraining the thickness of the single-layer photosensitive layer in the range taught by Suzuki, and by further constraining the thickness of the undercoat layer as taught by Lee. The resulting thickness of the single-layer photosensitive layer would be 30 – 45 µm, and the resulting thickness of the undercoat layer would be 0.1 – 40 µm, reading on the ranges for At and Bt, respectively, stated in Claim 6. In addition, the resulting range for the ratio At/Bt would be 0.75 – 450, reading on the range stated in Claim 6.
30
µ
m
40
µ
m
=
0.75
45
µ
m
0.1
µ
m
=
450
This range for the ratio At/Bt also encompasses that stated in Claim 7.
As mentioned above, Noguchi gives as an example of a diol unit conforming to general formula (II) unit (II-1-6) ([0027]), which is the same as unit (B1-4) of the instant application, and therefore reads on instant formula (B1) of Claim 10.
As mentioned above, the thickness of the single-layer photosensitive layer would be 30 – 45 µm, and the resulting thickness of the undercoat layer would be 0.1 – 40 µm, reading on the ranges stated for At and Bt in Claim 27, Claim 28, Claim 34, and Claim 35. In addition, as mentioned above, the resulting range for the ratio At/Bt would be 0.75 – 450, encompassing that stated in Claim 36.
As mentioned above, Noguchi gives as an example of a dicarboxylic acid unit conforming to general formula (I) unit (I-4) ([0025]), which is the same as unit (A2-3) of Claim 30.
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.
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.
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/GRANT STEVEN SEILER/ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 07/11/2026
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