DETAILED ACTION
Response to Arguments
Applicant's arguments filed 11/4/2025 have been fully considered but they are not persuasive. Applicant’s amendments to claim 1 are recited as product-by-process limitations. In a product by process claim, so long as the product has the same claimed composition or properties, the method by which it was made or by which the properties were tested is not material. According to the MPEP, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113 [R-1], see In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966).
In this case the pulverization process of the pigment and filtration of the coating solution effect the undercoat layer of the photoreceptor by reducing the particle size of the pigment and removing aggregates from the coating solution in order to lower the relative permittivity (εr) and dielectric loss tangent (tan δ) of the undercoat layer (Applicant’s Remarks Pg 8-9). However, it is not clear from the disclosure of Iwasaki (US Patent 10,642,173) that the pulverization of the pigment or filtration of the coating solution would be necessary to produce the same product. Iwasaki is silent regarding the particle diameters of the particulate substance in the coating solution and the coating solution containing any aggregates. The production of the organic pigment is not disclosed, so it is not clear that the pigment would need to be pulverized in order for the particle size to be satisfactory. As there is no teaching of aggregates, it can be assumed that they are not present and filtration of the coating solution would not be necessary. Further, another method of controlling the εr and tan δ values is by lengthening the time for performing a dispersion treatment on the coating solution ([0025]). Example 1 of the instant application disperses the coating solution for the undercoat layer with a sand mill using glass beads for 10 hours ([0196]), which is the same amount of time for this process as Example 1 of Iwasaki (Col. 35 line 33-35). Therefore, it cannot be said that these product-by-process limitations produce a materially different product than the undercoat layer of Iwasaki.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwasaki (US Patent 10,642,173).
Iwasaki teaches an electrophotographic photoreceptor comprising a conductive substrate, an undercoat layer, and a photosensitive layer (Abstract). The undercoat layer contains an organic pigment comprising a perinone compound represented by at least one of a compound represented by general formula (1) and general formula (2) (Abstract), which are the same as Formula (1) and Formula (2) of the instant application. The proportion of the total amount of the perinone compound in a total amount of the undercoat layer is preferably 50 mall% or more and 75 mass% or less (Col. 17, line 55-62). The thickness of the undercoat layer is 3 µm or more (Col. 23, line 30), and the exemplary photoreceptors have a layer thickness of 7 µm (Tables 2 & 3). The binder resin is polyurethane (Col. 21, line 18-20).
The process cartridge contains the photoreceptor, and is detachably attached to the image forming apparatus (Col. 32, line 15-19). Figure 2 shows the image forming apparatus comprising the electrophotographic photoreceptor (7), a charging device (8), an exposure device (9), a developing device (11), and a transfer device (40) (Col. 32, line 31-65). The charging device may be a contact-type charger that uses a charging roller (Col. 33, line 8-9), which can charge the surface of the photoreceptor by superimposing an alternating current voltage on a direct current voltage and applying the voltage.
Iwasaki is silent regarding measurements of relative permittivity (εr) at a measurement frequency of 10 Hz to 3,000 Hz and a dielectric loss tangent (tan δ) at the measurement frequency of 10 Hz to 3,000 Hz. However, it would be expected that the undercoat layer would satisfy Expressions (A1), (B1), (A2), and (B2) since they have the same major components. The undercoat layer comprises a polyurethane binder resin comprising a blocked isocyanate and a butyral resin (Col. 35, line 24-27), and the perinone compound (Col. 35, line 29-30), which is dispersed in a sand mill with glass beads for 10 hours, and then applied to an aluminum substrate (Col. 35, line 39-40).
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.
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/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 02/10/2026