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
The amendment filed 3/15/2026 has been entered. Claims 1-5, 7-14, and 16-20 remain pending. Claim 1 has been amended. Claims 6 and 15 have been cancelled.
Response to Arguments
Applicant’s arguments, see page 17, filed 3/15/2026, with respect to the abstract have been fully considered and are persuasive. The objection of the abstract has been withdrawn.
Applicant has amended the abstract to under 150 words.
Applicant’s arguments, see page 17-18, filed 3/15/2026, with respect to claims 1-3, and 6-16 have been fully considered and are persuasive. The rejection of claims 1-3, and 6-16 has been withdrawn.
Applicant has filed a Terminal Disclaimer for copending applications 18/071,516, 18/171,367, 18/171,369, and 18/178,538, double patent rejections withdrawn.
Applicant's arguments, see page 18-19, filed 3/15/2026 have been fully considered but they are not persuasive.
Applicant argues the effective filing date of the Instant Application is earlier than the copending application 18/321,800, citing MPEP section 804, which notes when the only rejection remaining on an application is a provisional non-statutory double patenting rejection with an application which has an effective filing date later than the Instant Application, the rejection should be withdrawn. Examiner disagrees as the provisional double patenting rejection is not the only remaining rejection.
Applicant’s arguments, see page 19-20, filed 3/15/2026, with respect to the rejection(s) of claims 1-20 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ishi.
Applicant argues the limitations of claim 6 have been amended into claim 1, excluding formula (A1) from the dicarboxylic acid units which may be used in for the dicarboxylic acid unit of the polyester resin, and Fujii only teaches polyesters comprising a dicarboxylic acid meeting (A1). Examiner agrees Fujii does not disclose any dicarboxylic acids which meet the limitations of the amended claim 1.
Ishizuka discloses a similar electrophotographic photoreceptor with a polyarylate binder resin. The polyarylate comprises dicarboxylic acid units and diol units, which meet several of the claimed Formula (A) and Formula (B) structures. Ishizuka further discloses hindered phenol compounds may also be used as an antioxidant, though no specific hindered phenol or a molecular weight is disclosed. Hiroyuki is relied upon to teach inclusion of a specific hindered phenol, meeting the molecular weight limitation of the claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 10-12 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 16 of U.S. Patent No. 18/321,800 in view of Hiroyuki (JP H02207258).
Regarding claims 1-3, the ‘800 application claims What is claimed is: 1. An electrophotographic photoreceptor comprising: a conductive substrate; and a lamination type photosensitive layer including a charge generation layer and a charge transport layer or a single layer type photosensitive layer that is a photosensitive layer disposed on the conductive substrate, wherein the charge transport layer or the single layer type photosensitive layer is an outermost layer and contains a charge transport material and a binder resin containing a polyester resin having an aromatic ring, the charge transport layer or the single layer type photosensitive layer has an average thickness of 28 μm or greater and 50 μm or less, and a weight reduction ratio of the charge transport layer or the single layer type photosensitive layer from 30° C. to 175° C. in thermogravimetric analysis is 0.1% by mass or less, wherein the polyester resin is a polyester resin (1) having a dicarboxylic acid unit (A) represented by Formula (A) and a diol unit (B) represented by Formula (B),
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in Formula (A), X represents an organic group, in Formula (B), ArB1 and ArB2 each independently represent an aromatic ring that may have a substituent, LB represents a single bond, an oxygen atom, a sulfur atom, or —C(Rb1)(Rb2)—, and nB1 represents 0, 1, or 2, where Rb1 and Rb2 each independently represent a hydrogen atom, an alkyl group having 1 or more and 20 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an aralkyl group having 7 or more and 20 or less carbon atoms, and Rb1 and Rb2 may be bonded to each other to form a cyclic alkyl group. (Claim 1)
the ‘800 application further claims The electrophotographic photoreceptor according to claim 1, wherein the dicarboxylic acid unit (A) includes at least one selected from the group consisting of a dicarboxylic acid unit (A1) represented by Formula (A1), a dicarboxylic acid unit (A2) represented by Formula (A2), a dicarboxylic acid unit (A3) represented by Formula (A3), and a dicarboxylic acid unit (A4) represented by Formula (A4),
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in Formula (A1), n101 represents an integer of 0 or greater and 4 or less, and n101 number of Ra101's each independently represent an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A2), n201 and n202 each independently represent an integer of 0 or greater and 4 or less, and n201 number of Ra201's and n202 number of Ra202's each independently represent an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A3), n301 and n302 each independently represent an integer of 0 or greater and 4 or less, and n301 number of Ra301's and n302 number of Ra302's each independently represent an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A4), n401 represents an integer of 0 or greater and 6 or less, and n401 number of Ra401s each independently represent an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms. (claim 6)
The ‘800 application does not claim a compound that has a molecular weight of 255 or greater, a phenol skeleton in which a primary carbon atom or secondary carbon atom is bonded to one ortho position and a tertiary carbon atom or quaternary carbon atom is bonded to the other ortho position, and has no linear alkylene structure having 4 or more carbon atoms.
Hiroyuki teaches a photoreceptor comprising an antioxidant in the photosensitive layer, specifically a hindered phenol structure, to improve exposure sensitivity control for ultra sharp images (page 5-6). Hiroyuki further teaches the hindered phenol is selected from a group including 2,2’-methylenebis(6-t-butyl-4-methylphenol) (page 11-12) which comprises a molecular weight of 392.57, and is the same as compound C1-1 of the Instant Application (Instant Specification page 48). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use the electrophotographic photoreceptor of the ‘800 application, with the 2,2’-methylenebis(6-t-butyl-4-methylphenol) antioxidant, as taught by Hiroyuki, to improve sharpness of produced images.
Regarding claims 10-12, the ‘800 Application claims all limitations as set forth above. The ‘800 Application further claims A process cartridge comprising: the electrophotographic photoreceptor according to claim 6, wherein the process cartridge is attachable to and detachable from an image forming apparatus. (claim 16)
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.
Claims 1-5, 7-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ishizuka (JP 2019035900) in view of Hiroyuki (JP H02207258).
Regarding claims 1-3 and 7-8, Ishizuka discloses an electrophotographic photoreceptor comprising a support with a charge generating layer and a charge transport layer comprising a charge transport material and a resin, the resin includes general formula (I), a dicarboxylic acid monomer, and general formula (II), a diol structure ([0008], [0038]).
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Ishizuka further discloses specific examples of the dicarboxylic acid (I-1) and (I-4), which fit Formula (A3) and Formula (A2) of the Instant Claim 1, respectively ([0041]). (I-1) specifically matches the (A3-2) of the Instant Application and (I-4) matches (A2-3) of the Instant Application (Instant Specification page 16).
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Ishizuka further discloses specific examples of the diol (II-1-1) to (II-1-6), (II-2-1) to (II-2-3), (II-3-1) to (II-3-3), and (II-4-1) to (II-4-8) (page 15-18).
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Examiner notes several of the specific diol monomers match those disclosed in the Instant Application:
(II-1-1) matches (B1-2) of the Instant Application, and (II-1-6) matches (B1-4) of the Instant Application (Instant Specification page 30);
(II-4-6) matches (B2-8) of the Instant Application (Instant Specification page 31);
(II-2-1) matches (B3-3) of the Instant Application (Instant Specification page 32);
(II-4-2) matches (B4-1) of the Instant Application, (II-4-3) matches (B4-2) of the Instant Application, (II-4-4) matches (B4-3) of the Instant Application (Instant Application page 33);
(II-4-1) matches (B6-1) of the Instant Application (Instant Specification page 35);
(II-3-1) matches (B7-1) of the Instant Application, (II-3-2) matches (B7-2) of the Instant Application, (II-3-3) matches (B7-3) of the Instant Application (Instant Specification page 35);
(II-4-5) matches (B8-1) of the Instant Application (Instant Specification page 36).
Ishizuka further discloses additives such as antioxidants may be included in the photoreceptor, including hindered phenol compounds ([0053]). However, no specific examples, molecular weight, or amounts added are disclosed.
Hiroyuki teaches a photoreceptor comprising an antioxidant in the photosensitive layer, specifically a hindered phenol structure, to improve exposure sensitivity control for ultra sharp images (page 5-6). Hiroyuki further teaches the hindered phenol is selected from a group including 2,2’-methylenebis(6-t-butyl-4-methylphenol) (page 11-12) which comprises a molecular weight of 392.57, and is the same as compound C1-1 of the Instant Application (Instant Specification page 48). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use the electrophotographic photoreceptor of Ishizuka, with the 2,2’-methylenebis(6-t-butyl-4-methylphenol) antioxidant, as taught by Hiroyuki, to improve sharpness of produced images.
Regarding claim 4, modified Ishizuka discloses all limitations as set forth above. Hiroyuki further teaches the antioxidant is 0.01-100 % by weight of the organic pigment in the photosensitive layer (page 12). Hiroyuki further teaches the organic pigment is 10-300 parts by weight per 100 parts binder resin (page 11, and with correction on page 34). Therefore, the antioxidant can range from (0.0001*10)/((0.0001*10)+10+100) = 0.0001 mass% to (1*300)/((1*300)+300+100) = 42.9 mass% of the photosensitive layer.
Regarding claims 5 and 9, modified Ishizuka discloses all limitations as set forth above. Ishizuka further discloses the charge transport material is 25-80 % by mass of the charge transport layer, with specific examples of the charge transport materials shown as (Q-1) to (Q-4) and (T-1) to (T-3) ([0047]-[0049]).
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The Example (Q-1) is an isomer of the specific CTM-1 from the Instant specification, and meets formula (D2) of the Instant Claims, and (T-2) meets formula (D1) of the Instant Claims (Instant Specification page 79). For the sake of calculation, (Q-1) and CTM-1 will be used, as they both have a molar mass of 516.67 g/mol, and are both used in specific examples in their respective applications. Therefore, when making 100 parts of charge transport layer, and the amount of charge transport material is at a maximum, the number of mols can be calculated as 80/516.67 = 0.1548377 mol (Q-1); and when the amount of charge transport material is at a minimun, the number of mols is 25/516.67 = 0.0483868 mol (Q-1). Similarly, the minimum amount of mols of hindered compound in the charge transport layer would be 0.0001/392.57 = 2.547*10-7 mol of hindered phenol compound, and the maximum amount would be 42.9/392.57 = 0.1092799 mol of hindered phenol compound. However, 2,2’-methylenebis (6-t-butyl-4-methylphenol) contains 2 phenolic hydroxyl groups, so the molar amount of phenolic hydroxyl groups would be a minimum of 5.095*10-7 mol, and a maximum of 0.2185597 mol. Using these values the amount of phenolic hydroxyl group in the charge transport layer with respect to the amount of charge transport material is 5.095*10-7/0.1548377 to 0.2185597/0.0483868, or 0.00033 to 451.7 mol%.
Regarding claims 10-14 and 16-18, modified Ishizuka discloses all limitations as set forth above. Ishizuka further discloses a process cartridge comprising the photoreceptor, which is detachably attached to an electrophotographic apparatus ([0062]). The process cartridge also may include a cleaning means, shown as #9 in figure 1 with a blade contacting the photoreceptor ([0062], [0064]).
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Regarding claims 19 and 20, modified Ishizuka discloses all limitations as set forth above. Ishizuka further discloses an electrophotographic apparatus comprising the photoreceptor, a charging means, an exposure means, a developing means, and a transfer means ([0010], [0063]-[0064]). The electrophotographic apparatus also includes a cleaning means, shown as #9 in figure 1 with a blade contacting the photoreceptor ([0064]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Haruyama (JP 2015141249) teaches a similar photoreceptor comprising antioxidants including formula (2) and formula (3), which match C1-1 and C2-1 of the Instant Application ([0013]-[0016])
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Azuma (US 20170307989) teaches a similar electrophotographic photosensitive member comprising a polyarylate resin which specifically includes two dicarboxylic acid monomers, one meeting formula (A4), and another which may meet (A2) or (A3), the specific monomers matching (A4-3), (A3-2), and (A2-3) of the Instant Application (abstract, [0005], page 1-2)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./Examiner, Art Unit 1737
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
