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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. Ex parte Slob, 157 USPQ 172, states, “Claims merely setting forth physical characteristics desired in an article, and not setting forth specific composition which would meet such characteristics, are invalid as vague, indefinite, and functional since they cover any conceivable combination of ingredients either presently existing or which might be discovered in the future and which would impart said desired characteristics.”
Also, “it is necessary that the product be described with sufficient particularity that it can be identified so that one can determine what will and will not infringe.” Benger Labs, Ltd v. R.K. Laros Co., 135 USPQ 11, In re Bridgeford 149 USPQ 55, Locklin et al. v. Switzer Bros., Inc., 131 USPQ 294; furthermore, “Reciting the physical and chemical characteristics of the claimed product will not suffice where it is not certain that a sufficient number of characteristics have been recited that the claim reads only on the particular compound which applicant has invented.” Ex parte Siddiqui, 156 USPQ 426, Ex parte Davission et al., 133 USPQ 400, Ex parte Fox, 128 USPQ 157.
In the instant case, claim 1 defines the electrophotographic photoreceptor in terms of measured physical properties, such as a weight reduction ratio of the charge transport layer or single layer type photosensitive layer in thermogravimetric analysis within a particular temperature range, but does not recite the specific materials that the Applicant has invented that would exhibit these claimed properties. Consequently, someone of ordinary skill would not be able to readily ascertain which electrophotographic photoreceptors found in prior art would or would not infringe based on these claims as currently recited.
Claim Rejections - 35 USC § 102
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 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 4-12, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Murakami et al. (US PGP 2015/0056547 A1).
Murakami teaches an electrophotographic photosensitive member including a conductive support, a charge generating layer containing a charge generating substance, and a charge transporting layer containing a charge transporting substance ([0023]) (which reads on the corresponding limitations recited in instant claim 1). A process cartridge comprising the components recited in instant claims 11-12 and 14-19 and an image forming apparatus comprising the components recited in instant claim 20 are also discussed ([0137]-[0142]).
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The binder resin is taught to include a polyester resin, such as a polyester resin having a repeating structural unit represented by the following formula (B2) ([0029]-[0031]):
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In the examples, the repeating unit represented by the formula (B2) was a repeating unit represented by formula (B2-1) and/or (B2-2), shown below ([0033]):
The polyester resin having the repeating structural unit represented by formula (B2) reads on the polyester resin having an aromatic ring recited in instant claim 1, the polyester resin (1) having the dicarboxylic acid unit (A) represented by formula (A) and the diol unit (B) represented by formula (B) recited in instant claim 4, the dicarboxylic acid unit (A’) represented by formula (A’) recited in instant claim 5, the dicarboxylic acid unit (A1) recited in instant claim 6, and the diol unit (B4) recited in instant claim 7.
The charge transport layer is further taught to include deterioration preventing materials, such as antioxidants. Examples of the antioxidant are taught to include hindered phenol antioxidants, hindered amine light stabilizers, sulfur atom-containing antioxidants, and phosphorus atom-containing antioxidants ([0134]) (which reads on the corresponding limitation recited in instant claim 2).
The thickness of the charge transporting layer is taught to be 3 µm or more and 50 µm or less, and preferably 5 µm or more and 35 µm or less ([0109]) (which overlaps with the corresponding ranges recited in instant claim 1 and claim 8). However, Murakami does not appear to teach any examples including a photoreceptor having a charge transport layer having a thickness within the claimed range of 28 µm or more and 50 µm or less.
According to MPEP § 2131.03, “When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case-by-case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute.”
See ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012). In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that "there is no allegation of criticality or any evidence demonstrating any difference across the range." Id. at 1345, 101 USPQ2d at 1777.
In the instant case, Murakami teaches a preferred range for the film thickness of the charge transporting layer with sufficient specificity to constitute an anticipation under the statute, since Murakami’s disclosed range narrowly encompasses, or overlaps with, and does not significantly deviate from, the corresponding claimed ranges recited in instant claim 1 and claim 8.
Alternatively, MPEP § 2144.05(I) states that, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have experimented with different charge transport layer thickness values within Murakami’s disclosed ranges. In doing so, the skilled artisan could have arrived at a photosensitive member having the claimed thickness, absent any showing of unexpected results or criticality of the claimed ranges. Such experimentation would have been considered routine and well within the purview of those skilled in the art.
Murakami also appears to be silent to teach the weight reduction ratio of the charge transport layer when measured in thermogravimetric analysis at a temperature range from 30 to 175 ºC, as recited in instant claim 1 and claim 9. Consequently, Murakami is also silent to teach or suggest a relationship between the weight reduction ratio of the charge transport layer and the average thickness of the charge transport layer, as recited in instant claim 10.
However, Murakami teaches a sufficiently method of producing a charge transport layer as the method disclosed in the instant specification. For example, the photoreceptor of Murakami’s Example 19 comprised a charge transport material represented by formula CTM-7, and a binder resin comprising a repeating structural unit represented by formula (B2-1) (Table 7). Similarly, the photoreceptor of the Applicant’s Example S11 comprised a charge transport material represented by formula HTM-1 (which is identical to Murakami’s CTM-7) and a binder resin comprising a repeating structural unit including a dicarboxylic acid unit represented by formula A3-2 a diol unit represented by formula B4-4 (which are similar to the units included in the repeating unit represented by Murakami’s formula B2) (see [0293], [0301]-[0302], and [0308] of the instant specification).
Therefore, the photoreceptor of Murakami would be expected to necessarily exhibit a sufficiently similar weight reduction ratio when measured under the claimed thermogravimetric analysis conditions as the Applicant’s photoreceptor, and thus would be expected to necessarily satisfy the weight reduction ratio(s) recited in instant claim 1 and claim 9.
According to MPEP § 2112(V), "[T]he PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of his
[or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977) (footnote and citation omitted).
Additionally, the skilled artisan could have arrived at the claimed relationship between the weight reduction ratio of the charge transport layer and the average thickness of the charge transport layer recited in instant claim 10 through routine experimentation of different charge transport layer thicknesses within the range taught by Murakami, as discussed above.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami et al. (US PGP 2015/0056547 A1), in view of Nagao (US PGP 2019/0384189 A1).
The teachings of Murakami are discussed above and incorporated herein. As mentioned above, Murakami teaches that the charge transport layer includes an antioxidant. However, Murakami is silent to teach or suggest a suitable molecular weight of the antioxidant.
Nagao teaches that the molecular weight of an antioxidant used in a photoreceptor should preferably be 1500 or less, and particularly preferably 1000 or less. As a lower limit, the molecular weight is taught to preferably be 100 or more, and particularly preferably 200 or more (which overlaps with the corresponding range recited in instant claim 3). Nagao teaches that when the molecular weight of the antioxidant is too large, the antioxidant ability may be lowered ([0187]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used an antioxidant having a molecular weight within the range taught by Nagao, in view of achieving a suitable antioxidant ability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (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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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
12/10/2025