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 .
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 2 and 7 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.
In claim 2 the R2 and X groups are not defined. It is unclear if the R2 and X groups are intended to be the same groups specified in claim 1. For purposes of examination, it has been interpreted that the R2 and X groups of formula (5) are as defined in claim 1. The same analysis and rejection applies to claim 7 in relation to the R4 and X groups recited therein.
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.
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.
Claim(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US PGP 2014/0154620).
Ito teaches an electrophotographic photoreceptor comprising a support, an undercoat layer formed on the support and a photosensitive layer formed on the undercoat layer (Abstract). The undercoat layer is taught to comprise at least one electron transporting compound and a cross-linking agent in order to form a cured layer ([0030-33]). The electron transporting compounds are taught to have the following formulas:
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The R groups in formula A1 and A8 above are taught have the formula (A) which reads on the Applicant’s formula (10) wherein art least one of alpha, beta or gamma in formula (A) is an alkyl group having a substituent selected from a hydroxy group, a thiol group or an amino group ([0035-38]). Furthermore, the formula (A) of Ito is taught to be a branched or linear alkylene group having 1 to 6 carbon atoms, benzyl group or an alkoxycarbonyl group and therefore reads on the formula (7) recited by the Applicant in pending claim 4 (see [0036] of Ito). Ito further teaches that the electron transport compounds need not be polymeric and therefore read on the Applicant’s claims 6-9 (see [0030]).
Ito further teaches a process cartridge and an electrophotographic imaging apparatus comprising the photoreceptor detailed above ([0096-101]). Both of the process cartridge and the imaging apparatus are taught to have same components recited by the Applicant in pending claims 11-14 (ibid). Ito additionally teaches in embodiments that the photoreceptor detailed above is manufactured using a method wherein a coating liquid is applied to form an undercoat layer. The coating liquid comprises the reactive electron transporting compounds and a crosslinking agent and the undercoat layer is formed by a crosslinking reaction wherein the crosslinking agent is bonded to one of the reactive hydroxyl, thiol or amine groups present on the electron transporting compounds (see for example [0106]). As such, Ito teaches the method recited by the Applicant in pending claim 15.
Ito does not teach a specific embodiment wherein two separate electron transport compounds are utilized in the same undercoating layer. However, Ito does teach multiple electron transporting compounds that read on the Applicant’s compounds expressed by formulae (1)-(4) (see [0033-48]). The compounds taught by Ito in Tables 1-9 include electron transporting compounds that both do and do not comprise polymerizable groups and therefore read on the Applicant’s formulas 1-2 (polymerizable; claim 1) and 3-4 (non-polymerizable; claim 10). According to the MPEP, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As such, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized two of the electron transporting compounds taught by Ito as set forth above in the same undercoat layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 01/08/2026