DETAILED ACTION
Response to Arguments
Applicant’s arguments, see the Response, filed 2/27/2026, with respect to the rejection of claims 1-14 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made below.
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 1-4, 9, 11-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sekido (US PGP 2021-0318628).
Sekido teaches an electrophotographic photosensitive member having a protective (surface) layer containing a binder resin and metal oxide particles wherein the metal oxide particles are niobium containing titanium oxide particles (Abstract). The oxygen deficiency rate of the titanium oxide particles is 2.0% or less ([0008], expression (1)), and exemplary photosensitive members 5 and 28 have oxygen deficiency rates of 2.0% (Table 3). The content of the particles in the protective layer is 33% or more ([0098]) and the majority of the exemplary photosensitive members have a content of 50% (Table 3). The average particle size of the titanium oxide particles is preferably 30 nm to 400 nm ([0095]). The average thickness of the protective layer is preferably 0.5 µm to 7 µm ([0140]). The core of the metal oxide particle may not contain niobium, and the content ratio based on the total mass of the coating layer is preferably 10 times or more the niobium content ratio based on the total mass of the core ([0082]). The surface of the particle may be treated with a silane coupling agent ([0097]), which is a compound having silicon atom. The binder resin for the protective layer is preferably a polycarbonate resin, a polyester resin, or an acrylic resin ([0101]). The powder resistivity A of the titanium oxide particles is not disclosed, however, as the particles have the same components and a similar method of production, they would be expected to have similar resistivities to those of the present application in the range of 1.0x103 to 1.0x1010 Ω•cm.
Claim 15 is recited as product-by-process claim. 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 property of oxygen deficiency of the titanium oxide particles is taught by Sekido ([0008]).
Sekido teaches an electrophotographic apparatus comprising an electrophotographic photosensitive member, a charging unit, an exposing unit, a developing unit, and a transfer unit ([0108]). The apparatus has a removably mounted process cartridge on the main body containing the photosensitive member, and at least one of a charging unit, a developing unit, a transfer unit, and a cleaning unit ([0107]).
Claim Rejections - 35 USC § 103
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.
Claims 5-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sekido in view of Nishi (US PGP 2021-0318629).
The entire discussion of Sekido above is included herein. Sekido is silent regarding volume resistivities of the photosensitive layer and the binder resin. Nishi teaches an electrophotographic photosensitive member including a protective layer, wherein the protective layer contains electroconductive particles and has a volume resistivity of 1.0x109 to 1.0x1014 Ω•cm (Abstract). The volume resistivity is measured at 23°C and 50% RH ([0021], volume resistivity D) and is preferably 1.0x1010 to 1.0x1013 Ω•cm from the viewpoint of charge retainability ([0104]). The volume resistivity B of the binder resin at a temperature of 32.5°C and a humidity of 80% RH is not disclosed, however example 1 of Nishi uses the same compound for the binder resin as the instant application, and therefore they would have the same volume resistivity of 3.6x1012 Ω•cm (Nishi [0199] structure (O-1), Applicant [0196] structure (O-1)). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the photosensitive member of Sekido to have included the binder resin of Nishi in order to control the volume resistivity of the protective layer from the viewpoint of charge retainability.
The volume resistivity C of the protective layer at a temperature of 32.5°C and a humidity of 80% RH of the modified photosensitive member of Sekido and Nishi would be expected to be in the range of 1.0x1011 to 1.0x1013 Ω•cm. As the volume resistivities D and B, and the powder resistivity A are all in the same ranges as the instant application and the materials of the protective layer are similar, the volume resistivity of the protective layer at 32.5°C and 80% RH would also be similar. In the same manner, a ratio D/C would be expected to fall in the range of 0.05 to 1.0.
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 03/26/2026