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 Arguments
Applicant’s arguments, see the Response, filed 04/17/2026, with respect to the rejection(s) of claim(s) 1-8 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 Therefore, the rejection has been withdrawn.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 the prior art set forth below.
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(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2022-037369 (henceforth JP ‘369).
JP ‘369 teaches an electrophotographic photoreceptor comprising a conductive substrate, a photosensitive layer and a protective surface layer ([0040-46]). The surface layer is further taught to comprise a cured product of a composition containing a radical polymerizable compound and inorganic particles ([0047]). The surface layer further comprises a charge transport compound having a radical polymerizable compound such as an acryloyl or methacryloyl group ([0057-67]). The inorganic particles are taught to comprise metal oxide particles that are surface treated with a surface modifier having a polymeric main chain and a silicon containing side chain ([0106] and [0112-113]). The surface modifier of JP ‘369 is taught to have a radically polymerizable function group ([0113]). A suitable charge transport compound is taught to have the following molecular formula, which reads on the compounds recited by the Applicant in pending claim 2:
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As can be seen the formula above reads on the Applicant’s limitations recited in pending claims 3-5. Furthermore, the inorganic particle is taught to be silica ([0106]). JP ‘369 also teaches an image forming apparatus and image forming method comprising all of the limitations recited by the Applicant in pending claim 7-8 ([0255-276]).
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) 9 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2022-037369 (henceforth JP ‘369) in view of Matsusaki et al. (US PGP 2020/0363740).
The complete discussion of JP ‘369 above is included herein. JP ‘369 does no teach that the silicon side chain in the surface modifier be dimethylsiloxane.
Matsusaki teaches a photoreceptor comprising a cured outermost (surface) layer comprising an inorganic filler that is surface-modified (Abstract). The inorganic filler may include a silica particle ([0041-45]). The surface modification treatment is taught to have a polymeric main chain formed by radically polymerizable functional group and dimethylsiloxane side chain ([0052-54]). Such a surface modifying agent is taught to provide the inorganic particles with excellent dispersibility without aggregation or precipitation while having good compatibility with a polymerizable monomer for the surface layer ([0054]). Therefore, it would have been obvious to have utilized the surface modifying agent taught by Matsusaki et al. as the surface modifying agent in the inorganic particles of the surface layer of JP ‘369 in order to improve compatibility, dispersability and prevent aggregation.
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.
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 05/01/2026
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