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.
Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Claims 1, 2, 10, and 11 are indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. Namely, those claims recite limitations in terms of the volume resistivity of insulating particles and/or electroconductive particles, which is a physical property of those particles, and not a structural or chemical feature of those particles. 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.
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.
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 - 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sekido et al (US PGP 2021/0318628) in view of Sekiya et al (US PGP 2021/0165321).
Sekido teaches an electrophotographic photosensitive member comprising a support, a conductive layer, a conductive layer, a photosensitive layer, and a protective layer, in that order (Abstract). The protective layer, being the outermost of the layers, is the same as a surface layer. The protective layer contains a binder resin and particles having a core of titanium oxide and a coating layer of niobium-doped titanium oxide (Abstract), analogous to the instant electroconductive particles.
Sekido details the protective layer of the photosensitive member ([0078] – [0081]), and describes metal oxide particles contained in the protective layer which possess a niobium content in the coating layer of the particles which is 10 times or more than the niobium content in the core of the particles ([0082]). The core of the metal oxide particles is preferably anatase-type titanium oxide ([0093]), and the primary particle size of the metal oxide particles is preferably in the range of 30 – 500 nm ([0094]). Sekido teaches that the metal oxide particles preferably make up 33% by volume or more of the protective layer of the photosensitive member ([0098]). The protective layer preferably has a thickness of 0.3 – 10 µm ([0104]), and may also contain another additive such as silica particles ([0103]). Sekido does not appear to teach preferences regarding the diameter, circularity, or resistivity of such silica particles, and does not appear to teach the role of the silica particles in the protective layer.
Sekiya teaches an electrophotographic photosensitive member comprising a support and a photosensitive layer, wherein the surface layer of the photosensitive member contains a binder resin and silica particles (Abstract). Sekiya teaches that the silica particles impart roughness to the surface of the photosensitive member, which improves the cleaning property of the photosensitive member ([0025]). The silica particles are preferably surface-treated ([0154]), and preferably have a number-average particle size of 7 – 1000 nm ([0157]). Sekiya teaches a preferred content of the silica particles in the surface layer of 0.5 – 15 parts by mass relative to 100 parts of that layer’s binder resin ([0156]). In a preparative example, Sekiya discloses the use of commercially obtained silica particles KE-P30 ([0227] – [0228]), the same particles used as insulating particles 4 of the instant application (Specification, Table 3).
In preparing the photosensitive member of Sekido, and lacking guidance as to preferred properties surrounding silica particles to be incorporated in the protective layer, one of ordinary skill in the art would have looked to the prior art for workable silica particles to use in the surface layer. Such a practitioner would thus have been motivated to incorporate silica particles as taught by Sekiya into the protective layer of the photosensitive member of Sekido.
Silica particles KE-P30, being the same as insulating particles 4 of the instant application, would necessarily possess a value for R1 of 1015 Ω·cm, satisfying inequality (1) of Claim 1. Where the metal oxide particles of Sekido are titanium oxide particles doped with niobium, and having a greater concentration of niobium nearer the surface of the particles than at the center, they would be substantially the same as the electroconductive particles disclosed in the instant application. All but one of these disclosed examples possess a value for R2 of 108 Ω·cm or less (Specification, Table 2). Thus, the metal oxide particles of Sekido would necessarily possess a value for R2 satisfying the inequality (2) of Claim 1.
Example photosensitive members 14 and 15 disclosed in the instant application, which incorporate silica particles KE-P30, possess values for L1 of 150 nm and 170 nm, respectively (Specification, Table 4 and Table 5). Therefore, the photosensitive member of Sekido incorporating the silica particles of Sekiya would necessarily possess a value for L1 satisfying the expression (6) of Claim 1. Where the metal oxide particles of Sekido may have diameters in a range encompassing the reported values for the electroconductive particles of instant examples 14 and 15, and where those examples both possess a value for the ratio L1/L2 of 1.8 (Specification, Table 5), the photosensitive member of Sekido incorporating the silica particles of Sekiya would necessarily possess a value for the ratio L1/L2 satisfying the expression (7) of Claim 1.
While Sekido does not appear to teach the proportion of exposure of the metal oxide particles at the surface of the photosensitive member, Sekido allows the volume proportion of the metal oxide particles in the protective layer to be 33% or greater, implying no upper limit on the mass-based content of the metal oxide particles in the protective layer. Such a range of content would allow the resulting photosensitive member to possess a value for the sum S1 + S2 to lie in a range satisfying the expression (4) of Claim 1. In addition, while Sekiya does not appear to teach the proportion of exposure of the silica particles at the surface of the photosensitive member, by varying the content of silica particles in the course of routine experimentation, a practitioner of ordinary skill in the art would have prepared a photosensitive member possessing values of S1 which allow for satisfaction of the expression (3) and the expression (5) of Claim 1.
As mentioned above, silica particles KE-P30 disclosed by Sekiya possess a value for R1 of 1015 Ω·cm, satisfying inequality (8) of Claim 2.
Where the silica particles of Sekiya may possess a number-average particle diameter of 7 – 1000 nm, and where the metal oxide particles of Sekido may possess a number-average particle diameter of 30 – 500 nm, the ratio of those diameters D1 / D2 may lie in the range 0.014 – 33.3, satisfying the inequality (9) of Claim 3 and the inequality (10) of Claim 4.
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The silica particles of Sekiya may possess a number-average particle diameter of 7 – 1000 nm, encompassing the range stated in the expression (11) of Claim 5.
The metal oxide particles of Sekido may possess a number-average particle diameter of 30 – 500 nm, satisfying the inequality (12) of Claim 6.
Where the metal oxide particles of Sekido alone may make up 33% or more of the volume of the protective layer, the volume proportion of the metal oxide particles and silica particles together in the protective layer may be 40% or more, satisfying Claim 7.
As mentioned above, Sekido teaches that the niobium concentration in the coating layer of the metal oxide particles, which may be titanium oxide particles, is preferably 10 times greater than the niobium concentration at the center of the metal oxide particle, satisfying Claim 8.
Silica particles KE-P30 disclosed by Sekiya, the same as instant Insulating particles 4 (Specification, Table 3), possess a value for the average circularity of 0.99, satisfying Claim 9.
Sekido discloses a process cartridge integrally supporting the photosensitive member described above, and at least one of a charging unit, a developing unit, a transferring unit, and a cleaning unit. The process cartridge is removably mounted to an electrophotographic apparatus ([0107]), satisfying Claim 10.
Sekido discloses an electrophotographic apparatus including the photosensitive member described above, a charging unit, an exposing unit, a developing unit, and a transferring unit, satisfying Claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grant S Seiler whose telephone number is (571)272-3015. The examiner can normally be reached 9:30 - 5:30 Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRANT STEVEN SEILER/ Examiner, Art Unit 1734
/PETER L VAJDA/ Primary Examiner, Art Unit 1737 02/20/2026