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 § 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (US PGP 2017/0343909 A1), in view of Sekiya et al. (US PGP 2020/0409279 A1).
Noguchi teaches an electrophotographic photosensitive member including a surface layer containing a charge transporting material and a polyester resin, the polyester resin having a structure represented by general formula (I) and a structure represented by general formula (II) ([0004]).
An electrophotographic apparatus including the electrophotographic photosensitive member, a charging device, an exposure device, a developing device, and, a transfer device, and a process cartridge including and integrally supporting the electrophotographic photosensitive member are also described. The process cartridge is taught to be detachably attachable to the electrophotographic apparatus ([0069]-[0070]) (which reads on the corresponding limitations recited in instant claim 11, claim 12, claim 13, claim 14, claim 15, claim 16, claim 17, claim 18, claim 19, and claim 20).
The photosensitive member is taught to include a support member and a photosensitive layer. The photosensitive layer is taught to include a multilayer photosensitive layer comprising a charge generating layer containing a charge generating material and a charge transport layer containing a charge transporting material. The surface layer containing the charge transporting material is taught to serve as the charge transport layer ([0037]).
The charge generating material is taught to include hydroxygallium phthalocyanine ([0055], [0093]) (which reads on the corresponding limitation recited in instant claim 3). The film thickness of the charge transport layer is taught to be within the range of from 5 to 50 µm ([0061]) (which reads on the corresponding limitation recited in instant claim 1). The binder resin used in the charge transport layer is taught to preferably include a polycarbonate and a polyarylate ([0063]) (which reads on the corresponding limitation recited in instant claim 5).
PNG
media_image1.png
178
374
media_image1.png
Greyscale
PNG
media_image2.png
158
366
media_image2.png
Greyscale
In the polyester of the surface layer, the structure represented by general formula (I) is taught to include a structure represented by formula (I-1) and the structure represented by general formula (II) is taught to include a structure represented by formula (II-1) ([0004]) (which reads on the dicarboxylic acid unit (A) represented by formula (A) and the diol unit (B) represented by formula (B) recited in instant claim 6, claim 7, and claim 8, respectively):
PNG
media_image3.png
300
350
media_image3.png
Greyscale
Other examples of the structure represented by general formula (I) are taught to include structures represented by formula (I-2), formula (I-3), and formula (I-4) ([0025]) (which reads on the corresponding limitation recited in instant claim 9):
PNG
media_image4.png
152
370
media_image4.png
Greyscale
The structure represented by general formula (II) is taught to include a structure represented by formula (II-1-1) ([0027]) (which reads on the corresponding limitation recited in instant claim 10):
In the examples, a polyester resin A including the structure represented by general formula (I-1) and general formula (II-1-1) was prepared. In other words, the polyester resin A is a polyarylate resin. The polyester resin A was taught to have a weight average molecular weight of 120,000 ([0078], Table 1) (which reads on the corresponding limitation recited in instant claim 4).
Noguchi appears to be silent to teach or suggest an absorption spectrum measured by peeling off the photosensitive layer and dissolving the photosensitive layer in tetrahydrofuran. Therefore, Noguchi fails to teach or suggest the Expression (1) and Expression (2) recited instant claim 1, or the Expression (1-3) and Expression (2-3) recited in instant claim 2.
According to paragraph [0028] of the instant specification, the absorbance of the photosensitive layer at a wavelength of 678 nm in the absorption spectrum is employed as an index of the thickness of the charge generation layer of the photoreceptor. Paragraph [0032] of the instant specification further discloses that the thickness of one end portion of the charge generating layer can be adjusted to be less and the thickness of the other end portion can be adjusted to be greater than the thickness of the central portion in order to satisfy Expression (1) and Expression (2) by controlling the speed at which the conductive substrate is pulled upward from the coating solution for forming the charge generation layer. Specifically, the speed is controlled such that the pull-up speed at the upper end portion is less than the pull-up speed at the central portion, which is also less than the pull-up speed at the lower end portion.
In Noguchi’s examples, the charge generating layer was applied onto the undercoat layer by dipping, and then dried to yield the charge generating layer. However, Noguchi is silent to teach the speed(s) at which the substrate is dipped into the coating layer solution. Therefore, it is unknown if Noguchi’s charge generating layer would necessarily satisfy the average film thickness in the regions necessary to satisfy the claimed Expression (1) and Expression (2).
Sekiya teaches an electrophotographic photosensitive member including a support, a charge generating layer formed on the support, and a charge transport layer formed on the charge generation layer. When a region from a central position of an image forming region to an end position of the image forming region in an axis direction of the cylindrical support is divided equally into five regions, and average values of film thicknesses [µm] of the charge generating layer in each of the regions obtained by dividing the regions equally are defined as d11, d12, d13, d14, and d15, the film thickness of the charge generating layer is taught to satisfy d11<d12<d13<d14<d15 ([0010]). In other words, one end portion of the charge generating layer is less thick and the other end portion of the charge generating layer is thicker than the central portion of the charge generation layer. When the film thickness of the charge generating layer satisfies the relationship, the occurrence of ghosting is suppressed ([0027]-[0029]).
The pulling speed in the dip coating is taught to be controlled such that the region from the central position of the image forming region to the end position of the image forming region in the axis direction of the photosensitive member is divided equally into the five regions, and the average values of the film thicknesses in each of the regions obtained by being divided equally satisfies the relationship (d11<d12<d13<d14<d15) ([0035]).
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 adjusted the pulling speed in the dip coating method of forming the charge generation layer of Noguchi’s charge generation layer, according to the method described by Sekiya, in order to control the film thickness of the charge generating layer and the charge transport layer and suppress the occurrence of ghosting. In doing so, Noguchi’s photosensitive layer would necessarily be expected to satisfy the Expression (1) and Expression (2) recited in instant claim 1, and the Expression (1-3) and Expression (2-3) recited in instant claim 2, based on the disclosure noted above. Applicant is respectfully invited to demonstrate or prove otherwise.
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).”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2019/0121251 A1 to Nishida et al. teaches an electrophotographic photosensitive member including a support, a charge generating layer containing a charge generation material, and a charge transporting layer containing a charge transport material (Abstract). The charge transporting layer is taught to contain a polycarbonate resin having a structural unit represented by formula (1-1), a structural unit represented by formula (1-2), and a structural unit represented by formula (1-3) ([0005]).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
07/22/2026
Prosecution Insights