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 filed 05/05/2026 have been fully considered but they are not persuasive.
By way of background, Sasaki was cited for teaching, inter alia, an electrophotographic photoreceptor including a conductive substrate and a photosensitive layer disposed on the conductive substrate. The photosensitive layer was taught to include a laminated-layer-type configuration including a charge generation layer and a charge transport layer disposed on the charge generation layer, and a single-layer-type configuration.
In the examples, the coating liquid for forming the charge transport layer was taught to include 5 ppm of a silicone oil commercially known as “KP340” (Shin-Etsu Chemical Co., Ltd.). Based on the Applicant’s disclosure, “KP340” is known to be a polyalkylsiloxane having a weight-average molecular weight of 8,000. Therefore, the Office action concluded that Sasaki’s photoreceptor contained a polyalkylsiloxane (in an amount of 5 ppm), and did not contain a cyclic siloxane having a molecular weight of 450 or less (see pg. 2-3 of the previous Office action). In other words, the amount of a cyclic siloxane having a molecular weight of 450 or less in the charge transport layer was 0 ppm.
Similarly, Sugiura was cited for teaching, inter alia, an electrophotographic photoreceptor including a conductive substrate and a photosensitive layer disposed on the conductive substrate, wherein the photosensitive layer was taught to include a laminated-layer-type configuration including a charge generation layer and a charge transport layer disposed on the charge generation layer, or a single-layer-type configuration, and the coating liquid for forming the charge transport layer included 5 ppm of the silicone oil “KP340”. Therefore, the Office action also concluded that Sugiura’s photoreceptor contained a polyalkylsiloxane (in an amount of 5 ppm), and did not contain a cyclic siloxane having a molecular weight of 450 or less (see pg. 4-5 of the previous Office action). In other words, the amount of a cyclic siloxane having a molecular weight of 450 or less in the charge transport layer was 0 ppm.
In response, the Applicant argues that neither reference teaches or suggests the claimed feature of “an amount of a cyclic siloxane having a molecular weight of 450 or less in the charge transport layer is less than 0.1 ppm”. In support of this argument, the Applicant argues that neither reference teaches performing a high-temperature treatment on the polyalkylsiloxane used as a leveling agent in the formation of the layer in advance, and volatilizing and removing the low-molecular-weight cyclic siloxane, which is necessary for arriving at the claimed amount of cyclic siloxane in the charge transport layer (i.e., less than 0.1 ppm).
The Applicant turns to the data in the instant specification and argues that the comparative examples prove that, when polysiloxane is added to the coating solution for the photosensitive layer without performing the high-temperature treatment, the content of the low-molecular weight cyclic siloxane was higher than 0.1 ppm (i.e., 0.30 ppm).
Therefore, since the prior art references allegedly omit the step of performing a high-temperature treatment on the polyalkylsiloxane, the Applicant concludes that an amount of cyclic siloxane having a molecular weight of 450 or less in the charge transport layer of the prior art references would be more than 0.1 ppm.
The Examiner respectfully disagrees. Initially, instant claim 1 presently recites that “an amount of a cyclic siloxane having a molecular weight of 450 or less in the charge transport layer is less than 0.1 ppm”, but does not positively recite that the charge transport layer contains a cyclic siloxane.
Therefore, a photoreceptor including a charge transport layer that is absent of cyclic siloxane reads on this limitation, because it would not include cyclic siloxane having a molecular weight of 450 or less. Instant claim 2, which is a narrower embodiment of the photoreceptor recited in instant claim 1, even further recites that “the charge transport layer does not contain the cyclic siloxane having a molecular weight of 450 or less”.
The Applicant appears to claim that, because Sasaki and Sugiura fail to teach a step of performing a high-temperature treatment on the polyalkylsiloxane in advance of forming the coating solution for the charge transport layer, an amount of cyclic siloxane would necessarily be greater than the claimed amount of 0.1 ppm.
Respectfully, this argument is not well understood. As previously discussed, paragraph [0151] of the instant specification discloses that “KP340” contains dimethylpolysiloxane as an active ingredient. Also, according to Nakabayashi (attached herein as “JP-2007171758-A”), “KP340” is known to be a solution of dimethylpolysiloxane (PDMS) dissolved in toluene (see pg. 12, last paragraph). Accordingly, it appears that the active ingredient in “KP340” consists only of a polyalkylsiloxane (i.e., PDMS), and that “KP340” does not contain any amount of cyclic siloxane on its own.
Neither Sasaki nor Sugiura appear to teach or suggest the inclusion of a cyclic siloxane in the coating solution for the charge transport layer apart from, or in addition, to the “KP340”. Therefore, regardless of whether or not a step of performing a high-temperature treatment on the polyalkylsiloxane is performed, the amount of cyclic siloxane in the charge transport layer of the prior art references would necessarily be 0 ppm, regardless of its molecular weight.
This assumption is supported by the Applicant’s data. Similarly to Sasaki and Sugiura’s respective examples, the charge transport layer coating solutions in the photoreceptors of Applicant’s Example S1 and Example S5 each included 5 ppm of leveling agent solution (1), which only contained “KP340” (i.e., polyalkylsiloxane) as a leveling agent. As a result, both Example S1 and Example S5 included charge transport layers exhibiting a low-molecular weight cyclic siloxane content of 0 ppm (see Table 1 of the instant specification).
Moreover, there is insufficient evidence in the data to prove that the step of performing a high-temperature treatment on the polyalkylsiloxane in advance is necessary for arriving at the claimed amount of cyclic siloxane (i.e., less than 0.1 ppm). Contrary to the Applicant’s argument on pg. 9 of the remarks1, all of the Applicant’s examples appear to include the step of performing a high-temperature treatment on the polyalkylsiloxane in advance of forming the coating solution.
Specifically, all of the leveling agent solutions used in the examples (both experimental and comparative) included heat-treated “KP340” with varying types and amounts (including 0% in leveling agent solution (1)) of cyclic siloxanes (e.g., octamethylcyclotetrasiloxane, decamethylcyclopentasiloxane, dodecamethylcyclohexasiloxane) added thereto (see [0151]-[0157] of the instant specification).
Therefore, it cannot be assumed that the step of performing a high-temperature treatment on the polyalkylsiloxane in advance would have any significant effect on the amount of low-molecular-weight cyclic siloxane contained in the resulting charge transport layer, because none of the examples in the Applicant’s data appear to show the results of preparing the charge transport layer coating solution without performing the high-temperature treatment on the polyalkylsiloxane in advance.
The Applicant also notes that the comparative examples included charge transport layers exhibiting a low-molecular weight cyclic siloxane content of 0.3 ppm (whereas the experimental examples included charging transport layers exhibiting lower amounts of low-molecular weight cyclic siloxane contents within the claimed range). However, this likely would have been expected by a person of ordinary skill in the art, because the comparative examples exhibiting low-molecular-weight cyclic siloxane contents of 0.3 ppm initially contained higher amounts of cyclic siloxane in their respective leveling agent solutions.
For instance, Example S3 and Comparative Example S1 both included leveling agent solutions containing 5 ppm of “KP340” as the polyalkylsiloxane and decamethylcyclopentasiloxane as the low-molecular-weight cyclic siloxane. In both examples, the step of performing a high-temperature treatment on the polyalkylsiloxane was performed. However, the leveling agent solution (3) of Example S3 contained 1.8% by mass of the cyclic siloxane, whereas the leveling agent solution (6) of Comparative Example S1 contained 6.0% by mass of the cyclic siloxane. As a result, the charge transport layer of Example S3 exhibited a low-molecular-weight cyclic siloxane content of 0.09 ppm, whereas the charge transport layer of Comparative Example S1 exhibited a low-molecular-weight cyclic siloxane content of 0.30 ppm (see [0153], [0156], and Table 1 of the instant specification).
In other words, the charge transport layers of the comparative examples appear to have exhibited low-molecular-weight cyclic siloxane amounts outside of the claimed range because the leveling agent solutions used in the coating solutions initially contained higher amounts of cyclic siloxane, and is, therefore, independent of the step of performing high-temperature treatment on the polyalkylsiloxane.
Accordingly, for the reasons discussed above, the rejection of claims 1-20 under 35 U.S.C. 102(a)(1) over Sasaki et al. and the rejection of claims 1-20 under 35 U.S.C. 102(a)(1) over Sugiura et al. as applied in the most recent Office action are maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasaki et al. (US PGP 2021/0080843 A1).
Sasaki teaches an electrophotographic photoreceptor including a conductive substrate and a photosensitive layer disposed on the conductive substrate (Abstract). A process cartridge comprising the electrophotographic photoreceptor (as recited in instant claim 13, claim 14, claim 15, claim 16, claim 17, claim 18, and claim 19) and an image forming apparatus including the components recited in instant claim 20 are also described ([0299]-[0319]). The photosensitive layer of the photoreceptor is taught to be a laminated-layer-type photosensitive layer (as recited in instant claim 1) or a single-layer-type photosensitive layer (charge generation/charge transport layer) (as recited in instant claim 7) ([0181]-[0186], [0295]-[0298]).
In the examples, the coating liquid for forming the charge transport layer was taught to include 5 ppm of a silicone oil commercially known as “KP340” (Shin-Etsu Chemical Co., Ltd.) ([0341]). According to the Applicant’s disclosure, “KP340” is a polyalkylsiloxane having a weight-average molecular weight of 8,000 (see [0151] of the instant specification). Sasaki appears to be silent to teach or suggest that the coating liquid includes a cyclic siloxane. Therefore, the charge transport layer of Sasaki’s photoreceptor contained a polyalkylsiloxane in an amount of 5 ppm, and would not contain a cyclic siloxane having a molecular weight of 450 or less (which reads on the corresponding limitations recited in instant claim 1, claim 2, claim 3, claim 7, claim 8, and claim 9).
The charge generation layer is taught to contain a charge-generating material and a binder resin ([0247]). The charge-generating material is taught to include metal phthalocyanine pigments, like titanyl phthalocyanine ([0249]) (which reads on the corresponding limitation recited in instant claim 4 and claim 10). In the examples, the coating liquid for forming the charge generation layer was taught to include chlorogallium phthalocyanine having diffraction peaks at least at Bragg angles (2θ±0.2º) of 7.4º, 16.6º, 25.5º, and 28.3º with respect to CuKα characteristic X-rays ([0338]) (which reads on the corresponding limitations recited in instant claim 5, claim 6, claim 11, and claim 12).
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugiura et al. (US PGP 2017/0277047 A1).
Sugiura teaches an electrophotographic photoreceptor including a conductive substrate and a photosensitive layer disposed on the conductive substrate (Abstract). A process cartridge comprising the electrophotographic photoreceptor (as recited in instant claim 13, claim 14, claim 15, claim 16, claim 17, claim 18, and claim 19) and an image forming apparatus including the components recited in instant claim 20 are also described ([0017]-[0053]). The photosensitive layer of the photoreceptor is taught to be a laminated-layer-type photosensitive layer (as recited in instant claim 1) or a single-layer-type photosensitive layer where the functions of the charge generation layer and the charge transport layer are integrated (as recited in instant claim 7) ([0056]).
In the examples, the coating liquid for forming the charge transport layer was taught to include 5 ppm of a silicone oil commercially known as “KP340” (Shin-Etsu Chemical Co., Ltd.) ([0403]). According to the Applicant’s disclosure, “KP340” is a polyalkylsiloxane having a weight-average molecular weight of 8,000 (see [0151] of the instant specification). Sugiura appears to be silent to teach or suggest that the coating liquid includes a cyclic siloxane. Therefore, the charge transport layer of Sugiura’s photoreceptor contained a polyalkylsiloxane in an amount of 5 ppm, and would not contain a cyclic siloxane having a molecular weight of 450 or less (which reads on the corresponding limitations recited in instant claim 1, claim 2, claim 3, claim 7, claim 8, and claim 9).
The charge generation layer is taught to contain a charge-generating material and a binder resin. The charge-generating material is taught to include metal phthalocyanine pigments, like titanyl phthalocyanine ([0117]-[0120]) (which reads on the corresponding limitation recited in instant claim 4 and claim 10). In the examples, the coating liquid for forming the charge generation layer was taught to include hydroxygallium phthalocyanine having diffraction peaks at least at Bragg angles (2θ±0.2º) of 7.5º, 9.9º, 12.5º, 16.3º, 18.6º, 25.1º, and 28.3º with respect to CuKα characteristic X-rays ([0400]) (which reads on the corresponding limitations recited in instant claim 5, claim 6, claim 11, and claim 12).
Conclusion
THIS ACTION IS MADE FINAL. 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 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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
06/29/2026
1 That “in paragraphs [0163] and [0170] of the as-filed application, it was proven in the comparative examples, wherein polyalkylsiloxane is added to form a coating solution for the photosensitive layer without high-temperature treatment, the content of the low-molecular weight cyclic siloxane is higher than 0.1 ppm as claimed (i.e., 0.30 ppm)”.
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