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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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 1-20 are indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. 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.
The Applicant’s claims are indefinite for reciting the invention in terms of physical properties desired in the article rather than setting for the specific compositions which would meet such characteristics. Specifically, the Applicant has recited the photoreceptor in terms of ionization potentials desired in the electroconductive and undercoat layers as well as in a compound contained within the undercoat layer. This recitation is indefinite because the claims cover any conceivable combination of ingredients either presently existing or which might be discovered in the future and which would impart said desired characteristics. Furthermore, the product has not been described with sufficient particularity that it can be identified so that one can determine what will and will not infringe. The basis of this rejection is not to be misconstrued as the claims being overly broad, which is not a basis for rejection. Instead, one of ordinary skill in the art would not be able to ascertain which of the myriad photoreceptors taught in the prior art would and would not infringe, placing a burden of undue experimentation on any person of ordinary skill in the art to determine would does not does not read on the Applicant’s claims. As such, the claims must be amended to recite the components of the various layers used by the Applicant to produce the recited physical parameters.
The claim limitations of pending claims 5 and 6 taken together would place claim 1 into definite form. Claims 5 and 6 are rejected herein as they do not depend on each other and therefore each claim is indefinite for not possessing the claim limitations of the other. Likewise, the claim limitations of pending claims 13 and 14 taken together would place claim 9 into definite form.
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) 1-5, 7-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 772090 (henceforth EP ‘090) in view of Iwasaki et al. (US Patent 10,642,173).
EP ‘090 teaches a photoreceptor comprising a support, a conductive layer, an intermediate layer (undercoat layer) and a photosensitive layer disposed on each other in this order (Abstract). EP ‘090 further teaches that there should be a relationship between the work function of the conductive layer (W) and the ionization potential of the undercoat layer (Ip) that satisfies the following Formula 1: Ip > W + 0.5 (Abstract). As can be seen from Formula 1 the ionization potential of the undercoat layer is higher than the work function of the conductive layer, which is the same relationship claimed by the Applicant between the ionization potential of the undercoat layer and the ionization potential of the conductive layer. EP ‘090 defines the work function as the minimum energy necessary for removing one electron from a metal or crystal surface of a semiconductor to a location just outside the surface (p. 6 ln .29-30) while the ionization potential represents the energy necessary for infinitely separating one electron from an atom or a molecule under base status in air for dissociating a positive ion and a free electron (p. 6 ln. 40-42). As such, it is understood that the values are somewhat close to each other and measure analogous, though distinct, properties. Therefore, it is assumed with confidence that the ionization potential of the conductive layer will also be lower than the ionization potential of the undercoat layer in the photoreceptor of EP ‘090.
EP ‘090 further teaches that the work function (W) of the conductive layer is a value between 3.5 and 6.0 and the ionization potential of the undercoat layer is between 7 and 4.0 (see Formulae 2-4 on p. 6). The ionization potential will be expected to be a slightly higher value than the work function and therefore the range of suitable work function values for the conductive layer is understood to correlate to ionization potential values of the conductive layer that are slightly higher, but still overlapping, the range of 3.5 to 6.0. As such, the ionization potentials for suitable conductive layers that possess work functions of 3.5 to 6.0 would be understood to encompass ionization potentials within the Applicant’s recited range of 5.4 to 5.8. The optimization of these values is taught to produced a finished image with high quality by minimizing dark decay and electrification potential (p. 3 ln. 55-58). This is taught to be achieved by preventing the injection of charge from the conductive layer into the charge generating (photosensitive) layer by optimizing the work function and ionization potentials of the requisite layers as set forth above (p. 3 ln. 59- p. 4 ln. 4). As such, the relationship between the work function and ionization potential of said layers is taught to be a result effective variable. As work function and ionization potential of a layer are understood to be analogous optimizing the relationship between these values in the conductive and undercoat layer would simultaneously optimize the ionization potential between the two layers. EP ‘090 does not, however, teach that the undercoat layer comprise a compound with an ionization potential that is less than the ionization potential of the conductive layer.
Iwasaki teaches a photoreceptor comprising a conductive substrate, an undercoat layer on the conductive substrate and a photosensitive layer on the undercoat layer (Abstract). The undercoat layer is taught to comprise a perinone compound and an amine compound (A) that has an ionization potential of 5.4 to 5.9 eV (Abstract). Such an undercoat layer is taught to possess an excellent charge-retaining property (Col. 1 ln. 55 – Col. 2 ln. 62). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized the undercoat layer of Iwasaki as the undercoat layer of EP ‘090 and to have optimized the relationship between the work function of the conductive layer (and therefore the ionization potential of the conductive layer) and the ionization potential of the undercoat layer of the thus modified photoreceptor of EP ‘090 in order to perfect the charge retaining properties of the modified undercoat layer. Such optimization would have encompassed values within the Applicant’s recited ranges of claims 1-4 and 9-12 based on the disclosed values taught by EP ‘090 and Iwasaki.
As EP ‘090 teaches an upper limit of the work function of the conductive layer of 6.0 eV and as it is understood that the ionization potential of the same conductive layer will have an ionization potential slightly higher than the work function, the conductive layer of the EP ‘090 would possess a higher ionization potential than the ionization potential of the amine compound of Iwasaki and therefore reads on the Applicant’s pending claims 2-4 and 10-12. Furthermore, as argued above it would have been obvious to have optimized these values based on teachings of Iwasaki and EP ‘090.
Iwasaki further teaches that the amine compounds in the undercoat layer are compounds that reads on the Applicant’s formula (α) recited in pending claims 5 and 13. Specific examples include the following compounds which are also taught by the Applicant in Table 1-2 of the instant specification (see Col. 19-20 of Iwasaki):
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546
234
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586
214
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.
The perinone compounds of Iwasaki are similar in structure to the compounds recited by the Applicant in pending claims 6 and 14 but structurally different. The content of the amine compound is taught to from 0.01 to 1.0 mmol/g of the conductive layer (Col. 20 ln. 65 – Col. 21 ln. 3). The amount of the perinone compound in the layer is taught to be 30 to 90 mass percent of the total solid content of the undercoat layer (Col. 17 ln. 55-62). In Example 5 of Iwasaki 3 parts of the amine compound and 34 parts of the perinone compound are present in the undercoat layer and therefore the content of the amine compound as a percentage of the perinone compound is 3/34 x 100% = 8.8%.
EP ‘090 further teaches an image forming apparatus and process cartridge that read on the limitations recited by the Applicant in pending claims 17-20 (See p. 8 ln. 58-p. 10 ln. 23).
Conclusion
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 03/07/2026