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 Amendment
The amendment filed 6/30/2026 has been entered. Claims 1 and 3-19 remain pending. Claim 2 has been cancelled. Claim 1 has been amended. The abstract has been amended
Response to Arguments
Applicant’s arguments, see page 8, filed 6/30/2026, with respect to the abstract have been fully considered and are persuasive. The objection of the abstract has been withdrawn.
Applicant amended the Abstract to less than 150 words, objection withdrawn.
Applicant's arguments, see page 8-13, filed 6/30/2026 have been fully considered but they are not persuasive.
Applicant argues Takaki does not teach or suggest adding a general formula (AD1) to a positive charging multilayer photoreceptor. Examiner disagrees, while the specific examples in Takaki are for a positive single layer photoreceptor and a negative multilayer photoreceptor, Takaki specifically states both negative-charging and positive-charging photoreceptors show improved results when the cyclohexane dimethanol-diaryl ester compound is added ([0122]).
Applicant further argues Takaki does not teach the addition of the cyclohexane dimethanol-diaryl ester compound is added for the same reasons as the Instant Application. Examiner disagrees, according to the MPEP, rationale to modify or combine prior art may be expressly or impliedly contained in the prior art and references do not have to explicitly suggest combining teachings (MPEP 2144 [R-5]). In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Furthermore, the MPEP states that, “it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the applicant.” Also, according to the MPEP, “Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that obviousness cannot be established by combining references “without also providing evidence of the motivating force which would impel one skilled in the art to do what the patent applicant has done” (emphasis added), reading the quotation in context it is clear that while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention (MPEP 2144 [R-5]).” Takaki teaches the addition of the cyclohexane dimethanol-diaryl ester compound suppresses penetration of harmful gases and moisture into the photoreceptor, resulting in more stable electrical characteristics and image performance.
Applicant further argues Takaki teaches adding the cyclohexane dimethanol-diaryl ester compound to all layers of the laminated photoreceptor, while the Instant Application only adds it to the charge transport layer. Examiner disagrees, Takaki teaches the cyclohexane dimethanol-diaryl ester compound is added to the charge generation layer or the charge transport layer, and does not require adding it to both ([0038]).
Applicant further argues while Takaki specifies the charge transport material is added to the charge transport material in an amount of 2-50 parts by weight per 100 parts of binder resin, or preferably 3-30 parts by weight per 100 parts binder resin ([0062]), Example 1 specifies adding 100 parts per 100 parts binder resin ([0079]). Examiner disagrees, according to the MPEP disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) MPEP 2123 II. The specific example teaching outside of the specified range does not teach away from the disclosed 2-50 parts of charge transport material per 100 parts binder.
Claim Rejections - 35 USC § 103
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, 7-9, 11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20190346780) in view of Takaki (US 20100028791).
Regarding claims 1 and 7, Zhu discloses a positively charged multilayer photoconductor for electrophotography ([0031], [0033], Fig.3). The positively charged multilayer photoconductor includes a charge transport layer comprising a hole transport material and binder, and a charge generation which also contains the hole transport material, a binder, and an electron transport material ([0046], Fig. 3). Zhu further discloses the charge generation layer includes a charge generation material ([0069]). The photoconductor comprises a conductive substrate with the photosensitive layer(s) formed on it, using General Formula (1) as the hole transport material, which matches that of (HT1) of Instant Claim 7 ([0020], [0035]).
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Zhu further discloses R1 represents a hydrogen or optionally substituted C1-3 alkyl group; R2 to R11 each independently represent a hydrogen, a halogen, an optionally substituted C1-6 alkyl group or optionally substituted C1-6 alkoxy group; m and n each represent an integer of 0-4; and R represents a hydrogen atom or optionally substituted C1-3 alkyl group ([0020]). The charge transport layer, #5, and charge generation layer, #4, are sequentially laminated on the conductive substrate, #1, with an undercoat layer between the substrate and charge transport layer ([0033], Fig. 3). However, Zhu does not disclose a cyclohexanedimethanol-diaryl ester compound in the charge transport layer.
Takaki teaches an electrophotographic photoconductor which comprises a cyclohexane dimethanol diaryl ester compound represented by formula (I) in the photosensitive layer ([0037]).
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Takaki further teaches R1 through R10 represent independently a hydrogen atom, a halogen atom, a substituted or unsubstituted alkyl group with 1-5 carbon atoms, a substituted or unsubstituted aryl group, or a substituted or unsubstituted alkoxy group with 1-5 carbon atoms ([0037]). Takaki further teaches by inclusion of the cyclohexane dimethanol-diaryl ester compound prevents void formation in the photosensitive layer during manufacture, leading to improved wear resistance and electric performance by preventing gas and moisture influx ([0034]-[0038]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include the cyclohexane dimethanol-diaryl ester compound taught by Takaki in the photoconductor of Zhu to improve wear resistance and electrical property performance over time.
Takaki further discloses the cyclohexane dimethanol-diaryl ester compound is contained in the range of 0.1-30 parts by weight with respect to 100 parts of resin binder in the layer containing the ester compound ([0041]). Takaki further teaches a charge transport material is added in an amount of 2-50 parts per 100 parts binder resin ([0062]). Therefore, the ester compound is added in an amount of 0.1/(50+100) * 100 to 30/(2+100) * 100, or 0.067 to 29.4 parts per 100 parts binder and transport material.
Regarding claim 8, modified Zhu discloses all limitations as set forth above. Zhu further discloses titanyl phthalocyanine may be used as the charge generation material for both single layer or multilayer photoconductors ([0059]-[0061], [0067]-[0070]).
Regarding claim 9, modified Zhu discloses all limitations as set forth above. Takaki further teaches the specific examples (I-1) though (I-6) as viable formulations of General Formula (I), with (I-1) and (I-2) noted as preferable (page 4-6, [0053]).
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Regarding claims 11 and 14, modified Zhu discloses all limitations as set forth above. Zhu further discloses the preferred coating method for forming the layers of the photoconductor is dip coating, to produce a good quality photoconductor with low cost and high productivity ([0078]). Zhu further discloses the positively charged multilayer photoconductor Examples are produced by preparing the coating liquids and dip coating the charge transport layer and the charge generation layer ([0118]-[0120]).
Regarding claim 13, modified Zhu discloses all limitations as set forth above. Zhu further discloses the positively charged multilayer photoconductor is produced using an aluminum cylinder with a diameter of 24 mm as the conductive substrate ([0118]).
Claims 3-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20190346780) in view of Takaki (US 20100028791) as applied to claim 1 above, and further in view of Fuse (US 5102759).
Regarding claims 3-6 and 10, modified Zhu discloses all limitations as set forth above. However, Zhu does not disclose inclusion of a compound meeting the claimed General Formula (AD2).
Fuse teaches an electrophotographic photoreceptor comprising a photosensitive layer including an amine compound represented by formula (I) (abstract, Col 2 line 52- Col 3 line 11).
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In the amine compound A represents (i)-CH2X, (ii)-CH2CH2X, (iii) a cycloalkyl group or hetrocycloalkyl group, or (iv) an aromatic carbocyclic ring residue or aromatic heterocyclic ring residue. In (i) and (ii) X representing an aromatic carbocyclic ring residue, an aromatic heterocyclic ring residue, a cycloalkyl group or heterocycloalkyl group which may or may not have a substituent. B represents one of (i), (ii), and (iii), and R represents a hydrogen, alkyl group, or aralkyl group (abstract, Col 2 line 52- Col 3 line 11). Fuse further teaches the addition of the amine compound improves ozone resistance for the photoreceptor (Col 2 line 41-49). Fuse further teaches the amine compound is added to all of the layers of the photosensitive layer, including carrier generation and carrier transport layers. The amine compound is added in an amount of 0.1-20% by weight of the layer (Col 15 line 36-47). Fuse further teaches tribenzylamine as compound (7) in the specific examples of the amine compound which may be used (Col 9-10). Compound (7) is further used in Example 1D (Tabled 2 Col 19-20).
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Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to incorporate an amine such as tribenzylamine into the layers of the photoconductor of modified Zhu, as taught by Fuse, to improve ozone resistance.
Claims 1, 12, 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (US 20180329318) in view of Takaki (US 20100028791).
Regarding claims 1, 12, 15, and 17, Takeuchi discloses a positively chargeable electrophotographic photoreceptor comprising a conductive support, a charge transport layer, and a charge generation layer. The charge transport layer contains a hole transport material and a binder resin. The charge generation layer contains a charge generation material, a hole transport material, an electron transport material and a binder resin. The charge transport layer is on the conductive support, with the charge generation layer on the charge transport layer ([0021]). However, Takeuchi does not disclose a cyclohexanedimethanol diaryl ester compound representing (AD1) from the Instant Claim.
Takaki teaches an electrophotographic photoconductor which comprises a cyclohexane dimethanol diaryl ester compound represented by formula (I) in the photosensitive layer ([0037]).
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Takaki further teaches R1 through R10 represent independently a hydrogen atom, a halogen atom, a substituted or unsubstituted alkyl group with 1-5 carbon atoms, a substituted or unsubstituted aryl group, or a substituted or unsubstituted alkoxy group with 1-5 carbon atoms ([0037]). Takaki further teaches by inclusion of the cyclohexane dimethanol-diaryl ester compound prevents void formation in the photosensitive layer during manufacture, leading to improved wear resistance and electric performance by preventing gas and moisture influx ([0034]-[0038]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include the cyclohexane dimethanol-diaryl ester compound taught by Takaki in the photoconductor of Takeuchi to improve wear resistance and electrical property performance over time.
Regarding claim 12, modified Takeuchi discloses all limitations as set forth above. Takeuchi further discloses the conductive support is an aluminum tube having a 30 mm diameter ([0113]).
Regarding claims 15 and 17, modified Takeuchi discloses all limitations as set forth above. Takeuchi further discloses the photoreceptor is installed in an electrophotographic apparatus which is then used for a monochrome or tandem color printing with a printing rate of 40 ppm or faster ([0108]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (US 20180329318) in view of Takaki (US 20100028791) as applied to claim 12 above, and further in view of Nagai (US 20060078809).
Regarding claim 16, modified Takeuchi discloses all limitations as set forth above. However, Takeuchi does not disclose the drum life of the photoreceptor.
Nagai teaches a long life photoreceptor with good abrasion resistance and electrical properties ([0011]). Nagai teaches the inclusion of crosslinked resin comprising compound B results in the long life, abrasion resistance and improved electrical properties of the photoreceptor ([0015]-[0017], [0026]).
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Nagai further teaches even after 50,000 images the crosslinked layer keeps the surface smooth, and produces good images with few defects ([0191]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include the crosslinked coating of Nagai on the photoreceptor of Takeuchi to ensure a long life and good abrasion resistance, able to produce good images after over 50,000 images have been formed.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20190346780) in view of Takaki (US 20100028791) as applied to claim 13 above, and further in view of Takeuchi (US 20180329318).
Regarding claim 18, modified Zhu discloses all limitations as set forth above. However, Zhu does not disclose the print speed of the image forming apparatus.
Takeuchi teaches a similar electrophotographic photoreceptor. Positively chargeable, comprising a conductive support, a charge transport layer containing a hole transport material and a binder on the support, and a charge generation layer containing a charge generation material, a hole transport material, an electron transport material, and a binder resin ([0021]). Takeuchi further teaches the contact angle of water is between 81-87° ([0021]). Takeuchi further teaches the photoreceptor may be mounted in a high speed printer using cleaner-less process, without generation of fine black spots or color spots, and prevents filming in high temp and high humidity environments ([0027]). Takeuchi further defines high speed printing as 40 ppm or faster ([0108]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the photoreceptor of Zhu has a water contact angle of 81-87°, as taught by Takeuchi, to prevent fine color spots and filming when used in a high speed printer.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20190346780) in view of Takaki (US 20100028791) as applied to claim13 above, and further in view of Nagai (US 20060078809).
Regarding claim 19, modified Zhu discloses all limitations as set forth above. Zhu further discloses the photoconductor can be used in a color printer, and evaluation is carried out using a Canon Image Runner Color 288 digital copier, which is a tandem color electrophotographic apparatus ([0081], 0100]). However, Zhu does not disclose the drum life of the photoconductor.
Nagai further teaches even after 50,000 images the crosslinked layer keeps the surface smooth, and produces good images with few defects ([0191]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to include the crosslinked coating of Nagai on the photoreceptor of Zhu to ensure a long life and good abrasion resistance, able to produce good images after over 50,000 images have been formed.
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 CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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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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/C.C.S./ Examiner, Art Unit 1737
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731