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 1-10 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.
Claim 1 recites the limitation, “a parameter A and a parameter B satisfy the relationship of A<B, where the parameter indicates a viscoelastic term of each of the plurality of domains and parameter B indicates a viscoelastic term of the matrix.” However, it is unclear what is meant by a “viscoelastic term.” The specification does not further clarify this issue. Paragraphs [0046-47] discusses a relative difference in elastic modulus between the matrix and domain but fails to define the “viscoelastic term” as the elastic modulus. Furthermore, claim 2 further recites that “the matrix has an elastic modulus of 2 MPa or more and 8 MPa or less” and therefore appears to differentiate between the viscoelastic term and the elastic modulus. If no difference is intended then the Applicant should amend the claims using consistent terminology to clarify the claimed subject matter.
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 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita et al. (US PGP 2019/0018362).
Morishita teaches an electrophotographic member comprising a mandrel (electroconductive support) with an elastic layer formed thereon. The elastic layer is taught to have a matrix composed of a polyurethane rubber with convex portions on a surface and the valley portions of the elastic layer are taught to be filled with a second rubber (domains, see Figure 2, [0013] and [0027-28]) comprising a different rubber (Abstract), [0036] and [0039-57]). Morishita further teaches that the Martins hardness of the domains (H2) be higher than the Martens hardness of the matrix (H1) ([0052] and [0062-75]). As the domains are taught to have a higher hardness they are understood to have a lower viscoelasticity and therefore satisfy the Applicants relationship between Parameter A and B recited in pending claim 1 (see [0033] and Figures 7A-7B).
Morishita measures a Martins hardness of the two regions using the same procedure taught by the Applicant for measuring strain after 5 seconds form the unloading of a Vickers diamond tipped indenter in claim 1 ([0069]). Both press an indenter into the matrix and domain portions under similar loads and for similar amounts of time, yet measure slightly different properties. Morishita measures a Martens hardness which is a measure of the indentation depth and indentation load ([0069-70]) while the Applicant measures the strain after 5 seconds or less from indentation in micrometers. The analogous property of Morishita is taught to be a result effective variable and is understood to encompass values of the Applicant’s recited measure within the range of Martens hardness values taught, namely 0.2 N/mm2 or more and 25.0 N/mm2 or less ([0066]). Optimizing within the range taught by Morishita in order to perfect the result effective variable of desired deformation of the matrix rubber in order to prevent toner contamination would be expected to entail values of the Applicant’s hardness measure (see [0066-70] of Morishita). This is further corroborated by Morishita teaching the use of polyurethane resins comprising polycarbonate polyols such as those recited by the Applicant in pending claim 5 ([0040]). 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 sought to optimize the hardness of the elastic layer of Morishita in order to perfect the hardness value of said layer and prevent toner contamination. Morishita further teaches that the electroconductive member be used in an image forming apparatus and process cartridge that reads on the limitations recited by the Applicant in pending claims 8-9 ([0079-86]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Morishita et al. (US PGP 2019/0018362) and further in view of JP 2017-072833 (henceforth JP ‘833).
The complete discussion of Morishita above is included herein. Morishita does not teach an elastic modulus of the elastic layer.
JP ‘833 teaches a conductive layer of a conductive member comprising a rubber material that has an elastic modulus of 1 to 100 MPa in order to provide a stable contact state with a photosensitive member (see <Conductive elastic layer> section of the provided translation). 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 provided the elastic layer of Morishita with an elastic modulus within the range taught by JP ‘833 and to have optimized the elastic modulus in order to perfect the contact stability of the conductive member with the photosensitive member.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
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/PETER L VAJDA/Primary Examiner, Art Unit 1737 04/08/2026
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