CTNF 18/505,369 CTNF 100215 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 07-29 AIA The disclosure is objected to because of the following informalities: at [0032] of the as-filed Specification, the preference is stated that structural unit (2-1) makes up 5 – 40% by moles of the surface layer of the photosensitive member. A basis for this fraction is not stated, but is likely meant to be a percentage based on the moles of structural units contained in the polyarylate and the polycarbonate resins. However, a broader but less plausible interpretation would have the basis include moles of charge transport materials, moles of charge generating materials, and moles of other additives which might be contained in the surface layer. In either case, the Specification should be amended to clarify the basis for this fraction. Claim Objections Claim 2 is objected to because of the following informalities: similar to the Specification objection stated above, the basis for the fraction by moles of the structural unit (2-1) in the surface layer is not clear . Appropriate correction is required. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1 – 4 and 7 - 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al (US PGP 2009/0232551) in view of Ito et al (US PGP 2016/0252830) . Nagao teaches an electrophotographic photoreceptor having a photosensitive layer (Abstract). The photosensitive layer is disposed on an electroconductive support, or on an undercoat layer which is in turn disposed on the support ([0143]). The photosensitive layer may be a monolayer-type or laminate-type photosensitive layer. A protective layer is optionally included, but is not required ([0172]); where the protective layer is not included, the photosensitive layer constitutes the surface layer of the photoreceptor. In the instance of a laminate-type photosensitive layer, the charge transport layer would be the surface layer. The charge transport layer preferably contains a specific polyester resin as a binder resin ([0157]), and may also contain another binder resin alongside the specific polyester resin ([0158]). The polyester resin of the invention of Nagao contains a structural unit represented by formula (1) ([0061]), which has a formula of [-O-Ar 1 -X 1 -Ar 2 -O-(CO)-Ar 3 -X 2 -Ar 4 -(CO)-]. The groups Ar 1 and Ar 2 are preferably arylene groups having 7 carbons ([0064]), specifically the same phenylene group having a methyl substituent ([0068]). The linking group X 1 between Ar 1 and Ar 2 may be a single bond, or may be CH(CH 3 ) ([0070], [0071]). The groups Ar 3 and Ar 4 are preferably unsubstituted phenylene groups ([0069]). The linking group X 2 between Ar 3 and Ar 4 is preferably O ([0072]). The repeating structure of Formula (1) consists of partial structures represent by a bivalent hydroxyl residue (Formula (4)) and a dicarboxylic acid residue (Formula (5)) ([0073]). The bivalent phenol residue may be 1,1-bis(4-hydroxy-3-methylphenyl)ethane ([0081]). The dicarboxylic acid residue is preferably diphenylether-4,4’-dicarboxylic acid ([0095]). Such a combination would give a polyarylate repeating unit labeled Polyester resin Y ([0622] and page 57, Chemical Formula 41), which has a structure identical to that of instant structural unit (1-1). Nagao teaches that bivalent hydroxyl residues can be incorporated as a combination of two or more kinds in the polyester resin ([0092]). Therefore, where a unit of bivalent hydroxyl residue according to Formula (4), wherein Ar 1 and Ar 2 are both 4-hydroxy-2-methylphenyl groups and X 1 is CH(CH 3 ), is added alongside 1,1-bis(4-hydroxy-3-methylphenyl)ethane (mentioned above), the resulting polyarylate resin would have a structure reading on instant structural unit (1-2). In addition, where X 1 is a single bond, 4,4’-dihydroxy-3,3’-dimethylbiphenyl and 4,4’-dihydroxy-2,2’-dimethylbiphenyl may be incorporated alongside diphenylether-4,4’-dicarboxylic acid, resulting in a polyarylate resin having a structure reading on instant structural unit (1-3). In addition to the specific polyester resin taught by Nagao, the binder resin of the photoreceptor may include a polycarbonate resin ([0114]). However, Nagao does not appear to teach a polycarbonate having a structure reading on instant structural unit (2-1). Ito teaches an electrophotographic photosensitive member comprising a support, a charge generating layer, and a charge transport layer, wherein the charge transport layer is the surface layer of the photosensitive member (Abstract). The charge transport layer contains a polycarbonate resin having a structural unit selected from a group A, and a structural unit selected from a group B ([0023]). Group B includes structural units represented by formulae (104) – (106) ([0027]). The bisphenol compounds which give rise to such structural units are represented by formulae (110) – (112) ([0031]). Examples of bisphenol compounds corresponding to formula (110) are given, which include 4,4′-dihydroxy-2,2′-dimethyl biphenyl ([0042]). Incorporation of this bisphenol unit would give rise to a structural unit reading on instant structural unit (2-1). This unit is pointed out as formula (B-202), and Ito teaches that incorporation of this unit in the polycarbonate resin leads to effective fogging reduction and imparts mechanical strength ([0047]). In preparing the photosensitive member of Nagao, one of ordinary skill in the art would have been motivated to improve the mechanical strength of the charge transport layer and reduce the fogging effect by incorporating the polycarbonate resin as taught by Ito. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to prepare the photosensitive member of Nagao, wherein the outermost charge transport layer comprises the polycarbonate resin of Ito alongside the polyarylate resin of Nagao. Such a charge transport layer would comprise a polyarylate resin reading on at least one of the polyarylate structural units recited in Claim 1, and the polycarbonate structural unit of Claim 1 . Ito teaches that the structural units from Group A preferably make up 20 – 70% by moles of the polycarbonate resin ([0050]). Therefore, the structural units from Group B (of which Ito’s (B-202) is a member, which is the same as instant structural unit (2-1)) may make up 30 – 80% by moles of the polycarbonate resin, overlapping the range stated in Claim 3 . Nagao teaches that the second resin is preferably contained in the binder resin of the photosensitive layer is preferably 80% by weight or less, and 1% by weight or more ([0358]). This would allow the content by moles of Ito’s structural unit (B-202) in the binder resin of the charge transport layer (surface layer) to read on the range stated in Claim 2 . According to the instant Specification, a structural unit derived from 4,4’-dihydroxy-2,2’-dimethylbiphenyl gives rise to MS peaks at m/z = 242 and m/z = 247, and a peak at 2.40 ppm in 1 H-NMR (CDCl 3 ) ([0034]), and a structural unit derived from 4,4’-dihydroxy-3,3’-dimethylbiphenyl gives rise to MS peaks at m/z = 242 and m/z = 247, and a peak at 2.35 ppm ([0035]). Therefore, where the polyarylate resin of Nagao may comprise both of those structural units (reading on instant formula (1-3), discussed above), the polyarylate resin would have the MS and 1 H-NMR signals just mentioned. In addition, where the polycarbonate resin of Ito may comprise a structural unit derived from 4,4′-dihydroxy-2,2′-dimethyl biphenyl, the polycarbonate resin would have MS peaks at m/z = 242 and m/z = 247, and a peak at 2.40 ppm in 1 H-NMR (CDCl 3 ), satisfying Claim 4 . Nagao describes a photoreceptor cartridge, analogous to a process cartridge, which supports the photoreceptor and may include at least one of a charging apparatus, an exposure apparatus, a developing apparatus, a transfer apparatus, a cleaning apparatus, and a fixing apparatus, and which is detachably attached to the main body of an image forming device, satisfying Claim 7 and Claim 8 . Where the above-described photoreceptor cartridge is attached to the main body of an image forming apparatus, the apparatus would thus comprise the components listed, satisfying Claim 9 and Claim 10 . 07-21-aia AIA Claim s 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al (US PGP 2009/0232551) in view of Ito et al (US PGP 2016/0252830), further in view of Yamashita et al (JP 2021-105715) (machine translation of which is referred to henceforth) . The above discussions of Nagao and Ito are incorporated herein. Neither of Nagao or Ito appears to teach incorporation of silica particles into the surface layer of the photosensitive member. Yamashita teaches an electrophotographic photoreceptor having a surface layer which comprises a binder resin ([0008]). The photosensitive layer may contain additives, and silica particles are pointed out as improving the durability of the photosensitive layer ([0092]). In preparing the photosensitive member of Nagao, wherein the outermost charge transport layer comprises the polycarbonate resin of Ito alongside the polyarylate resin of Nagao, one of ordinary skill in the art would have been motivated to improve the durability of the photosensitive layer by incorporating silica particles as taught by Yamashita. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to prepare the photosensitive member of Nagao, wherein the outermost charge transport layer comprises the polycarbonate resin of Ito alongside the polyarylate resin of Nagao, and wherein the outermost charge transport layer comprises silica particles as taught by Yamashita, satisfying Claim 5 . Yamashita teaches that the silica particles added to the photosensitive layer preferably have a volume-average particle size of 7 – 1,000 nm, encompassing the range stated in Claim 6 . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grant S Seiler whose telephone number is (571)272-3015. The examiner can normally be reached 9:30 - 5:30 Pacific. 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, Jonathan Johnson can be reached at 571-272-1177. 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. /GRANT STEVEN SEILER/Examiner, Art Unit 1734 /PETER L VAJDA/Primary Examiner, Art Unit 1737 05/27/2026 Application/Control Number: 18/505,369 Page 2 Art Unit: 1734 Application/Control Number: 18/505,369 Page 3 Art Unit: 1734 Application/Control Number: 18/505,369 Page 4 Art Unit: 1734 Application/Control Number: 18/505,369 Page 5 Art Unit: 1734 Application/Control Number: 18/505,369 Page 6 Art Unit: 1734 Application/Control Number: 18/505,369 Page 7 Art Unit: 1734 Application/Control Number: 18/505,369 Page 8 Art Unit: 1734
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