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 § 103
Claim(s) 1, 3-4, 8-11, 13-14, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oshi et al. (JP 2018-146684).
Note: citations refer to the machine translation of JP ‘684 mailed 6/16/2025.
Regarding claim 1:
Oshi a belt for an image forming apparatus [abstract; 0001]. The belt comprises a film of polyimide or polyamide-imide (resin) and at least one solvent selected from a urea-based solvent, an alkoxy group-containing amide-based solvent, and an ester group-containing amide-based solvent [0007; 0022]. The content of the solvent is 0.005-3% by mass (50-30,000 ppm) to provide desirable properties [0030; 0086-0087].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to adjust the residual solvent to be within the range disclosed by Oshi, including over values which fall within the scope of the claimed range, to provide a film in accordance with the reference’s teaching and having the properties desired for a given end use, and thereby arrive at the claimed invention. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 3-4:
Oshi teaches solvents include 3-methoxy-N,N-dimethylpropanamide and 3-n-butoxy-N,N-dimethylpropanamide [0008].
Regarding claim 8:
Oshi teaches the solvent’s boiling point is 120-300°C [0089]. At least 3-methoxy-N,N-dimethylpropanamide and 3-n-butoxy-N,N-dimethylpropanamide have boiling points within the claimed range.
Regarding claim 9:
Given that Oshi discloses a resin film otherwise comprising the same materials as presently claimed, the examiner submits the film meets the claimed property requirements.
Regarding claim 10:
Given that Oshi discloses a resin film otherwise comprising the same materials as presently claimed, the examiner submits the film meets the claimed property requirements. Alternatively, Oshi teaches the Young’s modulus can be adjusted vary the resin and/or the content of the solvent [0030]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the Young’s modulus, including over values that would result in a breaking strength as presently claimed, to provide the desired mechanical properties for a given end use, and thereby arrive at the claimed invention.
Regarding claim 11, 13-14 and 18-19:
As discussed above, Oshi discloses an endless belt for use in an image forming apparatus.
Regarding claim 20:
Oshi discloses an image forming apparatus comprising an image holding member, a charging unit, an electrostatic latent image forming unit, a developing unit, a transfer unit, and a fixing device; wherein the fixing device comprises the belt according to Oshi’s invention [0149-0152].
Claim(s) 5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oshi et al. (JP 2018-146684) in view of Iwamoto (US 2006/0263555).
Note: citations refer to the machine translation of JP ‘684 mailed 6/16/2025.
Regarding claim 5:
Oshi teaches a belt comprising a polyimide as previously explained. Suitable monomers include phenylenediamine (PPD), diaminodiphenylether (DDE), and mixtures thereof [0049-0050].
Oshi is silent with regard to a ratio of PPD units to DDE units as presently claimed.
Such polyimides were known in the art to have utility. For example, Iwamoto discloses a color fixing belt for image forming devices [abstract; 0002]. The belt comprises a polyimide, preferably having a ratio of PDA/DDE in the range of 5/5 to 9/1, wherein such a ratio provides desirable properties of stiffness, flexibility, etc. [0012; 0020].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a polyimide having a combination of PDA and DDE, including in ratios falling within the presently claimed range, to provide a belt having desired properties of stiffness, flexibility, etc. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 15:
As discussed above, Oshi discloses an endless belt for use in an image forming apparatus.
Response to Arguments
Applicant's arguments filed 10/8/2025 have been fully considered but they are not persuasive.
Applicant’s amendments to independent claims 1 and 10 to require “a content of the solvent is equal to or more than 6,000 ppm and equal to or less than 7,000 ppm” overcome the previous rejections based on Takanashi (JP 2006-330539) and rejections based on Okaniwa (EP 2644654).
Takanashi discloses an endless belt for an electrophotographic apparatus [abstract; 0001]. The belt is formed from a thermoplastic resin (i.e., the belt comprises a resin film) [0011]. The belt has a residual solvent of 0.4% or less (i.e., 4,000 ppm or less) [0016]. The reference teaches an endless belt having 0.4% or less of residual solvent has low warpage, and so teaches away from the claimed content of the solvent.
Okaniwa discloses a resin composition and a film therefrom [abstract; 0001]. The composition comprises a polymer and at least one solvent selected from a group that includes amide solvents [0007-0008]. Suitable amide solvents include alkoxy group-containing amides, such as N,N-dimethoxypropyl- acetamide; 3-methoxy-N,N-dimethylpropanamide; and 3-n-butoxy- N,N-dimethylpropanamide [0101]. The film is formed by removing the organic solvent [0118]. Okaniwa teaches its examples according to its invention all have residual solvent, wherein specific amounts are 0.2%, 0.3%, 0.4%, and 0.5% (i.e., 2,000 through 5,000 ppm) [0171; 0188; Table 1]. The reference is silent with regard to other residual solvent content, including a content falling within the claimed range.
Applicant argues Oshi (JP 2018-146684) discloses a broad residual solvent range of 50-30,000 ppm, but does not disclose the claimed narrow range of 6,000-7,000 ppm (p8). Applicant argues Oshi fails to recognize the issues of fold endurance and tensile strength as disclosed in the present application (p9). Applicant further argues the claimed features of specific solvent type and residual solvent range yields superior folding endurance (specifically citing “Evaluation A and AA”) (p9).
While the examiner agrees Oshi discloses a broader range of 50-30,000 ppm (and also a narrower range of 500-20,000 ppm at [0086]), this range nevertheless overlaps with the narrower claimed range. In the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The examiner maintains it would have been obvious to one of ordinary skill in the art to adjust the residual solvent to be within the range disclosed by Oshi, including over values which fall within the scope of the claimed range, to provide a film in accordance with the reference’s teaching and having the properties desired for a given end use, and thereby arrive at the claimed invention.
Regarding Oshi’s lack of disclosure regarding fold endurance and tensile strength, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As discussed above, Oshi discloses resin films that otherwise are the same as presently claimed and so would be expected to share the same properties.
Regarding the superior folding endurance resulting from the claimed combination, the examiner respectfully submits Applicant has not specifically pointed to any data to support this position. The examiner acknowledges the present specification at [0188] discloses evaluation criteria using “AA” and “A” ratings; however, Applicant has not explained the examples in the context of the present claims. Applicant has the burden to establish results are unexpected and significant and the burden of explaining any proffered data (MPEP 716.02(b)). Additionally, although not fully considered in view of Applicant’s lack of explanation, the examiner notes present claim 9 would appear to encompass examples rated with a “number of folds” as low as “C”, and furthermore, several examples appear to indicate the residual solvent content does not necessarily impart the folding endurance or tensile strength as asserted by Applicant (see, e.g., Examples 10 and 13-20). Therefore, the examiner maintains Applicant has not demonstrated unexpected results and so maintains the rejections based on Oshi.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787