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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP 2023-161679, filed on 9/25/2023.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/309,356 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claim 1 of the instant application are recited in claim 1 of the copending application. The claim 1 of 19/309,356 therefore anticipates the instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/060,769 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claim 1 of the instant application are recited in claim 1 of the copending application. The claim 1 of 19/060,769 therefore anticipates the instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
Claims 1-9, and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shigeo (JP S6488553) in view of Otsubo (JP 2017-211537).
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Shigeo teaches a photoreceptor comprising an undercoat layer on a conductive substrate, wherein the undercoat layer contains a butylated melamine-formaldehyde resin, an alkyl-etherified benzoguanamine-formaldehyde resin, and a polycarboxylic anhydride (Abstract, [0029]). The polycarboxylic anhydride allows for electrons to be efficiently injected from the charge generation layer to the undercoat layer, and therefore, a decrease in sensitivity and an increase in residual potential after light irradiation can be minimized ([0042]). Specific examples of this compound include anhydrous naphthalene-1,4,5,8-tetracarboxylic acid ([0050]).
The amount of the anhydride in the undercoat layer is preferably 1 to 50 parts by weight based on the binder resin ([0051]). The thickness of the undercoat layer is from 0.1 to 10 µm ([0054]).
Shigeo is silent regarding the polycarboxylic anhydride being a compound represented by General Formula (P). Otsubo teaches a photoreceptor containing a tetracarboxylic dianhydride in the photosensitive layer, wherein the tetracarboxylic anhydride is represented by general formulas (1), (2), or (3) ([0007]). General formula (3) is equivalent to General Formula (P) of the instant application.
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General formula (1) includes the specific compound (ADD1-1) ([0047]), which is naphthalene-1,4,5,8-tetracarboxylic dianhydride. Specific compound (ADD3-1) ([0055]) is the same as General Formula (P) wherein R1, R2, R3, R4, R5, R6, R7, R8 each independently represent a hydrogen atom. These compounds are taught to be used for the same purpose, and are interchangeable (Table 2). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the undercoat layer of Shigeo to have included the compound (ADD3-1) of Otsubo as the polycarboxylic anhydride.
Shigeo and Otsubo are silent regarding an average primary particle diameter for the polycarboxylic anhydride. However, as Shigeo teaches that the thickness of the undercoat layer is not greater than 10 µm, the particle size of any additives to the binder resin must be small enough that they would be able to be easily dispersed within the layer, so a diameter of 1 µm or less would be desirable. A particle diameter of 0.03 to 1 µm may be arrived at through routine experimentation.
Shigeo is silent regarding an image forming apparatus for the photoreceptor to be used in, therefore, a person of ordinary skill in the art would look to the prior art for a suitable apparatus. Otsubo teaches an image forming apparatus comprising an electrophotographic photoreceptor, a charging device , an electrostatic latent image forming device (exposure section), a developing device, and a transfer device ([0136]). The image forming apparatus further comprises a process cartridge comprising the photoreceptor, wherein the cartridge is attachable to and detachable from the image forming apparatus ([0160]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shigeo and Otsubo as applied to claims 1-9, and 11-20 above, and further in view of Sekido (US PGP 2016/0291489).
Shigeo and Otsubo are silent regarding the addition of a metal oxide to the undercoat layer. Sekido teaches a photoreceptor including a support, an undercoat layer, and a photosensitive layer, wherein the undercoat layer contains 10 mass% or less of a metal oxide (Abstract). Further, Sekido teaches that the amount of metal oxide is preferably less than 5 mass% with respect to the total mass of the undercoat layer ([0142] line 13-16). Metal oxides used in the undercoat layer can suppress the appearance of a positive ghost ([0005]). When an electron transporting substance is also used in the undercoat layer, a smaller amount of the metal oxide may be used while still achieving the same effect of positive ghost suppression ([0006]). As the photoreceptor of Shigeo and Otsubo contains the electron transporting substance represented by General Formula (P), this smaller amount of metal oxide may be used to the same benefit. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the photoreceptor of Shigeo and Otsubo to have included a metal oxide of Sekido in an amount of 5 mass% or less in view of suppressing positive ghosts.
Conclusion
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/J.K./Examiner, Art Unit 1734
/PETER L VAJDA/Primary Examiner, Art Unit 1737 06/17/2026
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