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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-15, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nukada et al. (US Pat. No. 5,677,097), and as evidenced by Tadashi (JP 2692829 B2) (references herein made with respect to English machine translation attached).
Nukada teaches an electrophotographic photoreceptor in which an undercoating layer and a photosensitive layer are provided on a conductive substrate (which reads on the corresponding configuration recited in instant claim 1). The undercoating layer is taught to contain at least one electron transporting pigment and a reactive organometallic compound, the electron transporting pigment being selected from the group consisting of an electron transporting polycyclic quinone pigment such as brominated anthoanthrone, an electron transporting perylene pigment, an electron transporting phthalocyanine pigment, and an electron transporting azo pigment (Abstract).
The thickness of the undercoating layer is taught to be set within the range of from 0.1 to 20 µm, and preferably from 0.5 to 10 µm (Col. 29, lines 65-67, Col. 30 line 1) (which narrowly overlaps with the corresponding range recited in instant claim 11).
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In the examples, a dibromoanthanthrone commercially known as “MONOLITE RED 2Y” was used as the electron transporting pigment in the undercoating layer (Col. 64, lines 50-67, Col 65, lines 1-10). The structural formula of the electron transporting pigment is shown below:
The dibromoanthanthrone pigment shown above has a structure that corresponds to the electron transport material represented by general formula (Q) recited in instant claim 6, and is identical to the electron transport material (3) disclosed in the instant specification (CCDC No.: CCDC798609) (see [0198] of the instant specification). According to the Applicant’s data, the dibromoanthanthrone pigment above has a structure that exhibits a crystal density of 2.03 g/cm3 and a LUMO energy level of 3.7 eV (see structure Q-12 in Examples 3 and 6 of Table 1 of the instant specification) (which reads on the corresponding limitation recited in instant claim 1 and claim 5).
Also, according to Tadashi, the dibromoanthanthrone pigment commercially known as “MONOLITE RED 2Y” is known to have an average particle size of 0.2 µm (200 nm) (see 2nd paragraph on pg. 11 of the attached English machine translation). Accordingly, the average particle diameter of the dibromoanthanthrone pigment would necessarily be no greater than 200 nm, even after pulverizing (which reads on the corresponding range recited in instant claim 9).
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Other suitable electron transporting pigments used for the undercoating layer are taught to include the anthanthrone pigment shown below (Col. 6, line 39):
The anthanthrone pigment shown above reads on the variant of General Formula (Q) recited in instant claim 8 when R51 and R52 represent a hydrogen atom.
Nukada appears to be silent to teach or suggest a full width at half maximum (FWHM) of a maximum intensity peak in an X-ray diffraction spectrum measured in a thickness direction. According to paragraph [0025] of the instant specification, the FWHM indicates that the mixing of a plurality of kinds of crystals is small, and the arrangement of the electron transport materials in the undercoat layer is unlikely to be disordered. Also, according to paragraph [0037] of the instant specification, the FWHM can be controlled to be within the claimed range by including an electron transporting material having a structure represented by the General formula (P) or the General formula (Q).
Nukada teaches that the blending ratio of the electron transporting pigment to the binder resin is set to be within the range of 1:10 to 9:1, and preferably 5:5 to 9:1 (which narrowly encompasses the corresponding range recited in instant claim 10). When the weight of the electron transporting agent is within this range, sufficient electron-transfer effect and life time of the coating liquid can be achieved (Col. 29, lines 21-32). The electron transporting pigment is taught to be mixed/dispersed in an organic solvent to prevent aggregation of the electron transporting pigment particles (Col. 29, lines 33-48).
In Nukada’s preparation method, the dibromoanthanthrone pigment is taught to be mixed with a polyvinyl butyral resin commercially known as “S-LEC BM-1” and cyclohexanone and dispersed by a paint shaker for one hour with glass beads. An acetylacetone zirconium butylate commercially known as “ZC540” as the organometallic agent is then added to the dispersion and the mixture is stirred and dispersed by the paint shaker for an additional 10 minutes (Col. 64, lines 50-63). The undercoating layer does of the example does not appear to contain a metal oxide. Therefore, a proportion of a metal oxide in the undercoating layer is 0% by mass (which reads on the corresponding range recited in instant claim 12).
Since the dibromoanthanthrone pigment is the only electron transporting pigment used in the undercoating layer of the example, and is taught to be sufficiently dispersed to prevent aggregation in the coating liquid, the resulting FWHM would be expected to necessarily satisfy the claimed range recited in instant claim 1, based on paragraphs [0025] and [0037] of the instant specification noted above. Applicant is respectfully invited to demonstrate or prove otherwise.
According to MPEP § 2112(V), "[T]he PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of his
[or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977) (footnote and citation omitted).”
Nukada also appears to be silent to teach or suggest the aspect ratio of the electron transporting pigment, and the aspect ratio of the dibromoanthanthrone commercially known as “MONOLITE RED 2Y” is unknown. According to paragraph [0036] of the instant specification, the average primary particle diameter and the aspect ratio of the electron transport material are taught to be adjusted by pulverizing the electron transport material or the coating solution for forming the undercoat layer containing the electron transport material with a ball mill, bead mill, mortar, sand mill, kneader, or the like.
As discussed above, Nukada teaches pulverizing the coating solution containing the electron transporting pigment in a paint shaker with glass beads for 1 hour, and then for an additional 10 minutes after adding the organometallic compound. Similarly, in the Applicant’s examples, the coating solution of the undercoat layer (3) containing the electron transport material (3) is pulverized with glass beads for 3 hours in a sand mill (see [0205], [0208], [0210] of the instant specification). The resulting electron transport material (3) in the undercoat layer (3) was taught to have exhibited an aspect ratio of 2.1 (see Table 1 of the instant specification).
In another example, the coating solution coating solution of the undercoat layer (6) containing the electron transport material (3) is pulverized with glass beads for 2 hours in a sand mill (see [0205], [0208], [0210] of the instant specification). The resulting electron transport material (3) in the undercoat layer (6) was taught to have exhibited an aspect ratio of 2.4 (see Table 1 of the instant specification).
Given the similarities between the pulverization times and methods of the coating solution taught by Nukada and disclosed in the Applicant’s examples, and the type/structure of electron transporting materials, the electron transporting pigment in Nukada’s undercoating layer would be expected to necessarily exhibit an aspect ratio within the scope of instant claim 2 and claim 3. Applicant is respectfully invited to demonstrate or prove otherwise. See MPEP § 2112(V) above.
Nukada appears to be silent to go into detail about suitable types of image forming devices and image forming methods using the electrophotographic photoreceptor. In the examples, the photoreceptor was mounted in a laser printer-modified scanner commercially known as “X-15” and an endurance test of 10,000 printed images was performed to evaluate image quality (Col. 65, lines 55-65, Col. 66, lines 1-52). Accordingly, it is understood that the laser printer used in the evaluation of the photoreceptor necessarily includes a process cartridge (as recited in instant claims 13-15 and 17-19) and the components recited in instant claim 20, as these are necessary in order to form a printed image.
Regardless, absent any teachings of a specific image forming apparatus or process cartridge required to form an image using the photoconductor, it is reasonable to assume that Nukada’s electrophotographic photoreceptor would be compatible with most types of image forming apparatus and process cartridge conventionally used in the art.
As a formal matter, while instant claim 7 is directed toward a narrower embodiment of the General Formula (P), it is included in this rejection because it fully incorporates the subject matter of instant claim 6, which recites that the electron transport material contains at least one of the electron transport materials represented by General Formula (P) or General Formula (Q). In other words, the narrower limitation directed toward General Formula (P) holds no patentable weight in this regard because the prior art reference satisfies the condition of containing the electron transport material represented by General Formula (Q) and does not also need to contain the electron transport material represented by General Formula (P) or any variants thereof.
Allowable Subject Matter
Claims 4 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Applicant is also advised that no applicable prior art was found that teaches or suggests an electrophotographic photoreceptor comprising an undercoat layer provided on a conductive substrate, wherein the undercoat layer contains a binder resin and an electron transport material having a crystal density of 1.62 g/cm3 or greater, and a full width at half maximum (FWHM) of a maximum intensity peak in an X-ray diffraction spectrum measured in a thickness direction being 5.0º or less, wherein the electron transport material contains an electron transport material represented by General Formula (P).
Therefore, claim 1 (and all subsequent claims that fully incorporate the subject matter thereof) would likely be allowable if rewritten to further incorporate the perylenetetracarboxylic dianhydride structure represented by the General Formula (P) recited in instant claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on (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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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
06/27/2026
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