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 § 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 1-20 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, lines 8-9, recite “wherein the surface protective layer is a cured film of a composition containing a reactive charge transport material and contains a hydroxy group and a benzene ring structure”.
It is unclear if the reactive charge transport material of the surface protective layer contains the hydroxy group and the benzene ring structure, or if the cured film of the composition contains the hydroxy group and the benzene ring structure apart from the charge transport material.
Assuming the first interpretation is correct, it is recommended to amend the claim to recite, for example:
“wherein the surface protective layer is a cured film of a composition comprising a reactive charge transport material that contains a hydroxy group and a benzene ring structure”
or,
“wherein the surface protective layer is a cured film of a composition containing a reactive charge transport material , the reactive charge transport material containing a hydroxy group and a benzene ring structure”.
Claim 2, lines 3-5, recite “wherein the surface protective layer is a cured film of a composition that contains a compound containing a hydroxy group and a compound containing no hydroxy group and having a benzene ring structure”.
It is unclear if the “compound containing a hydroxy group” is the same as the “reactive charge transport material” which presumably also contains a benzene ring structure.
Assuming they are the same, it is recommended to amend the claim for better clarity to recite, for example:
“wherein the further contains that does not contain a hydroxy group and has a benzene ring structure”.
Claim 3, lines 3-4, recite “wherein the compound containing a hydroxy group is the reactive charge transport material”.
As discussed above, it is unclear if the “compound containing a hydroxy group” recited in claim 2 (which claims 3 depends on) is the same as the “reactive charge transport material” recited in claim 1 (which claim 2 depends on). That is, claim 3 attempts to narrow the scope of claim 2 by stating that the compound containing a hydroxy group is the reactive charge transport material. However, claim 1 (which claim 2 depends from) already recites that the compound containing a hydroxy group is a reactive charge transport material.
Accordingly, it is recommended to cancel claim 3 for being redundant.
Claim 4, lines 3-4, recite “wherein the compound containing a hydroxy group is a compound having a triarylamine structure”.
As discussed above, it is unclear if the “compound containing a hydroxy group” is the same as the “reactive charge transport material” which presumably also contains a benzene ring structure.
Claim 6, lines 3-4, define the variable MH as a content of “the compound containing a hydroxy group”.
As discussed above, it is unclear if the “compound containing a hydroxy group” is the same as the “reactive charge transport material” which presumably also contains a benzene ring structure.
Claim 7, line 3, recites “wherein the surface protective layer contains no carboxy group”.
It is unclear if this limitation means that the entire surface protective layer is free from compounds having a carboxy group, or if the surface protective layer further includes a compound that does not contain a carboxy group.
Claim 8, line 3, recites “wherein the surface protective layer contains no silicon atom”.
It is unclear if this limitation means that the entire surface protective layer is free from compounds containing a silicon atom, or if the surface protective layer further includes a compound that does not contain a silicon atom.
Claims 5 and 9-20 are rejected because they fully incorporate the subject matter of an indefinite claim.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Iwasaki (US PGP 2013/0065169 A1).
Iwasaki teaches an electrophotographic photoreceptor including a conductive substrate, an undercoat layer provided on the conductive substrate, a charge generation layer provided on the undercoat layer, a charge transport layer provided on the charge generation layer, and an outermost surface layer provided on the charge transport layer ([0034]-[0044], [0256], [0261], [0263], [0265]) (which reads on the corresponding limitations recited in instant claim 1). A process cartridge including the components recited in instant claim 9, claim 10, claim 11, claim 12, claim 13, claim 14, claim 15, and claim 16, and an image forming apparatus including the components recited in instant claim 17, claim 18, claim 19, and claim 20, are also discussed ([0220]-[0229]).
The outermost surface layer of the photoreceptor is taught to contain a polymer that is formed by polymerizing a crosslinkable charge transport material having an aromatic group and a –CH2OH group ([0006]) (which corresponds to the “reactive charge transport material that contains a hydroxy group and a benzene ring structure” recited in instant claim 1).
The crosslinkable charge transport material having a reactive hydroxyl group (an –OH group in the –CH2OH group) is taught to be heated in the presence of an acid catalyst so that the terminal hydroxyl groups are easily dehydrated and a cured film is obtained ([0018]). In other words, the outermost surface of the photoreceptor is a cured film (which reads on the corresponding limitation recited in instant claim 1).
The crosslinkable charge transport material having an aromatic group and a –CH2OH group (hereinafter “the hydroxyl group-containing charge transport material (A)”) is taught to be copolymerized with a crosslinkable charge transport material having a reactive alkoxyl group (hereinafter “the alkoxyl group-containing charge transport material (B)”) ([0029]) (which reads on the corresponding limitations recited in instant claim 1, claim 2, and claim 3). The combination with the alkoxyl group-containing charge transport material (B) is taught to improve the curing speed of the hydroxyl group-containing charge transport material (A) and inhibit the amount of residual unreacted hydroxyl group remaining in the outermost surface layer, thus suppressing image deletion ([0021], [0030]).
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The hydroxyl group-containing charge transport material (A) is taught to be a compound represented by formula (II)-1, and the alkoxyl group-containing charge transport material (B) is taught to be a compound represented by formula (II)-2, shown below ([0128]-[0129]):
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As shown above, both of the hydroxyl group-containing charge transport material (A) and the alkoxyl group-containing charge transport material (B) have triarylamine structures (which reads on the corresponding limitations recited in instant claim 4 and claim 5).
The mixing ratio (amount of (A)/amount of (B)) between the hydroxyl group-containing charge transport material (A) and the alkoxyl group-containing charge transport material (B) is taught to be in the range of from 1/20 to 20/1, and preferably from 10/1 to 2/1, in terms of mass ratio ([0147]) (which reads on the range for the corresponding “mass ratio MH/MB” recited in instant claim 6).
Iwasaki appears to be silent to teach a value of a peak area of the hydroxyl group to a peak area of the aromatic group measured by an attenuated total reflection method of infrared spectroscopy (ATR-FTIR) (hereinafter “the peak area ratio”). The instant specification discloses the method of measuring the aforementioned peak area ratio in paragraph [0017], but does not appear to explicitly state what factors can be controlled to adjust the peak area ratio to be within the claimed range of greater than 0.05 and 0.36 or less, recited in instant claim 1.
However, based on the data presented in Table 1 of the instant specification, the peak area ratio appears to be controlled by the structure of the compound containing the reactive transport material and the hydroxy group, the drying temperature of the surface protective layer, and the drying time of the surface protective layer.
For instance, the photoreceptor of Example 2 was produced in the same manner as Example 1, except that the drying temperature was changed from 160 ºC to 155 ºC. As a result, the photoreceptor of Example 2 exhibited a peak area ratio of 0.35, whereas the photoreceptor of Example 1 exhibited a peak area ratio of 0.15. Similarly, the photoreceptor of Comparative Example 1 was produced in the same manner was Example 3, except that the drying time was changed from 30 minutes to 15 minutes. As a result, the photoreceptor of Comparative Example 1 exhibited a peak area ratio of 0.37, whereas the photoreceptor of Example 3 exhibited a peak area ratio of 0.36.
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In Iwasaki’s working examples, electrophotographic photoreceptors were prepared including an outermost surface layer comprising hydroxyl group-containing charge transport materials (A) represented by formula (I-8) and formula (I-16), and an alkoxyl group-containing charge transport material (B) represented by formula (I-26) ([0266], [0285], Table 1). The formula (I-8), formula (I-16), and formula (I-26) are shown below ([0145]-[0146]):
The charge transport material represented by formula (I-8) is identical to the Applicant’s compound containing a reactive charge transport material and a hydroxy group represented by formula (H-3), the charge transport material represented by formula (I-16) is identical to the Applicant’s compound containing a reactive charge transport material and a hydroxy group represented by formula (H-1), and the charge transport material represented by formula (I-26) is identical to the Applicant’s compound containing no hydroxy group and having a benzene ring structure represented by formula (B-1) (see [0163]-[0165] of the instant specification). In other words, Iwasaki appears to use the same kinds of charge transport materials as the Applicant.
In view of inhibiting oxidation during curing and controlling the ratio of the peak area of the aromatic group to the peak area of the aromatic aldehyde group (“(Peak 2)/(Peak 1)”), Iwasaki teaches controlling the curing/heating temperature and curing/heating time to of the outermost surface layer to fall within specific ranges. The curing temperature is taught to be set to 160 ºC or lower and the curing time is taught to be set to be within 40 minutes ([0026]-[0027], [0212]). Preferably, the curing temperature is set to be within the range of from 135 ºC to 155 ºC, and the curing time is set to be within the range of from 20 minutes to 35 minutes ([0213]).
In Iwasaki’s working examples, the curing temperature ranged from 145 ºC to 155 ºC and the curing time ranged from 25 minutes to 40 minutes (Table 1). Similarly, in the Applicant’s working examples, the curing temperature ranged from 150 ºC to 160 ºC and the curing time ranged from 30 to 45 minutes (Table 1 of the instant specification). In other words, Iwasaki appears to use a sufficiently similar curing temperatures and curing times as the Applicant.
In Iwasaki’s working examples, the content of the hydroxyl group-containing charge transport material (A) ranged from 50 parts to 98 parts and the content of the alkoxyl group-containing charge transport material (B) ranged from 15 parts to 40 parts (Table 1). In Iwasaki’s Example 15, the content of the hydroxyl-group containing charge transport material (A) was 55 parts and, in Example 17, the content of the hydroxyl group-containing charge transport material (A) was 50 parts. Similarly, in the Applicant’s working examples, the content of the compound containing the reactive group transport material and hydroxy group ranged from 40 parts to 45 parts, and the content of the compound containing no hydroxy group and having a benzene ring structure ranged from 10 parts to 20 parts (see Table 1 of the instant specification). In other words, Iwasaki appears to use similar amounts of the hydroxyl group-containing charge transport material as the Applicant.
Additionally, none of Iwasaki’s working examples appear to comprise an outermost surface layer including any compounds/agents containing a carboxy group and/or a silicon atom (which reads on the corresponding limitations recited in instant claim 7 and claim 8).
Given the similarities between the structure of the compound containing the reactive transport material and the hydroxy group, the drying temperature of the surface protective layer, and the drying time of the surface protective layer discussed above, at least some of Iwasaki’s examples (e.g., Example 15 and Example 17) would be expected to necessarily exhibit a peak area ratio within the claimed range of greater than 0.05 and 0.36 or less, recited in instant claim 1. 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).”
Alternatively, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have experimented with different amounts of hydroxyl-group containing charge transport materials, curing temperatures, and curing times, as Iwasaki emphasizes the need to adjust these factors in view of controlling the ratio of the peak area of the aromatic group to the peak area of the aromatic aldehyde group (“(Peak 2)/(Peak 1)”) to inhibit the amount of residual unreacted hydroxyl group remaining in the outermost surface layer, thus suppressing image deletion. In doing so, the skilled artisan would have necessarily arrived at a photoreceptor exhibiting a peak area ratio of the hydroxy group to the peak area of the benzene ring structure in the hydroxyl-group containing charge transport material of the outermost surface layer within the range recited in instant claim 1.
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
06/24/2026
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