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 .
Response to Arguments
Applicant’s arguments, see pg. 9-13, filed 07/20/2026, with respect to the statutory double patenting rejection of claims 1, 4, 9-10, 13, and 16 under 35 U.S.C. 101 over claims 1-2, 5-6, and 9-10 of copending Application No. 18/451,495 (reference application), the nonstatutory double patenting rejection of claims 2-3, 5-8, 11-12, 14-15, and 17-20 over claims 3-4, 7-8, and 11-16 of copending Application No. 18/451,495 (reference application) and Imai et al., the rejection of claims 1-4, 6-16, and 18-20 under 35 U.S.C. 103 over Seko et al. and Kojima, the rejection of claims 5 and 17 under 35 U.S.C. 103 over Seko et al., Kojima, and Sawai, the rejection of claims 1-4, 6-16, and 18-20 under 35 U.S.C. 103 over Furukawa et al. and Kojima, and the rejection of claims 5 and 17 under 35 U.S.C. 103 over Furukawa et al., Kojima, and Sawai, have been fully considered and are persuasive. Therefore, the aforementioned rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
Applicant’s arguments, see pg. 10-13, filed 07/20/2026, with respect to the rejection of claims 1-4, 6-16, and 18-20 under 35 U.S.C. 103 over Sugiura et al. and Kojima, and the rejection of claims 5 and 17 under 35 U.S.C. 103 over Sugiura et al., Kojima, and Sawai, have been fully considered but they are not persuasive.
The Applicant has amended independent claim 1 to specify that the primary transfer roll of the primary transfer device is a hollow metal roll or a solid metal roll. Support for this amendment can be found in at least paragraph [0097] of the originally filed specification.
Regarding the double patenting rejection(s), the Applicant argues that the cited claims of the ‘495 application fail to recite or suggest that the primary transfer roller is a hollow metal roll or a solid metal roll.
The Examiner agrees. Accordingly, the statutory double patenting rejection of the cited claims has been withdrawn. However, a nonstatutory double patenting rejection has been applied in its place in view of newly cited Kitagawa (see below).
Regarding the rejection(s) relying on Sugiura as the primary reference, the Applicant argues that Sugiura’s conductive roller having an elastic outer layer disposed around a metal supporting member does not read on the claimed hollow or solid metal primary transfer roll because claim 1 now requires that the primary transfer roll itself is a hollow metal roll or a solid metal roll.
The Examiner respectfully disagrees. By way of background, Sugiura teaches that the first transfer roller included in the first transfer unit may be a conductive roller including a supporting member and an elastic foam layer disposed on the supporting member (Col. 16, lines 52-55, Col. 17, lines 47-49). The supporting member is taught to have a hollow shape or a solid-core shape, and is composed of a material including metals like iron, copper, brass, stainless steel, aluminum, nickel, or the like (Col. 17, lines 55-61).
In the method for producing the conductive roller, the foam layer is taught to be attached to the (hollow or solid-core metal) supporting member by, for example, preparing a hollow cylindrical elastic foam body and then inserting the supporting member into the hollow cylindrical elastic foam body (Col. 19, lines 58-63).
While the first transfer roll of Sugiura includes an elastic foam layer covering the metal supporting member, the phrasing of amended claim 1 does not presently exclude coated hollow or solid metal primary transfer rolls. Therefore, the conductive roller of Sugiura reads on the claimed primary transfer roller as it contains a hollow metal roll or a solid metal roll as the supporting member.
In accordance with MPEP § 2173.05(i), Applicant is reminded that any negative limitation or exclusionary proviso included in future claim amendments must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining.").
Regarding the rejection(s) relying on Seko and Furukawa as primary references, the Applicant also argues that both Seko and Furukawa fail to teach a first transfer roller that reads on the hollow or solid metal primary transfer roll recited in amended claim 1.
The Examiner agrees. That is, Seko and Furukawa appear to be silent to teach that the first transfer roller can be or include a hollow metal roll or a solid metal roll. However, newly cited Okabayashi teaches that first transfer rollers are known to include metal rollers formed of metal, such as stainless steel, iron, or aluminum (which can also be plated with nickel, copper, or chromium) or can be elastic rollers formed of a stainless steel conductive core and a conductive foam elastic rubber member wound around the outer circumference of the stainless steel conductive core ([0061]-[0062]). In other words, Okabayashi teaches that both coated and uncoated metal rolls have been known to be useful as primary transfer rollers.
As discussed above, amended claim 1 does not presently exclude coated metal primary transfer rolls. While Okabayashi appears to teach that coated and uncoated metal rolls are suitable equivalents, newly cited Shida teaches that using a metal roller without an elastic layer on its surface as the primary transfer roller is advantageous in that there is decreased variation in the resistance of the roller which does not fluctuate with increased usage ([0034]).
Finally, newly cited Kitagawa explicitly teaches that primary transfer rollers are known to be formed in hollow-cylindrical shapes or solid-cylindrical shapes in order to stretch and support the intermediate transfer belt such that the intermediate transfer belt can circulate ([0050]).
Therefore, the previously applied rejection(s) based on Sugiura are maintained. The previously applied rejection(s) based on Seko and Furukawa are updated to incorporate the teachings of Okabayashi, Shida, and Kitagawa.
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.
Claims 1, 4, 9-10, 13, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, and 9-10 of copending Application No. 18/451,495 (reference application) (hereinafter “the ‘495 application), in view of Kitagawa (US PGP 2005/0254852 A1) (newly cited).
Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of both applications fall with within the same scope of each another.
For instance, both claim sets recite a transfer device comprising the same intermediate transfer member exhibiting the same integral value of a statistical quantity L(r) represented by an Equation (1) (claims 1 of both the instant claims and the ‘495 application). Both claim sets further recite that the transfer device comprises a primary transfer device having a primary transfer roll made of metal and a secondary transfer device (claims 1 of both the instant claims and the ‘495 application).
In both claim sets, the silicone oil contains a polyether-modified silicone oil as the organic group-substituted dimethylpolysiloxane (claim 4 of the instant claims and claim 2 of the ‘495 application). Also, in both claim sets, the resin contains an imide-based resin, wherein the imide-based resin contains a polyimide resin (claims 9 and 10 of the instant application and claims 5 and 6 of the ‘495 application). Finally, both claim sets recite an image forming apparatus comprising the transfer device (claims 14 and 16 of the instant application and claims 9 and 10 of the ‘495 application).
The ‘495 application does not appear to recite that the primary transfer roll of the primary transfer device is a hollow metal roll or a solid metal roll. However, such configuration was known in prior art before the effective filing date of the claimed invention. For instance, Kitagawa teaches an intermediate transfer device including an intermediate transfer belt, a primary transfer section, and a secondary transfer section (Abstract, [0022], [0046]).
The primary transfer roller is taught to be formed in hollow-cylindrical shapes or solid-cylindrical shapes in order to stretch and support the intermediate transfer belt such that the intermediate transfer belt can circulate ([0050]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the primary transfer roll of the ‘495 claims to include a hollow-cylindrical shape or a solid-cylindrical shape, in order to sufficiently support the intermediate transfer belt such that the intermediate transfer belt can properly circulate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-3, 5-8, 11-12, 14-15, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4, 7-8, and 11-16 of copending Application No. 18/451,495 (reference application) (hereinafter “the ‘495 application), in view of Kitagawa (US PGP 2005/0254852 A1) (newly cited), and further in view of Imai (JP 2019168658 A) (previously cited) (references herein made with respect to English machine translation previously attached).
The teachings of Kitagawa are discussed above and incorporated herein. Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of both applications fall with within the same scope of each another.
For instance, the silicone oil is recited as being 0.5% by mass or more and 7% by mass or less (claim 6) or 0.5% by mass or more and 6% by mass or less (claim 7) or 1% by mass or more and 3% by mass or less (claim 8) in the instant application, whereas the silicone oil is recited as being 1% by mass or more and 7% by mass or less (claim 3) or 3% by mass or more and 5% by mass or less (claim 4) in the ‘495 application.
The silicone oil is recited as containing at least one selected from the group consisting of a polyether-modified alkyl silicone oil and an aralkyl-modified silicone oil as the organic group-substituted dimethylpolysiloxane (claim 2 and claim 3), or the silicone oil contains a polyether-modified silicone oil (claim 4) and the resin is recited as containing an imide-based resin (claim 11) in the instant application, whereas the silicone oil is recited as containing a polyether-modified alkyl silicone oil as the organic group-substituted dimethylpolysiloxane (claim 2) and the resin is recited as containing an imide-based resin (claim 7) in the ‘495 application. In both applications, the imide-based resin contains a polyimide resin (claim 12 of the instant application and claim 8 of the ‘495 application).
The image forming apparatus of both applications include the same components (see claim 13, claim 16, claim 17, claim 18, claim 19, and claim 20 of the instant application and claim 11, claim 12, claim 13, claim 14, claim 15, and claim 16 of the ‘495 application).
The claims of the ‘495 application do not appear to recite that the silicone oil contains an aralkyl-modified silicone oil as the organic group-substituted dimethylpolysiloxane as recited in claim 5 of the instant application. However, the use of such silicone oils was known in prior art before the effective filing date of the ‘495 application.
For instance, Imai teaches an intermediate transfer belt for use in electrophotographic equipment comprising at least one resin from the group consisting of polycarbonate resin, polyamide-imide resin, and polyethersulfone resin, carbon black, and a condensed aromatic compound containing a nitrogen atom and an oxygen atom ([0007]). In the examples, an aralkyl-modified silicone oil known as “KF-410” (Shin-Etsu Chemical Co., Ltd.) was used in the base layer of the intermediate transfer belt ([0037], [0057]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used an aralkyl-modified silicone oil as a silicone oil in the intermediate transfer member of the ‘495 claims.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sugiura (US Pat. No. 10,831,133 B1) (previously cited), in view of Kojima (US PGP 2015/0370199 A1) (previously cited).
Sugiura teaches a transfer device including an intermediate transfer body, a first transfer unit that transfers a toner image formed on the surface of an image holding member onto the surface of the intermediate transfer body, and a second transfer unit that transfers the toner image transferred on the surface of the intermediate transfer body onto the surface of a recording medium (Col. 16, lines 15-44). The first transfer unit is taught to include a conductive roller having a metal supporting member (Col. 16, lines 52-55, Col. 17, lines 59-64) (which reads on the corresponding limitation recited in instant claim 1). An image forming apparatus comprising the components recited in instant claim 13, claim 14, claim 15, claim 16, claim 18, claim 19, and claim 20 is also discussed (Col. 21-Col. 25).
The intermediate transfer body is taught to include an endless belt containing a first resin and first conductive particles. In a spatial distribution of the first conductive particles present in an evaluation region of an outer peripheral surface of the endless belt, the evaluation region having a size of 6.3 µm x 4.2 µm, an integral of a statistic L(r) represented by formula (1) from 0.05 µm to 0.30 µm with respect to an interparticle distance r is 0 or more and 0.1 or less (Col. 2, lines 3-45) (which reads on the corresponding limitation recited in instant claim 1).
The first resin is taught to include a resin selected from the group consisting of a polyimide resin, a polyamide-imide resin, an aromatic polyether ether ketone resin, a polyphenylene sulfide resin, and a polyetherimide resin (Col. 5, lines 34-51, claim 2) (which reads on the corresponding limitation recited in instant claim 1, claim 9, claim 10, claim 11, and claim 12).
The conductive particles are taught to contain conductive carbon particles like carbon black (Col. 7, lines 56-67) (which reads on the corresponding limitation recited in instant claim 1).
The conductive roller having a metal supporting member is taught to further include an elastic foam layer disposed on the supporting member (Col. 16, lines 52-55, Col. 17, lines 47-49). The supporting member is taught to have a hollow shape or a solid-core shape, and is composed of a material including metals like iron, copper, brass, stainless steel, aluminum, nickel, or the like (Col. 17, lines 55-61) (which reads on the corresponding structure recited in instant claim 1).
In the method for producing the conductive roller, the foam layer is taught to be attached to the (hollow or solid-core metal) supporting member by, for example, preparing a hollow cylindrical elastic foam body and then inserting the supporting member into the hollow cylindrical elastic foam body (Col. 19, lines 58-63).
Sugiura appears to be silent to teach or suggest that the endless belt contains a silicone oil. However, this feature was known in prior art before the effective filing date of the claimed invention. For instance, Kojima teaches an electrophotographic mono-layer belt comprising a thermoplastic resin and a silicone oil (Abstract).
The silicone oil is taught to be a dimethyl silicone oil and/or a polyether-modified silicone oil ([0045]). In the examples, commercially available dimethyl silicone oils and polyether-modified silicone oil (manufactured by Shin-Etsu Co., Ltd.) were used as the silicone oil (which reads on the corresponding limitations recited in instant claim 1, claim 2, claim 3, claim 4, and claim 11). The addition of the silicone oil to the electrophotographic belt is taught to improve its lubricity ([0046]).
The content of the silicone oil is taught to be 0.5% by mass or more and 5.0% by mass or less with respect to the resin composition in view of reducing the surface energy and suppressing excessive bleedout of the silicone oil to the surface of the belt ([0048]) (which reads on the corresponding limitations recited in instant claim 6, claim 7, and claim 8).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a silicone oil, such as a polyether-modified alkyl silicone oil, into the endless belt of Sugiura within the amount taught by Kojima, in view of improving its lubricity, reducing its surface energy, and suppressing excessive bleedout thereby preventing contamination of other members.
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sugiura (US Pat. No. 10,831,133 B1) (previously cited), in view of Kojima (US PGP 2015/0370199 A1) (previously cited), and further in view of Sawai (JP 2001183928 A) (previously cited) (references herein made with respect to English machine translation previously attached).
The teachings of Sugiura and Kojima are discussed above and incorporated herein. In addition to polyether-modified silicone oil, Kojima teaches that other silicone oils, such as alkyl-modified silicone oil, may also be suitably used ([0045]). However, Kojima appears to be silent to explicitly teach aralkyl-modified silicone oil as a suitable example.
Sawai teaches an electrophotographic intermediate transfer belt containing a modified silicone oil. The modified silicone oil is taught to contain an organic group including methylstyrene (an aralkyl group) and polyether ([0043]). Sawai teaches that any of the listed organic groups including methylstyrene and polyether can be suitably used as they would be expected to exhibit similar effects ([0107]). According to MPEP § 2144.06, it is prima facie obvious to substitute equivalents known for the same purpose.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a silicone oil, such as a methylstyrene-modified silicone oil (i.e., an aralkyl-modified silicone oil), into the endless belt of Sugiura within the amount taught by Kojima, in view of improving its lubricity, reducing its surface energy, and suppressing excessive bleedout thereby preventing contamination of other members. The skilled artisan would have been just as motivated to have selected a methylstyrene-modified silicone oil as a polyether-modified silicone oil as Sawai teaches that they would be expected to exhibit similar effects.
Claims 1-4, 6-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Seko (US Pat. No. 10,935,908 B1) (previously cited), in view of Kojima (US PGP 2015/0370199 A1) (previously cited), further in view of Okabayashi (US PGP 2016/0170334 A1) (newly cited), still further in view of Shida et al. (JP 2021182060 A) (newly cited) (references herein made with respect to English machine translation attached), and even further in view of Kitagawa (US PGP 2005/0254852 A1) (newly cited).
Seko teaches a transfer device including an intermediate transfer body, a first transfer unit that transfers a toner image formed on the surface of an image holding member onto the surface of the intermediate transfer body, and a second transfer unit that transfers the toner image transferred on the surface of the intermediate transfer body onto the surface of a recording medium (Col. 20, lines 65-67, Col. 21, lines 1-9). The first transfer unit is taught to include a conductive roller supporting member (Col. 21, lines 39-50) (which reads on the corresponding limitation recited in instant claim 1). An image forming apparatus comprising the components recited in instant claim 13, claim 14, claim 15, claim 16, claim 18, claim 19, and claim 20 is also discussed (Col. 20-Col. 24).
The intermediate transfer body is taught to include an endless belt containing a resin and conductive carbon particles. In a spatial distribution of the conductive carbon particles present in an evaluation region of an outer peripheral surface of the endless belt, the evaluation region having a size of 6.3 µm x 4.2 µm, an integral of a statistic L(r) represented by formula (1) from 0.05 µm to 0.30 µm with respect to an interparticle distance r is 0 or more and 0.1 or less (Col. 2, lines 3-53) (which reads on the corresponding limitation recited in instant claim 1).
The resin is taught to include a resin selected from the group consisting of a polyimide resin, a polyamide-imide resin, an aromatic polyether ether ketone resin, a polyphenylene sulfide resin, and a polyetherimide resin (Col. 6, lines 40-56, claim 2) (which reads on the corresponding limitation recited in instant claim 1, claim 2, claim 3, claim 4, and claim 11).
The conductive particles are taught to contain conductive carbon particles like carbon black (Col. 9, lines 1-9) (which reads on the corresponding limitation recited in instant claim 1).
Seko appears to be silent to teach or suggest that the endless belt contains a silicone oil. However, this feature was known in prior art before the effective filing date of the claimed invention. For instance, Kojima teaches an electrophotographic mono-layer belt comprising a thermoplastic resin and a silicone oil (Abstract).
The silicone oil is taught to be a dimethyl silicone oil and/or a polyether-modified silicone oil ([0045]). In the examples, commercially available dimethyl silicone oils and polyether-modified silicone oil (manufactured by Shin-Etsu Co., Ltd.) were used as the silicone oil (which reads on the corresponding limitations recited in instant claim 1, claim 2, and claim 7). The addition of the silicone oil to the electrophotographic belt is taught to improve its lubricity ([0046]).
The content of the silicone oil is taught to be 0.5% by mass or more and 5.0% by mass or less with respect to the resin composition in view of reducing the surface energy and suppressing excessive bleedout of the silicone oil to the surface of the belt ([0048]) (which reads on the corresponding limitations recited in instant claim 6, claim 7, and claim 8).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a silicone oil, such as a polyether-modified alkyl silicone oil, into the endless belt of Seko within the amount taught by Kojima, in view of improving its lubricity, reducing its surface energy, and suppressing excessive bleedout thereby preventing contamination of other members.
Seko also appears to be silent to teach that the first transfer roller is or includes a hollow metal roll or a solid metal roll, as recited in amended claim 1. For instance, Seko teaches that the first transfer rollers of the first transfer device may include a single layer or a plurality of layers. In the case of a single-layer structure, Seko teaches that the first transfer roller may include a foamed or non-foamed rubber containing a suitable amount of conductive particles (Col. 23, lines 40-48).
While the example of the single-layer first transfer roller including a rubber containing conductive particles is provided, this does not necessarily constitute a teaching away from using other compositions as first transfer rollers.
According to MPEP § 2123(I), “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” MPEP § 2123(II) further states that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
For instance, Okabayashi teaches that first transfer rollers are known to include metal rollers formed of metal, such as stainless steel, iron, or aluminum (which can also be plated with nickel, copper, or chromium) or can be elastic rollers formed of a stainless steel conductive core and a conductive foam elastic rubber member wound around the outer circumference of the stainless steel conductive core ([0061]-[0062]). In other words, Okabayashi teaches that both coated and uncoated metal rolls have been known to be useful as primary transfer rollers.
While Okabayashi appears to teach coated and uncoated metal rolls are suitable equivalents, Shida teaches that using a metal roller without an elastic layer on its surface as the primary transfer roller is advantageous in that there is decreased variation in the resistance of the roller which does not fluctuate with increased usage ([0034]).
Neither Okabayashi nor Shida appear to explicitly state that the first transfer roller can have a hollow shape or a solid shape. However, Kitagawa teaches that primary transfer rollers are known to be formed in hollow-cylindrical shapes or solid-cylindrical shapes in order to stretch and support the intermediate transfer belt such that the intermediate transfer belt can circulate ([0050]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used a hollow metal roller or a solid metal roller, particularly one without an elastic layer on its surface, as the first transfer roller in the transfer device of modified Seko, in view of decreasing the variation in the resistance of the roller and suitably supporting the intermediate transfer belt.
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Seko (US Pat. No. 10,935,908 B1) (previously cited), in view of Kojima (US PGP 2015/0370199 A1) (previously cited), further in view of Okabayashi (US PGP 2016/0170334 A1) (newly cited), still further in view of Shida et al. (JP 2021182060 A) (newly cited) (references herein made with respect to English machine translation attached), further in view of Kitagawa (US PGP 2005/0254852 A1) (newly cited), and even further in view of Sawai (JP 2001183928 A) (previously cited) (references herein made with respect to English machine translation previously attached).
The teachings of Seko, Kojima, Okabayashi, Shida, and Kitagawa are discussed above and incorporated herein. In addition to polyether-modified silicone oil, Kojima teaches that other silicone oils, such as alkyl-modified silicone oil, may also be suitably used ([0045]). However, Kojima appears to be silent to explicitly teach aralkyl-modified silicone oil as a suitable example.
Sawai teaches an electrophotographic intermediate transfer belt containing a modified silicone oil. The modified silicone oil is taught to contain an organic group including methylstyrene (an aralkyl group) and polyether ([0043]). Sawai teaches that any of the listed organic groups including methylstyrene and polyether can be suitably used as they would be expected to exhibit similar effects ([0107]). According to MPEP § 2144.06, it is prima facie obvious to substitute equivalents known for the same purpose.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a silicone oil, such as a methylstyrene-modified silicone oil (i.e., an aralkyl-modified silicone oil), into the endless belt of Seko within the amount taught by Kojima, in view of improving its lubricity, reducing its surface energy, and suppressing excessive bleedout thereby preventing contamination of other members. The skilled artisan would have been just as motivated to have selected a methylstyrene-modified silicone oil as a polyether-modified silicone oil as Sawai teaches that they would be expected to exhibit similar effects.
Claims 1-4, 6-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (US Pat. No. 10,976,690 B1) (previously cited), in view of Kojima (US PGP 2015/0370199 A1) (previously cited), further in view of Okabayashi (US PGP 2016/0170334 A1) (newly cited), still further in view of Shida et al. (JP 2021182060 A) (newly cited) (references herein made with respect to English machine translation attached), and even further in view of Kitagawa (US PGP 2005/0254852 A1) (newly cited).
Furukawa teaches a transfer device including an intermediate transfer body, a first transfer unit that transfers a toner image formed on the surface of an image holding member onto the surface of the intermediate transfer body, and a second transfer unit that transfers the toner image transferred on the surface of the intermediate transfer body onto the surface of a recording medium (Col. 3, lines 64-67, Col. 4, lines 1-21). The first transfer unit is taught to include a conductive roller supporting member (Col. 22, lines 36-47) (which reads on the corresponding limitation recited in instant claim 1). An image forming apparatus comprising the components recited in instant claim 13, claim 14, claim 15, claim 16, claim 18, claim 19, and claim 20 is also discussed (Col. 22-Col. 25).
The intermediate transfer body is taught to include an endless belt containing a resin and conductive carbon particles. In a spatial distribution of the conductive carbon particles present in an evaluation region of an outer peripheral surface of the endless belt, the evaluation region having a size of 6.3 µm x 4.2 µm, an integral of a statistic L(r) represented by formula (1) from 0.05 µm to 0.30 µm with respect to an interparticle distance r is 0 or more and 0.1 or less (Col. 2, lines 1-63) (which reads on the corresponding limitation recited in instant claim 1).
The resin is taught to include a resin selected from the group consisting of a polyimide resin, a polyamide-imide resin, an aromatic polyether ether ketone resin, a polyphenylene sulfide resin, and a polyetherimide resin (Col. 7, lines 10-27, claim 13) (which reads on the corresponding limitation recited in instant claim 1, claim 2, claim 3, claim 4, and claim 11).
The conductive particles are taught to contain conductive carbon particles like carbon black (Col. 9, lines 41-59) (which reads on the corresponding limitation recited in instant claim 1).
Furukawa appears to be silent to teach or suggest that the endless belt contains a silicone oil. However, this feature was known in prior art before the effective filing date of the claimed invention. For instance, Kojima teaches an electrophotographic mono-layer belt comprising a thermoplastic resin and a silicone oil (Abstract).
The silicone oil is taught to be a dimethyl silicone oil and/or a polyether-modified silicone oil ([0045]). In the examples, commercially available dimethyl silicone oils and polyether-modified silicone oil (manufactured by Shin-Etsu Co., Ltd.) were used as the silicone oil (which reads on the corresponding limitations recited in instant claim 1, claim 2, and claim 7). The addition of the silicone oil to the electrophotographic belt is taught to improve its lubricity ([0046]).
The content of the silicone oil is taught to be 0.5% by mass or more and 5.0% by mass or less with respect to the resin composition in view of reducing the surface energy and suppressing excessive bleedout of the silicone oil to the surface of the belt ([0048]) (which reads on the corresponding limitations recited in instant claim 6, claim 7, and claim 8).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a silicone oil, such as a polyether-modified alkyl silicone oil, into the endless belt of Furukawa within the amount taught by Kojima, in view of improving its lubricity, reducing its surface energy, and suppressing excessive bleedout thereby preventing contamination of other members.
Furukawa also appears to be silent to teach that the first transfer roller is a hollow metal roll or a solid metal roll, as recited in amended claim 1. For instance, Furukawa teaches that the first transfer rollers of the first transfer device may include a single layer or a plurality of layers. In the case of a single-layer structure, Seko teaches that the first transfer roller may include a foamed or non-foamed rubber containing a suitable amount of conductive particles (Col. 24, lines 39-46).
While the example of the single-layer first transfer roller including a rubber containing conductive particles is provided, this does not necessarily constitute a teaching away from using other compositions as first transfer rollers.
According to MPEP § 2123(I), “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” MPEP § 2123(II) further states that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
For instance, Okabayashi teaches that first transfer rollers are known to include metal rollers formed of metal, such as stainless steel, iron, or aluminum (which can also be plated with nickel, copper, or chromium) or can be elastic rollers formed of a stainless steel conductive core and a conductive foam elastic rubber member wound around the outer circumference of the stainless steel conductive core ([0061]-[0062]). In other words, Okabayashi teaches that both coated and uncoated metal rolls have been known to be useful as primary transfer rollers.
While Okabayashi appears to teach coated and uncoated metal rolls are suitable equivalents, Shida teaches that using a metal roller without an elastic layer on its surface as the primary transfer roller is advantageous in that there is decreased variation in the resistance of the roller which does not fluctuate with increased usage ([0034]).
Neither Okabayashi nor Shida appear to explicitly state that the first transfer roller can have a hollow shape or a solid shape. However, Kitagawa teaches that primary transfer rollers are known to be formed in hollow-cylindrical shapes or solid-cylindrical shapes in order to stretch and support the intermediate transfer belt such that the intermediate transfer belt can circulate ([0050]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used a hollow metal roller or a solid metal roller, particularly one without an elastic layer on its surface, as the first transfer roller in the transfer device of modified Furukawa, in view of decreasing the variation in the resistance of the roller and suitably supporting the intermediate transfer belt.
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (US Pat. No. 10,976,690 B1), in view of Kojima (US PGP 2015/0370199 A1) (previously cited), further in view of Okabayashi (US PGP 2016/0170334 A1) (newly cited), still further in view of Shida et al. (JP 2021182060 A) (newly cited) (references herein made with respect to English machine translation attached), further in view of Kitagawa (US PGP 2005/0254852 A1) (newly cited), and even further in view of Sawai (JP 2001183928 A) (previously cited) (references herein made with respect to English machine translation previously attached).
The teachings of Furukawa, Kojima, Okabayashi, Shida, and Kitagawa are discussed above and incorporated herein. In addition to polyether-modified silicone oil, Kojima teaches that other silicone oils, such as alkyl-modified silicone oil, may also be suitably used ([0045]). However, Kojima appears to be silent to explicitly teach aralkyl-modified silicone oil as a suitable example.
Sawai teaches an electrophotographic intermediate transfer belt containing a modified silicone oil. The modified silicone oil is taught to contain an organic group including methylstyrene (an aralkyl group) and polyether ([0043]). Sawai teaches that any of the listed organic groups including methylstyrene and polyether can be suitably used as they would be expected to exhibit similar effects ([0107]). According to MPEP § 2144.06, it is prima facie obvious to substitute equivalents known for the same purpose.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a silicone oil, such as a methylstyrene-modified silicone oil (i.e., an aralkyl-modified silicone oil), into the endless belt of Furukawa within the amount taught by Kojima, in view of improving its lubricity, reducing its surface energy, and suppressing excessive bleedout thereby preventing contamination of other members. The skilled artisan would have been just as motivated to have selected a methylstyrene-modified silicone oil as a polyether-modified silicone oil as Sawai teaches that they would be expected to exhibit similar effects.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2010/0330305 A1 to Wu teaches an intermediate transfer member, including an intermediate transfer belt, including a first supporting substrate, such as a polyimide substrate layer, and a second layer of a silicone containing polyamideimide layer (Abstract). The intermediate transfer member is taught to further include an outer release layer containing low surface energy materials including silicone oils like polydimethylsiloxane (PDMS) ([0044]-[0045]).
However, Wu is silent to teach or suggest the integral value of a statistical quantity L(r) represented by the claimed Equation (1) of an outer peripheral surface of the intermediate transfer member.
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.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
09/16/2026
