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 .
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.
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Claims 1-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 7-13 of copending Application No. 18/638,286 in view of Sakimura (JP 2003287914).
Regarding claims 1 and 4-6, the ‘286 application claims An electrophotographic photosensitive member comprising: a conductive substrate; an intermediate layer provided on the conductive substrate; and a photosensitive layer provided on the intermediate layer, wherein the intermediate layer contains a specific polyamide resin and specific inorganic particles, the specific inorganic particles each include a metal oxide particle and a surface treatment layer covering at least a part of a surface of the metal oxide particle, the surface treatment layers contain a component derived from an organic siloxane compound, the specific polyamide resin includes a first repeating unit derived from an aliphatic dicarboxylic acid with a carbon number of at least 8 and no greater than 20 and a second repeating unit derived from a diamine compound with a cycloalkane structure, and a total percentage content of the first repeating unit and the second repeating unit to all repeating units included in the specific polyamide resin is at least 80% by mol. (claim 1). However, the ‘286 Application does not claim surface treatment layers which contain at least one of aluminum oxide or silica.
Sakimura teaches a similar electrophotographic photosensitive member comprising an intermediate layer containing fine particles dispersed in a polyamide resin, the fine particles are preferably metal oxides with at least one surface treatment of alumina (aka aluminum oxide), silica, or zirconia ([0017], [0058]-[0062], [0065]). Sakimura further teaches by surface treating the fine particles with a uniform coating the dispersion of the particles in the intermediate layer is good, and defects such as black spots are prevented ([0067]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the metal oxide particles of the ‘286 Application were treated with at least one of aluminum oxide and silica, as taught by Sakimura, to prevent image defects like black spots.
Regarding claim 2, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the metal oxide particles are titanium oxide particles. (claim 2).
Regarding claim 3, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the diamine compound with the cycloalkane structure includes isophoronediamine. (Claim 3)
Regarding claim 7, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the specific polyamide resin does not include a repeating unit derived from an aromatic dicarboxylic acid. (claim 5)
Regarding claim 8, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the intermediate layer has a thickness of at least 1 μm and no greater than 20 μm. (claim 7).
Regarding claim 9, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the specific inorganic particles have a content of at least 50 parts by mass and no greater than 1000 parts by mass relative to 100 parts by mass of the specific polyamide resin in the intermediate layer. (claim 8)
Regarding claim 10, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the specific inorganic particles have a number average primary particle diameter of at least 5 nm and no greater than 100 nm. (claim 9).
Regarding claim 11, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the photosensitive layer is a single layer. (claim 10).
Regarding claim 12, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims The electrophotographic photosensitive member according to claim 1, wherein the photosensitive layer includes a charge generating layer and a charge transport layer, the charge generating layer is provided on the intermediate layer, and the charge transport layer is provided on the charge generating layer. (claim 11)
Regarding claim 13, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims A process cartridge comprising the electrophotographic photosensitive member according to claim 1. (claim 12)
Regarding claim 14, the ‘286 Application claims all limitations as set forth above. The ‘286 Application further claims An image forming apparatus comprising: an image bearing member; a charger that charges a surface of the image bearing member; a light exposure device that exposes the charged surface of the image bearing member to light to form an electrostatic latent image on the surface of the image bearing member; a development device that develops the electrostatic latent image into a toner image by supplying toner to the surface of the image bearing member; and a transfer device that transfers the toner image from the image bearing member to a transfer target, wherein the image bearing member is the electrophotographic photosensitive member according to claim 1. (claim 13)
This is a provisional nonstatutory double patenting rejection.
Claims 1, 4-6, and 14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of copending Application No. 18/676,173 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
Regarding claims 1, 4-6, and 14, the ‘173 Application claims An image forming apparatus comprising:
an image bearing member; a charger that charges a surface of the image bearing member to positive polarity; a light exposure device that exposes the charged surface of the image bearing member to light to form an electrostatic latent image on the surface of the image bearing member; a development device that develops the electrostatic latent image into a toner image; a transfer device that transfers the toner image from the image bearing member to a transfer target; a cleaning member that collects toner attached to the surface of the image bearing member by contacting the surface of the image bearing member; and a controller that controls voltage to be applied to the cleaning member, wherein the controller causes a first voltage with negative polarity to be applied to the cleaning member in a printing mode, the image bearing member is an electrophotographic photosensitive member including a conductive substrate, an intermediate layer provided on the conductive substrate, and a photosensitive layer provided on the intermediate layer, the intermediate layer contains a specific polyamide resin and specific inorganic particles, the specific inorganic particles include metal oxide particles, the specific polyamide resin includes a first repeating unit derived from an aliphatic dicarboxylic acid and a second repeating unit derived from a diamine compound, and a total percentage content of the first repeating unit and the second repeating unit is at least 80% by mole to all repeating units included in the specific polyamide resin. (Claim 1)
The ‘173 Application further claims The image forming apparatus according to claim 1, wherein the specific inorganic particles include surface treatment layers covering at least parts of surfaces of the metal oxide particles. (Claim 5). The image forming apparatus according to claim 5, wherein
the surface treatment layers contain at least one of aluminum oxide, silica, zirconia, stearic acid, and a component derived from an organic siloxane compound. (Claim 6)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakimura (JP 2003287914).
Regarding claims 1-7 and 10, Sakimura discloses an electrophotographic photoreceptor with an intermediate layer and a photosensitive layer on a conductive support. The intermediate layer contains a polyamide which includes a repeating unit with a no-linear structure between the amide components ([0017]). The polyamide resin has a repeating unit represented by formula (1), in which Y1 is a divalent alkyl substituted cycloalkane shown below by formula , Z1 is a methylene group, m is 1-3, and n is 3-20 ([0041]-[0044])
PNG
media_image1.png
74
188
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Greyscale
, Y1 =
PNG
media_image2.png
58
92
media_image2.png
Greyscale
Y1 is further specified as they structure shown above, with A representing a single bond or an alkylene group with 1-4 carbon atoms, R4 is a substituent, representing an alkyl group, and p is a natural number from 1-5 ([0044]-[0046]). Example compound N-12 is shown as a polyamide which is 90 mol% of dodecanedioic acid and isophoronediamine, with N-12 indicated as a preferred example ([0051]-[0053]). Sakimura further discloses the intermediate layer contains fine particles with a diameter of 10-400 nm dispersed in the polyamide resin, preferably titanium dioxide ([0058]-[0062]). Sakimura further discloses the fine particles are surface treated with at least one of alumina, silica, and/or zirconia ([0065]-[0069]).
Regarding claim 8, Sakimura discloses all limitations as set forth above. While Sakimura doesn’t disclose a specific range for the thickness of the intermediate layer, however the specific examples are 0.8-2.0 µm thick ([0139], [0143]).
Regarding claim 9, Sakimura discloses all limitations as set forth above. Sakimura further discloses the amount of surface treated titanium oxide dispersed in the polyamide resin is 10-10000 parts by mass per 100 parts by mass of resin ([0094]).
Regarding claim 11, Sakimura discloses all limitations as set forth above. Sakimura further disclose the photoreceptor may use a single-layer photosensitive layer structure on the intermediate layer ([0111]).
Regarding claim 12, Sakimura discloses all limitations as set forth above. Sakimura further discloses the photoreceptor may use a multi-layer photosensitive layer, with a charge generation layer on the intermediate layer and a charge transport layer on top of the charge generation layer ([0111]).
Regarding claims 13-14, Sakimura discloses all limitations as set forth above. Sakimura further discloses a process cartridge and image forming apparatus using the electrophotographic photoreceptor ([0001], [0015]). The process cartridge includes the photoreceptor and one or more of the other electrophotographic components, and is integrally supported and detachably mounted to the image forming apparatus ([0028]). The image forming apparatus comprises the photoreceptor, a charging means to charge the photoreceptor, an image exposure means to expose the photoreceptor to light, forming a latent image, a development means to develop the latent image to produce a toner image, and a transfer means to transfer the image to recording paper ([0026], [0124]-[0132]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Suzuki (US 20110244381) discloses a very similar electrophotographic photoconductor, comprising a specific polyamide undercoat (aka intermediate) layer comprising metal oxide particles dispersed in the resin. However, the polyamide of Suzuki requires an aromatic dicarboxylic acid in an amount of 0.1-10 mol% (Abstract, claim 1, [0042]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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/C.C.S./Examiner, Art Unit 1737
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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