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.
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, 3, 4,-6, 12-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 9-11 and 13-14 of copending Application No. 18/638,333 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 4,-6, 12-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 8-10 and 12-13 of copending Application No. 18/636,961 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite the same subject matter.
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.
Claim(s) 1-7 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2003-287914 (henceforth JP ‘914).
JP ‘914 teaches an electrophotographic photoreceptor comprising an intermediate layer comprising a polyamide resin and an inorganic particle dispersed therein ([0016-17] and [0019-22]). The photoreceptor further comprises a conductive substrate and a photosensitive layer disposed on the intermediate layer ([0018]). The polyamide resin is taught to comprise a first repeating unit derived from an aliphatic dicarboxylic acid and a second repeating unit derived from a diamine compound ([0029-30]). The amide repeating units are taught to comprise a first and second repeating unit wherein the second repeating unit accounts for only 10 mol% of the total amide repeating units and therefore the first amide repeating unit and the carboxylic acid repeating units will account for greater than 80 mol% of the entire repeating units ([0029]). The photosensitive layer is taught to comprise a charge transport material and a charge generating material wherein the charge generating material is a titanyl phthalocyanine ([0025]).
JP ‘914 teaches that the inorganic particles are preferably surface treated titanium oxide particles ([0071]). The titanium oxide particles are taught to be surface treated with multiple layers of surface treatment agents including alumina, silica and an organosilicon compound ([0068-70]). The organosilicon compound is further taught to be an organic siloxane compound ([0088-89]). It is further taught that the charge generating compound may be an n-type pigment selected from an azo pigment and a perylene pigment ([0113]). The content of the charge generating compound (CGC) in the charge generating layer alone to the binder resin of the charge generating layer alone is as low as 20 parts CGC: 100 parts binder resin ([0114]). However, in embodiments the content of the CGC to the total binder resin of the photosensitive layer (charge generating and charge transporting layers combined) the content of the CGC is 18.2 parts per 100 parts binder resin (20 g CGC / 110 g combined binder resins x 100 parts = 18.2 parts per 100; [0141-142]).
Regarding the polyamide resin of the intermediate layer, JP ‘914 teaches that the amine monomer may be a diamine monomer with a cyclic alkane between the amine groups and that the dicarboxylic acid monomer may be an aliphatic dicarboxylic acid with a carbon number between 8 and 20 ([0029-55]). Examples of said monomers taught by JP ‘914 as monomers used in the polyamide resin are given below:
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202
502
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The content of the inorganic particles to the polyamide resin in the intermediate layer is taught to be 300 parts inorganic particles to 100 parts polyamide resin in embodiments ([0137]). The diameter of the inorganic particles is taught to be 10 to 400 nm ([0058]).
JP ‘914 further teaches an image forming apparatus comprising the photoreceptor described above as well as a charging device, an exposure device, a development device, a transfer member and a fixing device ([0124-133]). Additionally, the photoreceptor described above may also be used in a detachable process cartridge further comprising a charging device, a transfer unit and a cleaning unit ([0134]).
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.
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.
Claim(s) 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003-287914 in view of Iwashita et al. (US PGP 2022/0100111).
The complete discussion of JP ‘914 above is included herein. While JP ‘914 teaches a photosensitive layer comprising charge generating compounds and charge transporting compounds, JP ‘914 does no teach specific examples of said compounds rather teaches suitable classes of compounds that may impart the desired function (for example azo compounds for the n-type pigments in the charge generating layer). As such, one of ordinary skill in the art would have been motivated to look to the prior art for suitable specific compounds to impart said functions.
Iwashita teaches an electrophotographic photosensitive member comprising a conductive substrate and a photosensitive layer (Abstract). The photosensitive layer is taught to contain a charge generating material, an electron transport material, a binder resin and a hole transport material (Abstract). Suitable electron transport compounds are taught to include the following specific formulas, which read on some of the specific compounds recited by the Applicant in the instant claims (for the sake of brevity, the cited formulas are not meant to be exhaustive of the compounds taught by Iwashita that read on the Applicant’s recited formulas):
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214
364
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168
390
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198
350
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Additionally, Iwashita teaches the following specific hole transport compounds (for the sake of brevity, the cited formulas are not meant to be exhaustive of the compounds taught by Iwashita that read on the Applicant’s recited formulas):
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370
742
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270
748
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216
722
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As suitable n-type pigments for use as charge generating compounds Iwashita teaches the following specific compounds that read on the compounds recited by the Applicant in the instant claims (for the sake of brevity, the cited formulas are not meant to be exhaustive of the compounds taught by Iwashita that read on the Applicant’s recited formulas):
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362
726
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656
732
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762
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Iwashita teaches that the combination of the above cited compounds increases the positive chargeability and photosensitivity of the photoreceptor ([0117-123]). Furthermore, the above compounds are further taught to be used with a phthalocyanine based charge generating material, specifically a y-type titanyl phthalocyanine that is present in amount of 0.1 to 100 parts by mass relative to 100 parts of the binder resin ([0028-36]). Therefore, it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date of the instant application to have utilized the photosensitive layer of Iwashita in the photoreceptor of JP ‘914 in order to optimize the positive chargeability and photosensitivity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (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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/PETER L VAJDA/Primary Examiner, Art Unit 1737 09/22/2026
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