DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 8, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al. (US PGP 2021/0271179 A1).
Suzuki teaches an electrophotographic photoconductor comprising an electroconductive substrate and a photosensitive layer including a charge generation layer containing a charge generation material and a charge transport layer containing a hole transport material, a resin binder, an electron transport material, and an inorganic oxide (Abstract, [0029]) (which reads on the corresponding limitations recited in instant claim 1 and claim 5).
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The inorganic oxide is taught to contain silica as a main component ([0041]) and the electron transport is taught to include the compound represented by structural formula (E-4) below ([0100]-[0101]) (which reads on the corresponding limitations recited in instant claim 1):
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Specific examples of the compound represented by structural formula (E-4) are taught to include the compounds represented by structural formulae (ETM4-1) to (ETM4-4) ([0104]):
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The compounds represented by formulae (ETM4-1) to (ETM4-4) above read on the corresponding limitations recited in instant claim 3. Additionally, the compound represented by formula (ETM4-4) reads on the corresponding limitations recited in instant claim 4. Also, according to paragraph [0088] of the instant specification, the compound represented by structural formula (ETM4-4) (which is identical to the compound 1-1 of the instant application) exhibits a maximum absorption wavelength λmax at 528 nm (which falls within the corresponding range recited in instant claim 2).
The inorganic oxide is taught to have a primary particle diameter of 1 to 200 nm ([0110]). In the examples, the inorganic oxides all included silica and had a primary particle diameter ranging from 10 nm to 100 nm. The inorganic oxide F1 was taught to include silica A having a primary particle diameter of 10 nm (Table 9) (which falls within the corresponding range recited in instant claim 11).
In the examples, the photoconductor of Example 28 included a charge transport layer containing the compound represented by structural formula (ETM4-2) as the electron transport material, and silica D as the inorganic oxide particles F2 (Table 12). The silica D was taught to be a silica commercially known as “YA050C” and having a primary particle diameter of 50 nm (Table 9). Therefore, the relationship w / (d * x) according to claim 1 (where w is a content of the silica to a total solid content of the photosensitive layer, d is an average primary particle diameter of the silica, and x is a content of the electron transporting substance to a total solid content of the photosensitive layer) can be calculated as being about 0.201 (which falls within the corresponding range recited in instant claim 1). Additionally, the value d * x can be calculated as being about 20.752 (which falls within the corresponding range recited in instant claim 8).
Suzuki further teaches an electrophotographic device which is equipped with the photoconductor and applied to various types of machine processes ([0117]). The electrophotographic device is taught to include an electrophotographic apparatus including a charged member, a high voltage power source, an image exposure member, a development device, a development roller, a paper feeding member including a paper feeding roller and a paper feeding guide, a transfer charger, and cleaning device including a cleaning blade (Fig. 2). The photoreceptors of the examples were taught to be equipped on a digital copier commercially known as “imageRUNNER ADVANCE C5030” ([0142]) (which includes the structural limitations recited in instant claim 12 and claim 13).
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US PGP 2021/0271179 A1).
The teachings of Suzuki are discussed above and incorporated herein. Suzuki appears to be silent to teach an example where the photosensitive layer included the claimed electron transporting substance and a ratio w/d between a content of the silica to a total content of the photosensitive layer to the average primary particle diameter of the silica is in the range of from 0.20 to 0.95, as recited in instant claim 6. For instance, in the Example 28 above, the w/d can be calculated as being about 0.083.
Suzuki also appears to be silent to teach an example where the photosensitive layer included the claimed electron transporting substance and a ratio w/x between a content of the silica to a total content of the photosensitive layer to the content of the electron transport material to a total content of the photosensitive layer is in the range of from 2.2 to 8.0, as recited in instant claim 7. For instance, in the Example 28 above, the w/x can be calculated as being about 10.
As discussed above, Suzuki teaches that the inorganic oxide has a primary particle diameter of 1 to 200 nm and in the examples, the inorganic oxides all included silica and had a primary particle diameter ranging from 10 nm to 100 nm ([0110]). Notably, the inorganic oxide F1 was taught to include silica A having a primary particle diameter of 10 nm (Table 9).
While Example 28 does not appear to satisfy the claimed w/d ratio or the claimed w/x ratio, this does not necessarily constitute a teaching away from arriving at these claimed parameters. According to MPEP § 2123(II) “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)”.
The skilled artisan could have arrived at a w/d ratio within the claimed range through routine experimentation, for example, with different types of the inorganic oxides used in the experimental examples like the inorganic oxide F1. For instance, through simple substitution of the inorganic oxide F2 including the silica D having a particle diameter of 50 nm with the inorganic oxide F1 including the silica A having a particle diameter of 10 nm would have resulted in Example 28 satisfying the w/d ratio3 recited within the range recited in instant claim 6.
Additionally, Suzuki teaches adjusting the mass of the hole transport material, the resin binder, the electron transport material, and the inorganic oxide (e.g., silica) in the charge transport layer to satisfy the equations 1 to 5 ([0029]). Notably, the content of the electron transport material and the inorganic oxide is taught to be controlled such that a ratio c/d of the CTM to the inorganic oxide is greater than or equal to 0.01 (equation 5, [0080]). In other words, the reciprocal of the ratio c/d is d/c ≤ 10 (which narrowly encompasses the corresponding range recited in instant claim 7). Suzuki teaches that when the ratio c/d does not satisfy the equation 5, electric stability over long-term use is insufficient. In other words, the content of the CTM and the content of the inorganic oxide in the photosensitive layer are each taught to be result effective variables.
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 experimented with different types and amounts of the electron transport material and the inorganic oxide in the photosensitive layer of Suzuki’s photoconductor, in view of optimizing the charging characteristics and electric stability over long-term use. See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").
Moreover, there does not appear to be sufficient evidence in the specification that either of the claimed w/x ratio or the claimed w/d ratio are critical to achieving the desired characteristics of the claimed photoconductor. For instance, the photoconductors of Examples 6, 11, 12, 15, and 18 each exhibited a w/x ratio outside of the claimed range yet received acceptable ranks of “NB” (not bad) or above across the board in terms of light resistance, sensitivity stability, and printing durability (see Figures 14 and 15 in the drawings).
Similarly, the photoconductors of Examples 4, 5, 13, and 14 each exhibited a w/d ratio outside of the claimed range yet received acceptable ranks of “NB” (not bad) or above across the board in terms of light resistance, sensitivity stability, and printing durability (see Figures 14 and 15 in the drawings).
According to MPEP § 2144.05, “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US PGP 2021/0271179 A1), in view of Ida (US PGP 2017/0261871 A1).
The teachings of Suzuki are discussed above and incorporated herein. While Suzuki teaches controlling the content of the charge transport material and the inorganic oxide in the photosensitive layer to satisfy a specific relationship (c/d), Suzuki appears to be silent to teach or suggest a suitable range for the inorganic oxide in the photosensitive layer, as recited in instant claim 9.
In addition to performing routine optimization of the contents of the charge transport material and the inorganic oxide discussed above, the skilled artisan could have also turned to other teachings for guidance on suitable ranges for these components. For example, Ida teaches a laminated-type electrophotographic photoreceptor where the charge transport layer contains an inorganic filler (Abstract). The inorganic filler is taught to preferably include silica from the viewpoint of dispersion efficiency and electrical characteristics ([0059]).
The content of the inorganic filler in the charge transport layer is taught to preferably be 5 mass% or more and 30 mass% or less, and more preferably 6 mass% or more and 25 mass% or less, in view of improving the durability and electrical characteristics of the charge transport layer ([0066]) (which narrowly encompasses the corresponding range recited in instant claim 9).
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 adjusted the content of the inorganic filler in Suzuki’s charge transport layer, to fall within the range taught by Ida, in view of improving the durability and electrical characteristics of the charge transport layer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US PGP 2021/0271179 A1), in view of Takahashi et al. (US PGP 2017/0343908 A1).
The teachings of Suzuki are discussed above and incorporated herein. While Suzuki teaches controlling the content of the charge transport material and the inorganic oxide in the photosensitive layer to satisfy a specific relationship (c/d), Suzuki appears to be silent to teach or suggest a suitable range for the charge transport material in the photosensitive layer, as recited in instant claim 10.
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In addition to performing routine optimization of the contents of the charge transport material and the inorganic oxide discussed above, the skilled artisan could have also turned to other teachings for guidance on suitable ranges for these components. For example, Takahashi teaches a photoconductor comprising a photosensitive layer including a compound represented by formula (1) (Abstract):
The inclusion of the compound represented by formula (1) is taught to be known to reduce light-included fatigue and to improve electrostatic property and charge transportability ([0068]).
The content of the compound represented by formula (1) above in the photosensitive layer (or in the charge transport layer for the case of a laminated-type configuration) is taught to be 0.1 to 10 mass%, and preferably 0.3 to 5 mass% ([0086], [0097]) (which narrowly overlaps with the corresponding range recited in instant claim 10).
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 adjusted the content of the charge transport material in Suzuki’s charge transport layer, to fall within the range taught by Takahashi, in view of improving the electrostatic properties of the photoconductor.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
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U.S. Pre-Grant Publication 2022/0100110 to Iwashita et al. teaches an electrophotographic photosensitive member including a conductive substrate and a photosensitive layer. The photosensitive layer is taught to contain a charge generating material, an electron transport material, a binder resin, and a hole transport material. The electron transport material is taught to include a compound represented by general formula (1):
The photosensitive layer is taught to further contain a polymeric additive represented by general formulas (31) to (33) to improve the abrasion resistance of the photosensitive member ([0156]).
Iwashita teaches that the intermediate layer (e.g., undercoat layer) includes inorganic particles like silica ([0186]) but appears to be silent to teach or suggest the inclusion of these inorganic particles in the photosensitive layer.
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U.S. Pre-Grant Publication 2022/0100111 to Iwashita et al. teaches an electrophotographic photosensitive member including a conductive substrate and a photosensitive layer. The photosensitive layer is taught to contain a charge generating material, an electron transport material, a binder resin, and a hole transport material. The electron transport material is taught to include a compound represented by general formula (1):
The photosensitive layer is taught to further contain an additive, such as an antioxidant, a radical scavenger, a singlet quencher, an ultraviolet absorbing agent, a softening, a surface modifier, an extender, a thickener, a dispersion stabilizer, a wax, a donor, a surfactant, a plasticizer, a sensitizer, an electron acceptor compound, or a leveling agent ([0116]).
Iwashita teaches that the intermediate layer (e.g., undercoat layer) includes inorganic particles like silica ([0129]) but appears to be silent to teach or suggest the inclusion of these inorganic particles in the photosensitive layer.
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 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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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
09/15/2026
1 The photosensitive layer includes the charge generating layer and the charge transport layer ([0027]-[0028]).
Example 28:
total mass of CGL = 2 parts CGM1 + 0.5 part S-LEC BM-2 + 0.5 part S-LEC BX-L = 3 parts
total mass of CTL = 4 parts HTM1-1 + 16 parts CTB1 + 0.1 part ETM4-2 + 1 part silica F2 = 21.1 parts
total mass of photosensitive layer (CGL + CTL) = 3 parts + 21.1 parts = 24.1 parts
w = 1 part silica F2 / 24.1 parts = 0.0415 x 100 mass% = 4.15 mass%
d = 50 nm
x = 0.1 part ETM4-2 / 24.1 parts = 0.00415 x 100 mass% = 0.415 mass%
w / (d * x) = (4.15 mass% / (50 nm * 0.415 mass%)) = 0.20
0.12 < 0.20 < 0.54
d * x = 50 nm * 0.415 mass% = 20.75
3 Example 28 (F1 substituted with F2)w/d = 4.15 mass% silica / 10 nm = 0.415
Prosecution Insights