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.
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 1-5 and 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. 12,339,618 B2 (hereinafter “the ‘618 patent”), in view of Azuma et al. (US PGP 2017/0068178 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets recite sufficiently similar electrophotographic photosensitive members that fall within the same scope of one another.
For instance, both claim sets recite an electrophotographic photosensitive member comprising a conductive substrate and a photosensitive layer including a charge generating material, a hole transport material, and a binder resin (claim 1 of the instant application and claim 9 of the ‘618 patent). In both claim sets, the photosensitive layer includes a charge generating layer containing the charge generating material and a charge transport layer containing the hole transport material and the binder resin, and the charge transport layer servers as an outermost surface layer (claim 1 and claim 8 of the instant application and claim 12 of the ‘618 patent).
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In both claim sets, the binder resin includes a polyarylate resin comprising repeating units represented by formulas (1), (2), (3), and (4), where in the formula (1), the R groups each independently include a methyl group or a hydrogen atom, and X represents a divalent group represented by formula X1 or formula X2 (claim 1 and claim 2 of the instant application and claim 9 of the ‘618 patent):
In both claim sets, the percentage of the number of repeats of the repeating unit represented by the formula (3) to a total of the number of repeats of the repeating unit represented by the formula (1) and the number of repeats represented by the formula (3) is greater than 0% and less than 50% (claim 1 of the instant application and claim 9 of the ‘618 patent).
In claim 1 of the instant application, the percentage of the number of repeats of the repeating unit represented by the formula (4) to a total of the number of repeats of the repeating unit represented by the formula (2) and the number of repeats represented by the formula (4) is greater than 30% and less than 70%. In claim 9 of the ‘618 patent, this percentage is greater than 35% and less than 70%.
In both claim sets, the hole transport material includes a compound represented by formula (20) (claim 9 of the instant application and claim 10 of the ‘618 patent), formula (23) (claim 9 of the instant application) / formula (21) (claim 10 of the ‘618 patent), formula (24) (claim 9 of the instant application) / formula (19) (claim 10 of the ‘618 patent), or formula (25) (claim 9 of the instant application) / formula (22) (claim 10 of the ‘618 patent).
More specifically, the hole transport includes a compound represented by formula (H-3) (claim 10 of the instant application) / formula (HTM-1) (claim 11 of the ‘618 patent), a compound represented by formula (H-4) (claim 10 of the instant application) / formula (HTM-4) (claim 11 of the ‘618 patent), or a compound represented by formula (H-5) (claim 10 of the instant application) / formula (HTM-5) (claim 11 of the ‘618 patent).
The ‘618 patent appears to be silent to recite specific examples of the charge generating material or that the charge transport layer includes the charge generating material. However, such configuration was known before the effective filing date of the ‘618 application. For instance, Azuma teaches an electrophotographic photosensitive member including a conductive substrate and a photosensitive layer including a charge generating layer and a charge transport layer (Abstract). The charge transport layer is taught to include a polyarylate as a binder resin and a hole transport material as a charge transport material ([0034]-[0035]).
The charge transport layer is taught to preferably contain a pigment. Examples of the pigment are taught to include phthalocyanine-based pigments including metal-free phthalocyanine pigments, and Y-form titanyl phthalocyanine pigments ([0073]). In the examples, an X-form (metal free) titanyl phthalocyanine pigment was used in an amount of 0.1 part by mass with respect to 100 parts by mass of the polyarylate binder resin ([0103]).
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 included a phthalocyanine pigment, such as those described in Azuma, in the charge transport layer of the instant application, in view of adjusting the charging properties of the charge transport layer.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ogaki (JP-2007108239-A) (references herein made with respect to English machine translation attached), in view of Azuma et al. (JP-2019077844-A) (references herein made with respect to English machine translation attached) (hereinafter “Azuma ‘844”), and further in view of in view of Azuma et al. (US PGP 2017/0068178 A1) (hereinafter “Azuma ‘178”).
Ogaki teaches an electrophotographic photoreceptor having a photosensitive layer on a conductive support (Abstract). An image forming apparatus and a process cartridge including the photoreceptor and the claimed structural features are also discussed ([0093], [0135]-[0136]) (which reads on the corresponding limitations recited in instant claim 13, claim 14, and claim 15).
The electrophotographic photoreceptor is taught to include a multilayer or functionally separated type photoreceptor, which consists of a charge generating layer containing a charge generating material and a resin, and a charge transport layer containing a charge transport material and a resin ([0061]) (which reads on the corresponding limitations recited in instant claim 1 and claim 11). In other words, the charge transport layer may serve as an outermost surface layer (which reads on the corresponding limitation recited in instant claim 8).
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The outermost surface layer of the electrophotographic photoreceptor is taught to include a polyarylate resin having a structural unit represented by formula (1), shown below ([0013], [0020], [0062]):
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Examples of the structural unit represented by the formula (1) are taught to include the structural unit represented by the formula (1-9), and the structural unit represented by the formula (1-11), shown below ([0027]):
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The structural unit represented by the formula (1-9) includes the repeating units represented by formula (1) and formula (2), when R1 and R2 in formula (1) each represent a hydrogen atom and X represents the divalent group with a carbon number of at least 1 and no greater than 10, and the structural unit represented by the formula (1-11) includes the repeating units represented by formula (1) and formula (2), when R1 and R2 in formula (1) each represent a methyl group and X represents the divalent group with a carbon number of at least 1 and no greater than 10, recited in instant claim 1. Additionally, the structural unit represented by the formula (1-9) includes the repeating unit represented by chemical formula (1-2) and the structural unit represented by the formula (1-11) includes the repeating unit represented by chemical formula (1-1), recited in instant claim 2.
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The polyarylate resin is taught to include a structural unit that is different from the structural unit represented by formula (1), or a structural unit consisting of another divalent carboxylic acid and a divalent organic residue ([0032]). An example of the structural unit consisting of other divalent carboxylic acids and divalent organic residues is taught to include the structural unit represented by the formula (3-10), shown below ([0036]):
The structural unit represented by the formula (3-10) includes the repeating units represented by formula (3) and formula (4), recited in instant claim 1.
The copolymerization ratio of the repeating unit represented by formula (1) to the repeating unit represented by formula (3) in the polyarylate resin is taught to be depicted as the ratio A:B. Ogaki does not appear to teach or suggest a suitable range for the ratio A:B. However, Table 12 teaches embodiments where the ratio A:B of the repeating unit represented by formula (1) to the repeating unit represented by formula (3) ranged from 5:5 to 8:2. In other words, the molar ratio of the structural unit represented by formula (1), which includes the repeating units represented by formulas (1) and (2) of instant claim 1, ranged from 50 mol% to 80 mol% and the structural unit represented by formula (3), which includes the repeating units represented by formulas (3) and (4) of instant claim 1, ranged from 20 mol% to 50 mol%.
Under the assumption that the structural unit represented by formula (1) includes the repeating units corresponding to the claimed formulas (1) and (2) in equal molar amounts, and the structural unit represented by formula (3) includes the repeating units corresponding to the claimed formulas (3) and (4) in equal molar amounts, an A:B ratio of 5:5 would mean that the percentage content of each repeating unit in the structural units represented by formulas (1) and (2) are each 25 mol% (which reads on the corresponding limitation recited in instant claim 6).
Accordingly, the rate corresponding to the number of moles of claimed formula (3) to a total number of moles of the claimed formula (3) and the claimed formula (1), and the rate corresponding to the number of moles of claimed formula (4) to a total number of moles of the claimed formula (2) and the claimed formula (4) would both be 50% by mole (which reads on the corresponding ranges recited in instant claim 1).
According to MPEP § 2144.05, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).”
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).”
Ogaki does not appear to teach a combination of the repeating units represented by formula (1-9) or (1-11) in combination with the repeating unit represented by formula (3-10) in the examples, or the specific molar contents depicted in formulas (pa-1) to (pa-4) recited in instant claim 7. However, this does not necessarily constitute a teaching away from arriving at such combination within the claimed molar proportions.
According to MPEP § 2123, “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).”
Additionally, according to MPEP § 2144.05, “[D]ifferences 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).”
For instance, Ogaki teaches that the content ratio of the structural units represented by the formula (1) is “arbitrary” and may be adjusted to control the dispersion stability of inorganic fine particles in the photosensitive layer (emphasis added) ([0031]).
Similarly, Azuma ‘844 teaches a polyarylate resin which, when contained in a photosensitive layer, can improve the abrasion resistance of the electrophotographic photoreceptor ([0006]). The polyarylate resin is taught to contain at least a repeating unit represented by general formula (1), a repeating unit represented by general formula
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(2), and a repeating unit represented by general formula (3), shown below ([0008]):
The repeating unit represented by the general formula (1) above is included in the structural unit represented by formula (1) of Ogaki and corresponds to the repeating unit represented by formula (1) recited in instant claim 1, the repeating unit represented by the general formula (2) above is included in the structural unit represented by formula (1) of Ogaki and corresponds to the repeating unit represented by formula (3) recited in instant claim 1, and the repeating unit represented by the general formula (3) above is included in the structural unit represented by formula (3) of Ogaki and corresponds to the repeating unit represented by formula (2) recited in instant claim 1.
The ratio n1/n2 of the number n1 of repeating units represented by the general formula (1) to the number n2 of repeating units represented by the general formula (2) is taught to be 1.0 or more ([0007], [0018]). When the ratio n1/n2 is 1.0 or more, the solubility of the polyarylate resin is improved, which improves the abrasion resistance of the photoreceptor ([0024]). The ratio n1/n2 may be, for example, 1.0 or more and 10.0 or less ([0033]). In other words, the ratio n2/n1 of the number of repeating units n2 represented by the general formula (2) to the number of repeating units n1 represented by the general formula (1) may be, for example, 0.1 to 1.0.
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The polyarylate resin is taught to further include an additional repeating unit represented by formula (4), in view of improving the abrasion resistance of the photosensitive layer ([0034]):
The ratio n4/n3 of the number n4 of repeating units represented by the general formula (4) to the number n3 of repeating units represented by the general formula (3) is taught to be 0.0 or more, and preferably 0.5 or more ([0034]). The ratio n4/n3 may be, for example, 0.0 or more and 5.0 or less ([0034]).
In some of the examples, the repeating unit represented by formula (DC-T) was used as the additional repeating unit ([0174]):
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The repeating unit represented by formula (DC-T) above is included in the structural unit represented by formula (3) of Ogaki and corresponds to the repeating unit represented by formula (4) recited in instant claim 1.
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 combinations of the repeating units represented by the structural formulas (1) and (3), and to have further optimized the respective proportions of these repeating structural units in order to improve the dispersion stability of the inorganic fine particles in the photosensitive layer. The skilled artisan would have turned to additional teachings, such as the molar proportions taught by Azuma ‘844, in view of further improving the abrasion resistance of the photoreceptor.
Ogaki does not appear to teach or suggest that the charge transport layer may include a pigment, let alone a phthalocyanine pigment.
Azuma ‘178 teaches an electrophotographic photosensitive member including a conductive substrate and a photosensitive layer including a charge generating layer and a charge transport layer (Abstract). The charge transport layer is taught to include a polyarylate as a binder resin and a hole transport material as a charge transport material ([0034]-[0035]).
The charge transport layer is taught to preferably contain a pigment. Examples of the pigment are taught to include phthalocyanine-based pigments including metal-free phthalocyanine pigments, and Y-form titanyl phthalocyanine pigments ([0073]) (which reads on the corresponding limitations recited in instant claim 3, claim 4, and claim 12). In the examples, an X-form (metal free) titanyl phthalocyanine pigment was used in an amount of 0.1 part by mass with respect to 100 parts by mass of the polyarylate binder resin ([0103]) (which reads on the corresponding range recited in instant claim 5).
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 included a phthalocyanine pigment in the amount taught by Azuma ‘178, in the charge transport layer of Ogaki, in view of adjusting the charging properties of the charge transport layer.
Ogaki teaches that examples of the charge transport materials include triarylamine compounds, hydrozone compounds, styryl compounds, stilbene compounds, pyrazoline compounds, oxazole compounds, thiazole compounds, and triarylmethane compounds, and may be used alone or in combination of two or more types ([0077]). However, Ogaki appears to be silent to teach specific structures or examples of such compounds.
Azuma ‘178 teaches that the charge transport material (particularly, a hole transport material) preferably contains a compound including two or more styryl groups and one or more aryl groups, in view of improving the abrasion resistance of the photosensitive layer ([0035]).
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Specific examples of suitable hole transport compounds are taught to include compounds represented by chemical formulas (CTM-1) to (CTM-10) ([0049]). The compound represented by chemical formula (CTM-5) is shown below:
The compound represented by the chemical formula (CTM-5) above reads on the hole transport material represented by formula (23) recited in instant claim 9 and the hole transport material represented by chemical formula (H-5) 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 used a hole transport compound, such as those taught by Azuma ‘178, in the charge transport layer of Ogaki, in view of improving the abrasion resistance of the photosensitive layer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2021/0026269 A1 to Ishino et al. teaches an image forming apparatus including an image bearing member and a charging roller that charges a circumferential surface of the image bearing member. The image bearing member is taught to include a conductive substrate and a photosensitive layer of a single layer (Abstract). The photosensitive layer is taught to contain a charge generating material, a hole transport material, an electron transport material, and a binder resin ([0004]).
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To inhibit occurrence of a ghost image, the binder resin is taught to comprise a polyarylate resin including a repeating unit represented by formula (20), shown below ([0099]):In the formula (20), Y is taught to represent a divalent group represented by any one of the following formulae ([0101]):
A content percentage of the polyarylate resin is taught to be 30.0% by mass or more and 70.0% by mass or less, and preferably 40.0% by mass or more and 60.0% by mass or less ([0114]).
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
09/03/2026
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