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 1-3, 7, and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,306,560 B2 to Kitano et al. (hereinafter “the ‘560 patent”), in view of Nakamura et al. (US PGP 2017/0115595 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 members and electrophotographic image forming apparatuses that fall within the same scope of one another.
For instance, both claim sets recite an electrophotographic member having a base layer and a surface layer, wherein the surface layer comprises a binder resin comprising an acrylic resin, and a tin oxide-containing particle, wherein a content of the tin oxide-containing particle is 2.0% to 10.0% by volume relative to the surface layer (claim 1 of the instant application and claim 1 and claim 8 of the ‘560 patent). In both claim sets, the tin oxide-containing particle contains antimony (claim 1 of the instant application and claim 7 of the ‘560 patent).
Both claim sets recite that the electrophotographic member is a belt (claim 3 of the instant application and claim 11 of the ‘560 patent) and, wherein in an L function indicating a relationship of distribution of the tin oxide-containing particle observed from a surface of the surface layer, a value of the L function at a distance within a range of 300 nm to 1 µm from a center-of-gravity coordinate of the particle is always positive (claim 9 of the instant application and claim 1 of the ‘560 patent).
Finally, both claim sets recite an electrophotographic image forming apparatus containing the electrophotographic member (claim 11 of the instant application and claim 12 of the ‘560 patent).
The claims of the ‘560 patent differ from the instant application in that the ’560 application is silent to recite that the electrophotographic member includes at least one copolymer selected from the group consisting of a polyoxyethylene-polycaprolactone copolymer and a polyoxyethylene-polyvalerolactone copolymer, wherein the copolymer has at least one functional group selected from the group consisting of a carboxy group and a phosphate group (claim 1 of the instant application). However, this feature was known before the effective filing date of the claimed invention.
Nakamura teaches a high-quality developing member including an electro-conductive substrate and an electro-conductive surface layer including a binder resin, an alumina particle, and a polyester phosphate compound (Abstract). The electrophotographic member is taught to be included in a process cartridge configured to be detachably attachable to an electrophotographic image forming apparatus ([0067]). The surface layer is taught to have a thickness of 0.005 mm (5 µm) or more and 0.1 mm (10 µm) or less ([0064]).
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The polyester phosphate compound is taught to enhance the charging amount of the toner even under high temperature and high humidity environments ([0019]). The polyester phosphate compound is taught to have a phosphoric acid skeleton and at least a polyester structure, and includes a compound represented by formula (2):
In the formula (2), R1 is taught to be selected from the group consisting of a substituent having a poly(ε-caprolactone) structure, or a substituent having a poly(δ-valerolactone) structure, and a substituent having a copolymer structure of ε-caprolactone and δ-valerolactone. R2 and R3 are each independently taught to include polyethylene oxide (polyoxyethylene), a substituent having a poly(ε-caprolactone) structure, or a substituent having a poly(δ-valerolactone) structure, and a substituent having a copolymer structure of ε-caprolactone and δ-valerolactone ([0048]).
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 the polyester phosphate compound of Nakamura in the electrophotographic member and electrophotographic image forming apparatus of the ‘560 the patent and to have adjusted the surface layer thickness to fall within the range taught by Nakamura, in view of enhancing the charging amount of the toner even under high temperature and high humidity environments.
It would have also been obvious to have used the electrophotographic member of the modified ‘560 patent in a process cartridge configured to be detachably attachable to the electrophotographic image forming apparatus.
Allowable Subject Matter
Claims 4-6 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2020/0257216 A1 to Ji et al. teaches a charging roller for an image forming apparatus including an elastic layer disposed around a shaft, and a coating layer formed on the elastic layer. The coating layer is taught to include a urethane resin formed by crosslinking a polyol mixture with polyisocyanate, and the polyol includes polyester polyol and polyether polyol containing 60% by weight or more and 90% by weight or less of an ethylene oxide (Abstract).
The polyester polyol is taught to include polycaprolactone based polyols obtained through ring-opening addition of ring-shaped esters, such as ε-caprolactone, λ-valerolactone, and Δ-valerolactone ([0078]). The polyether polyol is taught to include polyoxyethylene polyoxypropoylene polyol or polyoxyethylene polyoxytetramethylene polyol ([0085]).
In the examples, the urethane resin of Example 6 was obtained by reacting a polyol mixture containing polycaprolactone polyol commercially known as “PCL308” and polyoxyethylene polyoxypropyelene polyol commercially known as “Y8331” ([0120]-[0122], Table 1).
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
08/08/2026
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