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 Interpretation
Claim 1 presently recites functional language. Specifically, line 4 recites “a charging device that charges a surface of the photosensitive member”, lines 5-6 recite “a developing device that supplies the toner to the surface of the photosensitive member and develops the toner as a toner image”, and line 7 recites “an intermediate transfer belt to which the toner image is intermediately transferred”.
Claim 1 also presently recites limitations directed at a two-component developer including a carrier and a toner. Specifically, line 15 recites that the carrier includes a carrier particle, and lines 16-17 recite that the toner includes a toner particle including a toner base particle and a toner external additive that is adhered to a surface of the toner base particle, where the toner external additive includes a spacer particle and a number average primary particle diameter of the space particle is greater than the arithmetic average surface roughness Ra of the surface of the photosensitive member. Claims 2-9 then recite further embodiments directed at the spacer particle (claims 2-5), the carrier particle (claim 6), and the carrier external particle (claims 7-9).
However, the claims are directed at an apparatus (i.e., an image forming apparatus) and not its method of operation. According to MPEP § 2114, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”.
Therefore, the functional limitations of the charging device, the developing device, and the intermediate transfer belt, do not distinguish the claimed image forming apparatus over others found in prior art which include the same structural features, absent any showing by the Applicant that the image forming apparatus of the prior art would not possess the characteristics capable of performing the recited function(s).
Additionally, the claimed two-component developer is a material worked upon by the apparatus. The toner, during the image forming process, is changed from a particulate material to a melted and fused material. That is, during fixing, heat and/or pressure is applied to the toner to bind it to the recording material (e.g., paper) such that the fixed toner cannot be recovered and reused by the image forming apparatus.
According to MPEP § 2115, “A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)”.
Furthermore, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
In other words, a material portion of the apparatus must be a permanent fixture of the apparatus that is not permanently changed by the regular operation of the apparatus. Since a toner is a material that is consumed by the apparatus and is not a permanent fixture of the apparatus, its inclusion in the apparatus claims does not represent a material limitation on the apparatus.
For instance, multiple different developers may be used in any electrophotographic image forming apparatus. Therefore, the limitations of the developer in the present claims do not represent material limitations on the apparatus because the claimed developer could be substituted by another developer and not alter the mechanical functioning of the apparatus. Therefore, the type of developer to be used by the apparatus possesses no patentability, only the structural and material properties of the apparatus. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Finally, claim 10 recites a product-by-process limitation. Specifically, lines 2-3 recite that “the base member including a roughened surface, and the roughened surface has been subjected to blasting treatment”.
However, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. According to MPEP § 2113, “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”.
Therefore, the way in which the claimed base member is treated does not distinguish it over others found in prior art which are made by different processes, so long as they include the same structural features (e.g., a roughened surface). Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, lines 10-13, presently recite “the photosensitive member includes a base member and an amorphous silicon photosensitive layer”, and “an arithmetic average roughness Ra of the surface of the photosensitive member is equal to or greater than 37 nm but equal to or less than 105 nm”.
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However, it is unclear which surface of the photosensitive member the arithmetic average roughness Ra limitation is directed at as “the surface of the photosensitive member” is not sufficiently defined the claims. According to paragraph [0022] and Fig. 2 of the specification, the photosensitive member 12 of the present invention includes a (cylindrical) base member 121 as a support member and an amorphous silicon photosensitive layer 122 on the outside of the base member 121:
As shown in Fig. 2 above, the photosensitive member 12 includes two layers appearing to have roughened surfaces (see also present claim 10, line 2, which recites that “the base member includes a roughened surface”). In other words, the photosensitive member 12 includes an interfacial surface and an outermost surface. Therefore, “the surface of the photosensitive member” could reasonably be interpreted as referring to either the surface of the base member layer 121 or the surface of the amorphous silicon photosensitive layer 122.
Based on paragraph [0025] of the specification, the arithmetic average roughness Ra limitation appears to be directed at the surface of the amorphous silicon photosensitive layer 122 of the photosensitive member 12. Therefore, to overcome this rejection, it is recommended to amend lines 12-13 to recite, for example, “an arithmetic average roughness Ra of an outermost surface of the photosensitive member is equal to or greater than 37 nm but equal to or less than 105 nm”, or “an arithmetic average roughness Ra of the surface of the amorphous silicon photosensitive layer is equal to or greater than 37 nm but equal to or less than 105 nm”. Claim 1, lines 5-6 and 19-20 and claim 6, line 5 should also be amended to sufficiently define “the surface of the photosensitive member” in the same manner as lines 12-13.
Claims 2-5 and 7-10 are rejected because they fully incorporate the subject matter of an indefinite claim.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujishima et al. (JP 2018109719 A) (references herein made with respect to English machine translation attached), in view of Nakazawa et al. (US PGP 2002/0006573 A1).
Fujishima teaches an image forming apparatus for two-component development comprising an image carrier and an image forming unit. The image carrier is taught to comprise a support and an amorphous silicon photosensitive layer formed on the surface of the support (which reads on the corresponding limitation recited in instant claim 1). The arithmetic mean roughness Ra of the photosensitive layer is taught to be within the range of from 40 nm to 70 nm ([0008]) (which falls within the corresponding range recited in instant claim 1).
The image forming unit is taught to include a charging device, an exposure unit, a developing device, a transfer roller, a cleaning device, and a static elimination device ([0012]) (which reads on the corresponding limitations recited in instant claim 1).
Fujishima appears to be silent to teach that the image forming unit includes an intermediate transfer belt, let alone a suitable composition of the intermediate transfer belt. Nakazawa teaches a belt-shaped transfer member for an image forming apparatus in which a toner image held on a latent-image-bearing member is electrostatically transferred under application of a voltage via the belt-shaped transfer member (Abstract).
Nakazawa teaches that, in the electrophotography art, image-forming apparatuses making use of intermediate transfer belts are known to be advantageous in that a variety of transfer materials can be selected without regard to their width and length, including thin paper and up to thick paper such as envelopes, post cards, and labels. Image-forming apparatuses that use intermediate transfer belts are also taught to dramatically improve printing speed ([0004]-[0005]).
The belt-shaped transfer member is taught to include a thermoplastic resin and a conductive agent, which is used to control the electrical resistance of the belt-shaped transfer member. Carbon black is taught to be commonly used as a conductive agent ([0046], [0060]) (which reads on the corresponding limitation 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 used an intermediate transfer belt, such as the belt-shaped transfer member taught by Nakazawa, in the image forming apparatus of Fujishima, in view of controlling the electrical resistance of the belt and improving the printing speed of the apparatus.
The limitations directed at the claimed two-component developer including a carrier and a toner recited in instant claims 1-9 have been considered. However, in accordance with the interpretation of MPEP § 2114 and MPEP § 2115 discussed above, the material worked upon by an apparatus is not a patentable limitation, only the structural and material properties of the apparatus itself.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fujishima et al. (JP 2018109719 A) (references herein made with respect to English machine translation attached), in view of Nakazawa et al. (US PGP 2002/0006573 A1), and further in view of Nukada et al. (US PGP 2016/0091804 A1).
The teachings of Fujishima and Nakazawa are discussed above and incorporated herein. Fujishima appears to be silent to teach or suggest that the support of the image carrier can include a roughened surface. However, during image formation, Fujishima teaches that the electrostatic latent image is formed on the photoreceptor drum by a laser beam from the exposure unit ([0013]).
Nukada teaches an electrophotographic image forming apparatus including an electrophotographic photoreceptor, an exposure device, a transfer device, and an intermediate transfer member ([0074]). The photoreceptor is taught to include a conductive base and a photosensitive layer provided on the conductive base ([0026]).
Nukada teaches that, when the electrophotographic photoreceptor is used in a laser printer, the surface of the conductive base is taught to preferably be roughened in order to suppress interference fringes generated when emitting the laser beam during exposure. The roughening of the surface of the conductive base is also taught to suppress generation of defects due to irregularities of the surface of the conductive base and improves the longevity of the image forming apparatus ([0060]).
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 roughened the surface of the support of the image carrier in Fujishima’s image forming apparatus, in view of suppressing the generation of image defects and improving the longevity of the apparatus.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa et al. (JP 2018180318 A) (references herein made with respect to English machine translation attached), in view of Nakazawa et al. (US PGP 2002/0006573 A1).
Nakagawa teaches an image forming apparatus comprising multiple image forming units, an exposure device, a transfer belt, a secondary transfer roller, a fixing device, and a control unit. Each image forming unit is taught to include a developing device, an image carrier, a charging device, a primary transfer roller, and a cleaning member ([0014]) (which reads on the corresponding limitations recited in instant claim 1).
The image carrier is taught to comprise a conductive substrate and an amorphous silicon photosensitive layer formed on the surface of the conductive substrate ([0041], [0046]) (which reads on the corresponding limitation recited in instant claim 1). The conductive substrate is taught to have a rough surface formed by blasting ([0040]) (which reads on the corresponding limitation recited in instant claim 10). The arithmetic mean roughness Ra of the photosensitive layer is taught to be within the range of from 40 nm to 65 nm ([0041]) (which falls within the corresponding range recited in instant claim 1).
Nakagawa appears to be silent to teach a suitable configuration of the transfer belt. As discussed above, Nakazawa teaches a belt-shaped transfer member for an image forming apparatus in which a toner image held on a latent-image-bearing member is electrostatically transferred under application of a voltage via the belt-shaped transfer member (Abstract).
The belt-shaped transfer member is taught to include a thermoplastic resin and a conductive agent, which is used to control the electrical resistance of the belt-shaped transfer member. Carbon black is taught to be commonly used as a conductive agent ([0046], [0060]) (which reads on the corresponding limitation 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 used a transfer belt including a thermoplastic resin and a conductive agent, such as the belt-shaped transfer member taught by Nakazawa, in the image forming apparatus of Nakagawa, in view of controlling the electrical resistance of the belt and improving the printing speed of the apparatus.
The limitations directed at the claimed two-component developer including a carrier and a toner recited in instant claims 1-9 have been considered. However, in accordance with the interpretation of MPEP § 2114 and MPEP § 2115 discussed above, the material worked upon by an apparatus is not a patentable limitation, only the structural and material properties of the apparatus itself.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ike et al. (US PGP 2018/0217512 A1), in view of Nakazawa et al. (US PGP 2002/0006573 A1).
Ike teaches an electrophotographic image forming apparatus for two-component development including a photosensitive drum, a charging device, an exposure unit, a developing device, an intermediary transfer belt, a cleaning device, and a destaticizing device ([0039]-[0040], [0060]) (which reads on the corresponding limitations recited in instant claim 1).
The photosensitive drum is taught to include a photosensitive layer formed on the surface of a support body. The photosensitive layer is taught to be an amorphous silicon photosensitive layer in view of high durability ([0039]). The arithmetic average surface roughness Ra of the surface of the photosensitive layer is taught to be in the range of 20 nm to 100 nm, and more preferably 40 nm or more and 60 nm or less, in view of suppressing image defects ([0068], [0072], Table 1) (which reads on the corresponding range recited in instant claim 1).
The support body is taught to be elastically deformed by wet-blast treatment to form fine surface irregularities on the surface ([0114]). In other words, the support body of the photosensitive drum has a roughened surface (which reads on the corresponding limitation recited in instant claim 10).
Ike appears to be silent to teach a suitable composition of the intermediary transfer belt. As discussed above, Nakazawa teaches a belt-shaped transfer member for an image forming apparatus in which a toner image held on a latent-image-bearing member is electrostatically transferred under application of a voltage via the belt-shaped transfer member (Abstract).
The belt-shaped transfer member is taught to include a thermoplastic resin and a conductive agent, which is used to control the electrical resistance of the belt-shaped transfer member. Carbon black is taught to be commonly used as a conductive agent ([0046], [0060]) (which reads on the corresponding limitation 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 used an intermediary transfer belt including a thermoplastic resin and a conductive agent, such as the belt-shaped transfer member taught by Nakazawa, in the image forming apparatus of Ike, in view of controlling the electrical resistance of the belt and improving the printing speed of the apparatus.
The limitations directed at the claimed two-component developer including a carrier and a toner recited in instant claims 1-9 have been considered. However, in accordance with the interpretation of MPEP § 2114 and MPEP § 2115 discussed above, the material worked upon by an apparatus is not a patentable limitation, only the structural and material properties of the apparatus itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Foreign Patent Publication JP-2018112581-A to Nakagawa et al. (references herein made with respect to English machine translation attached) teaches a magnetic single-component developing apparatus including an image carrier and an image forming unit comprising a charging device, an exposure unit, a developing device, a transfer roller, a cleaning device, and a static elimination device ([0013]).
The image carrier is taught to comprise a support and an amorphous silicon photosensitive layer formed on the surface of the conductive substrate ([0009]). The arithmetic mean roughness Ra of the photosensitive layer is taught to be within the range of from 40 nm to 70 nm ([0041]).
The single-component developing apparatus is taught to be configured to utilize a single-component magnetic developer consisting solely of magnetic toner and a metal regulating member positioned at a predetermined distance from the developer carrier to regulate the layer thickness of the magnetic single-component developer carrier on the developer carrier ([0009], [0052]).
In other words, it is understood that the single-component developing apparatus described in Nakagawa would not possess the characteristics capable of performing two-component development as it is only taught to be structurally configured for performing one-component development.
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 on (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
09/02/2026
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