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 .
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) 1-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2007-108239 (henceforth JP ‘239) in view of Iwashita et al. (US PGP 2022/0100111).
JP ‘239 teaches an image forming apparatus comprising a photoreceptor comprising a photosensitive layer disposed on a conductive support. Additionally, the apparatus further comprises a charging unit, an exposure unit, a developing unit and a transfer unit ([0087-93]). The image forming apparatus is further taught to comprise a process cartridge that reads on the limitations recited by the Applicant in pending claim 17 ([0087-93]). The photoreceptor is taught to have either a single-layer construction comprising a charge generating material and a charge transporting material and a binder resin ([0061]). JP ‘239 further teaches that the photosensitive layer comprise a polyarylate binder resin of formula (1) below having the following repeating groups ([0013], [0020], [0031-32], [0062]):
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Specific examples of the general formula above are taught to include the following formulae (1-9) and (1-11):
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The polyarylate resin is further taught to include a structural unit that is different from the structural unit of general formula (1) above ([0032-33]). Examples of such an additional structural unit are taught to include the structural unit of formula (3-10) below ([0036]):
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As can be seen the combination of structural units presented in formulae (1-1) and (3-10) read on the structural units recited by the Applicant in pending claims 1-2 of the instant application. Furthermore, as seen in the formulae above the total molar number of structural units derived from dicarboxylic acids is 0.50. As seen above, each of the dicarboxylic acid and diol units of formulae (1-1) and (3-10) are present in equal molar amounts. As such, each of the Applicant’s designated M1 to M4 values recited in pending claim 4 will be 0.25/0.50 = 0.50 and will therefore satisfy the inequalities recited in pending claim 4.
The Applicant has rectied a toner and various properties of said toner as a material limitation of the image forming apparatus in claims 1 and 6-9. However, since a developer, or 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. Multiple different developers may be used in any xerographic apparatus and therefore the limitations of the developer in the present claims do not represent material limitations on the apparatus because the developer with these limitations could be substituted by another developer and not alter the mechanical functioning of the apparatus. § MPEP 2115. In accordance with MPEP 2114 an apparatus in a claim must be recited structurally and therefore the type of toner to be used possesses no patentability, only the material properties of the apparatus are patentable. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Additionally, a claim containing a recitation in respect to the manner that an apparatus is intended to be used does not differentiate the claim from prior art. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In further regards to the toner, MPEP 2115 states that, “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).
The toner is a material worked upon and consumed by the image forming apparatus. 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. The toner, during the course of the imaging process, is changed from a particulate material to a melted and fused material. During fixing, heat and/or pressure is applied to the toner to bind it to the recording material such that the toner cannot be recovered and re-used in the apparatus. Therefore, the toner cannot be claimed as a structural member of the apparatus. As such, the limitations and claims directed to the toner are given no weight and are rejected.
JP ‘239 teaches that the photosensitive layer may be a single layer photosensitive layer but does not teach a suitable thickness for such a single layer configuration ([0061]). JP ’239 does teach that in a function separated photosensitive layer the thickness of the charge generating layer should be 5 micrometers or less ([0075]) and the thickness of the charge transporting layer should be 5 to 40 micrometers ([0082]) and therefore the thickness of the a single layer configuration would be understood to be within the Applicant’s recited range of 25 to 50 micrometers. While JP ‘239 teaches the use of charge transport compounds which comprise both the function of transporting electrons and holes, JP ‘239 does not offer guidance on suitable types of compounds. Additionally, while JP ‘239 teaches the use of metal phthalocyanine compounds as suitable charge generating compounds, JP ‘239 does not give guidance on specific metal phthalocyanines ([0071]).
Iwashita teaches a photosensitive member comprising a conductive substrate and a photosensitive layer (Abstract). The photosensitive layer is further taught to comprise a single layer type configuration that contains a charge generating material, an electron transport material, a binder resin and a hole transport material (Abstract). The electron transport material is taught to have the following general formula (1) (Abstract) and specific formula ETM1 ([0050]) :
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The hole transporting compounds are taught to have some of the following general formulas ([0060]) though the compounds presented below are not exhaustive of the compounds taught by Iwashita that read on the formulae recited by the Applicant in the instant claims:
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The above formula read on several of the hole transporting compounds recited by the Applicant in pending claim 12. Iwashita further teaches specific hole transporting compounds that read on the compounds recited by the Applicant in pending claim 13 as shown below, although the list is not intended to be exhaustive ([0082]):
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Iwashita further teaches that titanyl phthalocyanines are preferably used as the charge generating compounds due to a high quantum yield that may be attained in a wavelength range above 700 nm in titanyl phthalocyanines ([0030-33]). Additionally, the use of the electron transporting compounds taught above are taught to improve the charging property of the photosensitive layer ([0040]) while use of the hole transporting compounds taught above is taught to further improve charging properties of the photosensitive layer ([0061]). 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 specific charge generating compounds, hole transporting compounds and electron transporting compounds taught by Iwashita et al. in the photosensitive layer of JP ‘239 in order to improve the charging properties of said photosensitive layer.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2007-108239 (henceforth JP ‘239) in view of Iwashita et al. (US PGP 2022/0100111) as applied to claims 1-14 and 16-17 above, and further in view of JP 2018-054744 (henceforth JP ‘744).
The complete discussions of JP ‘239 and Iwashita above are included herein. Neither JP ‘239 nor Iwashita teach a photosensitive layer that comprises a compound as recited by the Applicant in pending claim 15.
JP ‘744 teaches an electrophotographic photoreceptor including an additive represented by the following general formula (ADD1-1):
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The additive show above corresponds to the Applicant’s formula (T-1) recited in pending claim 15. JP ‘744 teaches that the inclusion of additive Add1-1 improves the crack resistance of the photoreceptor due to the presence of electron transporters, hole transporters and charge generators in the binder resin of the photosensitive layer ([0038]). 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 specific charge generating compounds, hole transporting compounds and electron transporting compounds taught by Iwashita et al. and the additive taught by JP ‘744 in the photosensitive layer of JP ‘239 in order to improve the charging properties and crack resistance of said photosensitive layer.
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 09/29/2026
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