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 .
Examiner’s Comments
Applicants’ response filed on 8/5/2025 has been fully considered. Claims 1-4, 7, 11-12 and 14 are cancelled and claims 5-6, 8-10, 13 and 15-18 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 16, there is no support for the limitation “wherein the substrate is a plastic film having pores”. Paragraph [0034] of Applicant’s Specification discloses a foamed plastic having pores. However, this does not explicitly disclose or suggest the limitation “wherein the substrate is a plastic film having pores”. A plastic film with pores is not the same as a foamed plastic with pores, and therefore the limitations claimed include new matter.
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.
Claim 10 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation of the content of the inorganic particles is 50% by mass or more relative to the total mass of the ink receiving layer, and claim 6 also recites the content of the inorganic particles is 50% by mass or more and 98% by mass or less relative to the total mass of the ink receiving layer which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 10, this claim does not further limit claim 6 as the content of inorganic particles being 50% by mass or more does not further limit the range of 50% by mass or more 98% by mass or less in claim 10. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 5-6, 8-10, 15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,703,123 B2.
Claim 5 of the patent reads on claim 5 of the present application.
Claim 7 of the patent reads on claim 8 of the present application.
Claim 9 of the patent reads on claim 9 of the present application.
Claim 1 of the patent reads on claim 10 of the present application.
Claim 7 of the patent reads on claim 15 of the present application.
Claim 13 of the patent reads on claim 18 of the present application.
Claim 13 of the patent discloses an image recording method comprising: ejecting an aqueous pigment ink containing a pigment onto an ink jet recording medium from a recording head, wherein the ink jet recording medium comprises: a substrate; and an ink-receiving layer being the uppermost surface layer, wherein the ink-receiving layer contains: a binder mainly containing a water-insoluble resin, and inorganic particles mainly including alumina particles, wherein the content of the inorganic particles is 50% by mass or more relative to the total mass of the ink-receiving layer, wherein the surface roughness (Ra) of the ink-receiving layer measured with a scanning probe microscope is in the range of 30 nm to 150 nm, wherein a surface of the recording medium has depressions represented by black when an image of the surface of the recording medium taken with a scanning electron microscope is binarized, and wherein a number of depressions having a circle equivalent diameter in the range of 240 nm to 800 nm per unit area of 100 μm.sup.2 of the surface of the recording medium is 50 to 300.
Claim 13 of the patent does not appear to explicitly disclose the image recording method comprising the ink jet recording medium comprising the water-insoluble resin being at least one selected from the group consisting of acrylic resin, polycarbonate-modified urethane resin and polyether-modified urethane resin. However, claim 3 of the patent discloses the ink jet recording medium comprising the water-insoluble resin being at least one selected from the group consisting of acrylic resin, polycarbonate-modified urethane resin and polyether-modified urethane resin.
Hoshio discloses a recording material comprising base material comprising a void-containing polypropylene film (pg. 4 of translation) and wherein the void-containing polypropylene film is also called polypropylene-based synthetic paper (pg. 4 of translation).
It would have been obvious to one of ordinary skill in the art to combine claims 13 and 3 of the patent and to substitute the substrate of the patent for the void-containing polypropylene film of Hoshio in order to arrive at the invention of claim 6 of the present application.
Claims 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,703,123 B2 in view of Hoshio et al (JP 4524690 B2). A machine translation is being provided as the English translation for Hoshio et al (JP 4524690 B2).
Regarding claim 16, claim 13 of the patent does not appear to explicitly disclose the image recording method comprising the substrate being a plastic film having pores.
However, Hoshio discloses a recording material comprising base material comprising a void-containing polypropylene film (pg. 4 of translation) and wherein the void-containing polypropylene film is also called polypropylene-based synthetic paper (pg. 4 of translation).
It would have been obvious to one of ordinary skill in the art to modify claims 13 of the patent to substitute the substrate of the patent for the void-containing polypropylene film of Hoshio in order to arrive at the invention of claim 16 of the present application.
Regarding claim 17, claim 13 of the patent does not appear to explicitly disclose the image recording method comprising the plastic film being a polypropylene-based synthetic paper.
However, Hoshio discloses a recording material comprising base material comprising a void-containing polypropylene film (pg. 4 of translation) and wherein the void-containing polypropylene film is also called polypropylene-based synthetic paper (pg. 4 of translation).
It would have been obvious to one of ordinary skill in the art to modify claims 13 of the patent to substitute the substrate of the patent for the void-containing polypropylene film of Hoshio in order to arrive at the invention of claim 17 of the present application.
Claim Rejections - 35 USC § 103
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 5-6, 8-10, 13, 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Tochihara et al (US 2002/0044186 A1).
Regarding claim 6, Tochihara discloses a method of recording an image on a recording medium using pigment ink (image recording method; paragraph [0014]). The method comprises ejection of ink droplets of a water-based pigment ink from a recording head (ejecting an aqueous pigment ink containing a pigment onto an ink jet recording medium from a recording head; paragraphs [0045], [0052] and [0116]). Tochihara discloses a recording medium (ink jet recording medium; paragraph [0020]) comprising a base material (substrate; paragraph [0021]) and an ink-receiving layer disposed on the base material (ink-receiving layer being an uppermost surface layer; paragraph [0022]).
Tochihara discloses the ink-receiving layer contains a resin binder (paragraph [0032]) that comprises an acrylic resin (paragraph [0032]) having a Tg from 0 °C to 50 °C (glass transition temperature of binder; paragraph [0033]) and wherein the resin binder is a resin emulsion (water-insoluble resin; paragraph [0033]).
Tochihara does not explicitly disclose an acrylic water-insoluable resin having a glass transition temperature of 20 °C or lower, however the Tg of the acrylic resin overlaps the claimed range for the Tg of the acrylic water-insoluble resin.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired film formation within a specific temperature window relative to the Tg of the resin emulsion for the ink-receiving layer. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The water-based pigment ink comprises a pigment having an average particle diameter within a range of from 10 to 500 nm (average particle diameter of pigment; paragraph [0045]).
Tochihara does not explicitly disclose a pigment having an average particle diameter within a range of from 10 to 500 nm, however the particle diameter of the pigment overlaps the claimed range for the average particle diameter.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges, including the instantly claimed ranges of 50-180 nm, from the ranges disclosed in the prior art reference in order to allow for the pigment to penetrate into the voids of the ink-receiving layer while increasing the rub-off resistance of the image (paragraph [0046] of Tochihara). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tochihara discloses the recording medium (ink jet recording medium; paragraph [0020]) comprising a base material (substrate; paragraph [0021]) and an ink-receiving layer disposed on the base material (ink-receiving layer being an uppermost surface layer; paragraph [0022]). Tochihara discloses the ink-receiving layer contains a resin binder (paragraph [0032]) that comprises an acrylic resin (paragraph [0032]) having a Tg from 0 °C to 50 °C (glass transition temperature of binder; paragraph [0033]) and wherein the resin binder is a resin emulsion (water-insoluble resin; paragraph [0033]).
Tochihara discloses the ink-receiving layer comprising alumina hydrate (inorganic particles; paragraph [0025]), wherein the alumina hydrate has a particle diameter from 20 to 500 nm (diameter of inorganic particles; paragraphs [0031]).
Tochihara does not explicitly disclose inorganic particles having a diameter of 155-560 nm, however the particle diameter of alumina hydrate overlaps the claimed range for the diameter of the inorganic particles.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to prevent cracks in the ink-receiving layer and prevent lowered smoothness of the ink-receiving layer (paragraph [0031] of Tochihara). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tochihara discloses the proportion of the acrylic water-insoluble resin in the ink-receiving layer is in the range of 30% by mass to 90% by mass relative to the mass of the inorganic particles in the ink-receiving layer. The amount of resin binder in the ink receiving layer overlaps the claimed range for the amount of resin emulsion. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order prevent to lowering of mechanical strength and prevent low ink absorbency (paragraph [0038] of Tochihara). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tochihara does not explicitly disclose that the ink-receiving layer does not contain a water-soluble resin. Tochihara discloses the particle diameter of the resin particles in the resin emulsion is from 0.07 µm to 0.7 µm (paragraph [0036]). As the resin binder is a resin emulsion, it is considered to be a water-insoluble resin and therefore the ink receiving layer does not contain a water-soluble resin.
Tochihara does not explicitly disclose the content of the inorganic particles is in the range of 50% to 98% by mass relative to the total mass of the ink receiving layer.
Tochihara discloses the proportion of the acrylic water-insoluble resin in the ink-receiving layer is in the range of 30% by mass to 90% by mass relative to the mass of the inorganic particles in the ink-receiving layer. The mixing ratio of alumina hydrate to resin binder is from 2/1 to 9/1 (paragraph [0037]). The amount of alumina hydrate based on the total mass of the ink-receiving layer is 66% (2/3) to 90% (9/10) by mass. The amount of alumina hydrate in the ink receiving layer overlaps the claimed range for the content of inorganic particles.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order prevent to lowering of mechanical strength and prevent low ink absorbency (paragraph [0038] of Tochihara). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tochihara does not explicitly disclose that the surface roughness (Ra) of the ink-receiving layer measured with a scanning probe microscope is in the range of 30 nm to 150 nm, thereby producing a pigment anchor effect that reduces pigment flaking.
However, since Tochihara discloses alumina hydrate having a particle diameter from 20 to 500 nm, which overlaps the particle diameter of 155 nm to 560 nm for alumina in Applicant’s Specification, the overlapped portion of the range for the particle diameter of alumina hydrate of Tochihara would inherently provide a surface roughness from 30 nm to 150 nm and thereby would produce a pigment anchoring effect that reduces pigment flaking for the ink receiving layer as paragraphs [0058] and [0060] of Applicant’s Specification states that alumina having an average particle diameter of 155 nm to 560 nm would provide the desired surface roughness of the ink-receiving layer.
Tochihara does not explicitly disclose that the surface of the ink jet recording medium has depressions defined by portions represented by black when images of the surface of the ink jet recording medium taken with a scanning electron microscope are binarized, wherein a number of depressions having a circle equivalent diameter in the range of 240 nm to 800 nm among the depressions per unit area of 100 um2 of the surface of the ink jet recording medium is 50 to 230.
Since the structure of the recording medium of Tochihara is the same as the structure of the ink jet recording medium of claim 1, the recording medium of Tochihara would have inherently have a surface of the recording medium have depressions represented by black when images of the surface of the recording medium taken with a scanning electron microscope are binarized. Since the particle diameter of the resin particles in the resin emulsion is from 0.07 µm to 0.7 µm, which overlaps the amounts of 50 nm, 200 nm and 350 nm as disclosed in Table 3 of Applicant’s Specification, the overlapped amounts of the particle diameter of the resin emulsion of Tochihara would inherently have a number of depressions having a circle equivalent diameter of in the range of 240 nm to 800 nm among the depressions per unit area of 100 µm of the surface of the recording medium being 50 to 230 as the Examples in Table 3 of Applicant’s Specification disclose that particle diameters of 50 nm, 200 nm and 350 nm for the water-insoluble resin provide the number of depressions that are within the claimed range.
Regarding claim 5, Tochihara discloses the method comprising the recording medium comprising the ink-receiving layer having a thickness of at least 20 µm (paragraph [0043]). The thickness of the ink-receiving layer overlaps the claimed range for the thickness of the ink-receiving layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have better ink absorbency and durability. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Tochihara does not explicitly disclose that the ink receiving layer has a thickness in the range of 25-50 µm. Tochihara discloses the recording medium comprising the ink-receiving layer having a thickness of at least 20 µm (paragraph [0043]). The thickness of the ink-receiving layer overlaps the claimed range for the thickness of the ink-receiving layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have better ink absorbency and better production efficiency It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, Tochihara does not explicitly disclose that the surface roughness (Ra) of the ink-receiving layer measured with a scanning probe microscope is in the range of 40 nm to 100 nm. Since Tochihara discloses alumina hydrate having a particle diameter from 20 to 500 nm, which overlaps the claimed particle diameter of 155 nm to 560 nm for alumina, the recording medium of Tochihara would inherently have a surface roughness of 40 nm to 100 nm for the ink receiving layer as paragraphs [0058] and [0060] of Applicant’s Specification states that alumina having an average particle diameter of 155 nm to 560 nm would provide the desired surface roughness of the ink-receiving layer.
Regarding claim 10, Tochihara discloses the method comprising the recording medium comprising the mixing ratio of alumina hydrate to resin binder being 2/1 to 9/1 (paragraph [0037]). The amount of alumina hydrate based on the total mass of the ink-receiving layer is 66% (2/3) to 90% (9/10) by mass.
Regarding claim 13, Tochihara discloses a recording medium comprising the ink-receiving layer further comprising another pigment comprising silica (paragraph [0039]).
Regarding claim 15, Tochihara does not explicitly disclose that the ink receiving layer has a thickness in the range of 40-50 µm. Tochihara discloses the method comprising the recording medium comprising the ink-receiving layer having a thickness of at least 20 µm (paragraph [0043]). The thickness of the ink-receiving layer overlaps the claimed range for the thickness of the ink-receiving layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have better ink absorbency and better production efficiency It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, Tochihara discloses a recording medium comprising the ink-receiving layer further comprising a silica pigment (paragraph [0039]).
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tochihara et al (US 2002/0044186 A1) in view of Hoshio et al (JP 4524690 B2).
A machine translation is being provided as the English translation for Hoshio et al (JP 4524690 B2).
Regarding claim 16, Tochihara discloses the recording medium (ink jet recording medium; paragraph [0020]) comprising a base material (substrate; paragraph [0021]) and an ink-receiving layer disposed on the base material (ink-receiving layer being an uppermost surface layer; paragraph [0022]); and wherein the base material is a plastic film formed from a resin such as polyethylene (plastic film; paragraph [0021]).
Tochihara does not explicitly disclose the method comprising the recording medium comprising a substrate being a plastic film having pores.
However, Hoshio discloses a recording material comprising base material comprising a void-containing polypropylene film (pg. 4 of translation) and wherein the void-containing polypropylene film is also called polypropylene-based synthetic paper (pg. 4 of translation).
It would have been obvious to one of ordinary skill to modify the method of Tochihara to replace or modify the polyethylene film base material of Tochihara with the porous polypropylene-based synthetic paper of Hoshio because having the required polypropylene-based synthetic paper provides excellent water resistance, moderate strength and elongation, light weight similar to paper and cushioning properties (pg. 4 of translation of Hoshio).
Regarding claim 17, Tochihara is relied upon as described above. Tochihara discloses the recording medium (ink jet recording medium; paragraph [0020]) comprising a base material (substrate; paragraph [0021]) and an ink-receiving layer disposed on the base material (ink-receiving layer being an uppermost surface layer; paragraph [0022]); and wherein the base material is a plastic film or synthetic paper formed of plastics such as such as polyethylene (plastic film; paragraph [0021]).
Tochihara does not explicitly disclose a plastic film substrate being a polypropylene-based synthetic paper.
However, Hoshio discloses a recording material comprising base material comprising a void-containing polypropylene film (pg. 4 of translation) and wherein the void-containing polypropylene film is also called polypropylene-based synthetic paper (pg. 4 of translation).
It would have been obvious to one of ordinary skill to modify the recording material of Tochihara to include the polypropylene-based synthetic paper of Hoshio as the base material of Tochihara because having the required polypropylene-based synthetic paper provides excellent water resistance, moderate strength and elongation, light weight similar to paper and cushioning properties (pg. 4 of translation of Hoshio).
Response to Arguments
Applicant’s arguments, see page 7, filed 8/5/2025, with respect to the objection to the specification has been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant's arguments filed 8/5/2025 have been fully considered but they are not persuasive.
Applicants argue that the 112(a) rejection should be withdrawn.
This argument is not persuasive as paragraph [0034] of Applicant’s Specification discloses a foamed plastic having pores. This does not teach or suggest the limitation “wherein the substrate is a plastic film having pores” as this limitation is an intermediate breadth that is not supported. A plastic film with pores is not necessarily the same as a foamed plastic with pores, and therefore the limitations claimed are new matter.
Applicants argue that the combination of features are critical and provide an unexpected benefit over the cited references.
This argument is not persuasive as the claims do not show criticality for the endpoints for the amount of water-insoluble resin and the amount of inorganic particles in the ink-receiving layer.
The claims are not commensurate in scope with the data in Tables 1 and 2 of the Specification as the content of the inorganic particles relative to the total mass of the ink-receiving layer is 50% by mass to 98% by mass while the content of the inorganic particles relative to the total mass of the ink-receiving layer is narrower than the claimed range.
Applicants argue that claim 6 is not obvious over Tochihara and Hoshio.
This argument is not persuasive as Tochihara suggests the limitations of claim 6. The surface roughness would inherently be met as it discloses alumina in a particle size range that would provide the claimed surface roughness. Also, Tochihara discloses a glass transition temperature of the binder resin that overlaps the claimed range and suggests that the binder resin is acrylic. Furthermore, the depressions would inherently be met by Tochihara disclosing a particle size range for the water-insoluble resin.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785