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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/24/2025 has been entered.
Response to Amendment
• Claims 6, 7, 21-27, 29, 30, and 32 are currently pending. Claims 1-5, 8-20, 28, and 31 are cancelled. The objections to claims 21, 26-27, and 30 are withdrawn in light of the amendments to the claims. The rejections of claims 28 and 31 under 35 U.S.C. 112(a) are withdrawn in light of the amendments to the claims. The rejections of claims 6-7 and 21-32 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
Claim Interpretation
It is noted that all explicit definitions mentioned in the Final Action mailed 05/16/2025 are incorporated herein and treated as set forth previously.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 6, 7, 29, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Umebayashi (US-20180282559-A1) (hereinafter referred to as “Umebayashi”), with evidence from Gould et al. (GB-2511606-A) (hereinafter referred to as “Gould”) as to the rejection of claims 6, 7, 29, and 32 only, and with evidence from Oishi et al. (US-20100187719-A1) (hereinafter referred to as “Oishi”) as to the rejection of claims 29 and 32 only.
Regarding claims 6 and 7, Umebayashi teaches an ink jet recording method and a method for producing printed matter using an ink composition (see Umebayashi at para. 0052), wherein the ink composition comprises:
• at least a coloring material, a resin, and an organic solvent, the ink composition does not comprise water (see Umebayashi at para. 0167, teaching a colored ink including a coloring agent and an organic solvent; also note that Umebayashi does not teach the presence of water anywhere in their disclosure; thus, Umebayashi necessarily teaches a lack of water in their ink);
• wherein the organic solvent is represented by the following general formula (1): R1-(OR2)n-O-R3 (1), wherein n: an integer of 1 or more and 4 or less, R1: an optionally branched alkyl group having 1 or more and 8 or less carbon atoms, R2: an optionally branched alkylene group having 1 or more and 4 or less carbon atoms, and R3: hydrogen or an optionally branched alkyl group having 1 or more and 4 or less carbon atoms (see Umebayashi at para. 0197, teaching the organic solvent may include ethylene glycol monomethyl ether, which reads on the general formula (1), where R1 is an alkyl group having 1 carbon atom, R2 is an alkylene group having 2 carbon atoms, and R3 is a hydrogen);
• wherein the ink composition is directly discharged onto a surface of a leather substrate by an ink jet method (see Umebayashi at para. 0288-0290, teaching the recording medium may include natural leather; also see Umebayashi at para. 0290-0294, categorizing “natural leather” separately from other coated leathers like “synthetic leathers”; natural leather is separate from coated leather, where for natural leather, the surface to be printed is obtained solely by tanning the rawhide and skin, as evidenced by Gould at pg. 4, lines 31-35; thus, it necessarily follows that when using natural leather as a substrate in the printing method of Umebayashi, “direct” printing on the leather substrate occurs, as there is no undercoat layer on the natural leather);
• wherein the resin has a weight average molecular weight of 18,000 or more and 100,000 or less, and wherein the resin comprises an acrylic resin (see Umebayashi at para. 0203-0205, teaching the colored ink may include a (meth)acrylic resin having a weight-average molecular weight of preferably 20,000 to 100,000).
Regarding claims 29 and 32, see Umebayashi at para. 0219, teaching the colored ink may include a surfactant; also see Umebayashi at Table 4 at pg. 17, teaching in their examples the use of BYK331 as a surfactant, which is a polysiloxane surfactant, as evidenced by Oishi at para. 0166; thus, Umebayashi reasonably suggests to one of ordinary skill in the art to use a polysiloxane-based surfactant, i.e., a silicone-based resin, as exemplified in their example embodiments.
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 21-27 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Umebayashi, with evidence from Ueda et al. (US-20190280098-A1) (hereinafter referred to as “Ueda”) as to the rejection of claims 21, 22, 24, and 25 only.
Regarding claims 21, 22, 24, and 25, while Umebayashi teaches the method outlined above, Umebayashi fails to explicitly teach the solvent represented by the general formula (1) as comprising two or more types of solvents having at least different boiling points, wherein the solvent represented by the general formula (1) comprises a first organic solvent having a flash point of 70°C or less; and a second organic solvent having a flash point of 90°C or more.
However, Umebayashi teaches “at least one” organic solvent may be used in their ink, suggesting more than one solvent may be present (see Umebayashi at para. 0193). Moreover, Umebayashi teaches both ethylene glycol monomethyl ether and triethylene glycol monobutyl ether as suitable solvents (see Umebayashi at para. 0197).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use both ethylene glycol monomethyl ether and triethylene glycol monobutyl ether as the solvent in the ink of Umebayashi, as Umebayashi teaches at least one solvent may be used and further teaches both as suitable solvents (see Umebayashi at para. 0193 and 0197). Combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Ethylene glycol monomethyl ether has a flash point of 42 °C, as evidenced by Ueda at para. 0095. Thus, ethylene glycol monomethyl ether reads on the claimed first solvent. Furthermore, triethylene glycol monobutyl ether reads on the claimed second solvent, as disclosed by Applicant’s specification at pg. 11, para. 1.
Regarding claims 23, 26, 27, and 30, see Umebayashi at para. 0196 and 0199, teaching y-butyrolactone and pyrrolidone as suitable solvents, which are a cyclic ester and cyclic amide-based solvent, respectively; it would have been obvious to use either the y-butyrolactone or the pyrrolidone solvent together with the glycol ether solvent (ethylene glycol monomethyl ether) in the organic solvent of Umebayashi, as Umebayashi teaches “at least one” solvent may be used and further teaches each as suitable solvents (see Umebayashi at para. 0193, 0196, and 0199); combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP § 2144.06.
Response to Arguments
Applicant’s arguments filed 07/24/2025 have been fully considered. The Examiner agrees with Applicant that the amended claims overcome the previous prior art grounds of rejection (see Applicant’s Remarks at pg. 10-12). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kamada et al. (US-20190023928-A1) teach an ink set which may be printed on natural leather (see Kamada at Abstract and para. 0106).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R 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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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731