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
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.
Claims 2-6 and 12 are rejected under 35 U.S.C. 103 as obvious over Satoshi et al. (JPH08253729A, google patents used for translation), in view of Brouns et al. (US 20130045393), in view of Williams (US 2018/0162008).
Regarding claim 12
Satoshi discloses a water-based colored polyester dispersion (abstract), that may be used in inkjet printing (paras 0001 and 0004).
Satoshi discloses the use of dyes such as disperse dyes (para 0026-0027, 0041, 0049), making the use of a disperse dye obvious if not anticipated.
Satoshi discloses that the dye is used in an amount of preferably 2 to 25 % by weight relative to the resin (i.e. polyester would be 4-50 times greater than the amount of disperse dye) (paragraph 0028). As the content of the polyester overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Although Satoshi does not disclose the acid value of the polyester in KOH mg/g, Satoshi does disclose the other limitations of the claim. However, Brouns discloses that aqueous ink jets inks can have a polyester with an acid value of 0 to 10 mg KOH/g (para 0043), overlapping the claimed range. Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Satoshi by using a polyester resin having an acid value of 0 to 10 mg KOH/g, with a reasonable expectation of success in forming a useful ink, as suggested by Brouns. Further, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Although, Satoshi does not disclose the claimed disperse dyes, Satoshi does disclose dyes such as Disperse Blue 56.and 87. However, Williams discloses that as disperse dyes that Disperse Blue Dyes 56, 60 and 87 are functionally equivalent with Disperse Blue Dyes 359 and 360 (para 0050). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Satoshi by using Disperse Blue 359 or Disperse Blue 360, with a reasonable expectation of success in forming a useful ink, as suggested by Williams.
Regarding claim 2
Satoshi discloses mixing a water dispersion of the colored particles with deionized water, where the non-volatile content was measured, then this was adjusted to 10 wt % (paragraph 0048).
Regarding claims 3-4
If the dye is used at 10 to 20 wt % of the resin, and the resin is used in an amount of 10 wt %, then the dye would be present in an amount of 0.1 to 0.2 wt %, thus the amount of dye used is obvious if not anticipated.
Regarding claim 5
Satoshi discloses that the composition has an average particle size of 0.08 microns (i.e. 80 nm and in particulate form) (para 0051).
Regarding claim 6
Satoshi discloses the use of Disperse Red 60 (para 0049).
Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi et al. (JPH08253729A, google patents used for translation), in view of Brouns et al. (US 20130045393) in view of Williams (US 2018/0162008), as applied to claims 2-6 and 12 above, in view of (JP2004532750A, google patents used for translation purposes).
Regarding claims 7-8
Although Satoshi does not disclose the claimed printing process, Satoshi does disclose inkjet printing and an ink with a disperse dye. However, the ‘750 patent discloses that when a disperse dye (i.e. sublimation dye) is used that a heating step causes the dye to set and to sublimate into a substrate such as a polyester woven fiber (i.e. piece of fabric) (para 0062). Therefore it would have been prima facie obvious to one of ordinary skill ion the art at the time of the invention to add to the teachings of Satoshi by heating the dye after it has been ejected by an inkjet process onto a recording medium (i.e. substrate), with a reasonable expectation of success, and the expected benefit of helping the dye to set and to sublimate into the recording medium, as suggested by the ‘750 patent.
Claim 9
The ‘750 patent discloses that basic dyes can be used on silk, acrylics and polyester (para 0042). Therefore it would have been prima facie obvious to use the dye of Satoshi on one of these other functionally equivalent textile materials.
Claim 10
It would be prima facie obvious to have the substrate made of two or more of the above textile materials, because 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, 205 U.S.P.Q. 1069.
Regarding claim 11
The ‘750 patent discloses heating at 176 C to fix the dye (para 037). Although this does not overlap with the claimed range, there is not much difference between 160 C and 176 C (when viewed on an absolute temperature scale) that the skilled artisan would have expected a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim 13 is rejected under 35 U.S.C. 103 as obvious over Satoshi et al. (JPH08253729A, google patents used for translation), in view of Brouns et al. (US 20130045393), in view of Williams (US 2018/0162008), as applied to claims 2-6 and 12 above, in view of Ezbiansky et al. (CN-1662975-A).
Regarding claim 13
William teaches many disperse dyes that can be used such as disperse yellow 54 (para 0050). However, Ezbiansky discloses that disperse yellow 53 is functionally equivalent as a dye to disperse orange 60 (from list of suitable commercial dyes). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Satoshi and Williams by using disperse organe 60 as the dye with a reasonable expectation of suce3ss, as suggested by Ezbiansky.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Fujita does not teach the claimed acid value. While this is true it is not persuasive as Fujita is no longer used in the rejection.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached on 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734