DETAILED ACTION
An Office Action was mailed 09/17/2025. Applicant filed a response, amended claims 2-13 and added claim 14, on 12/09/2025.
Claims 2-14 are pending. Claims 2-14 are rejected.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 12/03/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application Nos. 18/174871, 18/191976, and US Patent #12305046, has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 2-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Trummer et al, WO 2009/083176 A1 (Trummer) in view of Matsuzaki et al, US 2018/0265727 A1 (Matsuzaki).
Trummer was cited in the IDS filed 01/29/2025.
With respect to claims 2 and 11-12, Trummer teaches a pigment preparation for use in ink jet printing comprising an aluminum effect pigment having a d98 volume averaged particle size distribution curve of less than 15µm (i.e., a metal pigment made of a metal particle), a solvent having a viscosity of greater than or equal to 1.8 mPa.s at 25oC (i.e., a liquid media component), and at least one phosphorous containing additive, wherein the pigments have a reduced tendency to agglomerate (Trummer; page 3, lines 1-12).
The method includes jetting the ink onto a surface of a substrate using an ink jet printer fitted with a print head to form a printed or coated substrate (i.e., adhering an ink jet composition onto a recording medium by ejecting from an ink jet head) (Trummer; page 29, para 2; page 37, claims 36 and 40). After having applied the droplets of ink jet printing ink on a surface of a substrate, the ink is dried or cured by, for example, applying heat (i.e., a primary heating step) (Trummer; page 7, para 3).
The ink jet printing can be used with any ink jet printing technology (Trummer, page 26; para 1).
The phosphorous containing additive is a phosphinic acid or ester, a phosphonic acid or ester, or a phosphoric acid or ester for the following formula (III), (IV) or (V):
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wherein R1, R2 and R3 are independently H or an organic residue with 1 to 30 carbon atoms, optionally containing heteroatoms such as O, S and/or N,
and R4 and R5 are independently an organic residue with 1 to 30 carbon atoms, optionally containing heteroatoms such as O, S and/or N (Trummer; page 16, para 7-para 8 {cont. on page 17}). These phosphorous-containing additives overlap in scope with the surface treatment agents of formula (1) and (2) as claimed.
Particularly useful are phosphinic acids having a straight chain or branched alkyl residue of 6-24 carbons, preferably 6-18 carbons (Trummer; page 17, para 2-4). These preferred phosphinic acids, wherein in the above formula (IV) R1 = R2 = H and R4 = a C 13-24 hydrocarbon, overlap in scope with the compounds of Formula (2) as claimed (claim 11), and wherein R in formula (1) or (2) is a straight chain aliphatic hydrocarbon group (claim 2).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The ink jet printing ink is based on solvents(s) or water (i.e., a solvent-based ink or water-based ink as claimed) (Trummer; page 20, para 2). Solvents include glycol ethers and esters (Trummer; page 21, para 2).
The aluminum effect pigments are preferably of the leafing type, resulting in a very brilliant and shiny appearance. The leafing behavior can be induced by coating the aluminum effect pigment (Trummer; pager 15, para 2-3).
Trummer does not explicitly disclose that the aluminum effect metal pigment is surface-modified with a surface treatment agent of formula (1) or (2) as claimed.
Trummer also does not explicitly teach wherein the adhering step is performed on a portion of the recording medium supported by a platen, or a primary heating step performed by heating the portion of the recording medium supported by the platen as presently claimed (claim 11), or
wherein the heating of the primary heating step is performed by a platen heater (claim 12).
With respect to the difference, Matsuzaki teaches an aqueous inkjet composition containing a pigment dispersion formed of a surface-treated pigment having a phosphorous-containing group on a surface thereof, and a resin dispersion, wherein the ink composition has a conductivity of 2600µs/cm or less (Matsuzaki; Abstract and [0007]). The pigments to be treated are not particularly limited, and include metallic pigments such as aluminum (Matsuzaki; [0067] and [0075]).
The pigment is stably dispersed and held in water by using a pigment which has been surface-treated with a phosphorous-containing group having either a P—O group or a P═O group. When using a surface-treated pigment having a phosphorous-containing group on a surface thereon, the permeability of the ink to the recording medium and the affinity with the recording medium are improved, unintentional bleeding or spreading of the ink on the recording medium is suppressed, and it is possible to obtain an aqueous ink jet ink composition excellent in storage stability while securing printing quality during fine line printing (Matsuzaki; [0079]).
The ink comprises water and may contain organic solvents (Matsuzaki; [0097] and [0099]).
Matsuzaki teaches an ink attachment step wherein the aqueous ink jet ink composition is ejected from an inkjet head onto the recording medium M (Matsuzaki; [0163] and Fig. 1). The recording apparatus has a platen heater 4 for heating the recording medium M at the time of ejecting the ink composition from the inkjet head 2 (i.e., the adhering step is performed on a portion of the recording medium supported by a platen) (Matsuzaki; [0059] and Fig. 1). The ink attachment step may be provided with a heating step of heating the recording medium with a platen heater 4 at the same time as the ink attachment step. Due to this, it is possible to quickly dry the ink on the recording medium M, bleeding is suppressed, and it is possible to form an image excellent in abrasion resistance and image quality (i.e., a primary heating step performed by heating the portion of the recording medium supported by the platen (claim 11), wherein the heating step is performed by a platen heater (claim 12)) (Matsuzaki; [0167]).
Matsuzaki is analogous art as it teaches ink jet printing methods comprising an adhesion step and primary heating step as claimed, wherein the ink composition may comprise a phosphorous-treated aluminum pigment in an aqueous liquid medium which may comprise a solvent, and wherein a platen heater is used during the adhering and primary heating steps.
In light of the motivation provided by Matsuzaki to surface-modify pigments, including aluminum metallic pigments, with a phosphorus-containing compound when used in inkjet methods, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aluminum pigments of Trummer with the phosphorous-containing compounds of formula III-V in order to stably disperse the pigments in the ink, improve the permeability of the ink to the recording medium and the affinity with the recording medium, suppress bleeding of the ink, obtain excellent storage stability, and secure print quality during fine line printing
Further, given that Trummer discloses phosphorous containing additives that overlap the presently claimed surface treatment agents of formula (1) and formula (2), including those wherein R is a hydrocarbon having 13 or more carbon atoms as claimed, it therefore would have been obvious to one of ordinary skill in the art to use the surface treatment agents of formula (1) or (2) as claimed, which are both disclosed by Trummer and encompassed within the scope of the present claims, and thereby arrive at the claimed ink jet ink compositions.
In light of the motivation provided by Matsuzaki to use a ink jet apparatus including a platen heater which is used to heat the substrate supported by the platen during the ink attachment step, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention use an ink jet printer including a platen heater in the inkjet methods of Trummer in order to quickly dry the ink on the recording medium, suppress bleeding, and form an image that is excellent in abrasion resistance and image quality, and thereby arrive at the claimed invention. Further, because Trummer teaches that any ink jet printing technology can be used, those skilled in the art would have had a reasonable expectation of success in using the platen support and heater of Matsuzaki in the methods of Trummer.
With respect to claim 3, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above. Trummer teaches that R1-5 of formula (III)-(V) may be a straight chain alkyl group having 6 to 24 carbon atoms and having no substituents, such as octyl or dodecyl (i.e., a C8 or C12 alkyl group) (Trummer; page 17, para 3; pages 27-28, Example 2, Pigments B and C; pages 29-30, Printing Inks 2). Unsubstituted straight chain alkyl group having 6 to 24 carbon atoms overlap in scope with unsubstituted hydrocarbon groups having 13 or more carbon atoms as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 4, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above. Trummer teaches that the inks may comprise the solvent, including organic solvents, in an amount of 60-99 wt%, preferably 80-96 wt%, based on the total weight of the ink jet ink composition (Trummer; page 5, para 3-4; page 19, para 3; page 21, para 1-page 22, para 1). 60 to 99 wt% organic solvents falls within the claimed range of 60% by mass or more of organic solvent, based on a total mass of the ink jet ink composition
With respect to claim 5, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above. Trummer teaches that a phosphorous containing additive having at least one acidic group or acidic substituent and least one amine group, which can be substituted or unsubstituted (i.e., a substituted organic hydrocarbon residue), are particularly efficient to strongly inhibit the agglomeration of the aluminum pigments (Trummer; page 18, para 2).
With respect to claim 6, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above. Trummer teaches that the metal pigments are made from aluminum particles (Trummer; page 14, para 3).
With respect to claim 7, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above. Trummer teaches “leafing” pigments or flakes (i.e., “scaly” as claimed) (Trummer; page 15, para 2 and page 27, “b) Grinding to form a flake”).
With respect to claim 8, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above.
Trummer teaches that the phosphorous containing additive is preferably used in an amount of 0.01-15 wt%, and the aluminum effect pigment is used in an amount of 1-40 wt%, based on the total weight of the pigment preparation (Trummer; page 19, para 1-2).
Trummer teaches that surprisingly, the aluminum effect pigments have no detectable tendency to aggregate, and can therefore be incorporated into inkjet inks (Trummer; page 4, para 4-5).
Matsuzaki teaches that the number of functional groups grafted to one pigment particle may be one or a plurality. The kind and degree of the functional group may be appropriately determined in consideration of the dispersion stability of the inks, the color density, the drying property on the front face of the ink jet head, etc. (Matsuzaki; [0084]).
While Trummer in view of Matsuzaki do not explicitly teach wherein a content of the surface treatment agent is 1.0 part by mass or more and 50 parts by mass or less with respect to 100 parts by mass of the metal particle as claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass ratio of the phosphorous-containing surface treatment agent in the metallic pigments of Trummer in view of Matsuzaki, including over the presently claimed, in order to obtain no noticeable agglomeration, dispersion stability of the ink, good color density, and sufficient drying property on the front face of the ink jet head.
With respect to claim 9, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above, wherein R1-R5 of formula (III)-(V) may comprise an alkyl residue with 6 to 25 carbon atoms, preferably 6 to 18 carbon atoms, which overlaps in scope with those having 15 or more carbon atoms as claimed (Trummer; page 17, para 3).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 10 and 13-14 are are rejected under 35 U.S.C. 103 as being unpatentable over Trummer in view of Matsuzaki as applied to claim 11 above, and further in view of Denda et al, US 2014/012482 (Denda).
With respect to claims 10 and 13-14, Trummer in view of Matsuzaki are relied upon as teaching the limitations of claim 11 as discussed above. Trummer teaches that in addition to aluminum effect pigments, various other colorants can be incorporated into the ink jet printing ink (Trummer; page 24, para 2). Various ink jet printing systems can be used (Trummer; page 26, para 1).
Trummer teaches that the inks comprising the aluminum effect pigments have a very high gloss and a metal effect (Trummer; page 13, para 2; page 14, para 1).
Trummer in view of Matsuzaki do not explicitly teach:
an adhesion step of ejecting another ink jet ink composition which is a colored ink containing a coloring material (claims 10 and 13-14),
from an ink jet head, wherein a colored image having a metallic glossiness is formed (claims 13-14),
such that the ink jet ink composition and another ink jet ink composition overlap (claim 14).
With respect to the difference, Denda teaches an ink jet recording method including discharging an ink composition containing a metallic pigment to a recording medium using a recording head (Denda; [0034]). Aluminum or aluminum alloy metallic pigments are preferred from the viewpoint of the metallic gloss and the cost (Denda; [0044]). The ink may comprise water and/or organic solvents such as alkylene glycol diethers (Denda; [0046-0048]).
The metallic ink is discharged using a recording head to the recording medium to form a metallic gloss image adhered to the region (Denda; [0072]). The method may include a heating step wherein the recorded image is heated (Denda; [0082-0085]).
The ink jet recording method may further include discharging a color ink composition containing a color material to a recording medium using a recording head (Denda; [0105]). The metallic image and the color image may be recorded with overlapping (Denda; [0107]). A metallic image having metallic gloss can be obtained (Denda; [0115]).
Denda is analogous art as it teaches ink jet recording methods comprising a step of adhering an aluminum metal-containing ink to a recording medium, an adhesion step comprising ejecting a colored ink from an ink jet head and adhering the color ink to a recording medium, wherein the color ink may overlap the metallic ink, and a primary heating step, wherein a colored image having a metallic glossiness is formed.
In light of the motivation provided by Denda to use a colored ink jet ink composition in combination with a metallic ink, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an additional adhering step comprising ejecting an ink containing a coloring material to the recording medium, wherein the color ink may overlap the metallic recorded ink, in the inkjet recording methods of Trummer in view of Matsuzaki, in order to obtain a color image which has good metallic gloss, and thereby result in the claimed invention. Further, because Trummer teaches that the metallic ink may be combined with various colorants, those skilled in the art would have had a reasonable expectation of success when using the metallic inks of Trummer in combination with color inks of Denda.
Response to Arguments
1) Applicant’s amendments filed 12/03/2025 have overcome the claim objections previously of record.
2) Applicant’s amendments filed 12/03/2025 have also overcome the 35 USC § 112 rejection previously of record.
3) Applicant’s arguments, see Remarks, pages 8-9, filed 12/09/2025, with respect to the 35 U.S.C. § 102 rejection over Toyoda (JP 2012-241062) have been fully considered and are persuasive. The rejection of claims 2-4, 6-7, 9 and 11-13 over Toyoda has been withdrawn.
Specifically, Toyoda is a UV curable ink. The claims, as presently amended, use an ink which “is not a photocurable ink.” Toyoda does not teach a water-based ink or a solvent-based ink comprising one or more of a glycol ether or cyclic ester organic solvent as presently claimed. Toyoda also does not teach wherein the adhering step is performed on a portion of the recording medium supported by a platen, or a primary heating step performed by heating the portion of the recording medium supported by the platen as presently claimed. For all these reasons, the rejection over Toyoda has been withdrawn.
4) Applicant’s arguments, see Remarks pages 8-9, filed 12/09/2025, with respect to the rejection of claims 2-13 under 35 USC § 103 over Trummer (WO-2009-083176) in view of Engel (US 2012/0287213), have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, Trummer teaches that the printed ink may be dried or cured by applying heat and/or UV radiation (Trummer; page 7, ¶ 3). However, Engel is specifically directed to a UV-curable inkjet ink. Therefore, the combination does not provide sufficient motivation to perform methods with an ink that is not a “photocurable ink” as presently claimed. Further, the combination of Trummer and Engel do not teach or suggest wherein the adhering step is performed on a portion of the recording medium supported by a platen, or a primary heating step performed by heating the portion of the recording medium supported by the platen as presently claimed.
However, upon further consideration and search due to Applicant’s claim amendments, new grounds of rejection are made over Trummer in view of Matsuzaki, and over Trummer in view of Matsuzaki and further in view of Denda as set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KOYANAGI et al, JP-2007131741-A, teaches inkjet inks comprising a metallic pigment and an organic solvent, wherein the organic solvent is preferably a mixture of alkylene glycol diether, alkylene glycol monoether, and lactone (see attached machine translation; Abstract, [0019] and [0033]).
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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732