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 1-2, 4-8 and 11-23 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (US 2020/0079967).
Regarding claims 1-2 and 4-7
Xiao discloses an ink composition comprising: (a) greater than 60 wt % of a C5 ketone; (b) one or more binder resins; and (c) one or more colorants; and optionally contains ethanol up to 30 wt % ethanol (claim 1).
Xiao discloses that the one or more binder resins is cellulose acetate propionate (i.e., cellulose ester resin) (claim 10).
Xiao discloses that any suitable binder resin may be used, that more than one binder resin can be used, and that polyurethanes are a suitable binder resin (para 0044). As such it would have been prima facie obvious to use both the cellulose acetate propionate binder resin and a polyurethane binder resin, 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.
Xiao discloses the use of methyl propyl ketone (MPK) as the C5 ketone solvent (claim 4).
Xiao discloses that the C5 ketone is greater than 60 wt %, and that the ethanol can be up to 30 % (claim 1). As such the ranges of ratio of MPK to Ethanol in the reference overlaps that claimed the instant invention (i.e., 4:1), and 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.
Xiao discloses that the binder resin can be used in amounts from about 5.0 to about 13.0 wt %. As such the amount of binder in the reference 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.
Regarding claim 8
Xiao discloses that the ink preferably contains less than 2 wt % water (para 0058).
Regarding claim 11
Although Xiao does not disclose the ratio of binders, Xiao does disclose or suggest the use of more than one binder including the use of a polyurethane binder. However, with no other teaching the most obvious ratio of two components would be a 50/50 mixture, which is within the claimed range, making the claimed range obvious.
Regarding claims 12-13
Xiao discloses the use of a conductive agent (claim 13), which broadly reads on a conductive dye.
Regarding claim 14
Xiao discloses the use of a silane based adhesion promoter in amounts up to 2 wt % (para 0057 and claim 13), which overlaps the claimed range making it obvious.
Regarding claim 15
Xiao discloses the use of a surfactant (claim 13).
Regarding claim 16
Xiao disclose the use of a defoamer (claim 13).
Regarding claims 17-18
As Xiao disclose the use of greater than 60 wt % ketone solvent and up to 30 wt % ethanol, the total solids of the reference would overlap the claimed range making it obvious.
Regarding claims 19-20
Although Xiao does not discloses a dry time or resistivity, Xiao does teach or suggest the claimed ink, and the dry time and resistivity are properties of the ink. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 21
It is noted that the term about allows for some leeway. For example greater than 60 wt % ketone of the reference is seen to read on about 60 wt % ketone claimed.
Xiao discloses that the ethanol can be used in amounts up to 15 wt % (para 0010).
Xiao discloses that the binder resin can be used in amounts from about 5.0 to about 13.0 wt %. As such the amount of binder in the reference overlaps the claimed amount, and about 6.5 wt % and about 5 wt %, is seen to read on or make obvious a 50/50 mixture of binder resins.
Xiao discloses that the ink is most preferably used in amounts from about 2 to about 8 wt % (para 0051), which is seen to read on or make obvious about 9 wt %.
Xiao discloses that the silane adhesion promoter is used in an amount from about 0.1 to about 2.0 wt %, overlapping the claimed amount, and making it obvious.
Xiao discloses that the surfactant may be used in amounts of about 0.1 wt % (para 0016).
Regarding claims 22-23
Xiao discloses that any suitable binder resin may be used, that more than one binder resin can be used, and discloses many suitable binders (para 0044). As such it would have been prima facie obvious to use both the cellulose acetate propionate binder resin and a polyurethane binder resin with a third resin, 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.
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€ 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07€ and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-8 and 11-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/834,216 (reference application). Here the reference discloses all of the required claim limitations of the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that there is nothing is Xiao that teaches the claimed MPK to ethanol ratio. This is not persuasive and the teachings of Xiao is a range that overlaps the claimed ratio, as greater than 60 % and up to 30 % will have amounts where the ratio is 4:1, and applicant have still failed to present any evidence of new or unexpected results for the claimed ratio.
Applicants argue that Xiao does not address wet adhesion. While this may be true it is not persuasive as this is not claimed feature, and applicants have not shown that Xiao would be incapable of achieving such results.
Applicants argue that their table 5 shows new and unexpected results. This is not persuasive as some of the inventive examples (i.e., IE11) perform worse than the comparative example, and there is no showing that the closest prior art has been compared. Further, the results are not fully commensurate with the scope of the claims.
Applicants argue that Xiao discourages the use of ethanol. This is not persuasive as Xiao clearly teaches the use of ethanol, and even does such in the claims. Further, as Xiao explicitly discloses the use of ethanol, Xiao cannot and does not teach away from using ethanol. Further still, a reference is good for all that it teaches and is not limited to the specific examples or preferred embodiments.
Applicants argue that Xiao provides no specific teaching of the ratio of MPK to ethanol. While this may be true, the reference teaches amounts of MPK and ethanol, as even admitted by applicants, that inherently would form a range, and this range would include the ratio of 4:1.
Applicants argue that Xiao does not teach the use to 5 % polyurethane resin, along with 10 to 16 % of the polyurethane and cellulose resin combined. This is not persuasive as Xiao discloses the use of up to 13 % binders, and discloses that more than one binder can be used, and without more the most obvious ratio of the two binders would be 50/50, and as such would overlap with the claimed amounts. And applicants have not shown any evidence of new or unexpected results based on the binders used and their amounts, alone or in combination with the other limitations of the claim(s).
Applicants argue that Xiao only teaches polyurethane once in a list of 15 binders. While this may be true it is still a short finite list with predictable results.
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 at 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