DETAILED ACTION
Response to Amendments
In response to the amendment received on 07/15/2025:
• Claims 1-6 are currently pending.
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 § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are 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.
In claim 1, it is unclear what the ratio is referring to – is it that of the 1,2-alkanediol to the 1-(2-hydroxyethyl)-2-pyrrolidone (1,2-AD/HEP) or that of the 1-(2-hydroxyethyl)-2-pyrrolidone to the 1,2-alkanediol (HEP/1,2-AD)? Applicant’s specification supports the latter (see Applicant’s specification at para. 00105), and thus, the Examiner is interpreting as such. To correct, the Examiner suggests amending claim 1 to read: “wherein a mass ratio of the content of the 1-(2-hydroxyethyl)-2-pyrrolidone to that of the 1,2-alkanediol is…”. Claims 2-6 are also rejected by virtue of their dependency on claim 1.
It is noted that the amendments to the claims necessitated this new 112(b) rejection. This is because previously, the ratio was equivalent on both ends (1:10 to 10:1), preventing the need for a clarification, whereas now, the amended ratio is not equivalent on both ends (9:1 to 10:1), necessitating a clarification.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, and 6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Adamic (US-20210292585-A1) (hereinafter referred to as “Adamic”).
Regarding claim 1, Adamic teaches an aqueous ink jet ink composition comprising: a color material, water, 1-(2-hydroxyethyl)-2-pyrrolidone, and a 1,2-alkanediol, wherein a mass ratio of the content of the 1-(2-hydroxyethyl)-2-pyrrolidone and that of the 1,2-alkanediol is 9:1 to 10:1 (see Ex. Ink 4 of Adamic at Table 1 at pg. 13, teaching an aqueous ink containing a CAB-O-JET 465 M pigment, 5 wt% of 1-(2-hydroxyethyl)-2-pyrrolidone and 0.5 wt% of 1,2-decanediol; thus, the ratio of the 1-(2-hydroxyethyl)-2-pyrrolidone to that of the 1,2-alkanediol is 5 : 0.5, or 10 : 1; also see Adamic at para. 0008, teaching the ink as being an inkjet ink).
Regarding claim 2, the 1,2-decanediol used in Ex. Ink 4 of Adamic is a 1,2-alkanediol that includes an alkyl group having 2 to 8 carbon atoms, as disclosed by Applicant’s specification at para. 0062.
Regarding claim 4, the CAB-O-JET 465 M colorant in Ex. Ink 4 of Adamic is a pigment, as disclosed by Adamic at para. 0104.
Regarding claim 6, see Adamic at para. 0144-0146.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Adamic.
The below rejections are under an alternative embodiment of Adamic, in which the broad disclosure of Adamic is relied upon instead of Ex. Ink 4.
Regarding claims 1 and 3, Adamic teaches an aqueous ink jet ink composition comprising: a color material, water, 1-(2-hydroxyethyl)-2-pyrrolidone, and a 1,2-alkanediol, wherein a mass ratio of the content of the 1-(2-hydroxyethyl)-2-pyrrolidone and that of the 1,2-alkanediol is 9:1 to 10:1, wherein the 1,2-alkanediol is 1,2-hexanediol (see Adamic at para. 0013, teaching an aqueous inkjet ink containing a wetting package; also see Adamic at para. 0015, teaching the wetting package may include a combination of a 1,2-alkanediol having 10 or more carbon atoms and 1,2-hexanediol; also see Adamic at para. 0026, teaching the content of the 1,2-alkanediol having 10 or more carbon atoms may range from 0.05 wt% to 2 wt% in the ink; also see Adamic at para. 0030, teaching the content of the 1,2-hexanediol may range from 1 wt% to 10 wt% in the ink; thus, Adamic necessarily suggests embodiments in which the total content of the 1,2-alkanediol in their ink ranges from 1.05 to 12 wt% (0.05 + 1 = 1.05; 10 + 2 = 12); also see Adamic at para. 0109, teaching the ink may contain a co-solvent in an amount ranging from 4 to 30 wt%; also see Adamic at para. 0109 and 0112, teaching 1-(2-hydroxyethyl)-2-pyrrolidone as a suitable co-solvent, and further suggesting the co-solvent may be used alone; thus, Adamic necessarily suggests a mass ratio of the 1-(2-hydroxyethyl)-2-pyrrolidone to the 1,2-alkanediol in their ink to range from 0.33 to 28.57 (4 wt% co-solvent minimum/12 wt% 1,2-alkanediol maximum = 0.33 ratio minimum; 30 wt% co-solvent maximum/1.05 wt% 1,2-alkanediol minimum = 28.57 ratio maximum); this range of 0.33 to 28.57 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 2, see Adamic at para. 0015, teaching the ink may contain 1,2-hexanediol, which is a 1,2-alkanediol that includes an alkyl group having 2 to 8 carbon atoms, as disclosed by Applicant’s specification at para. 0062.
Regarding claims 4-6, see Adamic at para. 0050, 0060, and 0144-0146.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Okuyama (US-20160046125-A1) (hereinafter referred to as “Okuyama”).
Regarding claims 1 and 3, Okuyama teaches an aqueous ink jet ink composition comprising: a color material, water, 1-(2-hydroxyethyl)-2-pyrrolidone, and a 1,2-alkanediol, wherein a mass ratio of the content of the 1-(2-hydroxyethyl)-2-pyrrolidone and that of the 1,2-alkanediol is 9:1 to 10:1, wherein the 1,2-alkanediol is 1,2-hexanediol (see Okuyama at para. 0060, teaching an ink containing a pigment, water, an organic solvent, and a resin component; also see Okuyama at para. 0075-0076, teaching the organic solvent may include a 1,2-alkanediol, such as 1,2-hexanediol, in an amount ranging from 1 to 20 mass% in the ink; also see Okuyama at para. 0075 and 0078, teaching the organic solvent may include a pyrrolidone derivative, like 1-(2-hydroxyethyl)-2-pyrrolidone, in an amount ranging from 0.5 to 10 mass% in the ink; also see Okuyama at Table 1 at pg. 9, teaching example inks containing both a pyrrolidone derivative and a 1,2-alkanediol, suggesting their organic solvent component may contain both types; thus, Okuyama necessarily teaches the content ratio of the pyrrolidone derivative (i.e., 1-(2-hydroxyethyl)-2-pyrrolidone) to the 1,2-alkanediol (i.e., 1,2-hexanediol) to range from 0.025 to 10 (0.5% pyrrolidone derivative minimum/20% 1,2-alkanediol maximum = 0.025 ratio minimum; 10% pyrrolidone derivative maximum/1% 1,2-alakendiol minimum = 10 ratio maximum); this range of 0.025 to 10 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 2, see Okuyama at para. 0076, teaching the ink may contain 1,2-hexanediol, which is a 1,2-alkanediol includes an alkyl group having 2 to 8 carbon atoms, as disclosed by Applicant’s specification at para. 0062.
Regarding claims 4-6, see Okuyama at para. 0032, 0034, 0061, and 0082.
Response to Arguments
Applicants’ arguments filed 07/15/2025 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. 3-4). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections 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 extension fee 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 date of this final action.
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