DETAILED ACTION
An Office Action was mailed 10/20/2025. Applicant filed a Response, and amended claims 8 and 15 on 01/05/2026.
Claims 8-11 and 13-17 are pending.
Claims 8-11 and 13-17 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 .
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 8-11 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Seguchi, US 2020/0207141 A1 (Seguchi) in view of in view of Higeta et al, JP 2006-241286A (Higeta).
Seguchi was cited in the PTO-892 mailed 02/18/2025. Higeta was cited in the PTO-892 mailed 10/20/2025. The machine translation of Higeta provided with the PTO-892 mailed 10/20/2025 is referenced in the below rejection.
Regarding claims 8 and 13-14, Seguchi teaches an ink jet recording method including an ink attachment that includes ejecting an ink from a recording head to attach the ink composition to a recording medium, and a treatment liquid attachment step that includes ejecting a treatment liquid containing a flocculant from a recording head to attach the treatment liquid to the recording medium as claimed (i.e., an ink set including a flocculant-containing treatment liquid and an inkjet composition as claimed) (Seguchi; [0006]). The recording medium may be a low- or non-absorbent medium as claimed (Seguchi; [0019] and [0038-0041]).
The inkjet ink composition is aqueous (i.e., water-based) and contains a colorant as claimed (Seguchi; [0130-0131]).
The ink composition may contain an organic solvent, wherein the organic solvent is preferably water-soluble (Seguchi; [0071]). The organic solvent preferably has a normal boiling point of 280oC or less, preferably 160oC or more and 270oC or less, more preferably 180oC or more and 260oC or less, and most preferably 200oC or more and 250oC or less. Such an organic solvent helps reduce white haze and provides better characteristics such as abrasion resistance and ejection stability (Seguchi; [0072]).
The preferred boiling point ranges of Seguchi fall within the claimed normal boiling range of 150-250oC (i.e., the alkanediol of claim 8), and 150-300oC (the amide solvent of claim 13).
The presence of an alkoxyamide (i.e., an amide solvent of claim 13) as a nitrogen-containing solvent is particularly preferred because it tends to limit drying near nozzles. Alkoxyamides are also highly effective in softening/dissolving the surface of non-absorbent recording mediums (Seguchi; [0084]). In the aqueous ink composition, the total percentage of nitrogen-containing solvents is most preferably 11% by mass or more and 20% by mass or less. This makes the resulting image better in, for example, abrasion resistance (Seguchi; [0085]).
11-20% by mass of an alkoxyamide solvent falls within the claimed range of 20% by mass or less of the total mass of the inkjet ink composition of an amide solvent of claim 13.
Typical examples of polyhydric alcohols include the alkanediols having 6 or fewer carbon atoms propylene glycol and 1,2-hexanediol as claimed (claim 8), as well as 1,3-butanediol (Seguchi; [0087]). One polyhydric alcohol may be used, or two or more may be used as a mixture (Seguchi; [0089]). The percentage of the organic solvent other than the nitrogen-containing solvents, i.e., polyhydric alcohols/alkanediols, relative to the total mass of the ink composition, is 40% by mass or less, more preferably 30% by mass or less, most preferably 20% by mass or less. As for the lower limit, 1% by mass or more, preferably 5% by mass or more, most preferably 7% by mass or more (Seguchi; [0092]). These mass% ranges, including the most preferred range of 7-20% by mass, based the total mass of the ink composition, overlaps in scope with the alkanediol having 6 or fewer carbon atoms constituting 10% to 25% by mass of the total mass of the ink composition 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).
In the aqueous ink composition, the percentage to the total mass of organic solvent polyols that have a normal boiling point of 280oC or more is preferably 5.0% by mass or less, more preferably 3.0% by mass or less, most preferably 1.0% or 0.5% or 0.1% or less, or 0% by mass (Seguchi; [0095]). This helps improve adhesion of the ink to the recording medium by ensuring good drying characteristics of the aqueous ink composition attached to the recording medium (Seguchi; [0096]).
The preferred ranges of 3% by mass or less fall within the claimed limitation wherein at least one water-soluble organic compound does not contain a polyol having a normal boiling point higher than 280oC in an amount that constitutes more than 3% by mass of the total mass of the ink jet ink composition.
Seguchi exemplifies INK1 composition comprising 15% by mass of the amide solvent 2-pyrrolidone, 5% by mass of 1,2-hexanediol as claimed, and 5% by mass of 1,3-butanediol, based on the total mass of the ink (Seguchi; [0275-0276] and page 22, Table 2, INK1), i.e., 10% by mass of the total mass of the ink composition of alkanediols having six or fewer carbon atoms of claim 8 (5% 1,2-hexanediol + 5% 1,3-butanediol) and less than 20% by mass of an amide solvent of claim 13. 10% by mass of the alkanediols also falls within the claimed 30% by mass or less of the total mass of the inkjet ink composition of polyols of claim 14.
The instant specification at [0075-0076] and [00228] discloses that 2-pyrrolidone has a solubility of more than 10g in 100g of water at 20oC and has a boiling point of 245oC. The instant specification at [0089] and [00229] discloses that propylene glycol and 1,2-hexanediol have normal boiling points of 188oC and 224oC respectively, and are completely miscible with water. The instant specification at [0089] discloses that 1,3-butanediol (i.e., 1,3-butylene glycol) has a normal boiling point of 207oC and is completely miscible with water.
Given that Seguchi discloses water-soluble polyhydric alcohol organic solvents that overlap the presently claimed the water-soluble organic compounds, and in light of the disclosure of Seguchi of the equivalence and interchangeability of using polyhydric alcohol organic solvents such as 1,3-butanediol, 1,2-hexanediol, propylene glycol, and mixtures thereof, it would therefore been obvious to one of ordinary skill in the art to use a mixture of 1,2-hexanediol and propylene glycol as claimed, such as by substitution of 1,3-butanediol in INK1 of Table 2 with propylene glycol, and thereby arrive the claimed water-soluble organic compound including propylene glycol and 1,2-hexandiol, thereby resulting in an ink comprising 10% by mass of the ink composition of water-soluble alkanediols as claimed.
Seguchi further teaches that polyhydric alcohols can be divided into alkanediols and polyols. An alkanediol is a diol of C5 or longer, preferable C5-15, more preferably C6-10. A polyol is a polyol of a C4 or shorter alkane. One polyhydric alcohol may be used, or two or more may be used as a mixture (Seguchi; [0088-0089]).
Alkanediols and polyols can function primarily as penetration and/or moisturizing solvents. Alkanediols, however, tend to behave more as penetration solvents (Seguchi; [0090]).
Given that Seguchi discloses alkanediols that overlap the presently claimed organic compound sparingly soluble in water having a solubility of 0.1 to 10g of water at 20oC, including C9 alkanediols, alone or in admixture with other polyhydric alcohols, it therefore would have been obvious to one of ordinary skill in the art to use a C9 alkanediol (e.g., nonanediol), which is both disclosed by Seguchi and encompassed within the scope of the present claims.
Seguchi further teaches that the aqueous ink should have a surface tension at 25oC of 40mN/m or less. This ensures moderate wetting and spread on the recording medium (Seguchi; [0173]).
Seguchi does not explicitly teach the addition of at least one organic compound sparingly soluble in water having a solubility of 0.1 to 10g of water at 20oC, wherein the organic compound sparingly soluble in water includes at least one diol selected from the group consisting of 2-butyl-2-ethyl-1,3-propanediol, 2,2-diisobutyl-1,3-propanediol, 2,2-dibutyl-1,3-propanediol, 1,9-nonanediol, 2,4-diethyl-1,5- pentanediol, and an alicyclic diol, and having a normal boiling point of 180°C to 300°C, with the at least one diol constituting 2.3% by mass or less of a total mass of the ink jet ink composition.
With respect to the difference, Higeta teaches a water-based ink having excellent scratch resistance, and an inkjet recording method using the ink. The water-based ink comprises a pigment, a diol derivative having 9 carbon atoms, a self-emulsifying water-dispersible polyester resin, and a compound of formula (I) (Higeta; page 3, lines 24-46).
The diol derivative with 9 carbon atoms has low water solubility but high permeability. It is easily absorbed on the surface when used in water-based inks, and has a relatively low molecular weight as compared to so-called surfactants. Therefore, when absorbed on the surface, the surface tension of the liquid can be quickly reduced like a surfactant (Higeta; page 5, lines 38-43).
The diol derivative having 9 carbon atoms includes 1,9-nonanediol, 2N-butyl-2-ethyl-1,3-propanediol and 2,4-diethyl-1,5-pentanediol. A diol having less than 9 carbon atoms has insufficient permeability and a diol having more than 9 carbon atoms has a low solubility in water and tends to separate over time. The diol derivative having 9 carbon atoms ensures high reliability over time as a water-based ink additive while ensuring high permeability (Higeta; page 5, lines 45-52).
The addition amount of the diol derivative is preferably 0.05 to 2% by weight, preferably 0.1 to 1.5% by weight, with respect to the total weight of the ink. If less than 0.05% by weight the penetration amount and improvement properties are insufficient, and if more than 2% by weight, it does not dissolve in the ink, causing problems with storage stability and jetting stability of the ink (Higeta; page 7, lines 51-56).
0.05-2% by weight falls within the claimed range of 2.3% by mass or less, with respect to a total mass of the inkjet ink composition.
The inks preferably contain 5 to 50% of a wetting agent for the purpose of preventing clogging due to drying of the ink and further improving the dissolution stability of the ink. Even if the water in the ink is evaporated at the ejection port of the ink-jet head, printing can be performed with little clogging and/or simple cleaning (Higeta; page 8, lines 15-19). As the wetting agent, a low-volatile, water-soluble organic solvent is preferable. Such an organic solvent also acts as a dissolution aid for the diol having 9 carbon atoms in the aqueous ink, thereby improving both storage stability and injection stability (Higeta; page 8, lines 19-23).
Low volatile organic solvents include, by means of example only, propylene glycol, 1,3-butanediol, 2-pyrrolidone, and combinations thereof (Higeta; page 8, lines 25-45).
Higeta exemplifies using the ink on glossy photo paper, i.e., a coated, low- or nonabsorbent recording medium, and testing the rub-fastness (Higeta; page 16, lines 27 and 48-50).
Higeta is analogous art as it teaches inkjet recording methods on low to non-absorbent recording media with water-based ink comprising a pigment; 1,9-nonanediol, 2N-butyl-2-ethyl-1,3-propanediol or 2,4-diethyl-1,5-pentanediol in the claimed amounts; and a water-soluble organic compound.
In light of the motivation provided by Higeta to add a diol compound containing 9 carbon atoms to aqueous inkjet inks, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include 0.05 to 2% by weight of at least one of 1,9-nonanediol, 2N-butyl-2-ethyl-1,3-propanediol, or 2,4-diethyl-1,5-pentanediol, as a C9 alkanediol added to the water-based inks of Seguchi, in order to obtain high reliability over time, high permeability, sufficient penetration, storage stability, jetting stability, and a quick reduction of the surface tension of the applied liquid. Further, in light of the motivation provided by Higeta to use a water-soluble organic solvent, it would have been obvious to one of ordinary skill in the art to combine the diol having 9 carbon atoms in the inks and methods of Seguchi in view of Higeta with a water-soluble organic solvent, corresponding to the water-soluble organic compounds as claimed and organic solvents taught by Seguchi, in order to prevent clogging due to drying of the ink, aid in dissolution and stability of the diol having 9 carbon atoms in the aqueous ink, and improve both storage stability and injection stability, and thereby arrive at the claimed invention.
Because Seguchi is trying to solve the same problem of rub-fastness/abrasion resistance, requires specific surface tensions, and broadly teaches C9 diols, and because Higeta teaches that the nonanediols have good rub-fastness and enable quick reduction of the surface tension of the ink, those skilled in the art would have had a reasonable expectation of success upon using the C9 diols of Higeta in the methods of Seguchi.
Regarding claim 9, Seguchi in view of Higeta are relied upon as teaching the limitations of claim 8 as discussed above. Seguchi teaches that the recording method may be performed through multiple main scans, wherein the first ejecting nozzle group may overlap at least in a portion, with the second ejecting nozzle group when projected in the main scanning direction (i.e., a plurality of main scans made in a same, i.e., overlapping, scan area as claimed) (Seguchi; [0025] and [0178]).
Regarding claims 10-11, Seguchi in view of Higeta are relied upon as teaching the limitations of claim 8 as discussed above. A drying step may be performed simultaneously with one or two or more of the treatment attachment steps and ink attachment steps, wherein the surface temperature of the recording medium is preferably 43oC or less (i.e., a first heating step of claim 10) (Seguchi; [0268]). The recording method may further include, after the attachment steps, a postheating step in which the recording medium is heated (i.e., a postheating step of claim 11) (Seguchi; [0270]).
Regarding claim 15, Seguchi in view of Higeta are relied upon as teaching the limitations of claim 8 as discussed above. Typical examples of polyhydric alcohols include the alkanediols having 6 or fewer carbon atoms propylene glycol and 1,2-hexanediol as claimed (claim 8), as well as 1,3-butanediol (Seguchi; [0087]). One polyhydric alcohol may be used, or two or more may be used as a mixture (Seguchi; [0089]). The percentage of the organic solvent other than the nitrogen-containing solvents, i.e., polyhydric alcohols/alkanediols, relative to the total mass of the ink composition, is 40% by mass or less, more preferably 30% by mass or less, most preferably 20% by mass or less. As for the lower limit, 1% by mass or more, preferably 5% by mass or more, most preferably 7% by mass or more (Seguchi; [0092]). These mass% ranges, including the most preferred range of 7-20% by mass, based the total mass of the ink composition, overlap in scope with the alkanediol having 6 or fewer carbon atoms, and having a normal boiling point of 150-250oC, constituting 15% to 25% by mass of the total mass of the ink composition 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).
Regarding claim 16, Seguchi in view of Higeta are relied upon as teaching the limitations of claim 8 as discussed above. The treatment liquid may contain an organic solvent having a normal boiling point of 280oC or less, preferably 160oC or more and 270oC or less, more preferably 180oC or more and 260oC or less, and most preferably 200oC or more and 250oC or less. Such an organic solvent helps reduce white haze and provides better characteristics such as abrasion resistance and ejection stability (Seguchi; [0072]). The preferred boiling point ranges of 180oC or more and 260oC or less, and most preferably 200oC or more and 250oC or less, fall within the claimed normal boiling point range of 180-300oC.
Examples of solvents include glycol ethers, as well as alkanediols having 5-15 carbon atoms (Seguchi; [0074] and [0088]). These include diols and glycol ethers are sparingly soluble in water as claimed, e.g., by means of example only, diethylene glycol dibutyl ether, diethylene glycol methyl butyl ether, 2-methyl-2-propyl-1,3-propanediol and 2-ethyl-1,3-hexanediol.
The instant specification discloses the following boiling points/water solubility in 100g of water:
diethylene glycol dibutyl ether (256oC/0.3g) at ¶ [00122];
diethylene glycol methyl butyl ether (212oC) at ¶ [00122];
2-methyl-2-propyl-1,3-propanediol (230oC/7.5g) at ¶ [00113], and
2-ethyl-1,3-hexanediol (244oC/4.2g) at ¶ [00113].
Given that Seguchi discloses treatment liquids that overlap the presently claimed treatment liquids, including those comprising a sparingly soluble solvent having a normal boiling point of 180-300oC, it therefore would have been obvious to one of ordinary skill in the art to use a treatment liquid comprising a solvent, such as diethylene glycol dibutyl ether, diethylene glycol methyl butyl ether, 2-methyl-2-propyl-1,3-propanediol and/or 2-ethyl-1,3-hexanediol, which is both disclosed by Seguchi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 17, Seguchi in view of Higeta are relied upon as teaching the limitations of claim 8 as discussed above. Seguchi teaches that the inks may comprise a surfactant, including silicone surfactants, in preferred amounts of 0.2% to 1.5% by mass, most preferably 0.3% to 1.0% by mass, based on the total mass (Seguchi; [0097], [0099], [0101] and [0155]). These preferred amounts fall within the claimed silicone surfactant range of 0.1-1.5% by mass of the total mass of the ink composition.
Seguchi further exemplifies INK1 of Table which comprises of BYK348 silicone surfactant (Seguchi; [0275-0276]; page 22, Table 2, INK1; and [0289]).
Response to Arguments
Applicant’s arguments, see Remarks pages 6-7, filed 01/05/2025, with respect to the 35 U.S.C. 103 rejection of claims 8, 10, 11, and 13-16 over Toeda (JP 2020-189897) in view of Higeta (JP 2006-241286); of claim 9 over Toeda in view of Higeta, and further in view of Koase (US 2013/0182057); and of claim 17 over Toeda in view of Higeta, and further in view of Hattori (JP 2019-094377), have been fully considered and are persuasive. Therefore, the rejections have been withdrawn.
Specifically, Toeda and Higeta, alone or in combination with Koase or Hattori, do not teach or provide the proper motivation to perform inkjet methods with inks comprising the water-soluble organic compounds propylene glycol and 1,2-hexanediol, and wherein the at least one water-soluble organic compound does not contain a polyol having a normal boiling point higher than 280oC in an amount that constitutes more than 3% by mass of the total mass of the ink jet ink composition as presently claimed.
However, upon further consideration and search due to Applicant’s claim amendments, a new grounds of rejection is made over Seguchi in view of Higeta as set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sato et al, US 2018/0009988 A1, teaches inkjet ink compositions comprising a pigment and at least one solvent, wherein the solvent may be propylene glycol, 1,2-hexanediol, 2-butyl-2-ethyl-1,3-propanediol, and mixtures thereof, for use on low-absorbing recording media ([0009], [0137-0140] and [0143]).
Yoda et al, US 2018/0237646 A1, teaches an inkjet ink for use on low absorbing substrates comprising two or more alkyl polyols having a boiling point of 180-250oC, the alkyl polyols including 1,2-hexanediol and propylene glycol ([0017], [0021-0025] and [0128]).
Yatake, US 2020/0377750A1, teaches ink jet printing methods on poorly or non-absorbent printing medium [0027] using a primer ink composition [0035] and an ink, wherein the water-soluble organic solvent in the ink may be 1,2-hexanediol, propylene glycol, or 2-pyrrolidone [0172].
Masuda et al, JP 2008231336A, teaches inkjet printing on glossy paper (page 1, lines 46-47). The inks preferably contain 1,2-hexanediol to improve ejection stability of the ink. The inks preferably comprise 2-butyl-2-ethyl-1,3-propanediol in order to improve glossiness and color development (page 5, lines 1-3 and 10-11) (see provided machine English translation for all citations).
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