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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/07/2026 has been entered.
Response to Amendments
In response to the amendment received on 01/07/2026:
• Claims 1-13 are currently pending.
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 10 and 13 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 claims 10 and 13, the phrase “the anionic resin particles” lacks sufficient antecedent basis. Claims 1 and 11 claim the presence of two or more types of anionic resin particles; it is unclear whether claim 10 and claim 13’s particle size applies to only of the types of resin particles or both. To correct, the Examiner suggests deleting the claims or amending the claims as follows: “…of the two or more types of anionic resin particles is 25 to 250 nm.” For the purposes of examination, the Examiner is interpreting the claim like this suggestion.
Claim Rejections - 35 USC § 103
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 1-9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura et al. (JP-2013099886-A), with reference to the previously included machine translation (hereinafter referred to as “Kawamura”), in view of Fujii et al. (US-20220073775-A1) (hereinafter referred to as “Fujii”), with evidence from Kanzaki (JP-2011168700-A), with reference to the previously included machine translation (hereinafter referred to as “Kanzaki”), as to the rejection of claims 1-13 only, and with evidence from Shida et al. (US-20110081780-A1) (hereinafter referred to as “Shida”) as to the rejection of claim 9 only.
Regarding claims 1, 3, 5 and 11, Kawamura teaches a pretreatment liquid that can be used together with an aqueous inkjet ink comprising a pigment and water (see Kawamura at pg. 2, para. 2, teaching a processing liquid/treatment liquid (note that the terms “processing liquid” and “treatment liquid” taught by Kawamura refer to the same liquid); also see Kawamura at pg. 4, para. 6-7, teaching a water-based ink which may include a pigment; also see Kawamura at pg. 7, para. 1, teaching the aqueous ink as being discharged via inkjet on the area where the treatment liquid is applied), wherein
• the pretreatment liquid comprises a coagulant (A), a surfactant (B), and water (see Kawamura at pg. 3, para. 2, teaching the treatment liquid may contain a flocculant; also see Kawamura at pg. 2, para. 2, teaching the treatment liquid may contain a polyoxyalkylene type nonionic surfactant; also see Kawamura at pg. 2, para. 2-3, teaching the treatment liquid may contain water);
• the coagulant (A) comprises a metal salt that includes at least a polyvalent metal salt (see Kawamura at pg. 3, para. 2, teaching the treatment liquid may include a polyvalent metal salt as the flocculant); and
• the surfactant (B) comprises a polyoxyalkylene alkylamine represented by the general formula (1), wherein R in the general formula (1) is a linear or branched alkyl group having 8 to 20 carbon atoms (see Kawamura at pg. 2, para. 7, teaching the polyoxyalkylene type nonionic surfactant may include Naymine S-210; Naymine S-210 is a compound represented by the formula (2a) below, as evidenced by Kanzaki at pg. 4, para. 7 and pg. 11, para. 4, where f and k add up to 10 and where R3a is a linear alkyl group having 18 carbon atoms (since the molecular weight of the compound is 709, as evidenced by Kanzaki at pg. 11, para. 4, the total number of carbon atoms in R3a must be 18 in order for the total molecular weight to add up to 709):
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Thus, Naymine S-210 reads on the claimed polyoxyalkylene alkylamine represented by the general formula (1), where R represents a linear alkyl group having 18 carbon atoms, m is a number that ranges from 1 to 9, o is a number that ranges from 1 to 9 (in order for f and k to add up to 10 in the formula (2a) above, f and k must each independently range from having a minimum value of 1 and a maximum value of 9), n = 0, p = 0, m > n (1 > 0), and o > p (1 > 0). Furthermore, it is noted that the name “Naymine” in both Kawamura and Kanzaki is simply a machine translation misspelling of the name “Nymeen”; though this does not alter any of the conclusions above).
While Kawamura teaches the pretreatment liquid according to claim 1 outlined above, Kawamura fails to explicitly teach the pretreatment liquid as comprising a resin (C), wherein the resin (C) comprises two or more types of anionic resin particles (two or more types selected from the group consisting of polyurethane resin particles, polyurethane polyurea resin particles, poly(meth)acrylic resin particles, acrylic-modified polyurethane resin particles, and polyolefin resin particles, regarding claim 11).
However, Fujii teaches a pretreatment liquid for an impermeable base material including an aggregating agent, a nitrogen-containing compound, resin particles, and water (see Fujii at para. 0041). Fujii further teaches the resin particles in the pretreatment liquid ensure adhesiveness of the image to the impermeable base material, and that two or more kinds of resin particles may be used in combination (see Fujii at para. 0137 and 0150). Moreover, Fujii teaches the resin particles preferably contain an ionic group in order to create water-dispersible resins, and that an anionic group is preferable from the viewpoint of ease of introduction (see Fujii at para. 0158-0159). Additionally, Fujii teaches the content of the resin particles in the pretreatment liquid to preferably range from 0.5 to 30% by mass (see Fujii at para. 0177). Fujii also teaches the resin particles may be a urethane resin, and further teaches examples where the urethane resin is a polyurethane (see Fujii at para. 0149 and 0545).
Kawamura does not specify the specific recording medium for their treatment liquid. In general, one of ordinary skill would recognize the ubiquity of impermeable base material substrates (e.g., resin films like polyethylene terephthalate) in the ink art, and would desire to improve adhesion to such substrates.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add the resin particles of Fujii, such as polyurethane, to the treatment liquid of Kawamura in an amount ranging from 0.5 to 30% by mass. One of ordinary skill in the art would have been motivated to do so in order to improve adhesiveness of an image to an impermeable base material (see Fujii at para. 0137). Moreover, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add anionic resin particles to the treatment liquid of Kawamura in order to ensure water-dispersibility of the resin particles and from the viewpoint of ease of introduction (see Fujii at para. 0158-0159).
Moreover, Fujii teaches two or more resin particles may suitably be used in combination in their pretreatment liquid (see Fujii at para. 0150). In this case, the two anionic resin particles of Fujii would be used for the same purpose, as resin particles in a pretreatment liquid (see Fujii at para. para. 0149). Furthermore, their combination would form a material that would also be used as resin particles in a pretreatment liquid.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use two anionic resin particles (e.g., two anionic polyurethanes, regarding claim 11) in the treatment liquid of Kawamura, 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, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06. Additionally, the duplication of parts has been held to be a prima facie case of obviousness, see MPEP § 2144.04(VI)(B).
Regarding claim 2, see Kawamura at pg. 3, para. 3, teaching the polyvalent metal salt may include calcium chloride.
Regarding claims 4 and 9, while Kawamura as modified by Fujii teaches the pretreatment liquid according to claim 1 outlined above, modified Kawamura fails to explicitly teach the liquid as further comprising an acetylene diol-based surfactant, wherein the acetylene diol-based surfactant has an HLB value of 4 to 14 (regarding claim 9).
However, Kawamura does teach the polyoxyalkylene type nonionic surfactant may include acetylenic diol ethylene oxide adducts, such as Surfynol 440 (see Kawamura at pg. 2, para. 7). Kawamura further teaches the polyoxyalkylene type nonionic surfactant may be used alone or in combination of two or more (see Kawamura at pg. 3, para. 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an acetylenic diol ethylene oxide adduct surfactant (e.g., Surfynol 440) together with Naymine S-210 as the polyoxyalkylene type nonionic surfactant in the treatment liquid of modified Kawamura, because both are taught as suitable surfactants by Kawamura and Kawamura teaches that two or more may be used in combination (see Kawamura at pg. 2, para. 7 and pg. 3, para. 1). Moreover, 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, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Surfynol 440 has an HLB value of 8, as evidenced by Shida at para. 0115.
Regarding claim 6, see Kawamura at pg. 2, para. 2 and pg. 4, para. 6-7.
Regarding claim 7, see Kawamura at pg. 7, para. 1 and pg. 8, para. 2-3, teaching the treatment liquid as being applied onto a recording medium.
Regarding claim 8, see Kawamura at pg. 7, para. 1 and pg. 8, para. 2-3.
Regarding claim 12, see Kawamura at pg. 3, para. 1, teaching a content of their polyoxyalkylene type nonionic surfactant to range from preferably 1 to 10 wt%; further, following the above modification, the pre-treatment liquid of modified Kawamura contains 0.5 to 30% by mass of resin particles (see modification outlined above); thus, a blending amount of the polyoxyethylene alkylamine represented by the general formula (1) relative to the blending amount of the resin (C) in the pre-treatment liquid of modified Kawamura necessarily ranges from 3.33% to 2000% (1% surfactant minimum/30% resin particle maximum • 100 = 3.33% ratio minimum; 10% surfactant maximum/0.5% resin particle minimum • 100 = 2000% ratio maximum). This range of 3.33% to 2000% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura in view of Fujii, as applied to claims 1 and 11 above, or in the alternative, further in view of Ohta (US-20190264057-A1) (hereinafter referred to as “Ohta”).
Regarding claims 10 and 13, while Kawamura as modified by Fujii teaches the pretreatment liquid according to claims 1 and 11 outlined above, modified Kawamura fails to explicitly teach the 50% particle size (D50) of the anionic resin particles to range from 25 to 250 nm.
However, Fujii teaches the volume average particle diameter of their resin particles to preferably range from 1 to 300 nm (see Fujii at para. 0168).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the volume average particle diameter of the resin particles of modified Kawamura to range from 1 to 300 nm, as such a range is taught as “preferable” by Fujii (see Fujii at para. 0168). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
This range of 1 to 300 nm overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05
In the alternative, Ohta teaches a treatment liquid (see Ohta at para. 0034). Ohta further teaches the treatment liquid may contain resin particles, such as urethane resin particles, to increase adhesion of the treatment liquid to the printing medium (see Ohta at para. 0085). Moreover, Ohta teaches the volume average particle diameter of the resin particles to range from 10 to 300 nm, and that resin particles having such a size are easily available and have properties that can be easily adjusted as desired (see Ohta at para. 0095).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the volume average particle diameter (i.e., D50) of the resin particles of modified Kawamura to range from 10 to 300 nm. One of ordinary skill in the art would have been motivated to do so in order to use resin particles that are easily available and have properties that can be easily adjusted as desired (see Ohta at para. 0095).
This range of 10 to 300 nm overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05
Response to Arguments
Applicant's arguments filed 01/07/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants’ arguments with respect to Gotou (US-20200391533-A1) (see Applicant’s Remarks at pg. 7) are moot as Gotou is no longer relied upon in the present action.
Next, Applicants argue their specific examples which contain two anionic resin particles as demonstrating unexpected advantageous results in terms of adhesiveness and coating film durability (see Applicant’s Remarks at pg. 6-7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Applicants point to their examples containing two anionic resin particles relative to examples containing one anionic resin particle to show the former as demonstrating superior results in adhesion and coating film durability (a rating of AA vs. A) (see Applicant’s Remarks at pg. 7). However, other examples containing two anionic resin particles do not show superior results. For example, Example 200 has a rating of “A” for adhesion and “A” for coating durability (see Table 10 of Applicant’s specification at pg. 63), despite pretreatment liquid 100 (which is used in example 200) containing two anionic resin particles. In other words, Applicants show at least one example, pretreatment liquid 100 (used in Example 200), which meets all the limitations of claim 1 yet still demonstrates “inferior” results (rating of “A” vs. “AA”) relative to the examples pointed out by Applicants. Accordingly, doubt is raised as to the criticality of the presence of the two anionic resin particles.
Furthermore, the cutoff values for adhesion are chosen by Applicants to be less than 5% for AA (the highest rating) and at least 5% but less than 10% for A (the second highest rating) (see para. 0227 of applicant’s specification); these cutoff values are close in proximity, and thus do not provide convincing evidence that the cutoff for the claimed range is new and/or unexpected (for example, example 122 could have a peeled surface area of 5.00% while example 131 could have a value of 4.99, two values of which are very close in proximity and thus raise doubt as to the importance, or criticality, of the claimed range). The same analysis is applied to the cutoff values for the coating film durability variable as well (see Applicant’s specification at para. 0229).
Additionally, the Examples in Applicant’s specification are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants use in their examples no polyurethane polyurea resin particles, despite the claims suggesting the possibility for such (see Table 4 of Applicant’s specification at pg. 51). As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the resin particles included in claim 1.
Next, Applicants argue advantageous effects are achieved when the D50 of the resin particles is 25 to 250 nm, pointing to examples 129 and 130 of their specification (see Applicant’s Remarks at pg. 7).
However, to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II). Examples 129 and 130 only test particle size values below 25 nm, with no comparative examples testing values above 250 nm. As such, doubts are raised as to the criticality of the claimed range.
Moreover, examples 129 and 130 pointed to by Applicants are cationic resins (see Table 4 of Applicant’s specification at pg. 51). Accordingly, it is unclear whether the inferior results for examples 129 and 130 are with respect to the particle size of the resin particles OR are with respect to the cationic (compared to anionic, as claimed in claim 1) nature of the resin particles. Consequently, doubts are raised as to the criticality of the claimed particle size range.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a few potential amendments to overcome the current grounds of rejection. It is noted that these amendments are suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendments won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if any such amendments are added (i.e., allowability is NOT guaranteed following the incorporation of such amendments). Lastly, Applicants may use all or none of such suggestions – they are merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendments further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion 1 (support found at Table 3 at para. 0191 of Applicant’s specification):
“…p represents the average addition mole number of PO and is [[0]] 1 to 99; and…”
Amendment Suggestion 2:
“…R represents
Amendment Suggestion 3 (support found at Table 3 at para. 0191 of Applicant’s specification; lauryl groups have 12 carbon atoms):
“R represents a linear or branched alkyl group having 6 to 12 [[22]] carbon atoms, a linear or branched alkenyl group…”
Conclusion
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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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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