DETAILED ACTION
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.
Claim(s) 1, 3-5 and 7-21 are rejected under 35 U.S.C. 103 as being unpatentable over Skinner (2019/0329585) in view of Adamic (2014/0066348) and Ito et al. (2021/0094301).
Regarding claims 1 and 16, Skinner teaches erasable ink set comprising:
an erasable ink ([0007], multi-component marker ink); and
an erasing time adjuster ([0089], highlighting component) which is stored separately from the erasable ink ([0007], [0107]) and is capable of adjusting an erasing time of the erasable ink ([0089]);
wherein the erasable ink comprises:
a color developing agent comprising a pH indicator ([0094], bromocresol purple);
water ([0019[); and
wherein the erasing time adjuster comprises no pH indicator (Note that the erasing time adjuster does not comprise bromoscresol purple).
Skinner does not teach wherein the erasing time adjuster comprises:
water;
Adamic teaches an erasing time adjuster with a second surfactant and a second water-soluble organic solvent (Adamic, [0016], Note that SURFYNOL 440 has an SP value of 10, i.e., 12 or less. Note that the surfactant present in the erasing time adjuster can be present in an amount of 5%. Note that tetraethylene glycol at [0015] has an SP value of 12.8). It would have been obvious to one of ordinary skill in the art at the time of invention to constitute the erasing time adjuster disclosed by Skinner in with the water and surfactant disclosed by Adamic because doing so would amount to combining prior art elements according to known methods to yield predictable results. In other words, because Skinner does not go into detail about the entire composition of the erasing time adjuster, instead focusing only on the color-changing mechanism, it would have been obvious to look to Adamic for information on the other components and proportions of such an erasing time adjuster.
Upon combination of Adamic’s surfactant contents with Skinner’s surfactant contents, the following limitation is met:
wherein a weight content ratio of the second surfactant in the erasing time adjuster is equal to or more than a weight content ratio of the first surfactant in the erasable ink (Note that, based on the numbers above, the ratio of second surfactant would be 1:19 while that of the first surfactant would be 1:200).
Further, according to MPEP 2144.04, where the general conditions of a claim are present in the prior art, it is not inventive to discover optimum or workable ranges through routine experimentation. Here, all of the claimed conditions are present in the art. Thus, even if the claimed ranges were not disclosed expressly in the art, the ranges themselves would not be patentably distinguishing because they have been discovered through routine experimentation. More specifically, Adamic teaches a second solvent with an SP value of 12.8, which is narrowly outside of the claimed range of 12 or less. Examiner maintains it would have been obvious to tweak the solvent disclosed by Adamic to a solvent with a lower SP value in the claimed range.
Further, Ito teaches wherein tetraethylene glycol is just one variant from a multitude of solvents suitable for ink related compositions (Ito, [0042]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute triethylene glycol monobutyl ether SP 10 for tetraethylene glycol SP 12.6 because doing so would amount to the simple substitution of one known solvent for another to obtain predictable results. That is, because both solvents were well known in the art to improve wettability of liquids, to use one instead of the other would have amounted to a simple matter of choice.
Regarding claim 3, Skinner in view of Adamic and Ito teaches the erasable ink set according to claim 1, wherein
a total amount of the first surfactant and the first water-soluble organic solvent to the erasable ink is 5.0 wt% or less (Skinner, [0053]),
a total amount of the second surfactant and the second-water soluble organic solvent in the erasing time adjuster is 0.5 wt % or more (Adamic, [0016]) in the erasing time adjuster is 0.5 wt% or more (see claim 1 rejection).
Skinner does not expressly teach wherein the erasable ink further comprises a first water-soluble organic solvent having an SP value of 12 or less. Examiner maintains that it would have been obvious to one of ordinary skill in the art to add the same solvent to both of the erasable ink and erasing time adjuster. Upon doing this, both the ink and the adjuster would contain triethytlene glycol monobutyl ether.
Further, according to MPEP 2144.04, where the general conditions of a claim are present in the prior art, it is not inventive to discover optimum or workable ranges through routine experimentation. Here, all of the claimed conditions are present in the art. Thus, even if the claimed ranges were not disclosed expressly in the art, the ranges themselves would not be patentably distinguishing because they have been discovered through routine experimentation.
Regarding claim 4, Skinner in view of Adamic and Ito teaches the erasable ink set according to claim 3, wherein the total amount of the first surfactant and the first water-soluble organic solvent in the erasable ink is 3.0 wt% or less (Skinner, [0053]).
Further, according to MPEP 2144.04, where the general conditions of a claim are present in the prior art, it is not inventive to discover optimum or workable ranges through routine experimentation. Here, all of the claimed conditions are present in the art. Thus, even if the claimed ranges were not disclosed expressly in the art, the ranges themselves would not be patentably distinguishing because they have been discovered through routine experimentation.
Regarding claim 5, Skinner in view of Adamic and Ito teaches the erasable ink set according to claim 3, wherein the total amount of the first surfactant and the first water-soluble organic solvent in the erasable ink is 2.0 wt% or less (Skinner, [0053]).
Further, according to MPEP 2144.04, where the general conditions of a claim are present in the prior art, it is not inventive to discover optimum or workable ranges through routine experimentation. Here, all of the claimed conditions are present in the art. Thus, even if the claimed ranges were not disclosed expressly in the art, the ranges themselves would not be patentably distinguishing because they have been discovered through routine experimentation.
Regarding claim 7, Skinner in view of Adamic and Ito teaches the erasable ink set according to claim 1, wherein the erasable ink further comprises a first ater-soluble organic solvent having an SP value of 12 or less, a SP value of each of the first component is 11 or less, and a SP value of each of the second water-soluble organic solvent and the second surfactant is 11 or less (Skinner, [0053], note that heptane and Silwet L-77 has a SP less than 11. Ito, note that the SP value of triethylene glycol monobutyl ether is 10).
Regarding claim 8, Skinner in view of Adamic and Ito teaches the erasable ink set according to claim 1, wherein the pH indicator comprises at least one selected from the group consisting of phenolphthalein, thymolphthalein, and o-cresolphthalein (Skinner, [0094]).
Regarding claim 9, Skinner in view of Adamic and Ito teaches the erasable ink printing apparatus, comprising: the erasable ink set according to claim 1;
a first flow path to which the erasable ink is supplied in operation; a first application unit communicating with the first flow path and configured to apply the erasable ink to a recording medium; a second flow path to which the erasing time adjuster is supplied in operation; and a second application unit communicating with the second flow path and configured to apply the erasing time adjuster to the recording medium (Skinner, Note that, as defined in the rejection of claim 1, each of two markers has a flow path and an application nib to apply the ink and the erasing time adjuster, respectively).
Regarding claim 10, Skinner in view of Adamic and Ito teaches the erasable ink printing apparatus according to claim 9, further comprising a control unit that controls an application amount of the erasing time adjuster applied to the recording medium by the second application unit during operation, wherein the application amount is controlled such that the application amount is increased to shorten an erasing time of the erasable ink applied to the recording medium and the application amount is reduced to extend the erasing time of the erasable ink applied to the recording medium (Skinner, Note that, if a first application amount is deposited by a first marker with erasing ink, a second amount deposited by a second marker on top of an undried amount deposited by the first will complement the first amount so that the more is deposited with the first, less will need to be deposited by the second to reach the drying, color-changing time).
Regarding claim 11, Skinner in view of Adamic and Ito teaches the erasable ink printing apparatus according to claim 9, further comprising a control unit that controls an order of application of the erasable ink to the recording medium by the first application unit and application of the erasing time adjuster to the recording medium by the second application unit during operation, wherein the order of application is controlled such that the erasable ink is applied after application of the erasing time adjuster (Skinner, Note that either of the first and second marker detailed above can be used first with the other of the two being used after it).
Regarding claim 12, Skinner in view of Adamic and Ito teaches the ink set storage container, comprising the erasable ink set according to claim 1.
Regarding claim 13, Skinner in view of Adamic and Ito teaches a printing method, comprising applying the erasable ink set according to claim 1 to a recording medium such that the erasable ink and the erasing time adjuster are separately applied to the recording medium (Skinner, Note that either of the two detailed markers can be applied at any time).
Regarding claim 14, Skinner in view of Adamic and Ito teaches the printing method according to claim 13, further comprising controlling an application amount of the erasing time adjuster to be greater than or less than a predetermined application amount (Skinner, Note that, if a first application amount is deposited by a first marker with erasing ink, a second amount deposited by a second marker on top of an undried amount deposited by the first will complement the first amount so that the more is deposited with the first, less will need to be deposited by the second to reach the drying, color-changing time).
Regarding claim 15, Skinner in view of Adamic and Ito teaches the printing method according to claim 13, wherein the erasable ink is applied after the application of the erasing time adjuster (Skinner, Note that either of the first and second marker detailed above can be used first with the other of the two being used after it).
Regarding claims 17-19, note that a highlighter applies more liquid per unit area than a regular marker, note that increasing the amount of deposited highlighter liquid necessarily shortens and erasing time of the ink, and note that decreasing an amount of highlighter liquid deposited necessarily lengthens an erasing time of the ink. Note also that, according to MPEP 2114, the manner of operating a device does not differentiate the device from the prior art. Here, an ink set composition has been claimed for use in markers, but claims 17-19 are directed to how a user might operate such markers. These limitations directed to how a user might use markers has no bearing on the composition claimed in claim 1 and thus do not add patentable weight.
Regarding claim 20, see rejection of claims 1, 3.
Regarding claim 21, see rejection of claim 1.
Response to Arguments
Applicant’s arguments with respect to claim(s) 12/24/2025 have been considered but are moot in light of the new ground(s) of rejection.
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.
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/ALEJANDRO VALENCIA/Primary Examiner, Art Unit 2853