DETAILED ACTION
Response to Amendments
In response to the amendment received on 10/22/2025:
• Claims 2-13 are currently pending. Claim 1 is canceled. The objection to claim 10 is withdrawn in light of the amendments to the claims.
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 .
Election/Restrictions
The restriction requirement of Groups I-II, as set forth in the Office action mailed on 05/15/2025, has been withdrawn in view of the claimed amendments. Claims 2-13 are fully considered.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 10 is objected to because of the following informality:
• In claim 10, line 17, the term “mas” should be amended to “mass.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 was amended to recite “a content of the low molecular weight organic compound A with respect to a total mass of the ink jet ink composition is 4% by mass or less.” However, this range is not fully supported by the original disclosure. The original disclosure only provides support for a lower content limit of “0.5% by mass” (see Applicant’s specification at para. 0095), and not all the way to 0% as currently claimed. In other words, there is no support for values between 0 and 0.5% by mass, e.g., 0.1% by mass. Claims 2-9 and 11-13 are also rejected by virtue of their dependency on claim 10.
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 2-8, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama et al. (US-20190249020-A1) (hereinafter referred to as “Matsuyama”), with evidence from Popeney et al. (US-20200032133-A1) (hereinafter referred to as “Popeney”) as to the rejection of claims 2-8, 10, and 12 only.
Regarding claims 2 and 10, Matsuyama teaches a recording method comprising: an ink adhesion step of adhering an ink jet ink composition to a recording medium by an ink jet method (see Matsuyama at para. 0197 and 0209), wherein
• the ink composition is a water-based ink (see Matsuyama at para. 0112), the ink composition comprising:
• a colorant; a resin (see Matsuyama at para. 0056 and 0114);
• a water-soluble low molecular weight organic compound A which is one of an amide, a sulfur-containing compound, and a cyclic ether and which satisfies the condition (a) and condition (b) (see Matsuyama at para. 0025, 0088 and 0106, teaching the ink to contain a solvent A, and that the solvent A is preferably isopropylidene glycerol; isopropylidene glycerol is another term for solketal, as evidenced by Popeney at para. 0027; solketal, i.e., isopropylidene glycerol, satisfies the conditions (a) and (b), as disclosed by Applicants in their specification at Table 1 at pg. 32-33);
• a silicone-based surfactant which satisfies the condition (c) (see Matsuyama at para. 0147, 0151, and 0153, teaching the ink may include a surfactant, such as SILFACE SAG002; SILFACE SAG002 satisfies the condition (c), as disclosed by Applicants in their specification at Table 2 at pg. 39); and
• a content of the low molecular weight organic compound A with respect to a total mass of the ink jet ink composition is 4% by mass or less (1 to 4% by mass, regarding claim 2) (see Matsuyama at para. 0109, teaching the proportion of the solvent A in the ink to range from preferably 2 to 8% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 3, see Matsuyama at para. 0088-0089, teaching the ink may contain a water-soluble organic solvent, such as 1,2-propanediol; 1,2-propanediol, aka propylene glycol, has a surface tension of 61.2 in the form of an aqueous solution at a concentration of 10% by mass, as disclosed by Applicant’s specification at bottom of pg. 108; accordingly, Matsuyama necessarily teaches at least some embodiments where the claimed concentration is 0 wt%, given that 1,2-propanediol does not have a surface tension less than 35 mN/m (i.e., the organic solvent component only contains 1,2-propanediol).
Regarding claim 4, see Matsuyama at para. 0153, teaching the content of the surfactant to range from 0.001 to 5% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 5, see Matsuyama at para. 0114-0115 and 0119, teaching the ink may contain a resin emulsion, i.e., resin particles, such as a polyester resin.
Regarding claim 6, see Matsuyama at para. 0088 and 0101-0102, teaching the ink may contain an organic solvent, and the content of the organic solvent may range from 10 to 60% by mass in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 7, see Matsuyama at para. 0107, teaching the ink as containing a solvent A, such as isopropylidene glycerol; Matsuyama does not necessitate the presence of an additional water-soluble low molecular weight organic compound which is one of an amide, a sulfur-containing compound, and a cyclic ether and which satisfies the condition (b); accordingly, Matsuyama necessarily teaches the isopropylidene glycol to be 100% by mass in the claimed range.
Regarding claim 8, see Matsuyama at para. 0026 and 0103, teaching the recording medium to have a low water absorbency and/or poor ink absorption property, such as coated paper.
Regarding claim 12, see Mastuyama at para. 0199.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama, as applied to claim 10 above, and further in view of Murakami et al. (JP-2019089989-A), with reference to the included machine translation (hereinafter referred to as “Murakami”).
Regarding claim 9, while Matsuyama teaches the recording method according to claim 10 outlined above, Matsuyama fails to explicitly teach the ink as further comprising an anionic surfactant represented by the claimed formula (1).
However, Murakami teaches an ink jet ink composition which may contain a surface tension modifier surfactant (see Murakami at pg. 1, para. 1; and pg. 6, para. 5). Murakami further teaches the surfactant may include an anionic surfactant and a silicone surfactant (see Murakami at pg. 6, para. 5). Moreover, Murakami teaches the anionic surfactant may include commercial types, such as Adekacol EC-8600 (see Murakami at pg. 6, para. 6).
Matsuyama teaches their surfactant may include an anionic surfactant and a silicone surfactant, and that the surfactants may be used alone or in combination (see Matsuyama at para. 0131 and 0145).
In this case, Adekacol EC-8600 is a known anionic surfactant suitable for use in an inkjet ink composition (see Murakami at pg. 6, para. 6), and thus its use as the anionic surfactant in Matsuyama would yield a reasonable expectation of success.
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 anionic surfactant, such as Adekacol EC-8600, together with a silicone surfactant like SILFACE SAG002, as the surfactant in the ink of Matsuyama, because Matsuyama teaches two or more surfactants—including anionic and silicone surfactants—may be used in combination, and further because Adekacol EC-8600 is a known anionic surfactant suitable for use in inkjet ink compositions (see Murakami at pg. 6, para. 6; see Matsuyama at para. 0131 and 0145). Moreover, 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.
Adekacol EC-8600 reads on the claimed anionic surfactant, as disclosed by Applicant’s specification at para. 00112.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama, as applied to claim 10 above, and further in view of Mizutani et al. (US-20190100672-A1) (hereinafter referred to as “Mizutani”).
Regarding claim 11, while Matsuyama teaches the recording method according to claim 10 outlined above, Matsuyama fails to explicitly teach the ink adhesion step as being performed when the recording medium has a surface temperature of 50 °C or less.
However, Mizutani teaches a recording method in which an inkjet ink is adhered to a recording medium (see Mizutani at para. 0182). Mizutani further teaches that in the case that the surface temperature of the recording medium is 45 °C or less and 25 °C or higher, the ink can be quickly dried on the recording medium M and fixed in the early phase, blurring is suppressed, and an image excellent in scratch resistance and image quality can be formed (see Mizutani at para. 0208).
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 surface temperature of the recording medium at the time of printing to range from 25 to 45 °C. One of ordinary skill in the art would have been motivated to do so in order for the ink to be quickly dried on the recording medium and fixed in the early phase, to suppress blurring, and form an image excellent in scratch resistance and image quality (see Mizutani at para. 0208).
Regarding claim 13, while Matsuyama teaches the recording method according to claim 10 outlined above, Matsuyama fails to explicitly teach the method as further comprising a treatment liquid adhesion step of adhering a treatment liquid containing an aggregating agent to the recording medium.
However, Mizutani teaches a recording method in which an inkjet ink is adhered to a recording medium (see Mizutani at para. 0182). Mizutani further teaches that in the recording method, a reaction liquid step of adhering a reaction liquid prior to the ink may be performed, and that by adhering the reaction liquid to the recording medium, it is possible to improve scratch resistance and image quality of the obtained printed image (see Mizutani at para. 0183). Moreover, Mizutani teaches the reaction liquid to contain a coagulant (see Mizutani at para. 0153).
Matsuyama suggests their inks may contain a pre-processing fluid (see Matsuyama at para. 0206).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include a step of adhering a reaction liquid containing a coagulant, like that taught by Mizutani, to the recording medium of Matsuyama, prior to the adhering of the ink composition. One of ordinary skill in the art would have been motivated to do so in order to improve scratch resistance and image quality of the obtained printed image (see Mizutani at para. 0183).
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicant argues the claim amendments overcome the previous grounds of rejection (see Applicant’s Remarks at pg. 8). The Examiner agrees that the amendments overcome the previous grounds of rejection over Mizutani, Yamazaki, Van Rens, and Okuda; however, the Examiner disagrees that the amendments overcome Matsuyama, which is applied in the current grounds of rejection above.
With respect to Matsuyama, Applicants argue Matsuyama teaches an example where isopropylidene glycerol is 5% by mass, which is outside the claimed range, and that thus, Matsuyama effectively teaches away from the claimed invention (see Applicant’s Remarks at pg. 8-9).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123(I). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). Matsuyama broadly teaches their solvent A, which includes isopropylidene glycerol, may have a content of 2 to 8% by mass in the ink (see Matsuyama at para. 0109). Accordingly, the fact that Matsuyama has a specific example of 5% does not detract from this broader teaching.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ito (US-20190040272-A1) (hereinafter referred to as “Ito”) teaches an aqueous ink for ink jet recording (see Ito at Abstract).
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