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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/16/2026 has been entered.
Response to Amendments
In response to the amendment received on 04/16/2026:
• 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 The objection to claim 10 is withdrawn in light of the amendments to the claims. The rejection of claims 2-13 under 35 U.S.C. 112(a) is withdrawn in light of the amendments to the claims.
Claim Interpretation
For the purposed of examination, the Examiner is interpreting the “low molecular weight” of the claimed water-soluble low molecular weight organic compound A to refer to a molecular weight of 500 or less, see Applicant’s specification at para. 0081.
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 2-13 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 claim 10, the phrase “which is one of an amide and a sulfur-containing compound” is confusing. It is unclear whether the claim necessitates both one of an amide AND one of a sulfur-containing compound, or whether only the presence of one of the compounds is sufficient to read on the claim. For the purposes of examination, the Examiner is interpreting the latter. To correct, the Examiner suggests amending the claim as follows: “which is one of an amide or a sulfur-containing compound.” Claims 2-9 and 11-13 are also rejected by virtue of their dependency on claim 10.
In claim 5, the phrase “the resin particles are formed from one of an acrylic-based resin, a polyurethane-based resin, and a polyester-based resin” is confusing. It is unclear whether the claim necessitates the presence of all three, or whether only the presence of one of the compounds is sufficient to read on the claim. For the purposes of examination, the Examiner is interpreting the latter. To correct, the Examiner suggests amending the claim as follows: “the resin particles are formed from one of an acrylic-based resin, a polyurethane-based resin, or a polyester-based resin.”
In claim 6, the phrase “further comprising” is confusing. A recording method cannot “further comprise” an organic solvent. To correct, the Examiner suggests amending the claim as follows: “The recording method according to claim 10, wherein the ink jet ink composition further comprises
In claim 7, the phrase “a water-soluble low molecular weight organic compound” is confusing. It appears this phrase is intended to include compounds broader than that for the compound A in claim 10; however, it is unclear what a “low molecular weight” for such compounds would be. Applicants only provide support for the compound A as having a “low” molecular weight of 500 or less (see Applicant’s spec at para. 0081), and not for additional “low molecular weight” compounds outside of the compound A. Thus, the “low molecular” weight for claim 7 is a relative term that is not clearly defined. To correct, the Examiner suggests deleting the claim.
In claim 9, the phrase “further comprising” is confusing. A recording method cannot “further comprise” an anionic surfactant. To correct, the Examiner suggests amending the claim as follows: “The recording method according to claim 10, wherein the ink jet ink composition further comprises
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 2-5, 7, 8, 10, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (WO-2020090212-A1), with reference to the included machine translation (hereinafter referred to as “Hayashi”).
Regarding claims 2 and 10, Hayashi 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 Hayashi at pg. 8, last paragraph, teaching a step of inkjet printing an ink on a substrate), wherein
• the ink composition is a water-based ink (see Hayashi at pg. 2, para. 5, teaching a water-based inkjet ink), the ink composition comprising:
• a colorant; a resin (see Hayashi at pg. 2, para. 5, teaching the ink as containing a coloring material and a water-dispersible urethane resin);
• a water-soluble low molecular weight organic compound A which is one of an amide and a sulfur-containing compound and which satisfies the condition (a) and condition (b) (see Hayashi at pg. 6, para. 10 and pg. 7, para. 1, teaching the ink may contain a water-soluble organic solvent, such as sulfolane; sulfolane 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 Hayashi at pg. 7, para. 6, teaching the ink may contain a surfactant; also see Hayashi at pg. 8, para. 3, teaching Silface SAG016 as a suitable surfactant; SILFACE SAG016 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 0.5% by mass or more and 4% by mass or less (1 to 4% by mass, regarding claim 2) (see Hayashi at pg. 7, para. 2, teaching the water-soluble organic solvent may be used alone; also see Hayashi at pg. 7, para. 3, teaching the content of the solvent in the ink may range from preferably 1 to 50% by mass, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 3, see Hayashi at pg. 7, para. 2, teaching the water-soluble organic solvent may be used alone; thus, Hayashi necessarily teaches the ink may contain only sulfolane as a solvent, and thus, 0% by mass of other organic solvents; this value of 0% by mass falls within the claim 3 range.
Regarding claim 4, see Hayashi at pg. 7, para. 7, teaching the surfactant may range from 0.1 to 10% by mass in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 5, see Hayashi at pg. 5, para. 2-3, teaching the ink may contain a water-dispersible urethane resin, such as Superflex 300, i.e., polyurethane resin particles.
Regarding claim 7, see Hayashi at pg. 7, para. 2, teaching the water-soluble organic solvent may be used alone; thus, Hayashi necessarily teaches the ink may contain 100% sulfolane within the organic solvent amount; this value of 100% by mass falls within the claimed range.
Regarding claim 8, see Hayashi at pg. 8, para. 11, teaching polyethylene terephthalate as a suitable substrate; polyethylene terephthalate is a non-absorbing medium, as disclosed by Applicant’s specification at para. 0167.
Regarding claim 12, see Hayashi at pg. 16, para. 1, teaching the method may include a heating step following printing of the inkjet ink.
Regarding claim 13, see Hayashi at pg. 9, para. 8-9, teaching the presence of a pretreatment liquid containing a flocculant, i.e., an aggregating agent; also see Hayashi at pg. 13, para. 8, teaching the pretreatment liquid as being applied to the recording medium.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi, as applied to claim 10 above, and further in view of Hiraoka et al. (JP-2004002546-A), with reference to the included machine translation (hereinafter referred to as “Hiraoka”).
Regarding claim 6, while Hayashi teaches the recording method according to claim 10 outlined above, Hayashi fails to explicitly teach the ink as further comprising at least one organic solvent, wherein a total content of the organic solvent with respect to a total mass of the ink jet ink composition is 5 to 30% by mass.
However, Hiraoka teaches an inkjet ink containing water, a dye, and two or more water-soluble organic solvents, where the solvent contains at least sulfolane (see Hiraoka at para. 0013). Hiraoka further teaches the ink to include another solvent in addition to sulfolane, e.g., diethylene glycol, and that by including such an additional solvent, the moisturizing properties of the ink and the solubility of the coloring material such as dyes are improved, such that clogging can be prevented and ejection stability can be maintained (see Hiraoka at para. 0036-0037). Moreover, Hiraoka teaches the weight ratio of the sulfolane in the organic solvent component to range from 15 to 70% by weight, and that when the weight ratio is less than 15%, the sulfolane’s effect of improving ejection recovery after long-term discharge is prevented, and that when the weight ratio is greater than 70%, clogging occurs and offensive odor is more likely to arise (see Hiraoka at para. 0040). Additionally, Hiraoka teaches the content of the total solvent (i.e., sulfolane + additional solvents) to range from 3 to 40% by weight in the ink (see Hiraoka at para. 0039).
Hayashi teaches their organic solvent may be used in combinations of two or more, and further teaches both sulfolane and diethylene glycol as suitable solvents (see Hayashi at pg. 6, last paragraph; and pg. 7, para. 1-2). Furthermore, Hayashi teaches the content of their water-soluble organic solvent to range from, for example, 5 to 40% by mass in the ink, which is very similar to the 3 to 40% by mass range taught by Hiraoka (see Hayashi at pg. 7, para. 3; also see Hiraoka at para. 0039).
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 both sulfolane and diethylene glycol in combination as the solvents in the ink of Hayashi, given that Hayashi teaches both as suitable solvents and that two or more solvents may be used in combination (see Hayashi at pg. 6, last paragraph; and pg. 7, para. 1-2). Furthermore, one of ordinary skill in the art would have been motivated to do so in order to improve the moisturizing properties of the ink and to improve ejection stability (see Hiraoka at para. 0036-0037).
Moreover, 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 ratio of the sulfolane in the combined solvent component of modified Hayashi to range from 15 to 70% by mass. One of ordinary skill in the art would have been motivated to do so in order to maintain the sulfolane’s effect of improving ejection recovery after long-term discharge, to prevent clogging, and to prevent offensive odor from arising (see Hiraoka at para. 0040).
Following the above modifications, the ink of modified Hayashi contains 5 to 40% by mass of total solvent, in which 15 to 70% by mass of that total includes sulfolane. Accordingly, the content of the sulfolane in the ink of modified Hayashi necessarily ranges from 0.75% to 28% by mass in the ink (5% total solvent minimum • 0.15 ratio of sulfolane minimum = 0.75% by mass sulfolane content in ink minimum; 40% total solvent maximum • 0.7 ratio of sulfolane maximum = 28% by mass sulfolane content in ink maximum). This range still overlaps the claim 10 range for the compound A, maintaining a prima facie case of obviousness, see MPEP § 2144.05.
Additionally, given the weight ratio of sulfolane in the solvent is 15 to 70% by mass, the weight ratio of the remaining solvent (e.g., diethylene glycol) necessarily ranges from 30 to 85% by mass in the total solvent (100 – 15 = 85; 100 – 70 = 30). Thus, given the ink of Hayashi contains 5 to 40% by mass of total solvent, the content range of the remaining solvent (e.g., diethylene glycol) in the ink of Hayashi ranges from 1.5% by mass to 34% by mass (5% total solvent minimum • 0.30 ratio of remaining solvent minimum = 1.5% by mass remaining solvent content in ink minimum; 40% total solvent maximum • 0.85 ratio of remaining solvent maximum = 34% by mass remaining solvent content in ink maximum). This range of 1.5 to 34% by mass overlaps the claim 6 range of 5 to 30% by mass, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi, as applied to claim 10 above, and further in view of Nagai et al. (JP-H06271800-A), with reference to the included machine translation (hereinafter referred to as “Nagai”), and Yokoyama et al. (US-20050022695-A1) (hereinafter referred to as “Yokoyama”).
Regarding claim 9, while Hayashi teaches the recording method according to claim 10 outlined above, Hayashi fails to explicitly teach the ink as further comprising an anionic surfactant represented by the general formula (1).
However, Nagai teaches an aqueous ink for inkjet recording containing a colorant and a compound represented by the formula I, shown below (see Nagai at Abstract, pg. 2, para. 6-7):
PNG
media_image1.png
92
481
media_image1.png
Greyscale
In the above formula I, R1 and R2 are alkyl groups each having 4 or more carbon atoms and may be branched, m is an integer greater than or equal to 1, and M is an alkali metal ion, a quaternary ammonium, a quaternary phosphonium, or an alkanolamine (see Nagai at pg. 2, para. 8). Moreover, Nagai teaches the compound of formula (I) as improving the wettability with respect to a paper surface, improving drying property, and improving ink storage stability (see Nagai at Abstract and pg. 9, para. 1).
In general, in the ink art, it is well-known for surfactants to suitably be used in combination, including combinations of nonionic (e.g., silicone) and anionic surfactants (see Yokoyama at para. 0093).
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 the compound of formula I of Nagai together with the SILFACE SAG016 surfactant taught by Hayashi (see Hayashi at pg. 8, para. 3). One of ordinary skill in the art would have been motivated to do so in order to improve the wettability with respect to a paper surface, improve drying property, and improve ink storage stability (see Nagai at Abstract and pg. 9, para. 1).
The above formula I contains embodiments which read on the claimed formula (1) (e.g., R1 and R2 are alkyl groups having, e.g., 5 carbon atoms; m is equal to, e.g., 1; and M is, e.g., an alkali metal cation).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi, 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 Hayashi teaches the recording method according to claim 10 outlined above, Hayashi 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 upon printing of the ink 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 in Hayashi 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).
Response to Arguments
Applicant’s arguments filed 04/16/2026 with respect to claims 2-13 have been considered. The Examiner agrees with Applicant that the amended claims overcome the previous prior art grounds of rejection over Matsuyama (see Applicant’s Remarks at pg.7). However, a new grounds of rejection is presented over Hayashi, setting forth the claims as unpatentable, see rejections above.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
Prosecution Insights