DETAILED ACTION
Claim Status
Claim(s) 1, 3, 5-11, 13-19, 22-25, 27-29 is/are pending.
Claim(s) 1, 3, 5-11, 13-19, 22-25, 27-29 is/are rejected.
Claim(s) 2, 4, 12, 20-21, 26, 30 is/are cancelled by Applicant.
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 .
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 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.
Objection to Amendment / Specification
The objections to Applicant’s Response filed 12/12/2025 in the previous Office Action mailed 02/11/2026 have been withdrawn in view of Applicant’s statements in Applicant’s Response filed 05/08/2026 stating that pages 2-4 in the Applicant’s Response filed 12/12/2025 were included in error.
Claim Rejections - 35 USC § 112
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.
Claim(s) 1, 3, 5-11, 13-19, 22-25, 27-29 is/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.
Regarding claims 1, 11, 17, 25, the disclosure as originally filed provides support for
a color layer containing “empty space” which is “formed between ink droplets constituting the color layer” which are subject to permeation by the “second transparent layer”. However, the disclosure as originally filed does not provide adequate support for the phrases “spaces without colored ink” and “the species without ink” in claims 1, 11, 17, 25 because said phrases encompass more than “empty spaces” -- for example: (i) “spaces” which do not contain colored ink but is not empty (e.g., spaces containing other components such as non-colored or transparent ink, with respect to the phrase “spaces without colored ink”); (ii) “spaces” which do not contain ink but is not empty (e.g., spaces containing non-ink components such as permeable or porous decorative inlays, fillers, etc.).
Claims 3, 5-10, 13-16, 18-19, 22-24, 27-29 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 103 (AIA )
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.
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.
The rejections under 35 U.S.C 103(a) based on WEBER ET AL (US 2019/0315991) in the previous Office Action mailed 02/11/2026 have been withdrawn in view of Applicant's Claim Amendments filed 05/08/2026. However, the withdrawal of these rejections does NOT constitute a concession as to the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. Upon resolution of all new matter issues, the rejections may be reinstated and/or modified.
Response to Arguments
Applicant's arguments filed 05/08/2026 have been considered but are moot in view of the new ground(s) of rejection necessitated by the Claim Amendments filed 05/08/2026 (i.e., the presence of new matter).
However, the Examiner makes NO concession as to the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. The Examiner reserves any discussion as the merits of the previously cited prior art references until the issue of new matter has been fully resolved.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
FENTON ET AL (US 2020/0299184) and ZEIK ET AL (US 2011/0162794) disclose the use of white background and/or contrast (including pure white) layers in ink-printed images to enhance color printing.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
August 6, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights