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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 07/21/2026 have been entered. Claims 1-12 and 15-22 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-11, 15-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al (US 6,726,756, ’756 hereafter) in view of Miyahara (JP 2017036376, of record, IDS 02/19/26, ‘376 hereafter).
Regarding claims 1-11 and 20, ‘756 discloses an ink composition comprising alcohol solvent such as 1-methoxy-2-propanol or the like, which has a content and boiling point satisfying present claims 7 and 8 (C3/L10-L34, Example 1, boiling point of 1-methoxy-2-propanol is around 120°C at 1 bar as known in the art); and an ester solvent being methyl lactate, which has content and boiling point satisfying present claims 10 and 11 (C3/L35-L45, Example 1, boiling point of methyl lactate is around 144 °C as known in the art); a siloxane surfactant being a polyether modified siloxane surfactant with block structure, in a preferred content range of 0.01 to 1.0 wt% ( C3/L16-L38, poly(alkylene-oxide) modified siloxane); and a binder resin reading upon capping resin which can be a rosin resin being a hydrophobic resin and inherently having solubility as recited in the present claim 20 (C3/L46-L62). ‘756 discloses that the solvent used in the ink composition can be various solvents including alcohols and alkoxy-alcohols or a combination of these solvents, and preferred solvents can be 1-methoxy-2-propanol and ethanol (C3/L10-C3/L34), but does not specifically exemplify an ink composition having a solvent being a mixture of two or more C1-6 alcohols. However, in the same field of endeavor, ‘376 discloses an ink composition for on-demand inkjet printing ([0010]) comprising a colorant, a capping resin being a hydrogenated rosin ester ([0011], [0020], Examples), and a solvent being a mixture of C1-6 alcohols including ethanol with other alcohols such as butanol, isopropyl alcohol, or an alkoxyalcohols such as methoxyethanol or ethoxyethanol; wherein the mixture of C1-6 alcohols can be used to balance its solubility for rosin resin and drying speed of the ink ([0011], [0039]-[0050]), to render the inkjet having sufficient drying speed and suppressed nozzle clogging for on-demand printing ([0010]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the mixture of C1-6 alcohols as taught by ‘376, to modify the ink composition of ‘756, in order to render an ink composition having sufficient drying speed and other properties for on-demand printing. It is also noted that the ink composition as presently claimed is in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, if prior art discloses the ink composition in this claim, then the prior art ink composition will be capable of being used for drop-on-demand inkjet printing, even if the prior art does not disclose the ink composition is for drop-on-demand inkjet printing. Since the applied prior teaches the ink composition can be used for drop-on-demand printing, the claims stand fully and properly rejected.
Regarding 15-16, modified ‘756 teaches all the limitations of claim 1, ‘376 also teaches that the ink composition may further include a cellulosic resin as a co-binder, which has a coordinating group hydroxyl or a co-binder having carboxyl group ([0053]).
Regarding claims 18 and 19, modified ‘756 teaches all the limitations of claim 1, ‘756 also discloses a printing method of depositing the ink composition onto a subject by ink jet printing which naturally has an ink cartridge comprising the ink composition (C5/L23-L59).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Zou et al (US 6,726,756,’756 hereafter) in view of Miyahara (JP 2017036376, of record, IDS 02/19/26, ‘376 hereafter) as applied to claim 1 above, further in view of Chaffins et al (US 2017/0183522, ‘522 hereafter).
Regarding claim 12, modified ‘756 teaches all the limitations of claim 1, but ‘756 does not disclose that the ink composition further includes a polysorbate surfactant. However, in the same field of endeavor, ‘522 discloses an ink composition comprising solvents and surfactants ([0003], [0011]-[0013], Polysorbate 60 and polysorbate 80 each is the same as the polysorbates used in the present application, see Table 7 and Table 9 in the present application) is a second surfactant to provide an ink composition having high speed and high quality printing ([0007]). In light of these teachings, one of ordinary skill in the art would have been motivated to use a polysorbate surfactant as taught by ‘522, to modify the ink composition of ‘756, in order to render an ink composition having desired printing speed and printing quality.
Claims 17 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al (US 6,726,756,’756 hereafter) in view of Miyahara (JP 2017036376, of record, IDS 02/19/26, ‘376 hereafter) as applied to claim 1 above, further in view of Kyriacou et al (WO 2018206774A1, or US 2020/0199388, ‘388 hereafter).
Regarding claims 17 and 21-22, modified ‘756 teaches all the limitations of claim 1, but does not teach that the ink composition further includes a metal crosslinker. However, in the same field of endeavor, ‘388 discloses an ink composition comprising a binder resin and a metal crosslinker for crosslinking the resin, to render an ink composition provide durable printed deposit on a substrate ([0014]-[0017], [0057]-[0065]). In light of these teachings, one of ordinary skill in the art would have been motivated to use a metal crosslinker as taught by ‘388, to modify the ink composition of ‘756, in order to render an ink composition being capable of forming a durable printed image on a substrate. Regarding claims 21-22, ‘388 also discloses that the ester solvents as listed can be used to mix with other solvents including alcohols to adjust volatility (related to drying speed) of ink medium to render the ink composition having proper drying speed as well-known in the art ([0028]-0032], Example 1, propyl acetate in Ink 3 and Ink 4).
Response to Arguments
Applicant's arguments filed on 07/21/2026 have been fully considered and they are not persuasive.
Applicant argues that the ink of US’756 is for CIJ printing but ink of JP’356 is for DOD which are different inks requiring different rheological properties. The examiner’s position is that both prior arts are directed to ink compositions for ink-jet printing, which are in the same field of endeavor, and the rheological properties of these ink compositions can be adjusted by using suitable solvents. ‘JP’236 expressly teaches that mixture of C1-6 alcohols including ethanol with other alcohols such as butanol, isopropyl alcohol, or an alkoxyalcohols such as methoxyethanol or ethoxyethanol, can be used to make an ink composition suitable for DOD printing, thus one of ordinary skill in the art would have been motivated to use this solvent mixture to modify the ink composition of US’756, in order to render an ink composition suitable for DOD printing. Regarding combination of fast evaporating solvent with a slow evaporating solvent as used in US’756, it is noted that adding a slow evaporating solvent in an ink composition is a common practice in the art for adjusting drying speed to properly level and fix the ink on a substrate; in fact, all the ink compositions of US’756 (Methyl lactate as in example 1), JP’356 (such butanol, ethoxyethanol or propylene glycol, [0065]), and the presently disclosed ink composition (Butyl propionate as in examples), contain a slow evaporating solvent in addition of fast evaporating solvents.
For the reasons set forth above and of record, the claims stand properly rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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