DETAILED ACTION
Response to Amendments
In response to the amendment received on 11/18/2025:
• Claims 1 and 3-9 are currently pending. Claim 2 is canceled. Claim 9 is withdrawn for being directed to a non-elected invention(s).
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 .
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 1 and 3-8 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 1 was amended to recite “a mass ratio of a content of the solvent A to the content of the polymer X is 4.7 to 15”, which is not supported by the original disclosure. The original disclosure does not provide support for the end-point value of 4.7. It is believed Applicants intended Example 2 to serve as written description support; however, it appears Applicants may have mistakenly relied on the “coloring material/polymer X” ratio in Example 2 instead of the claimed “solvent A/polymer X ratio” (the claimed “solvent A/polymer X” ratio in Example 2 is actually 9.7). Consequently, a new matter issue arises. Claims 3-8 are also rejected by virtue of their dependency on claim 1.
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 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (JP-H09194780-A), with reference to the previously included machine translation (hereinafter referred to as “Maeda”).
Regarding claims 1 and 8, Maeda teaches an ink jet printing ink (see Maeda at pg. 1, para. 1) comprising:
• water; a coloring material (see Maeda at pg. 4, para. 1, teaching a water-based inkjet ink containing a coloring material);
• a polymer X which is a water-soluble polymer with a weight-average molecular weight of 6,000 to 35,000, including at least one selected from the group consisting of a structural unit derived from alkylene glycol, a structural unit derived from vinyl alcohol, a structural unit derived from vinyl acetate, and a structural unit derived from vinylpyrrolidone (ethylene glycol, regarding claim 8) (see Maeda at pg. 4, para. 1, 6, and 9-10, teaching their ink as containing a polyethylene glycol having a weight average molecular weight of preferably 3,000 to 500,000; also see Example ink 6 at Table 1 at pg. 15 of Maeda (pg. 8 of untranslated Maeda), teaching an example ink containing polyethylene glycol having an average molecular weight of 7,500; thus, Maeda reasonably suggests to select a polyethylene glycol having a molecular weight that falls within the claimed range (e.g., 7,500), as exemplified by their example embodiments; further, polyethylene glycol is necessarily a water-soluble polymer, see Applicant’s examples at pg. 31, teaching polyethylene glycols as suitably corresponding to polymer X); and
• a solvent A which is a water-soluble organic solvent with a molecular weight of 160 or less, wherein a ratio of the solvent A in all water-soluble organic solvents contained in the ink jet textile printing ink is 70 mass% or greater (see Maeda at pg. 8, para. 10-11, teaching the ink as including a water-soluble organic solvent, such as glycerin; also see Example ink 6 at Table 1 at pg. 15 of Maeda (pg. 8 of untranslated Maeda), teaching an example ink containing glycerin, thiodiglycol, 2-propanol, and urea as solvents; all of these solvents have molecular weights of 160 or less; consequently, Maeda reasonably teaches embodiments (via their example embodiments) in which their ratio of the solvent A in all the water-soluble organic solvents in their ink is 100% by mass);
• a content of the polymer X with respect to a total amount of the ink jet textile printing ink is 0.9 mass% to 6.0 mass% (see Maeda at pg. 4, para. 14, teaching a content of the polyethylene glycol to range from 0.01 to 3% by weight in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05),
• a mass ratio of a content of the solvent A to the content of the polymer X is 4.7 to 15 (see Maeda at pg. 8, para. 15-16, teaching the content of the water-soluble solvent in the ink to preferably range from 2 to 60 wt%; also see Maeda at pg. 4, para. 14, teaching a content of the polyethylene glycol to range from 0.01 to 3% by weight in the ink; thus, Maeda suggests a ratio of the solvent A to the content of the polymer X ranging from 0.67 to 6000 (2/3 = 0.67; 60/0.01 = 6000); this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• wherein a viscosity of the ink jet textile printing ink at 25 °C is 8 mPa-s to 16 mPa-s (see Maeda at pg. 4, para. 1, teaching the ink as having a viscosity at 25 °C ranging from 1 to 30 mPa-s; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
It is noted that the limitation of claim 1 requiring the ink to be a “textile” printing ink is a recitation of intended use (i.e., the ink is to be used for printing on textiles). Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Regarding claims 3-4, see Maeda at pg. 5, para. 6, teaching the colorant may be a reactive dye; also see Maeda at pg. 6, para. 1, teaching the colorant may be Reactive Yellow 85.
Regarding claim 5, see Maeda at pg. 8, para. 11, teaching the ink may include glycerin; also see Example ink 6 at Table 1 at pg. 15 of Maeda (pg. 8 of untranslated Maeda), teaching an example ink containing glycerin.
Regarding claim 6, see Maeda at pg. 8, para. 9, teaching a content of the coloring material in the ink to range from 0.1 to 25% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 7, see Maeda at pg. 8, para. 15-16, teaching the content of the water-soluble solvent in the ink to preferably range from 2 to 60 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see Example ink 6 at Table 1 at pg. 15 of Maeda (pg. 8 of untranslated Maeda), teaching an example ink containing 18 wt% total of solvents that corresponds to the claimed “solvent A”; accordingly, Maeda teaches an example ink in which the total content of the solvent A in the ink is 18%, which falls within the claimed range; thus, Maeda reasonably teaches the selection of a content that falls within the claimed range (e.g., 18) via their example embodiments.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ushiku et al. (JP-2011084680-A), with reference to the previously included machine translation (hereinafter referred to as “Ushiku”), in view of Ota (US-20060173096-A1) (hereinafter referred to as “Ota”).
Regarding claims 1 and 8, Ushiku teaches an ink jet textile printing ink (see Ushiku at pg. 1, para. 1 and pg. 2, para. 5, teaching an inkjet ink for textile printing) comprising:
• water; a coloring material (see Ushiku at pg. 2, para. 1, teaching a recording ink containing a dye; also see Ushiku at pg. 10, para. 6-7, teaching an example ink containing water; thus, Ushiku reasonably suggests to include water in their ink, as exemplified in their example embodiments);
• a polymer X which is a water-soluble polymer with a weight-average molecular weight of 6,000 to 35,000, including at least one selected from the group consisting of a structural unit derived from alkylene glycol, a structural unit derived from vinyl alcohol, a structural unit derived from vinyl acetate, and a structural unit derived from vinylpyrrolidone (ethylene glycol, regarding claim 8) (see Ushiku at pg. 2, para. 5, teaching their ink as containing a water-soluble resin; also see Ushiku at pg. 3, para. 2, teaching polyethylene glycol 6000 as a suitable water-soluble resin; alternatively, see Ushiku at pg. 10, para. 6-7, teaching an example ink containing PEG having a molecular weight of 12,000; further, polyethylene glycol is necessarily a water-soluble polymer, see Applicant’s examples at pg. 31, teaching polyethylene glycols as suitably corresponding to polymer X); and
• a solvent A which is a water-soluble organic solvent with a molecular weight of 160 or less, wherein a ratio of the solvent A in all water-soluble organic solvents contained in the ink jet textile printing ink is 70 mass% or greater (see Ushiku at pg. 5, para. 8-9, teaching the ink as including a water-soluble organic solvent, such as glycerin; also see Ushiku at pg. 10, para. 6-7, teaching an example ink containing ethylene glycol, propylene glycol, and glycerin as solvents; all of these solvents have molecular weights of 160 or less; consequently, Ushiku reasonably teaches embodiments (via their example embodiments) in which their ratio of the solvent A in all the water-soluble organic solvents in their ink is 100% by mass);
• a content of the polymer X with respect to a total amount of the ink jet textile printing ink is 0.9 mass% to 6.0 mass% (see Ushiku at pg. 3, para. 3, teaching the amount of the water-soluble resin may range from 0.5 to 10% by mass in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• a mass ratio of a content of the solvent A to the content of the polymer X is 4.7 to 15 (see Ushiku at pg. 10, para. 6-7, teaching an example ink containing 2.5 mass% of PEG 12,000 and 29.5 mass% total of solvents that corresponds to the claimed “solvent A” (15% ethylene glycol + 10% propylene glycol + 4.5% glycerin = 29.5% total); accordingly, Ushiku teaches an example ink in which the ratio of a content of the solvent A to the polymer X is 29.5:2.5, or 11.8, which falls within the claimed range; thus, Ushiku reasonably teaches the selection of a mass ratio that falls within the claimed range (e.g., 11.8) via their example embodiments).
While Ushiku teaches the ink outlined above, Ushiku fails to explicitly teach a viscosity of the ink jet printing ink at 25 °C to range from 8 mPa-s to 16 mPa-s.
However, Ota teaches an aqueous ink composition for ink jet recording (see Ota at para. 0001). Ota further teaches that for the purpose of securing the ejection stability in the ink jet recording apparatus, the aqueous ink composition of the invention preferably has a viscosity of 25 cPs or less at 25 °C (see Ota at para. 0120).
Ushiku teaches their ink to be used in an inkjet printing process (see Ushiku at pg. 1, para. 1).
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 viscosity of the ink of Ushiku at 25 °C to be 25 cPs or less. One of ordinary skill in the art would have been motivated to do so in order to secure the ejection stability in the ink jet recording apparatus (see Ota at para. 0120).
This range of 25 cPs or less (i.e., 25 mPa-s or less) overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 3-4, see Ushiku at pg. 3, para. 9 and pg. 10, para. 6-7, teaching the colorant may be a reactive dye, such as Reactive Yellow 95.
Regarding claim 5, see Ushiku at pg. 5, para. 9, teaching the ink may include glycerin; also see Ushiku at pg. 10, para. 6-7, teaching an example ink containing glycerin.
Regarding claim 6, see Ushiku at pg. 3, para. 5, teaching a content of the reactive dye to range from 3 to 20% by mass in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see Ushiku at pg. 10, para. 6-7, teaching an example ink containing 10 wt% of colorant.
Regarding claim 7, see Ushiku at pg. 10, para. 6-7, teaching an example ink containing 29.5 mass% total of solvents that correspond to the claimed “solvent A” (15% ethylene glycol + 10% propylene glycol + 4.5% glycerin = 29.5% total); accordingly, Ushiku teaches an example ink in which the total content of the solvent A in the ink is 29.5 mass%, which falls within the claimed range; thus, Ushiku reasonably teaches the selection of a content that falls within the claimed range (e.g., 29.5%) via their example embodiments.
Claims 1 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tojo et al. (US-20100165020-A1) (hereinafter referred to as “Tojo”), or, in the alternative, further in view of Ota.
Regarding claims 1 and 8, Tojo teaches an ink jet printing ink (see Tojo at para. 0005 and 0016, teaching an inkjet ink) comprising:
• water; a coloring material (see Tojo at para. 0016, teaching the ink as containing a pigment and water);
• a polymer X which is a water-soluble polymer with a weight-average molecular weight of 6,000 to 35,000, including at least one selected from the group consisting of a structural unit derived from alkylene glycol, a structural unit derived from vinyl alcohol, a structural unit derived from vinyl acetate, and a structural unit derived from vinylpyrrolidone (vinyl alcohol, vinylpyrrolidone, regarding claim 8) (see Tojo at para. 0016, teaching the ink as containing a nonionic polymer thickener; also see Tojo at para. 0030, teaching the nonionic polymer as being preferably water-soluble; also see Tojo at para. 0033, teaching the weight-average molecular weight of the nonionic polymer to range from 5000 to 100,000, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see Tojo at para. 0040, teaching polyvinyl alcohol and polyvinyl pyrrolidone as suitable nonionic polymers); and
• a solvent A which is a water-soluble organic solvent with a molecular weight of 160 or less, wherein a ratio of the solvent A in all water-soluble organic solvents contained in the ink jet textile printing ink is 70 mass% or greater (see Tojo at para. 0048, teaching the ink as including one or more water-soluble organic solvents; also see Tojo at para. 0052, 0057-0058, and 0098, teaching the water-soluble organic solvent to include a “first” solvent with an SP value of 27.5 or less and a “second” solvent with an SP value of 27.5 or greater; also see Tojo at para. 0059 and 0101, teaching diethylene glycol monoethyl ether as a suitable first solvent and glycerin as a suitable second solvent; both diethylene glycol monoethyl ether and glycerin have molecular weights less than 160; accordingly, Tojo necessarily teaches embodiments in which the content of the solvent A is 100% by mass of all solvents contained in the ink (i.e., in which the solvent component contains only diethylene glycol monoethyl ether as the first solvent and glycerin as the second solvent));
• a content of the polymer X with respect to a total amount of the ink jet textile printing ink is 0.9 mass% to 6.0 mass% (see Tojo at para. 0046, teaching the content of the nonionic polymer in the ink to range from 0.01 to 20 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• a mass ratio of a content of the solvent A to the content of the polymer X is 4.7 to 15 (see Tojo at para. 0048, teaching the content of the water-soluble organic solvent to range from 5 to 30 wt% in the ink; also see Tojo at para. 0046, teaching the content of the nonionic polymer in the ink to range from 0.01 to 20 wt%; thus, Tojo necessarily teaches a ratio ranging from 0.25 to 3000 (5/20 = 0.25; 30/0.01 = 3,000); this range of 0.25 to 3000 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• wherein a viscosity of the ink jet textile printing ink at 25 °C is 8 mPa-s to 16 mPa-s (see Tojo at para. 0221, teaching the viscosity of the ink at 20 °C to range from 5 to 20 mPa-s; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; it is noted that while the temperature of 20 °C taught by Tojo is different from the 25 °C as claimed, it is the Examiner’s position that the viscosities are sufficiently close to meet the claimed viscosity limitation).
In the alternative, Ota teaches an aqueous ink composition for ink jet recording (see Ota at para. 0001). Ota further teaches that for the purpose of securing the ejection stability in the ink jet recording apparatus, the aqueous ink composition of the invention preferably has a viscosity of 25 cPs or less at 25 °C (see Ota at para. 0120).
Tojo teaches their ink to be used in an inkjet printing process (see Tojo at para. 0005).
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 viscosity of the ink of Tojo at 25 °C to be 25 cPs or less. One of ordinary skill in the art would have been motivated to do so in order to secure the ejection stability in the ink jet recording apparatus (see Ota at para. 0120).
This range of 25 cPs or less (i.e., 25 mPa-s or less) overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
It is noted that the limitation of claim 1 requiring the ink to be a “textile” printing ink is a recitation of intended use (i.e., the ink is to be used for printing on textiles). Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Regarding claim 5, see Tojo at para. 0052, 0057-0058, and 0098, teaching the water-soluble organic solvent to include a “first” solvent with an SP value of 27.5 or less and a “second” solvent with an SP value of 27.5 or greater; also see Tojo at para. 0059 and 0101, teaching diethylene glycol monoethyl ether as a suitable first solvent and glycerin as a suitable second solvent; both diethylene glycol monoethyl ether and glycerin correspond to the claimed solvent(s).
Regarding claim 6, see Tojo at para. 0143, teaching the content of the colorant to range from 0.1 to 15 wt% in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 7, see Tojo at para. 0048, teaching the content of the water-soluble organic solvent to range from 5 to 30 wt% in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue the specifically claimed mass ratio as producing unexpected results in terms of optimal and synergistic balance among jetting stability, image drying properties, and ink circulation suitability within a defined viscosity range (see Applicant’s Remarks at pg. 6 and 9). Applicants then point to Examples 2, 17, and 24 to demonstrate the criticality of their claimed range (see Applicant’s Remarks at pg. 7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Applicants point to Example 17, arguing that Example 17 has “demonstrably inferior results” as it has a mass ratio of “3.6.” However, Example 17 has a mass ratio of the solvent A to the polymer X of “7.7” rather than “3.6.” It appears Applicants may have mistakenly pointed to the coloring material/polymer X ratio instead of the claimed solvent A/polymer X ratio. Moreover, Example 20, which has a mass ratio of 9.8, has the exact same ratings of “A,” “B,” “B,” and “B” as Example 17. Accordingly, Example 20 has a mass ratio that falls within the claimed range that yields “demonstrably inferior results.” As such, doubt is raised as to criticality of Applicant’s claimed mass ratio range, given that multiple examples taught by Applicants have “inferior” results yet meet all the limitations of claim 1 (e.g., example 17 and example 20).
Furthermore, multiple examples that fall outside of the claimed range demonstrate identical results to example 2, raising doubt as to the criticality of the claimed range. For example, example 5 has a mass ratio of 19.3, which falls outside of the claimed range, yet still demonstrates ratings of “A,” “A,” “AA,” and “A” like example 2. Accordingly, Applicants teach embodiments falling outside of the claimed ratio range that still demonstrate excellent results, raising doubt as to the criticality of the claimed composition.
Additionally, to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II). Applicants only provide two comparative examples where the claimed ratio is above 15 - at values of 48.8 and 55.6 (see comparative examples 5 and 11). These values are much higher than the claimed end-point of “15.” As such, doubts are raised as to the criticality of the claimed range, as it is unclear how critical the end-point of “15” is when the only two examples to compare it from are “48.8” and “55.6.” (i.e., it is entirely possible values of 15.5, or 18, or 20 would still produce the alleged benefits).
Lastly, the Examples in Applicant’s specification are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants use in their Examples no polymer X with a structural unit derived from vinyl acetate, despite the claims suggesting the possibility for such, see claim 1. As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the polymer X included in claim 1.
Next, Applicants argue Maeda’s range of 0.67 to 6700 and Tojo’s range of 0.25 to 3000 are broad ranges compared to the narrow claimed range, that neither Maeda nor Toko provide a teaching, motivation, or guidance to select the narrower claimed range of 4.7 to 15, and that neither Maeda’s nor Tojo’s general disclosure can form the basis for an obviousness finding when the claimed range yields unexpected results (see Applicant’s Remarks at pg. 7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Applicants have not satisfactorily demonstrated unexpected results with respect to their claimed ratio range (see above). Consequently, without such a showing, a prima facie case of obviousness is established, given the (implied) ranges taught by Maeda and Tojo overlap the claimed range. See MPEP § 2144.05.
Next, Applicants argue Ushiku teaches one single example that falls within the numerical range of claim 1, and that this reliance is hindsight selection (see Applicant’s Remarks at pg. 8). Applicants further argue Ushiku does not recognize the unexpected results as demonstrated by the present invention (see Applicant’s Remarks at pg. 8).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The example of Ushiku demonstrates Ushiku reasonably teaches their polyethylene glycol component may be used in their ink in an amount of 2.5%, and their solvent component may reasonably be used in an amount of 29.5% (see Ushiku at pg. 10, para. 6). Thus, Ushiku reasonably teaches their ink may demonstrate a claimed ratio of 11.8 (29.5/2.5), which falls within the claimed range. Such a teaching is not hindsight reasoning, as one of ordinary skill in the art would naturally look to the examples to determine possible concentrations for the components in the ink. Moreover, Applicants have not satisfactorily demonstrated unexpected results with respect to their claimed ratio range (see above). Consequently, without such a showing, a prima facie case of obviousness is established.
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 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
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731