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 .
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 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 non-obviousness.
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 2, 4, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/061848 in view of JP 2015-000968A (hereinafter, OZAKI).
To further advance the prosecution of this invention, HONGO et al. (U.S. Publication No. 2019/0211221, hereinafter HONGO), which is an English equivalent of WO 2018/061848 will be used in the rejection.
Regarding claims 2, 11, and 12, HONGO teaches a manufacturing method of the pigment dispersion, an ink composition for an ink composition for an ink jet [0002 and 0027-0029]. The dispersion comprising a step A of preparing a mixture containing edible pigment, and edible dispersant, and water [0032]. The method includes orally ingested including surfactant [0274 and 0278] such as sucrose fatty acid ester [0279]. The preparation method of an inkjet ink using edible materials [0007] including edible pigment [0013] such as an black iron oxide, an iron sesquioxide pigment, a yellow iron sesquioxide pigment, a Blue No. 2 Lake pigment, and the like [0023] (which would read on the claimed food dye). The dispersion is used for printing letters or images on articles such as orally ingested solid foods and pharmaceutical products (e.g., solid preparations such as tablet and a capsule) by using an ink jet method [0282-0283]. Letters or images are printed by applying an edible ink onto the surface of the solid preparation (i.e., tablet) [0015 and 0017].
Given the ink composition contains pigment dispersions containing edible pigments, the position is taken that the produced inkjet ink would be edible as claimed. Furthermore, the products made from the solid preparation include orally ingested solid foods and pharmaceutical products (i.e., tables) [0282 and 0284].
However, HONGO does not teach an inkjet ink comprising ethanol.
In the same field of endeavor of an ink (inkjet inks p. 4) for food related applications (food pills (p. 6)), OZAKI teaches the ink comprising a solvent mainly composed of ethanol and containing water (Abstract; p. 9). The amount of ethanol can be used from 50 to 97 weight% of the whole ink (p. 10).
The ethanol is used for improving dryness (p. 7).
Given HONGO teaches the manufacturing method include other edible additives which can be orally ingested including a water-soluble organic solvent [0274]] and ethanol is a well-known water soluble organic solvent, it would have been obvious to a person of ordinary skill in the art to have provided the ethanol of OZAKI with the inkjet ink composition of HONGO for the benefit of improving dryness as taught by HONGO. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Regarding claim 4, HONGO teaches solid preparation comprises the amount of edible pigment is equal to or less than 20% by mass [0317] and the amount of surfactant (i.e., sucrose fatty acid ester) is equal to or higher than 0.05% by mass and equal to or lower than 0.5% by mass [0354]. OZAKI teaches the amount of ethanol used is 50 to 97 weight% (p. 10). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Claims 8, 10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/061848 in view of JP 2015-000968A (hereinafter, OZAKI) in further view of WO 2019/189902.
To further advance the prosecution of this invention, HONGO et al. (U.S. Publication No. 2019/0211221, hereinafter HONGO), which is an English equivalent of WO 2018/061848 will be used in the rejection.
To further advance the prosecution of this invention, HOSHINO et al. (U.S. Publication No. 2021/0002503, hereinafter HOSHINO) which is an English equivalent of WO 2019/189902 will be used in the rejection.
Regarding claims 8 and 10, the combined disclosures of HONGO and OZAKI substantially teaches the present invention, see paragraphs 7-11 above. More specifically, HONGO teaches that the preparation method of an inkjet ink using edible materials [0007] including edible pigment [0013 and 0023].
However, the combined disclosures do not teach the food dye is sodium copper chlorophyllin.
In the same field of endeavor of edible ink printing on the surface of the tablets [0002 and 0039-0040] (i.e., pharmaceutical tablets [0033-0034 and 0063] and food [0059-0060]), HOSHINO teaches an inkjet ink comprising food color containing sodium copper chlorophyllin and a pigment other than sodium copper chlorophyllin is dispersed in a medium (Abstract; [0023 and 0047]). The composition provides long-term storage of the inkjet ink and the precipitation can be prevented and printing can be easily resumed [0048 and 0052].
Given HONGO teaches the inkjet ink comprises edible pigment(s) [0013 and 0023], it would have been obvious to a person of ordinary skill in the art to have provided the sodium copper chlorophyllin of HOSHINO with the inkjet ink for pharmaceutical foods/tablets for the benefit of HONGO obtaining long-term stability of the inkjet ink and the prevention of precipitation which provides easy printing as taught by HOSHINO. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 15, HONGO teaches the dispersion comprising a step A of preparing a mixture containing edible pigment, and edible dispersant, and water [0032 and 0096-0097] (the amount of water is higher than 60% by mass and equal to or lower than 95% by mass [0109]).
The solid preparation comprises the amount of edible pigment is equal to or less than 20% by mass [0317] and the amount of surfactant (i.e., sucrose fatty acid ester) is equal to or higher than 0.05% by mass and equal to or lower than 0.5% by mass [0354]. OZAKI teaches the amount of ethanol used is 50 to 97 weight%. HOSHINO teaches the food color (pigment) content is in the range of 1 mass% or more and 10 mass% or less [0023]. The food color includes sodium copper chlorophyllin and other pigments including Blue No. 1, Blue No. 2, Red No. 102, Red No. 2, Red No. 3, Yellow No. 4, and Yellow No. 5 can be used in the inkjet ink [0024 and 0029-0030]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Allowable Subject Matter
Claims 13, 14, and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. HONGO et al., the closest prior art of record, fails to teach the inkjet ink of claim 2 consisting of the food dye; the water; the ethanol; and the sucrose fatty acid ester (claim 13), the inkjet ink of claim 4 consisting of the food dye; the water; the ethanol; and the sucrose fatty acid ester (claim 14), and the inkjet ink of claim 2 consisting of (a) 2-12 wt% of one or more food dye selected from the group consisting of sodium copper chlorophyllin, Blue No. 1, Red No. 102, Red No. 2, Red No. 3, Yellow No. 4, and Yello No. 5; (b) 10-60 wt% of ethanol; (c) 0.2-7 wt% of sucrose fatty acid ester; (d) water.
HONGO et al. teaches an inkjet ink comprising other components which would not satisfy the “consisting of” language.
Response to Arguments
Applicant’s arguments with respect to claims 2, 4, 8, and 10-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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, Joseph Del Sole can be reached at (571) 272-1130. 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.
DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763