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 Objections
Claim 5 is objected to because of the following informalities:
Claim 5 should be dependent on claim 3 not claim 1. Appropriate correction is required.
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 15-18 provides for the use of one or more organic or inorganic silicon compounds, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1-13 & 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrari et al. (# US 2017/0298245) in view of Hamm et al. (# US 2019/0337862).
Ferrari et al. discloses:
Ceramic ink for digital printing (see Abstract), comprising:
at least one solid part comprising at least one ceramic pigment or dye ([0034]-[0036]); and
at least one liquid part into which said ceramic pigment or dye is dispersed and comprising one or more vehicles and/or one or more dispersants ([0036]-[0043]);
wherein at least one of either said one or more vehicles or said one or more dispersants comprises one or more organic or inorganic silicon compounds ([0038]; [0048]; silicone surfactant; see Examples).
The Examiner draws particular attention to the Applicant that " Ferrari et al. does address pigment, dye, solvent, and silicon compound, it teaches a laundry list of possible pigment, dye, solvent, and silicon compound. The format in which Ferrari et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Ferrari et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the pigment, dye, solvent, and silicon compound from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377.
2) The ceramic ink according to claim 1, wherein said one or more organic or inorganic silicon compounds are linear or cyclic ([0015]).
4) The ceramic ink according to claim 1, wherein said one or more organic or inorganic silicon compounds are selected from list comprising: polysiloxane ([0015]), polysilsesquioxane, polycarbonate-siloxane, polysilane ([0019]), polycarbosilane, poly(silyl)carbodiimide, polysilsesquicarbodiimide, polysilazanes, polycarbosilazane, polysilsesquiazane, polyborosiloxane, polyborosilane, polyborosilazane, hydrocarbons of silicon or silicate ester.
6) The ceramic ink according to claim 1, wherein said one or more vehicles comprise said one or more organic or inorganic silicon compounds ([0038]; see Examples).
7) The ceramic ink according to claim 1, wherein said one or more vehicles comprise said one or more organic or inorganic silicon compounds present in a concentration by weight, assessed in relation to the total weight of said medium, of more than 80% (see Examples; see claim 16).
8) The ceramic ink according to claim 1, wherein said one or more vehicles are present in a concentration by weight, assessed in relation to the total weight of the ink, of more than 30% (see Examples; see claim 16).
9) The ceramic ink according to claim 1, wherein said one or more vehicles have a viscosity comprised between 2 cP and 100 cP, preferably between 10 cP and 30 cP, measured at a shear rate of 100 sec-1 and at a temperature of 25° C (5 to 40 mPa.s; [0046]).
10) The ceramic ink according to claim 1, claim 1, said one or more dispersants are selected from a list comprising: organic compounds, polymers, phosphoesters, acrylic polymers (polyacrylate polymers; [0014]), styrene-acrylic polymers ([0014]; [0019]), polyurethanes ([0014], [0019]) polyimines, polyetheramines, or mixtures thereof.
11) The ceramic ink according to claim 1, wherein said one or more dispersants are at least partly soluble in said one or more vehicles (see Examples).
12) The ceramic ink according to claim 1, further comprising: a dynamic surface tension value comprised between 20 mN/m and 40 mN/m, said dynamic surface tension being measured at 25° C (20-50 dyne/cm; [0046]; [0061]-[0064]).
Given that the Ferrari et al. reference discloses a range of surface tension and viscosity that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught ranges, including those presently claimed, to obtain a suitable composition. It is also noted that according to MPEP 2131.03 and MPEP 2144.05, 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, 617 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). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclose by the prior art", see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
13) The ceramic ink according to claim 1, further comprising: at least one additive, wherein said additive is selected from a list comprising: rheology modifiers, surfactants, surface tension modifiers, antifoaming agents, adhesion promoters and antibacterial agents ([0061]-[0064]).
15) A use of one or more organic or inorganic silicon compounds as a medium and/or dispersant in ceramic inks for digital printing (see Abstract; [0058]-[0064]).
The Examiner draws particular attention to the Applicant that " Ferrari et al. does address solvent and silicon compound, it teaches a laundry list of possible solvent and silicon compound. The format in which Ferrari et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Ferrari et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the solvent and silicon compound from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377.
16) The use according to claim 15, wherein said one or more organic or inorganic silicon compounds are selected from a list comprising: polysiloxane ([0015]), polysilsesquioxane, polycarbonate-siloxane, polysilane ([0019]), polycarbosilane, poly(silyl)carbodiimide, polysilsesquicarbodiimide, polysilazanes, polycarbosilazane, polysilsesquiazane, polyborosiloxane, polyborosilane, polyborosilazane, hydrocarbons of silicon or silicate ester.
The Examiner draws particular attention to the Applicant that " Ferrari et al. does address silicon compound, it teaches a laundry list of possible silicon compound. The format in which Ferrari et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Ferrari et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the silicon compound from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377.
17) A use of said one or more organic or inorganic silicon compounds, according to claim 1, as a medium and/or dispersant in ceramic inks for digital printing (see Abstract; [0058]-[0064]).
18) The use according to claim 17, wherein said one or more organic or inorganic silicon compounds are selected from a list comprising: polysiloxane ([0015]), polysilsesquioxane, polycarbonate-siloxane, polysilane ([0019]), polycarbosilane, poly(silyl)carbodiimide, polysilsesquicarbodiimide, polysilazanes, polycarbosilazane, polysilsesquiazane, polyborosiloxane, polyborosilane, polyborosilazane, hydrocarbons of silicon or silicate ester.
The Examiner draws particular attention to the Applicant that " Ferrari et al. does address silicon compound, it teaches a laundry list of possible silicon compound. The format in which Ferrari et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Ferrari et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the silicon compound from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377.
Ferrari et al. explicitly did not discloses:
3) The ceramic ink according to claim 2, wherein said one or more organic or inorganic silicon compounds have the following general formula (formula I):
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wherein X is selected from a list comprising: SiR7R8, BR7R8, O, CR7R8, NR7; wherein R5, R6, R7 and R8 are equal or different to each other and are independently selected from: hydroxyl group, linear or branched, saturated or unsaturated alkyl chains, linear or branched cycloalkyl group, linear or branched aryl group, ether group, ester group, vinyl group, acrylic group, styrenic group, alkoxy group, aryloxy group, linear or branched chains containing silicon, glycols, polyglycols, hydrogen, carbohydrates, phosphoesters, acrylic polymers, styrene-acrylic polymers, polyurethane polymers, polyminic polymers, polyetheramines, or mixtures thereof; and wherein n is comprised between 3 and 1,000,000, preferably between 4 and 1,000.
5) The ceramic ink according to claim 1, wherein said, according to formula I, said one or more functional groups R5, R6, R7 and R8 have one or more substituents selected from a list comprising: phosphate group, phosphonic group, phosphonium group, amino group, ammonium group, sulphate group, sulphonic group, carboxylic group, hydroxylic group, betainic group or acrylic group.
Hamm et al. teaches that to have the printed image with strong pearlescent effect, and higher tinting strength, the one or more organic or inorganic silicon compounds have the following general formula ([0029]-[0037])
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508
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It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the silicon compound in the ink composition of Ferrari et al. by the aforementioned teaching of Hamm et al. in order to have the printed image with strong pearlescent effect, and higher tinting strength.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Magdassi et al. (# US 2008/0210122).
Magdassi et al. discloses:
14) A method for the manufacture of a ceramic manufactured article (see Abstract), comprising:
preparing a ceramic semi-finished product (see Abstract; [0087]);
printing the ink according to one or more of the preceding claims on a surface of said ceramic semi-finished product (see Abstract; [0026]-[0034]); and
heat treating said ceramic semi-finished product at a temperature above 500° C. to obtain said ceramic manufactured article (firing; [0046]-[0047]; [0087]);
wherein said one or more organic or inorganic silicon compounds form on the surface of said ceramic manufactured article at least one odorless compound selected from a list comprising: SiOx (SiO2; [0077]), SiCx, SiCxOy, SiNx, SiNxOy, SiBx, SiBxOy, wherein x and y are between 0 and 6.
Magdassi et al. explicitly did not discloses:
The ceramic manufactured article producing an odor emission of less than 1000 OUE/m3 and/or an atmospheric emission of total organic carbon (TOC) of less than 50 mg/Nm3.
It would have been obvious to one having ordinary skill in the art at the time of invention was made to incorporate an odor emission of less than 1000 OUE/m3 and/or an atmospheric emission of total organic carbon (TOC) of less than 50 mg/Nm3, since it has been held that it is not inventive to discovering and optimum value or workable ranges by routine experimentation. In re Aller, 105 USPQ 233 (CCPA1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Schneider et al. (# US 2023/0117230) discloses ceramic printing ink comprises at least one glassy material including glass particles and at least one pigment containing pigment particles. The ratio of the sum of the weight of the glass particles comprised by the printing ink to the sum of the pigment particles comprised by the printing ink is 1.5-19 (see Abstract).
(2) Fornara et al. (# US 2013/0342593) discloses ceramic inkjet inks comprising ceramic inorganic pigments having average particle size between 0.1 and 0.8 .mu.m, an organic medium and a dispersant, the dispersant being the reaction product of a polyethyleneimine with a homo- or co-polyester based on lactic acid, and method for decorating green or fired ceramic bodies by the use of the above ceramic inkjet inks (see Abstract).
(3) Weingartner (# US 2011/0249056) discloses producing a multicolored surface on a ceramic element or glass by drop-like application of different colored primary ceramic process color inks containing a carrier fluid onto at least a portion of a surface of the ceramic element or glass, comprises: printing on top of one another at least two primary process color inks to obtain a mixed color ink; subsequently firing the applied ink drops; adding at least one (photo) oligomerizable or polymerizable additive and optionally at least one photoinitiator to the color inks; and prior to overprinting an ink drop with an additional ink drop, at least partly setting the first ink drop, where after the application of an ink drop of a process color ink and before a further ink drop of a process color ink is applied onto the ink drop, the viscosity of the previously applied ink drop is increased (see Abstract).
(4) Fernandez Vazquez et al. (# US 2021/0395544) discloses ceramic inkjet inks for non-porous substrates (such as glass, metals) whereby the viscosity of the inks at the jetting temperature of 33-50° C. is 8-20 mPa.Math.s and increase substantially to more than a factor of 5 (greater than 100 mPa.Math.s) after landing on the substrate. The invention also relates to processing/formulating steps and tuning of the bulk and dynamic properties suitable for (i) inkjet printing in the printhead channel and (ii) desirable high viscosity after landing on the glass substrate. The ink comprises: Glass Frit composition which is in the form of particles having a volume particle size distribution Dv90 of less than 1.5 μm, carriers (30-50 wt %) and additives (0-10%). The ceramic ink mitigate ink splattering, spreading during and after landing, eliminate/reduce image defects because of dust contaminations from the environment on wet inks after printing (see Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached on 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/ Primary Examiner, Art Unit 2853