1DETAILED 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 .
Examiner’s Comments
Applicants’ response filed on 9/25/2025 has been fully considered. Claims 3, 8 and 20-23 are cancelled, claim 36 is new and claims 1-2, 4-7, 9-19 and 24-36 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/25/2025 has been entered.
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 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 1-2, 4, 9-14, 24-26, 28-32 and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al (US 2004/0234709 A1).
Regarding claim 1, Ishida discloses a coating composition for an ink receptive layer for coating a support (substrate; paragraph [0145]), wherein the coating composition (ink-receptive composition) comprises a binder (paragraph [0121]), inorganic particles (paragraph [0117]) and at least one additive (paragraph [0122]); wherein the binder includes ethylene vinyl acetate copolymer (ethylene-based polymer) and polyvinyl alcohol (water-soluble polymer) (paragraph [0121]), wherein the binders are used in combination (paragraph [0121]), wherein the inorganic particles includes silica pigments (pigment; paragraph [0117]) and wherein the at least one additive includes an ultraviolet absorber, a photostabilizer (light stabilizer) and a surfactant (paragraph [0122]).
The combination of the ultraviolet absorber and the photostabilizer is considered to be a light stabilizer package comprising a UV absorber and a light stabilizer. The coating composition does not contain mordants or cationic compounds that would function as a mordant and is considered to be an ink-receptive composition free of mordants.
Ishida does not appear to explicitly disclose the ink-receptive composition comprising a weight ratio of polyvinyl alcohol to ethylene vinyl acetate copolymer being 1:1 to 1:16.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
The limitation “for coating a substrate to provide outdoor durability and color fade resistance” is an intended use limitation.
Since the structure of the coating composition of Ishida is the same as the claimed structure of the ink-receptive composition of claim 1, the coating composition of Ishida would inherently provide outdoor durability and color fade resistance.
Regarding claim 2, Ishida discloses the coating composition comprising the binder including ethylene-vinyl acetate copolymer (paragraph [0121]).
Regarding claim 4, Ishida discloses the coating composition comprising the binder including polyvinyl alcohol (water-soluble polymer; paragraph [0121]).
Regarding claim 9, Ishida discloses the coating composition comprising the binder in an amount of 5% to 60% by weight based on the total weight of the inorganic particles (paragraph [0121]) and the inorganic particles in an amount from 40% to 90% based on the weight of the ink receptive layer (paragraph [0120]).
The amount of binder based on the total weight of the ink receptive layer is 2% (0.05 x 40%) to 54% (0.60 x 90%) by weight. This range overlaps the claimed range for the amount of polymeric binder.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired adhesion of components for the ink receptive layer while not using excess binder in order to reduce manufacturing costs. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10, Ishida discloses the coating composition comprising the inorganic particles comprising silica pigments (paragraph [0117]).
Regarding claim 11, Ishida discloses the coating composition comprising the inorganic particles includes silica pigments (pigment; paragraph [0117])
Ishida does not appear to explicitly disclose the coating composition comprising the inorganic particles having a uniform particle size distribution.
However, it would have been obvious to adjust the distribution of the particle size of the inorganic particles to be uniform in order to provide uniform ink absorption and uniform coating strength for the ink receptive layer.
Regarding claim 12, Ishida discloses the coating composition comprising the surface area of the inorganic particles being 200 m2/g to 400 m2/g (paragraph [0119]).
Regarding claim 13, Ishida discloses the coating composition comprising the average particle size of the inorganic particles being in the range of 0.1 to 10 µm (paragraph [0118]).
The average particle size of the inorganic particles overlaps the claimed range for the mean particle size of the pigment.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have enhanced smoothness and image resolution for the ink receptive layer (paragraph [0118]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The mean particle size measured according to ASTM E2651-13 is a product by process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Regarding claim 14, Ishida discloses the coating composition comprising the content of the inorganic particles being 40% to 90% by weight based on the total weight of the ink receptive layer (paragraph [0120]).
The content of inorganic particle overlaps the claimed range for the amount of pigment.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have good ink absorption and good coating strength (paragraph [0120]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 24, since the structure of the coating composition of Ishida is the same as the structure of the ink-receptive composition as claimed in claim 1, the ink-receptive composition would inherently have after 700 hours of accelerated weathering a change in yellow color density of less than 25% compared to the original yellow color density.
Regarding claim 25, Ishida discloses a process for producing a recording medium comprising coating a support (substrate) with a coating composition (ink-receptive composition) to form an ink receptive layer (paragraph [0145]), wherein the coating composition comprises a binder (paragraph [0121]), inorganic particles (paragraph [0117]) and at least one additive (paragraph [0122]); wherein the binder includes ethylene vinyl acetate copolymer (ethylene-based polymer) and polyvinyl alcohol (paragraph [0121]), wherein the binders are used in combination (paragraph [0121]), wherein the inorganic particles includes silica pigments (pigment; paragraph [0117]) and wherein the at least one additive includes an ultraviolet absorber, a photostabilizer and a surfactant (paragraph [0122]).
Regarding claim 26, Ishida discloses the process comprising calendering using heat and pressure (paragraph [0147]).
The calendering using heat and pressure reads on the claimed heating the substrate to cure the coating on the article.
Regarding claim 28, Ishida discloses the process comprising forming the ink receptive layer using a bar coater (paragraph [0147]).
The coating using a bar coater reads on the claimed coating.
Regarding claim 29, Ishida discloses a process comprising printing a pigment ink using an ink jet printer onto an ink jet recording medium (paragraph [0181]), wherein the ink jet recording medium comprises a support (paragraph [0116]) and an ink receptive layer disposed on the support (paragraph [0117]), wherein the support is a plastic support (paragraph [0045]), wherein the plastic support comprises polyethylene (paragraph [0046]), wherein the ink receptive layer is formed from a coating composition (paragraph [0145]), wherein the coating composition comprises a binder (paragraph [0121]), inorganic particles (paragraph [0117]) and at least one additive (paragraph [0122]); wherein the binder includes ethylene vinyl acetate copolymer and polyvinyl alcohol (paragraph [0121]), wherein the binders are used in combination (paragraph [0121]), wherein the inorganic particles includes silica pigments (paragraph [0117]) and wherein the at least one additive includes an ultraviolet absorber, a photostabilizer and a surfactant (paragraph [0122]).
Paragraphs [0108]-[0109] of Ishida discloses a specific disclosure comprising a support having ink receptive layer #2 on both sides of the support where at least one ink receptive layer is overlaid with a porous ink receptive layer. This would suggest an embodiment of a support having ink receiving layer #2 on side without porous ink receptive #3 that receives an image. The combination of the teachings in paragraphs [0108]-[109] and [0181] would result in an image printed directly on ink receiving layer #2 and would be considered to be the print layer directly on the coating.
Regarding claim 30, Ishida discloses an ink jet recording medium comprising a support (substrate; paragraph [0116]) and an ink receptive layer (coating formed from the ink-receptive composition) disposed on the support (paragraph [0117]), wherein the support is a plastic support (paragraph [0045]), wherein the plastic support comprises polyethylene (paragraph [0046]), wherein the ink receptive layer is formed from a coating composition (paragraph [0145]), wherein the coating composition comprises a binder (paragraph [0121]), inorganic particles (paragraph [0117]) and at least one additive (paragraph [0122]); wherein the binder includes ethylene vinyl acetate copolymer and polyvinyl alcohol(paragraph [0121]), wherein the binders are used in combination (paragraph [0121]), wherein the inorganic particles includes silica pigments (paragraph [0117]) and wherein the at least one additive includes an ultraviolet absorber, a photostabilizer and a surfactant (paragraph [0122]).
Since the structure of the coating composition of Ishida is the same as the claimed structure of the ink-receptive composition of claim 1, the coating composition of Ishida would inherently provide outdoor durability and color fade resistance.
Regarding claim 31, Ishida discloses the ink jet recording medium comprising the support being a plastic support (paragraph [0045]) and wherein the plastic support comprises polyethylene (polymeric substrate; paragraph [0046])
The polyethylene reads on the claimed.
Regarding claim 32, Ishida discloses the ink jet recording medium comprising the support being a plastic support (paragraph [0045]) and wherein the plastic support comprises polyethylene (polyolefin; paragraph [0046])
Regarding claim 35, Ishida discloses the ink jet recording medium comprising the support comprising a nonwoven fabric or a woven fabric or a composite of a laminate thereof (paragraph [0045]).
Regarding claim 36, Ishida discloses the coating composition comprising the binder including ethylene vinyl acetate copolymer (ethylene-based polymer) and polyvinyl alcohol (water-soluble polymer) (paragraph [0121]).
Ishida does not appear to explicitly disclose the ink-receptive composition comprising a weight ratio of polyvinyl alcohol to ethylene vinyl acetate copolymer being 1:4 to 1:10.
However, it would have been obvious to one of ordinary skill in the art to adjust the weight ratio of polyvinyl alcohol to ethylene vinyl acetate copolymer being 1:4 to 1:10 absent unexpected results because doing do provides the desired adhesion of components for the ink receptive layer while not using excess binder in order to reduce manufacturing costs.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al (US 2004/0234709 A1) in view of in view of Saeki (US 2003/0040573 A1).
Regarding claim 5, Ishida is relied upon as described above.
Ishida does not appear to explicitly disclose the ink-receptive composition comprising the polyvinyl alcohol being a hydrolyzed polyvinyl alcohol.
However, Saeki discloses a resin composition for forming an ink receptive layer (Abstract) comprising an oxyalkylene group-containing polyvinyl alcohol (paragraph [0035]) and wherein the hydrolysis of the oxyalkylene group-containing polyvinyl alcohol is 70% to 100% (paragraph [0037]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the polyvinyl alcohol of Ishida for the oxyalkylene group-containing polyvinyl alcohol of Saeki because having the required oxyalkylene group-containing polyvinyl alcohol with a degree of 70% to 100% prevents ink receptivity and weatherability from deteriorating for an ink receptive layer (paragraph [0037] of Saeki).
Regarding claim 6, Ishida does not appear to explicitly disclose the ink-receptive composition comprising the polyvinyl alcohol being a fully hydrolyzed polyvinyl alcohol.
However, Saeki discloses a resin composition for forming an ink receptive layer (Abstract) comprising an oxyalkylene group-containing polyvinyl alcohol (paragraph [0035]) and wherein the hydrolysis of the oxyalkylene group-containing polyvinyl alcohol is 70% to 100% (paragraph [0037]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the polyvinyl alcohol of Ishida for the oxyalkylene group-containing polyvinyl alcohol of Saeki because having the required oxyalkylene group-containing polyvinyl alcohol with a degree of 70% to 100% prevents ink receptivity and weatherability from deteriorating for an ink receptive layer (paragraph [0037] of Saeki).
Claims 7, 18-19, 27 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al (US 2004/0234709 A1) in view of Naik et al (US 2003/0112311 A1).
Regarding claim 7, Ishida is relied upon as described above.
Ishida does not appear to explicitly disclose the ink-receptive composition the ethylene-based polymer being emulsified with the water-soluble polymer to form an ethylene-based emulsion polymer.
However, Naik discloses the ink-receptive composition comprising the binder comprising an EVA emulsion polymer stabilized with polyvinyl alcohol (ethylene-based polymer emulsified with the water-soluble polymer to form an ethylene-based emulsion polymer; paragraph [0029]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the binder of Ishida for the EVA emulsion polymer of Naik because having the required EVA emulsion polymer provides the desired adhesion of components in the coating composition for the ink receptive composition and film forming properties.
Regarding claim 18, Ishida does not appear to explicitly disclose the ink-receptive composition comprising the surfactant being a cationic surfactant, a non-ionic surfactant and combinations thereof.
However, Naik discloses the ink-receptive composition comprising one or more cationic or nonionic surfactants (paragraph [0098]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the surfactant of Ishida for the cationic surfactant and nonionic surfactant of Naik because having the required surfactant provides reduced surface tension for an ink receptive layer leading to improved image quality.
Regarding claim 19, Ishida does not appear to explicitly disclose the ink-receptive composition comprising from 0.01% to 10% of surfactant based on the dry weight of the coating composition.
Naik discloses the ink-receptive composition comprising the surfactant in an amount from about 0.1% to about 10% by weight of the solids of the coating composition (paragraph [0099]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the surfactant of Ishida for the cationic surfactant and nonionic surfactant of Naik because having the required surfactant provides reduced surface tension for an ink receptive layer leading to improved image quality.
Regarding claim 27, Ishida does not appear to explicitly disclose the process comprising applying an adhesive with a release liner to a second surface of the substrate where the second surface is opposite the first surface.
However, Naik discloses the method comprising applying an adhesive with a release liner on a surface of the substrate where the ink-receptive composition is not applied (paragraphs [0113] and [0120]).
It would have been obvious to one of ordinary skill in the art to modify the ink jet recording medium of Ishida to include the adhesive of Naik on a surface of the support of the ink jet recording medium of Ishida where the ink receptive layer is not formed because having the required adhesive allows for the ink jet recording medium to be capable of functioning as a label that can be attached to another substrate or object.
Regarding claim 33, Ishida does not appear to explicitly disclose the ink jet recording medium comprising an adhesive on a surface opposite the ink receptive layer.
However, Naik discloses the ink printable article comprising an adhesive layer disposed on a surface of the substrate on which the ink receptive layer is not formed (Fig. 3 #33; paragraph [0113]).
It would have been obvious to one of ordinary skill in the art to modify the ink jet recording medium of Ishida to include the adhesive of Naik on a surface of the support of the ink jet recording medium of Ishida where the ink receptive layer is not formed because having the required adhesive allows for the ink jet recording medium to be capable of functioning as a label that can be attached to another substrate or object.
Regarding claim 34, Ishida does not appear to explicitly disclose the ink jet recording medium comprising the adhesive being covered by a release liner that is separable form the adhesive to expose the adhesive for attachment of the article to an object.
However, Naik discloses the ink printable article comprising a release liner disposed on the adhesive layer (Fig. 3 #34; paragraph [0113]).
It would have been obvious to one of ordinary skill in the art to modify the ink jet recording medium of Ishida to include the adhesive and release liner of Naik on a surface of the support of the ink jet recording medium of Ishida where the ink receptive layer is not formed because having the required adhesive with a release liner allows for the ink jet recording medium to be capable of functioning as a label that can be attached to another substrate or object and provides protection of its adhesive surface before application.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al (US 2004/0234709 A1) in view of Ludwig et al (US 2003/0224150 A1).
Regarding claim 15, Ishida is relied upon as described above.
Ishida does not appear to explicitly disclose the ink-receptive composition comprising the UV absorber comprising benzophenone derivatives.
However, Ludwig discloses an ink receptive coating composition comprising a UV light stabilizer comprising benzophenone-type UV absorbers (UV absorber comprising benzophenone derivatives; paragraphs [0036]-[0037]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the ultraviolet absorber of Ishida for the UV light stabilizer of benzophenone of Ludwig because having the required UV light stabilizer provides enhanced durability of the imaged substrate especially in outdoor environments (paragraph [0036] of Ludwig).
Regarding claim 16, Ishida does not appear to explicitly disclose the ink-receptive composition comprising the light stabilizer comprising hindered amines.
However, Ludwig discloses an ink receptive coating composition comprising a free-radical scavenger comprising hindered amine light stabilizer compounds (light stabilizer; paragraphs [0036] and [0039])
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Ishida to substitute the photostabilizer of Ishida for the free-radical scavenger of hindered amine light stabilizer compounds because having the required free-radical scavenger provides enhanced durability of the imaged substrate especially in outdoor environments (paragraph [0036] of Ludwig).
Regarding claim 17, Ishida does not appear to explicitly disclose the ink-receptive composition comprising 5% to 10% of the light stabilizer package based on the dry weight of the coating composition.
However, Ludwig discloses an ink receptive coating composition comprising UV light stabilizer (UV absorber) from about 0.1 to about 0.5 weight percent of the total weight of the ink receptive coating composition (paragraph [0037]) and free-radical scavenger (light stabilizer) from about 0.05 to about 0.25 weight percent of the total weight of the ink receptive coating composition (paragraph [0038]).
The combined ranges of the UV light stabilizer and the free-radical scavenger is from about 0.15 to about 5.25 weight percent of the total weight of the ink receptive coating composition. This range overlaps the claimed range for the amount of light stabilizer package.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have enhanced durability of the imaged substrate especially in outdoor environments (paragraph [0036] of Ludwig). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 9/25/2025 have been fully considered but they are not persuasive.
Applicants argue that it would not be obvious to select a 1:1 ratio for the ethylene based polymer and the water-soluble polymer.
This argument is not persuasive as Ishida discloses polyvinyl alcohol and ethylene vinyl acetate as binders. The amount for these binders are not disclosed such that their comparable amounts would provide a ratio within the claimed range.
However, it would have been obvious to adjust the amounts to provide a ratio in the claimed range such as 1:1.
Applicants argue that none of the sections address the inquiries of the test articulated in MPEP 2143(I)(E) for obvious to try.
This argument is not persuasive in that common sense is being used and official notice is not being taken according to MPEP 2144.03. Also, the rationale of In re Bozek of choosing a 1:1 ratio for the polyvinyl alcohol and ethylene vinyl acetate absent evidence of unexpected results is a proper conclusion of obviousness based on common knowledge and common sense from a person skilled in the art. Ishida discloses the polymeric binder comprising polyvinyl alcohol and ethylene vinyl acetate and wherein a combination of polymeric binders can be used. The specific amounts of each binder for providing the claimed ratio of 1:1 to 1:16 are not explicitly disclosed. However, as noted in the rejection above. It would have been obvious to choose the claimed ratio, such as a 1:1 ratio, absent unexpected results. Burden shifts to applicant to show that the claimed ratio of 1:1 to 1:16 by dry weight of water-soluble polymer to ethylene-based polymer is not obvious. Furthermore, In re Bozek is an “obvious to try” rationale and an “obvious to try” line of reasoning may properly support an obviousness rejection according to MPEP 2144.05. Based on these reasons, it would have been obvious to choose the claimed ratio for polyvinyl alcohol to ethylene vinyl acetate.
Applicants argue that one would not mix the selected polymers from a much longer list in a 1:1 ratio as “common sense” without supporting evidence.
This argument is not persuasive and notes that one of ordinary skill in the art can clearly envisage each and every polymer used as the binder in paragraph [0121] of Ishida. The list of binders accounts for 12 binders. This number is not considered to be a long list of binders. The same disclosure states that the binders can be used along or in combination. Based on paragraph [0121] of Ishida, it would have been obvious to have mixed ethylene vinyl acetate and polyvinyl alcohol among the list of 12 binders and provide them in a 1:1 ratio absent unexpected results.
Conclusion
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785