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 06/17/2026 have been entered. Claims 1, 3-4, and 6-9 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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Specification
The disclosure is objected to because of the following informalities: Table 4, Example 1, the S/R value should be 17.5/8=2.19. This objection is applicable to all occurrences in the table. 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 1, 3-4, and 6-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 is rejected as being vague and indefinite when these claims recite "the organic solvent having a boiling point at 1 atmosphere of 190°C or lower contains a dihydric alcohol-based solvent and/or a glycol monoalkyl ether solvent” and “the organic solvent having a boiling point at 1 atmosphere of 190°C or lower contains a dihydric alcohol-based solvent and a glycol monoalkyl ether solvent” to further limit a range or a species, which render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claims 3-4 and 6-9 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
Claims 6 and 8 are rejected as being vague and indefinite when the claim recites “an amount of an organic solvent having a boiling point at 1 atmosphere of over 190°C relative to the total amount of ink is 1% by mass or less, and the value of S/R is 2.3 or more and 3.0”, because none of the exemplified embodiments as set forth in the present application contain “an amount of an organic solvent having a boiling point at 1 atmosphere of over 190°C relative to the total amount of ink is 1% by mass or less, and the value of S/R is 2.3 or more and 3.0”. See examples in the specification as originally filed, all examples has much higher amount of organic solvent with boiling point over 190°C, and the S/R value less than 2.3. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) (see MPEP 2173.03).
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, 3-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al (WO2020/195360, of record, English equivalent US 2021/0403735 is cited in this office action, of record, ‘735 hereafter is cited in this office action ) in view of Hayamizu et al (JP2020070334, of record, English equivalent US 20210060993 is cited in this office action, of record, ‘993 hereafter is cited in this office action).
Regarding claims 1, 3-4 and 6-9, ‘735 discloses an ink composition comprising water ([00042]-[0046]), a pigment ([0047]-[0054]); an organic solvent being dihydric alcohol-based solvent propyl glycol having boiling point of 188°C ([0107]-[0114], Examples 1-10, [0412], Comparative Example 2) and a glycol monoalkyl ether solvent with difference of boiling points satisfying present 3 and 9 ([0122]-[0132], [0413], Examples 1-10, Comparative Example 2, the difference of boiling points can be 188-120=68°C); and a binder resin ([0145]-[0172], [0414], Examples, Comparative Example 2); wherein the amount of the organic solvent having a boiling point at 1 atmosphere of 150°C or higher (S) to the amount of the binder resin (R) relative to the total amount of ink (S/R) can be 2.50 ([0414], Comparative Example 2, S/R=15/6 =2.50 ) satisfying the range of less than 3.0 and also satisfying the limitations of the present claims 6-8 with an organic solvent having boiling point over 190°C of amount being 0 and S/R being 2.5 within the range of 2.3 to 3.0. ‘735 also discloses that the ink composition may further include a wax ([0219]), but does not specifically set forth that the wax is a polyolefin wax as recited in the present claim 1; however, in the same field of endeavor of ink composition, ‘993 discloses an ink composition comprising water, a pigment, an organic solvent, a binder resin and a wax; wherein the wax is a polyolefin wax having melting point 130°C falling in the present claimed range ([0150]-[0153], AQUACER 515, Examples, [0273]), which is used to improve adhesin and rub fastness of the printed matter([0150]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the polyolefin-based wax as taught by ‘993, to modify the ink composition of ‘735, in order to render an ink composition having better adhesion to substrates and better rub fastness of printed matter. It is noted that the ink composition as recited in the present claim 4 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 the printing device, even if the prior art does not disclose used is for the printing device as recited.
Response to Arguments
Applicant's arguments filed on 06/17/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
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 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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