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
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayamizu et al (JP2020070334, of record, English equivalent US 20210060993, of record, ‘993 hereafter is cited in this office action).
Regarding claims 1 and 4-6, ‘993 discloses an inkjet ink comprising water ([0169]-[0170]); a pigment([0112]-[0121]); an organic solvent being a dihydric alcohol-based solvent propyl glycol having boiling point of 188°C ([0064], 1,2 PD in Examples, Table 4), or a glycol monoalkyl ether solvent ([0065]); a binder resin ([0122], [0123], [0140]-[0149], Examples); and a wax being a polyolefin wax having melting point 130°C falling within the present claimed range as in claim 5 ([0150]-[0153], AQUACER 515, Examples, [0273]); 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 2.97 (Table 4, Example 8, S/R=17/13x44%=2.97 ) satisfying the presently claimed range of less than 3.0 and also satisfying the limitations of the present claim 6 with organic solvent having boiling point over 190 °C of amount being 0 and S/R being 2.97 within the range of 2.3 to 3.0. Regarding claim 4, ‘993 also discloses that the ink composition is used for an inkjet printing device ([0191]-[0198]). It is also 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 the use is for the printing device as recited.
Claims 1-4 and 6 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, of record, ‘735 hereafter is cited in this office action ).
Regarding claims 1-4 and 6, ‘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 claims 2 and 3 ([0122]-[0132], [0413], Examples 1-10, Comparative Example 2, the difference of boiling points can be 188-120=68°C); a binder resin ([0145]-[0172], [0414], Examples, Comparative Example 2); and a wax ([0219]); 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 claim 6 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. 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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al (WO2020/195360, of record, English equivalent US 2021/0403735, of record, ‘735 hereafter is cited in this office action ) in view of Hayamizu et al (JP2020070334, of record, English equivalent US 20210060993, of record, ‘993 hereafter is cited in this office action).
Regarding claim 5, ‘735 teaches all the limitations of claim 1, ‘735 discloses the ink composition may contains a wax ([0219]), but does not specifically set forth that the wax is a polyolefin wax as recited in the present claim 5; 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.
Conclusion
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUIYUN ZHANG/Primary Examiner, Art Unit 1782