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 .
Election/Restrictions
Applicant's election with traverse of Claims 1-5 in the reply filed on 04 September 2025 is acknowledged. The traversal is on the ground(s) that examination of all identified groups of claims together would not present a burden (see Response at Pg. 2). This is not found persuasive because the identified groups are directed to diverse statutory classes of invention and a search of the elected group is not necessarily exhaustive of a search of the non-elected groups.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 16 November 2022, 07 February 2023, 06 March 2024, 15 May 2024, and 24 May 2024 have been considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the Specification, while being enabling for polyethylene glycol as a water-soluble organic compound, and Mowinyl 6969D, Superflex 870, Mowinyl DM774, and Polyzole AP-3270N fine resin particles (see Specification at ¶¶ [0062]-[0063]), does not reasonably provide enablement for all potential water-soluble organic compounds and resin fine particle materials, as is currently contemplated by Claim 1. Similarly, the claims broadly include any substance which could be considered a resin dispersion pigment without identifying any particular dispersion pigment.
In its current state, the breadth of Claim 1 is vast in view of the claim’s contemplation of any conceivable water-soluble organic compounds and fine resin particles. The nature of the invention is understood to be that of recording and/or printing, broad fields of art. The state of the prior art is varied, owing to the breadth of Claim 1 and the applicability of many disciplines thereto. The level of ordinary skill in the art is understood to be that of recording and/or printing using water-based inks. The level of predictability in the art is low in view of the wide range of potentially eligible materials contemplated by Claim 1. There is limited direction provided by the inventors and a low number of working examples in view of the limited number of embodiments described by the instant Specification.
The quantity of experimentation required to practice the invention as claimed is excessive. To wit, in limited embodiments, the instant Specification describes and enables a recording method featuring water-based inks comprising polyethylene glycol as a water-soluble organic compound and specified commercially-available materials as fine resin particles. In contrast, the instant claims are drawn to using any water-soluble organic compound, any fine resin particle material, and any resin dispersion pigment to conduct a recording operation. The instant Specification does not provide guidance with regard to other potentially operable materials and techniques or compatibility thereof, and one of ordinary skill in the art would have to undertake undue experimentation in attempts to practice an operable embodiment of the invention as currently claimed.
Thus it is found that the Specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with the instant claims.
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.
2. Claims 1-5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to Claim 1, it is unclear as to what the term “fine” confers as a limitation upon the resin particles in the water-based recording ink. For purposes of examination, the fine resin materials identified by the instant Specification at ¶ [0062] are understood to read upon the claim. Claims 2-5 are similarly rejected to the extent they depend from Claim 1 and do not resolve the noted ambiguity.
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.
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.
3. Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over JPH068527 to Hirooka et al., an English translation of which is provided herewith and referred-to herein, (“Hirooka”) in view of US 2021/0301165 to Yamazaki et al., effectively filed March 25 2020, (“Yamazaki”).
With regard to Claims 1, 3, and 5, Hirooka teaches a recording method comprising discharging ink from a head onto a conveyed recording medium with subsequent heat-facilitated fixing of the recording wherein it is determined whether the recording medium is a coated or non-coated paper (see Abstract; ¶¶ [0025], [0086]). According to Hirooka, the fixing temperature is determined based on the type of recording media, wherein the heat applied for coated paper is greater than that of non-coated paper (see ¶¶ [0086]-[0088], [0095], [0120]). Hirooka teaches use of water-soluble ink; however the reference does not expressly teach constituents thereof as claimed. Yamazaki is directed to aqueous ink compositions suitable for recording and printing processes comprising dispersed resin pigment, fine resin particles, and a water-soluble organic compound (see Abstract; ¶¶ [0010]-[0011], [0068]-[0076], [0119]-[0128], [0139]-[0142]). Notably, Yamazaki teaches the claimed types of fine resin particles and water-soluble organic compounds (see ¶¶ [0075], [0140]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed the aqueous printing ink of Yamazaki in the method of Hirooka with a reasonable expectation of success since Yamazaki describes usage of inks taught therein in such recording processes as that of Hirooka.
With regard to Claim 2, Hirooka does not expressly teach zero heating of coated paper as claimed; however Yamazaki describes using low heat for ink setting in cases of sensitive recording media with excellent results and economic benefits associated therewith (see Yamazaki at ¶¶ [0096]-[0097]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have allowed conducted ink setting without additional heat input in the process of Hirooka in order to reduce process energy usage and/or enable recording on heat-sensitive media.
4. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hirooka in view of Yamazaki as applied to Claim 1, and further in view of US 2018/0086108 to H. Hojo (“Hojo”).
With regard to Claim 4, Hirooka does not expressly teach IR heating. Hojo is similarly directed to a recording process using aqueous ink, and teaches IR heating at selectable energy input amounts in order to control adhesion and media integrity (see Abstract; ¶¶ [0112], [0422]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have conducted heating using an IR heater and to have adjusted heating amount within the claimed range in the method of Hirooka, as taught by Hojo, throughout the course of routine experimentation and optimization in obtaining a desired degree of adhesion while ensuring print media integrity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1715