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 .
Status of Application
Claims 1, 2, 4 and 6-17 are pending and presented for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/16/2026 has been entered.
Response to Amendment
The declaration under 37 CFR 1.132 filed 1/16/2026 is insufficient to overcome the rejection of the claims based upon Morita as set forth in the last Office action because: Applicant has provided evidence to attempt to support that the substitution of DEHE provides unexpected results with respect to optical density. Applicant has further amended the claim, such that the evidence is commensurate in scope with the claim by reciting an optical density of greater than 1.9. However, the Examiner disagrees that the evidence supports unexpected results. In particular, the optical densities of the compositions of the prior art, which is the closest art, exhibit an optical density of greater than 1.9 (see Table 1 and 0092-0094). Therefore, it doesn’t appear that simply substituting out the 1,2-hexanediol would yield poorer results. Furthermore, the Examiner notes that even in some systems using all the components as claimed, the optical density is less than 1.9 (see AEx.3), which suggests it is not only the selection of the particular penetrating agent that is providing an unexpected result. This appears to support the position that 1,2-HDL in combination with a different binder resin would actually be capable of providing an optical density as claimed, which is also supported by Morita which utilizes 1,2-HDL and yields optical densities much greater than 1.9. Based on the preponderance of evidence, the Examiner disagrees that the evidence supports that the modification of Morita as previously outlined would necessarily yield unexpected results. Rather, the Examiner maintains that it would have been within the level of one of ordinary skill in the art to combine the elements Morita discloses as useable in the composition to provide compositions that yield optical densities of greater than 1.9.
Response to Arguments
Applicant’s amendment has overcome the 35 U.S.C. 112(b) rejection.
Applicant's arguments filed 1/16/2025, with respect to the rejections over Morita, have been fully considered but they are not persuasive. As noted above, the evidence is not sufficient to overcome the prior art. Therefore, the rejections of record are maintained as presented below.
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.
1. Claim(s) 1, 2, 4 and 6-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (U.S. PGPUB No. 2020/0376854).
I. Regarding claims 1, 2, 4, 6, 8, and 15-17, Morita teaches a water-based inkjet ink (abstract) that is suitable for printing on a recording medium having a layered structure (0060) comprising: pigment (0071); water (0071); triethylene glycol solvent (0071, and note triethylene glycol has a SP value of 13.6, see Applicant’s specification at paragraph 0038); a polyvalent alcohol monoalkyl ether penetrating agent (0036), which is 1,2-hexanediol (0036 and 0071); and a urethane binder resin in an amount of greater than 1 mass% (0071), more specifically 3-7 mass% (0033). Morita teaches the polyvalent alcohol monoalkyl ether mass to mass of the pigment can be in a ratio of 1.66 (0070). Finally, Morita teaches that the ink provides an optical density of greater than 1.9 (Table 1 and 0092-0094). Morita fails to explicitly teach an example where the polyvalent alcohol monoalkyl ether is diethylene glycol monohexyl ether (a compound of formula 1) or a compound of formula (1) where x is greater than or equal to 8.
However, Morita teaches that the polyvalent alcohol monoalkyl ether may be selected from a group including 1,2-hexanediol, diethylene glycol 2-ethylhexyl ether (a compound where x is 8) and diethylene glycol monohexyl ether (0036). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Morita’s ink by substituting either diethylene glycol 2-ethylhexyl ether or diethylene glycol monohexyl ether for 1,2-hexanediol. One would have been motivated to make this substitution as one could have made this substitution with a reasonable expectation of success (particularly given that Morita teaches that 1,2-hexanediol, diethylene glycol 2-ethylhexyl ether, and diethylene glycol monohexyl ether can all be used in the ink compositions for the same purpose, see 0036), and the predictable result of providing an inkjet ink.
II. Regarding claim 7, Morita makes obvious all the limitations of claim 1, but fails to explicitly teach an example where the resin is present in 5-10 mass%. However, Morita does teach that the resin can be present in an amount of 3-7 mass% (0033) which overlaps the claimed range. Furthermore, overlapping ranges are prima facie evidence of obviousness.
III. Regarding claims 9 and 10, Morita makes obvious the water-based ink of claim 1 (see above) and also teaches a printed recording medium comprising a layered substrate and the water-based ink (see above and 0077). Therefore, Morita also makes obvious claims 9 and 10.
IV. Regarding claims 11 and 12, Morita makes obvious the ink as claimed (see above), and Morita also teaches a method comprising: ejecting the ink onto a recording medium, such as a layered recording medium (0077 and claim 1). Thus, Morita makes obvious claims 11 and 12.
V. Regarding claims 13 and 14, Morita makes obvious an ink as claimed (see above), and also teaches an inkjet printer comprising the ink in a container/storing unit and an ink ejecting unit capable of ejecting the ink to a recording medium (0049-0051 and Figure 1). Therefore, Morita makes obvious claims 13 and 14.
Conclusion
Claims 1, 2, 4 and 6-17 are pending.
Claims 1, 2, 4 and 6-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
February 6, 2026Primary Examiner, Art Unit 1717
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