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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/14/2026 has been entered.
Response to Amendment
• Claims 1, 2, and 4-13 are currently pending. Claim 3 is canceled. Claims 10-13 are withdrawn for being directed to a non-elected invention(s). The rejection of claims 1-9 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
Claim Objections
Claim 2 is objected to because of the following informality:
• Claim 2 states “wherein the black ink composition contains the glycol monoether solvent;” however, this appears to be redundant, given claim 1 already states the black ink to contain the solvent. To correct, the Examiner suggests deleting the phrase from claim 2.
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 4 and 7 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.
In claim 4, the term “silicone-based surfactant 2” is confusing. The way the claim is written appears to suggest any possible silicone-based surfactant may read on the claimed “silicone-based surfactant 2.” However, Applicant’s specification appears to define the “silicone-based surfactant 2” to be a “silicone-based surfactant…in which in a molecular weight distribution by a gel permeation chromatography, the maximum peak in a molecular weight range of 300 or more is located in a range of 300 to 1,500.” Further, claim 6 appears to define the “silicone-based surfactant 2” like in the specification. Accordingly, it becomes unclear whether the “silicone-based surfactant 2” in claim 4 is intended to be any type of surfactant, or is intended to be a silicone-based surfactant in which in a molecular weight distribution by a gel permeation chromatography, the maximum peak in a molecular weight range of 300 or more is located in a range of 300 to 1,500. For the purposes of examination, the Examiner is interpreting the term “silicone-based surfactant 2” in claim 4 to refer to either of the above definitions.
In claim 7, line 6, the term “the organic solvent” lacks sufficient antecedent basis. It is unclear whether the term applies to the organic solvent in the black ink, the chromatic ink, or both. To correct, the Examiner suggests amending the claim to read: “…by mass of the organic solvent in each ink composition.”
Claim Rejections - 35 USC § 102/103
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.
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, 5, and 7-9 are rejected under 35 U.S.C. 102(a)(2) as anticipated by Takeda et al. (US-20240182736-A1) (hereinafter referred to as “Takeda”), or, in the alternative, under 35 U.S.C 103 as obvious over Takeda in further view of Kida (US-20210355334-A1) (hereinafter referred to as “Kida”), with evidence from Utsugi et al. (US-20200199387-A1) (hereinafter referred to as “Utsugi”) as to the rejection of claim 5 only, with evidence from Kagata et al. (US-20160244626-A1) (hereinafter referred to as “Kagata”) as to the rejection of claim 7 only.
Regarding claims 1-2, Takeda teaches an ink set (see Takeda at para. 0001, teaching an ink set) which includes
• a black ink composition containing a black colorant and a chromatic ink composition containing a colorant and which is used for recording on a low-absorbing recording medium or a non-absorbing recording medium (see Takeda at para. 0014-0016, teaching the ink set as including a first ink containing a first colorant and a second ink containing a second colorant; also see Takeda at para. 0053, teaching the first colorant may include a carbon black, i.e., may be a black ink; also see Takeda at para. 0124, teaching the second colorant to preferably be different from the first colorant, and that the first and second colorants each preferably have one color selected from the group consisting of cyan, magenta, yellow, black, green, orange, red, and violet; thus, Takeda necessarily teaches an ink set where the first ink is a black ink and the second ink is a chromatic ink, e.g., cyan or yellow; also see Takeda at para. 0003, 0070, and 0132, teaching the printing medium for the inks may include a low or non-absorbing printing medium), wherein
• the black ink composition and the chromatic ink composition are each a water-based ink jet ink (see Takeda at para. 0014-0016, teaching the first and second ink compositions to contain water; also see the examples of Takeda at Table 1 at pg. 11, teaching example inks containing water and “Dp1,” or pigment dispersion 1; also see Takeda at para. 0140, teaching “Dp1” as being a water-based dispersion; accordingly, Takeda necessarily teaches their inks to be water-based inks, as exemplified by the example embodiments);
• the chromatic ink composition contains a silicone-based surfactant 1 in which in a molecular weight distribution by a gel permeation chromatography, the maximum peak in a molecular weight range of 300 or more is located in a range of 3,000 to 20,000 (see Takeda at para. 0122-0123, teaching the second ink to include a second surfactant, and that the second surfactant may be similar to the first surfactant described for the first ink composition; also see Takeda at para. 0070 and 0075, teaching the first surfactant may include BYK-333; thus, Takeda necessarily teaches the second surfactant in their second ink to suitably be BYK-333; BYK-333 corresponds to the claimed silicone-based surfactant 1, as disclosed by Applicant’s specification at para. 0158); and
• the black ink composition contains a glycol monoether solvent, and the glycol monoether solvent is a glycol monoether including an alkyl ether portion which has 7 to 12 carbon atoms (7 to 10, regarding claim 2), and a content of the glycol monoether solvent is 3 percent by mass or less with respect to a total mass of the black ink composition (see Takeda at para. 0079, teaching the first ink to contain a first hydrophobic organic solvent, such as ethylene glycol monoheptyl ether; ethylene glycol monoheptyl ether is a glycol monoether solvent including an alkyl ether portion with 7 carbon atoms; also see Takeda at para. 0080, teaching the content of the first hydrophobic solvent to range from 0.01 to 2% by mass in the ink, which falls completely within the claimed range).
In the alternative, it is well-known that water-based inks containing an aqueous medium are preferable from the viewpoint of environmental impact (see Kida at para. 0005). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the first and second inks of Takeda to be water-based inks, from the viewpoint of environmental impact (see Kida at para. 0005).
Regarding claim 4, Takeda does not necessitate the presence of an additional surfactant in their second ink (i.e., the chromatic ink); thus, Takeda reasonably teaches their second ink may include 0 wt% of the silicone-based surfactant 2; as such, the content of the silicone-based surfactant 1 (i.e., BYK-333) in the chromatic ink is necessarily higher than the content of the silicone-based surfactant 2 in the black ink composition (any amount is greater than 0 wt%).
Regarding claim 5, BYK-333 reads on the general formula (1) or (3), as evidenced by Utsugi at para. 0149-0152.
Regarding claim 7, see example first ink C14 and example second ink Y13 of Takeda at pg. 11-12 (also see Table 6 of Takeda at pg. 13); example first ink C14 contains 27.0% of “PG” (propylene glycol), 6.0% of “1,2-HD” (1,2-hexanediol), and 0.8% of “1,2-ND” (1,2-nonanediol, see Takeda at para. 0157) as organic solvents; thus, propylene glycol accounts for 79.9% of the total organic solvent component in the examples (27/(27+6+0.8) • 100 = 79.9%); propylene glycol has a boiling point of 189 °C, as evidenced by Kagata at para. 0134; when the same calculations are performed for example second ink Y13, the amount is 78.5 parts with respect to 100 total parts of solvent; accordingly, Takeda reasonably teaches, via their example embodiments, a content of the organic solvent having a boiling point of 200 °C or less for their first and second ink to be at least 79.9 parts and 78.5 parts, respectively, by mass with respect to 100 parts of the total solvent content; these values of 79.9 and 78.5 fall within the claimed range.
Regarding claim 8, see Takeda at para. 0082, 0098-0099, and 0122, teaching the first and second ink as containing an ink modifying agent, such as a viscosity modifier; also see Takeda at para. 0098-0099, teaching the viscosity modifier may include a water-soluble organic solvent; also see Takeda at para. 0101, teaching the content of the viscosity modifier to preferably range from 10 to 30% by mass in the first ink; also see Takeda at para. 0123, teaching the content of each component for the second ink composition may be the same as that for the first ink composition; accordingly, Takeda necessarily teaches their first and second ink may contain a water-soluble organic solvent as a viscosity modifier in an amount ranging from 10 to 30% by mass in their first and second ink; this range of 10 to 30% by mass falls within the claimed range.
Regarding claim 9, see example first ink C14 and example second ink Y13 of Takeda at pg. 11-12 (also see Table 6 of Takeda at pg. 13); example first ink C14 and example second ink Y13 contain propylene glycol, 1,2-hexanediol, and 1,2-nonanediol as organic solvents; none such solvents have a boiling point greater than 250 °C; consequently, Takeda reasonably teaches, via their example embodiments, the use of no solvents having boiling points greater than 250 °C in their inks.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Takeda, as applied to claim 1 above, and further in view of Utsugi.
Regarding claim 6, while Takeda teaches the ink set according to claim 1 outlined above, Takeda fails to explicitly teach the black ink composition as containing a silicone-based surfactant 2, wherein the silicone-based surfactant 2 is a silicone-based surfactant in which in a molecular weight distribution by a gel permeation chromatography, the maximum peak in a molecular weight range of 300 or more is located in a range of 300 to 1,500.
However, Utsugi teaches an ink set for inkjet recording containing water-based inks (see Utsugi at para. 0012 and 0167). Utsugi further teaches the inks in the ink set may contain a surfactant including a combination of a surfactant represented by a general formula (3), such as BYK-349, and a surfactant represented by the general formula (5), such as BYK-333 (see Utsugi at para. 0145, 0147, and 0151-0152). Moreover, Utsugi teaches that surfactants represented by the general formula (3), e.g., BYK-349, are effective in improving the discharge stability and suppressing printed matter voids (see Utsugi at para. 0151).
Takeda teaches their inks to be used in an inkjet printing method (see Takeda at para. 0002).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the surfactant of general formula (3) of Utsugi, e.g., BYK-349, in combination with the BYK-333 surfactant in the first ink of Takeda. One of ordinary skill in the art would have been motivated to do so in order to improve the discharge stability and suppress printed matter voids (see Utsugi at para. 0151).
BYK-349 corresponds to the claimed silicone-based surfactant 2, as disclosed by Applicant’s specification at para. 0047.
Response to Arguments
Applicant’s arguments filed 05/14/2026 have been considered. The Examiner agrees with Applicants that the amended claims overcome the previous prior art grounds of rejection (see Applicant’s Remarks at pg. 6-8). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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