DETAILED ACTION
Response to Amendments
In response to the amendment received on 11/21/2025:
• Claims 1-13 are currently pending. Claims 10-13 are withdrawn for being directed to a non-elected invention(s). The rejection of claims 8-9 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
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 .
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 1-9 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 1, the claimed “the glycol monoether” lacks sufficient antecedent basis. There is no previous mention of a glycol monether. Further, it is unclear which ink contains the glycol monoether in claim 1. For the purposes of examination, the Examiner is interpreting the claimed glycol monoether to be present in the black ink. Claims 2-9 are also rejected by virtue of their dependency on claim 1.
In claims 4 and 6, the claimed “the silicone-based surfactant 2” lacks sufficient antecedent basis. There is no previous mention of a silicone-based surfactant 2. For the purposes of examination, the Examiner is interpreting the claimed “silicone-based surfactant 2” to be a silicone-based surfactant where 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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kagose et al. (US-20130258017-A1) (hereinafter referred to as “Kagose”) in view of Loccufier et al. (US-20170022379-A1) (hereinafter referred to as “Loccufier”), with evidence from Utsugi (US-20200199387-A1) (hereinafter referred to as “Utsugi”) as to the rejection of claim 5 only, and with evidence from Shinohara et al. (US-20200095440-A1) (hereinafter referred to as “Shinohara”) as to the rejection of claim 7 only.
Regarding claims 1 and 2, Kagose teaches 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 Kagose at para. 0014 and 0034, teaching a photocurable ink composition; also see Kagose at para. 0212 and 0214, teaching the ink may contain a pigment, and that the pigment may be a black pigment, such as carbon black, or a yellow pigment for use in a yellow ink; thus, Kagose reasonably teaches embodiments where their ink is a black ink and/or a chromatic ink (e.g., yellow ink)), wherein
• the black ink composition and the chromatic ink composition are each a water-based ink jet ink (see Kagose at para. 0188, teaching the ink includes water as a solvent; also see the examples at pg. 21, teaching example inks that are aqueous; thus, Kagose reasonably teaches via their example embodiments their inks as being water-based inks; also see Kagose at para. 0002, teaching the inks as being used in an ink jet recording method);
• 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 Kagose at para. 0233, teaching the ink may include a surfactant, such as BYK-333; also see example Ink 3 of Kagose at pg. 21, teaching an example yellow ink containing BYK333 as a surfactant; thus, Kagose reasonably teaches via their example embodiments the use of BYK333 in their yellow ink; BYK333 corresponds to the claimed silicone-based surfactant 1, as disclosed by Applicant’s specification at para. 0158);
• wherein the black ink composition contains the glycol monoether solvent, and the glycol monoether solvent is a glycol monoether including an alkyl ether portion which has 5 or more carbon atoms (5 to 12 carbon atoms, regarding claim 2) (see Kagose at para. 0195, teaching the ink may contain an alkylene glycol alkyl ether as a water-soluble organic solvent; also see Kagose at para. 0199, teaching ethylene glycol monohexyl ether as a suitable alkylene glycol alkyl ether; ethylene glycol monohexyl ether is a glycol monoether including an alkyl ether portion which has 6 carbon atoms).
While Kagose teaches the black and/or the chromatic ink (yellow ink) above, Kagose fails to explicitly teach the black ink and the chromatic ink as being used together in an ink set.
However, Kagose does teach examples where multiple-colored inks are included in an ink set, including a black and a yellow ink (see example Ink 3 and Ink 4 at pg. 21 of Kagose). Furthermore, the use of multiple-colored inks in an ink set is ubiquitous in the ink art to expand the color gamut of images that may be produced (see Loccufier at para. 0042).
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 ink of Kagose in an ink set, in which one ink is a black ink and another ink is a yellow ink, because Kagose teaches examples where both a black and yellow ink are used together (see Ink 3 and Ink 4 of Kagose at pg. 21). Further, one of ordinary skill in the art would have been motivated to do so in order to expand the color gamut of images that may be produced (see Loccufier at para. 0042).
Regarding claim 3, see Kagose at para. 0201, teaching the organic solvent may be used singly; thus, Kagose reasonably teaches ethylene glycol monohexyl ether may be used alone as the solvent in the black ink composition; also see Kagose at para. 0202, teaching the organic solvent is preferably present in the ink in an amount of 1 to 40% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 4, see Kagose at para. 0234, teaching the surfactant may be used singly; thus, Kagose reasonably teaches BYK333 may be used alone as the surfactant in the black ink composition; accordingly, Kagose reasonably teaches their ink may contain 0 wt% of the silicone-based surfactant 2, and thus, 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, BYK333 reads on the general formula (1) or (3), as evidenced by Utsugi at para. 0149-0152.
Regarding claim 6, while Kagose as modified by Loccufier teaches the ink set according to claim 1 outlined above, modified Kagose fails to explicitly teach the black ink composition as containing the glycol monoether solvent and a the silicone-based surfactant 2, where 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, Kagose does teach their surfactant may be used in combination of two or more kinds, and further teaches both BYK333 and BYK349 as suitable surfactants (see Kagose at para. 0233-0234). Moreover, Kagose teaches a black ink in their examples as containing both BYK333 and BYK349 (see example Ink 4 at pg. 21 of Kagose).
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 both BYK333 and BYK349 as surfactants in the black ink of modified Kagose, as Kagose teaches an example black ink where both surfactants are used together (see example Ink 4 at pg. 21 of Kagose).
BYK349 corresponds to the claimed silicone-based surfactant 2, as disclosed by Applicant’s specification at para. 0047.
Regarding claim 8, Kagose at para. 0190 and 0195, teaching their ink (i.e., both the black and yellow ink) may contain an organic solvent; also see Kagose at para. 0202, teaching their ink may contain an organic solvent in an amount ranging from 1 to 40% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 9, see Kagose at para. 0190 and 0195, teaching their ink may contain an organic solvent, such as an alkylene glycol alkyl ether like ethylene glycol monohexyl ether; also see Kagose at para. 0201, teaching the organic solvent may be used singly; thus, Kagose reasonably teaches their black ink may contain only ethylene glycol monohexyl ether as an organic solvent; ethylene glycol monohexyl ether has a boiling point of 205 °C, as evidenced by Shinohara at para. 0055; accordingly, Kagose teaches embodiments where their ink compositions (e.g., both the black and yellow ink) contain only ethylene glycol monohexyl ether, and thus, contain a solvent having the highest boiling point of 205 °C, which is less than 250 °C
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kagose in view of Loccufier, as applied to claim 1 above, and further in view of Sunaoshi et al. (US-20220195223-A1) (hereinafter referred to as “Sunaoshi”).
Regarding claim 7, Kagose in view of Loccufier teaches the ink set according to claim 1 outlined above, wherein the black ink composition and the chromatic ink composition each contain an organic solvent (see Kagose at para. 0190 and 0195, teaching their ink (i.e., the black and yellow ink) may contain an organic solvent).
While Kagose teaches the ink set above, Kagose fails to explicitly teach a content of an organic solvent having a standard boiling point of less than 200°C as being 50 parts by mass or more with respect to total 100 parts by mass of the organic solvent.
However, Sunaoshi teaches an aqueous inkjet ink (see Sunaoshi at para. 0001). Sunaoshi further teaches the water-soluble organic solvent as preferably containing a water-soluble organic solvent having a boiling point of 200° C or lower in an amount of at least 60% by mass of the total mass of the organic solvent (see Suanoashi at para. 0117). Moreover, Sunoashi teaches the when the solvent is used in the above range, high drying properties can be achieved and excellent discharge stability can be obtained (see Suanoshi at para. 0117).
Kagose teaches drying property as a desirable feature of their organic solvent (see Kagose at para. 0190).
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 content of the organic solvent having a boiling point of 200 °C or less in the inks of Kagose to range from 60% by mass or greater of the total mass of the organic solvent. One of ordinary skill in the art would have been motivated to do so in order to achieve high drying properties and excellent discharge stability (see Suanoshi at para. 0117).
This range of 60% or greater (i.e., 60 parts or greater) falls completely within the claimed range.
Claims 1, 2, 4-6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Utsugi.
Regarding claims 1 and 2, Utsugi teaches 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 Utsugi at para. 0167, teaching their ink may be used as an ink set which may include a black ink and a color ink, e.g., yellow; thus, the components taught for the “ink” of Utsugi necessarily apply to both the black ink and the color ink in the ink set of Utsugi; also see Utsugi at para. 0173), wherein
• the black ink composition and the chromatic ink composition are each a water-based ink jet ink (see Utsugi at para. 0033, teaching the ink as being a water-based ink);
• 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 Utsugi at para. 0145-0147, teaching the ink may include a siloxane-based surfactant that may include a compound represented by a general formula (5); also see Utsugi at para. 0152, teaching BYK-333 as a compound represented by the general formula (5); BYK333 corresponds to the claimed silicone-based surfactant 1, as disclosed by Applicant’s specification at para. 0158);
• wherein the black ink composition contains the glycol monoether solvent, and the glycol monoether solvent is a glycol monoether including an alkyl ether portion which has 5 or more carbon atoms (5 to 12 carbon atoms, regarding claim 2) (see Utsugi at para. 0105 and 0112, teaching the ink as containing an organic solvent, such as diethylene glycol monohexyl ether; diethylene glycol monohexyl ether is a glycol monoether including an alkyl ether portion which has 6 carbon atoms).
Regarding claim 4, since Utsugi does not necessitate the presence of the surfactant 2 (see Utsugi at para. 0147, suggesting the compound represented by general formula (5), i.e., BYK-333, may be used alone), Utsugi necessarily teaches embodiments in which their ink contains a greater amount of the surfactant 1 (i.e., BYK-333), because the surfactant 2 may be used in an amount of 0 wt%.
Regarding claim 5, BYK-333 reads on the general formula (1) or (3), as disclosed by Utsugi at para. 0149-0152.
Regarding claim 6, see Utsugi at para. 0147, teaching the surfactant may include a combination of a compound represented by a general formula (3) and a compound represented by a general formula (5); also see Utsugi at para. 0151-0152, teaching BYK-349 as a suitable compound represented by general formula (3) and BYK-333 as a suitable compound represented by general formula (5); thus, Utsugi necessarily suggests the inks in their ink set as containing BYK-349, BYK-333, and diethylene glycol monohexyl ether (as previously shown above); BYK-349 corresponds to the claimed silicone-based surfactant 2, as disclosed by Applicant’s specification at para. 0047; consequently, Utsugi necessarily teaches their ink may contain both the claimed surfactant 2 (i.e., BYK-349) and the glycol monoether (i.e., diethylene glycol monohexyl ether).
Regarding claim 8, see Utsugi at para. 0120, teaching the content of the organic solvent in the ink of Utsugi to range from 5 to 55% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 9, see Utsugi at para. 0109, teaching the boiling point of the organic solvent to preferably range from 150 to 250 °C; thus, Utsugi necessarily teaches embodiments in which the organic solvent having the highest boiling point in the ink of Utsugi ranges from 150 to 250 °C, which falls within the claimed range.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Utsugi, as applied to claim 1 above, and further in view of Sunaoshi.
Regarding claim 7, Utsugi teaches the ink set according to claim 1 outlined above, wherein the black ink composition and the chromatic ink composition each contain an organic solvent (see Utsugi at para. 0105, teaching their ink may contain an organic solvent).
While Utsugi teaches the ink set above, Utsugi fails to explicitly teach a content of an organic solvent having a standard boiling point of less than 200°C as being 50 parts by mass or more with respect to total 100 parts by mass of the organic solvent.
However, Sunaoshi teaches an aqueous inkjet ink (see Sunaoshi at para. 0001). Sunaoshi further teaches the water-soluble organic solvent as preferably containing a water-soluble organic solvent having a boiling point of 200° C or lower in an amount of at least 60% by mass of the total mass of the organic solvent (see Suanoashi at para. 0117). Moreover, Sunoashi teaches the when the solvent is used in the above range, high drying properties can be achieved and excellent discharge stability can be obtained (see Suanoshi at para. 0117).
Utsugi teaches improved drying and discharge stability as desirable features of their ink (see Utsugi at para. 0106 and 0117).
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 content of the organic solvent having a boiling point of 200 °C or less in the inks of Utsugi to range from 60% by mass or greater of the total mass of the organic solvent. One of ordinary skill in the art would have been motivated to do so in order to achieve high drying properties and excellent discharge stability (see Suanoshi at para. 0117).
This range of 60% or greater (i.e., 60 parts or greater) falls completely within the claimed range.
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
Applicants argue the claimed glycol monoether is absent from Kagose, Takaku, and Utsugi (see Applicant’s Remarks at pg. 8).
The Examiner agrees that the amendments to the claims overcome the previous grounds of rejection. The Examiner further agrees that the claim amendments overcome Takaku. However, a new grounds of rejection is presented over Kagose and Utsugi, see the rejections above (Kagose teaches ethylene glycol monohexyl ether and Utsugi teaches diethylene glycol monohexyl ether, see rejections above). Accordingly, Kagose and Utsugi are still being applied.
Next, Applicants argue their specific glycol monoether solvent as exhibiting high hydrophobicity and excellent wet spreadability (see Applicant’s Remarks at pg. 8).
However, a showing of unexpected results must be based on evidence, not argument
or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997).
See MPEP § 2145. A mere conclusion that Applicant’s claimed glycol monether have “high hydrophobicity and excellent wet spreadability” is not enough to show nonobviousness. See MPEP § 716.02.
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 extension fee 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 date of this final action.
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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/J.E.B./
Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731