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
Response to Amendment
Applicant's amendments filed on 06/01/20226 have been entered. Claims 2-14, 16-18 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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.
Claims 1-12, 14 and 16-18 are rejected under 35 U.S.C. 103 as obvious over Maruyama et al (US 2011/0217468, ‘468 hereafter) in view of Yamazaki et al (US 2020/0009890, of record, ‘890 hereafter).
Regarding claims 1-12, 14, 16 and 18 ‘468 discloses a water-based ink ([0014]-[0018], [0076], Table 3, ink set 1) comprising a first ink composition being a water-based ink having a self-dispersible pigment being an organic pigment or carbon black having an average particle diameter of 50 to 250 nm with a preferred content range of 6.0 to 10% by mass, satisfying the limitations of present claims 8, 11 and 14 ( [0051]-[0060], Table 2)); one or more metal ion being a potassium ion, a sodium ion, and/or a lithium ion, which inherently can be a counter ion of inorganic oxide particles and self-dispersible pigment in the ink composition ([0045], [0086], [0090]); a poly(ethylene glycol) such as triethylene glycol, tetra-ethylene glycol, or a penta-ethylene glycol in a content of 5% by mass ([0036], Table 2, Examples, Triethylene glycol 5 wt%), satisfying the presently claimed general formula (I) with n being in the range of 3 to 9 as in claims 16 and 4-6, and the content range as in present claim 7. ‘468 also discloses that the ink set also comprise a second ink composition contains a self-dispersible pigment and a ion being potassium which is different from the metal ion contained in the first composition ([0090], Black in composition K, Table 2 and 3). ‘468 does not specifically set forth that the ink composition contains an inorganic oxide particles. However, in the same field of endeavor of ink composition, ‘890 discloses a water based ink composition comprising a self-dispersible pigment and inorganic oxide particles being a silica having average particle diameter of 10 to 70 nm in a content range of 0.1 to 15%, specifically 3% or 6% by weight in Examples, as required in the present claims 9-10 and 12 ([0022]-[0027], Table 1); wherein the inorganic oxide particles are used to improve sheet stack-ability by reducing the wet friction and to suppress curling of recording medium ([0022]). In light of these teachings, one of ordinary skill in the art would have been motivated to use silica particles as taught by ‘890, to modify the water-based ink composition of ‘526, in order to render the ink composition having better sheet stack-ability and less curling of recording medium. It is noted that the ink composition as recited in the present claim 3 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 recording with another water based ink composition. Since cited prior art discloses that the fist ink being used as claimed, the claim stand properly rejected.
Regarding claim 17, modified ‘468 teaches all the limitations of claim 1, ‘468 also discloses a recording method having a step of ejection of the ink composition from ink jet head to a recording medium ([0077]-[0080], [0092]).
Claim 13 is rejected under 35 U.S.C. 103 as obvious over Maruyama et al (US 2011/0217468, ‘468 hereafter) in view of Yamazaki et al (US 2020/0009890, of record, ‘890 hereafter) as applied to the claim 1 as set forth above, further in view of Yamashita et al (US 2017/0183526, ‘526 hereafter).
Regarding claim 13, modified ‘468 teaches all the limitations of claim 1, but does disclose that the first ink composition further includes water soluble fixing resin. However, in the same filed of endeavor, ‘526 discloses a water-based ink ([0009], [0076], Examples) comprising a self-dispersible pigment being an organic pigment or carbon black having an average particle diameter of 60 to 120 nm with a preferred content range of 1.0 to 10% by mass (0024]-[0039]); one or more metal ion being a potassium ion, a sodium ion, and/or a lithium ion ([0055], [0059], [0066]); a poly(ethylene glycol) ([0079], Table 1, Triethylene glycol), and a water soluble resin can be added to further stabilizing dispersion state and improving abrasion resistance of recorded image ([0081]-[0083]). In light of these teachings, one of ordinary skill in the art would have been motivated to use water soluble resin as taught by ‘526, to modified the ink composition of ‘468, in order to render a ink composition having better stability and better abrasion resistance of printed image.
Response to Arguments
Applicant's arguments filed on 06/01/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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
Prosecution Insights