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
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 1-6, 9-12 and 14 are rejected under 35 U.S.C. 103 as obvious over Yamazaki et al (US 2020/0009890, of record, ‘890 hereafter).
Regarding claims 1-6, 9-12 and 14, ‘890 discloses a water-based ink ([0008], , [0061], Examples ) comprising a self-dispersible pigment being an organic pigment or carbon black having a content range of 0.1 to 20%, specifically 5% by mass as in the Examples, satisfying the limitations of present claims 11 and 14 ([0017], [0019], [0021], Table 1); 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 as in the Examples, satisfying the limitations of present claims 9-10 and 12 ([0022]-[0027], Table 1); a wetting agent being a poly(ethylene glycol) such as triethylene glycol, tetra-ethylene glycol, penta-ethylene glycol, satisfying presently claimed general formula (I) with n being in the range of 3 to 9 as in claims 1 and 4-6 ([0057], [0058]); and one or more metal ion being a potassium ion, a sodium ion, and/or a lithium ion ([0050]-[0053]). ‘890 does not specifically exemplify an embodiment which contains a poly(ethylene) glycol as claimed. However, ‘890 expressly discloses that the poly(ethylene glycol), such as triethylene glycol, tetra-ethylene glycol, penta-ethylene glycol, or a poly(ethylene glycol) with molecular weight less than 2000 are common polyol wetting agents, as glycerol used in the Examples ([0057], Table 1); therefore, it would have been obvious to a person of ordinary skill in the art to use any of the polyol wetting agent suggested by the reference, including presently claimed poly(ethylene) glycol, thereby arriving at the presently claimed invention. A person of ordinary skill in the art is also a person of ordinary creativity, and that Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” (see MPEP 2141)(KSR). Regarding claim 3, it is noted that the ink composition as recited 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.
Claims 1-17 are rejected under 35 U.S.C. 103 as obvious over Yamashita et al (US 2017/0183526, ‘526 hereafter) in view of Yamazaki et al (US 2020/0009890, of record, ‘890 hereafter).
Regarding claims 1-14, ‘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, satisfying the limitations of present claims 8, 11 and 14 (0024]-[0039]); one or more metal ion being a potassium ion, a sodium ion, and/or a lithium ion ([0055], [0059], [0066], Table 1, Example 30 contains both sodium and potassium ions satisfying present claim 2); a poly(ethylene glycol) such as triethylene glycol, tetra-ethylene glycol, or a poly(ethylene glycol with molecular weight being 200 to 1000 in a content of 5 wt% as in Examples ([0079], Table 1, Triethylene glycol 5%), satisfying the presently claimed general formula (I) with n being in the range of 3 to 9 as in claims 1 and 4-6, and the content range as in present claim 7. ‘526 also discloses that the ink composition further contains a water soluble fixing resin as in the present claim 13 ([0081]-[0083]). ‘526 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.
Regarding claims 15-17, modified ‘526 teaches all the limitations of claim 1, ‘526 also discloses an ink set containing the ink composition as taught and another different ink composition which may contain different metal ions ([0100]-[0103]) and a recording method having a step of ejection of the ink composition from ink jet head to a recording medium ([0107]).
Conclusion
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.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782