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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Please see the newly applied Shimura reference (cited in IDS dated 10/27/2025), which teaches an ink composition comprising each of the remaining claimed sublimation dyes, in combination with an anionic surfactant and anionic dispersant.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 5:
This claim attempts to further limit the sublimation dye(s) by conditionally including a phenylazo compound “when the sublimation dye includes at least one selected from the group consisting of …” However, the recited group includes dyes that have been removed from parent claim 1 (i.e. C.I. Disperse Orange 25 and C.I. Disperse Orange 80). Because this this claim effectively broadens the scope of usable sublimation dye(s), it fails to properly further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 6:
This claim fails to remedy the deficiencies of claim 5, and therefore also fails to meet the requirements of this statute.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimura (US 2021/0402795 A1) in view of Okamura et al. (US 2020/0207999 A1).
Regarding claim 1:
Shimura discloses an ink jet ink composition comprising:
a sublimation dye (paragraphs 30-32);
an anionic dispersant (paragraphs 33-40); and
an anionic surfactant (paragraphs 41-47),
wherein the sublimation dye includes at least one selected from the group consisting of C.I. Disperse Brown 27, C.I. Solvent Orange 60, and C.I. Solvent Violet 13 (paragraph 30). Shimura do not expressly disclose that the anionic surfactant includes a polyoxyethylene alkenyl ether sulfate.
However, Shimura do also disclose that the anionic surfactant is not particularly limited (paragraph 43).
Further, Okamura et al. disclose an ink jet ink composition that is able to improve long-term storage of an ink comprising a sublimation dye (paragraphs 28, 46, 60) by utilizing an anionic dispersant dispersant (paragraphs 51-52) in combination with a polyoxyethylene alkenyl ether sulfate anionic surfactant (paragraphs 15, 59).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize an anionic dispersant in combination with an anionic polyoxyethylene alkenyl ether sulfate surfactant, such as taught by Okamura, in Shimura’s composition.
Regarding claim 2:
Shimura’s modified composition comprises all the limitations of claim 1, and Shimura also discloses that a total content of the anionic surfactant with respect to a total mass of the ink composition is 0.05 to 2.0 percent by mass (paragraph 47).
Regarding claim 4:
Shimura’s modified composition comprises all the limitations of claim 1, and Shimura also discloses that the anionic dispersant includes at least one selected from the group consisting of a compound represented by claimed formula (2), a naphthalenesulfonic acid formalin condensate sodium salt, and a sodium lignosulfonate (paragraphs 34-35).
Regarding claims 5-6:
Shimura’s modified ink composition comprises all the limitations of claim 1, and Shimura also disclose that the sublimation dye includes a sublimation dye other than the C.I. C.I. Disperse Brown 27 (e.g. C.I. Solvent Orange 80, CI Solvent Violet 13: paragraph 30).
Examiner notes that, in the case the claimed ink contains a dye other than those mentioned in the “when” clause, the addition phenylazo compound is not required by the claim.
Regarding claim 7:
Shimura’s modified composition comprises all the limitations of claim 1, and Shimura also discloses that the ink jet ink composition is received in an ink receiving body (Fig. 4).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimura as modified by Okamura et al., as applied to claim 1 above, and further in view of Yamaguchi (US 2017/0282570 A1).
Regarding claim 8:
Shimura’s modified ink composition comprises all the limitations of claim 7, but does not expressly disclose the particulars of the ink receiving body.
However, Yamaguchi discloses an ink receiving body (ink cartridge 1) that is able to preserve an ink composition for a long period of time without being damaged (paragraph 55), the ink receiving body comprising:
a container (31) to receive an ink jet ink composition (paragraph 54); and
a connection member (ink lead-out section 32),
wherein the container is composed of a film containing a polyolefin (paragraph 55).
Therefore, at the time of filing, it would have been obvious to a person of ordinary skill in the art to store Shimura’s ink composition in an ink receiving body such as that taught by Yamaguchi et al., so as to enable the advantageous storage of Ikeda’s ink composition for a long period of time.
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.
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shelby L Fidler whose telephone number is (571)272-8455. The examiner can normally be reached Monday-Friday, 8:30am - 5pm EST.
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, Douglas Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHELBY L. FIDLER
Primary Examiner
Art Unit 2853
/SHELBY L FIDLER/Primary Examiner, Art Unit 2853
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