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 .
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
It is unclear in claim 1, what all is encompassed by the term ‘acidic preservative” since compounds that are clearly salts are provided as examples in Applicant’s specification. However, since the term “acidic” is ordinarily used to describe a compound that has a pH of less than 7 when in aqueous solution, said salts are assumed to be weakly acidic with a pH of less than 7 in aqueous solution, in the absence of a clear showing to the contrary.
Claims 2-19 depend on and include all the subject matter of claim 1, but all fail to provide any solutions to the indefinite issue described above.
It is unclear in claim 13, whether the water-based ink is required to satisfy at least one of the conditions of (X1) and (X2), or the conditions are both optional and not required when the acidic preservative does not comprise any of the group consisting of a polyvalent unsaturated fatty acid and a polyvalent unsaturated fatty acid salt, and any of the group consisting of dehydroacetic acid and a dehydroacetate. For the purposes of examination, the 2nd interpretation is used.
It is unclear in claim 14, whether the water-based ink is required to satisfy at least one of the conditions of (Y1) and (Y2), or the conditions are both optional and not required when the acidic preservative does not comprise any of the group consisting of a polyvalent unsaturated fatty acid and a polyvalent unsaturated fatty acid salt, and any of the group consisting of dehydroacetic acid and a dehydroacetate. For the purposes of examination, the 2nd interpretation is used.
Clarification and/or amendment, with relevant citation(s) from the specification and/or teaching references are required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 8-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-18 of copending Application No. 18/146,524 (reference application) in view of Nagai (US 2002/0135650).
Regarding claims 1-5, 8, 10, 12, 15-19, the combined subject matter of the conflicting claims are not patentably distinct from the combined subject matter of said presently examined claims, because even though the water-based ink of the conflicting claims contain a pigment instead of the dye of the water-based ink of the presently examined claims, Nagai teaches that in a water-based ink (aqueous ink [0002]), a dye can be used in place of a pigment as a colorant (coloring material [0053]), for the purpose of providing the desired physical features of the dye.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have used a dye in place of the pigment in the water-based ink of the conflicting claims, in order to provide the desired physical features of the dye, as taught by Nagai.
Regarding claim 6, the range of 0.5% by mass to 5.0% by mass of the acidic preservative relative to a total mass of the water-based ink of the conflicting claim 7, overlaps the range of 0.3% by mass to 6.0% of the presently examined claim.
Regarding claim 9, although the conflicting claims are silent regarding a content of the surfactant of the conflicting claim 8, Nagai teaches that a content of the surfactant in the water-based ink is 1.0 % by mass relative to a total mass of the water-based ink (0.5 wt.% +0.5 wt%, surfactant [0212]), which is within the presently examined range of 0.05% by mass to 3.0% by mass, for the purpose of reducing undesired bleeding on the boundary of colors, resulting in a reduction of blurring of printed letters ([0143]).
Regarding claim 11, although the conflicting claims are silent regarding a content of the penetrant of the conflicting claim 10, Nagai teaches that a content of the penetrant in the water-based ink (triethylene glycol monobutyl ether [0212, 0153]), is 3% by mass relative to a total mass of the water-based ink [0212]), which is within the presently examined range of 1.0% by mass to 10.0% mass, for the purpose of enhancing wettability of printing heads and permeability of the substrate to be printed ([0153]).
Regarding claim 13, the conflicting claim 12 recites an amount of the acidic preservative and an amount of the surfactant that satisfy both Conditions (X1) and (X2) of the presently examined claim, in that the conflicting range of 0.5 to 50 overlaps the presently examined ranges of 1 to 55 (X1), and 1 to 60 (X2), but fails to separate the acidic preservative group of conflicting claim 3, into a first subgroup of polyvalent unsaturated fatty acid and polyvalent unsaturated fatty acid salt for Condition (X1), and a second subgroup of dehydroacetic acid and dehydroacetate for Condition (X2).
However, Nagai teaches that a dehydroacetate is used as an acidic preservative by itself (sodium dehydroacetate [0212]) where the dehydroacetate is a salt of dehydroacetic acid, for the purpose of providing the desired antiseptic and antifungal properties ([0159]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have separated the acidic preservative group of species in the conflicting claim 3, into a first subgroup of polyvalent unsaturated fatty acid and polyvalent unsaturated fatty acid salt to further limit the acidic preservative group in the conflicting claim 12, to satisfy Condition (X1) of the presently examined claim, and a second subgroup of dehydroacetic acid and dehydroacetate to further limit the acidic preservative group in the conflicting claim 12, to satisfy Condition (X2) of the presently examined claim, such that at least the Condition (X2) of the presently examined claim, where the acidic preservative comprises at least a dehydroacetate, is satisfied in order to obtain the desired antiseptic and antifungal properties, as taught by Nagai.
Regarding claim 14, the conflicting claim 13 recites an amount of the acidic preservative and an amount of the penetrant that satisfy both Conditions (Y1) and (Y2) of the presently examined claim, in that the conflicting range of 0.1 to 5 is within the presently examined ranges of 0.1 to 10 (Y1), and 0.02 to 6 (Y2), but fails to separate the acidic preservative group of species in the conflicting claim 3, into a subgroup of polyvalent unsaturated fatty acid and polyvalent unsaturated fatty acid salt for Condition (Y1), and a subgroup of dehydroacetic acid and dehydroacetate for Condition (Y2).
. However, Nagai teaches that a dehydroacetate is used as an acidic preservative by itself (sodium dehydroacetate [0212]) where the dehydroacetate is a salt of dehydroacetic acid, for the purpose of providing the desired antiseptic and antifungal properties ([0159]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have separated the acidic preservative group of species in the conflicting claim 3, into a first subgroup of polyvalent unsaturated fatty acid and polyvalent unsaturated fatty acid salt to further limit the acidic preservative group in the conflicting claim 12, to satisfy Condition (Y1) of the presently examined claim, and a second subgroup of dehydroacetic acid and dehydroacetate to further limit the acidic preservative group in the conflicting claim 12, to satisfy Condition (Y2) of the presently examined claim, such that at least the Condition (Y2) of the presently examined claim, where the acidic preservative comprises at least a dehydroacetate, is satisfied in order to obtain the desired antiseptic and antifungal properties, as taught by Nagai.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over claims 1, 3-18 of copending Application No.18/146,524 (reference application) in view of Nagai, as applied to claims 1-6, 8-19 above, and further in view of Nakayama (US 6,420,091).
Although the conflicting claims, as modified by Nagai, are silent regarding a total content of dehydroacetic acid and dehydroacetate in the water-based ink that is 1.0% by mass to 5.0% by mass relative to a total mass of the water-based ink, Nagai provides an example of a total content of the dehydroacetate of 0.2% by mass relative to a total mass of the water-based ink (no mention of a dehydroacetic acid such that a content of the dehydroacetic acid is 0% by mass [0212]) which is just below the lower limit of the presently examined range of 1.0% by mass to 5.0% by mass, and which is merely exemplary.
Nakayama teaches that a total content of dehydroacetate can be increased to an upper limit of 2.0 wt% (preservative, sodium dehydroacetate, col 23, lines 60-65) relative to a total mass of a water-based solution (water-soluble … protective agent in the surface-finishing solution, col 23, lines 40-45, no mention of a dehydroacetic acid such that a content of the dehydroacetic acid is 0% by mass), which is within the presently examined range of 1.0% by mass to 5.0% by mass, for the purpose of improving the preservative protection (protective agent … may contain a preservative, col 23, lines 60-65).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have increased the total content of the dehydroacetate and dehydroacetic acid in the water-based ink of the conflicting claims, as modified by Nagai, from 0.2% by mass relative to a total mass of the water-based ink, to one that is within a range of 1.0% by mass to 5.0% by mass, in order to improve the preservative protection, as taught by Nakayama, and hence to have included a total content of the dehydroacetate and the dehydroacetic acid of 1.0% by mass to 5.0% by mass, relative to a total mass of the water-based ink, in the conflicting claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8-19 are rejected under 35 U.S.C. 102(a/1,2) as being anticipated by Nagai (US 2002/0135650).
Regarding claims 1-3, Nagai teaches a water-based ink (aqueous ink [0002]) comprising: a dye ([0212]), water (balance [0212]); an acidic preservative comprising at least one selected from the group consisting of sodium dehydroacetate ([0212], antiseptic or antifungal [0159]) which is a dehydroacetate, and sodium sorbate ([0159]) which is a polyvalent unsaturated fatty acid salt; a surfactant ([0212]) and a penetrant (triethylene glycol monobutyl ether [0212], penetrating agent [0153]).
Regarding claim 4, Nagai teaches that the sorbate comprises sodium sorbate [0159]).
Regarding claim 5, Nagai teaches that the dehydroacetate is sodium dehydroacetate ([0212, 0159]).
Regarding claim 6, Nagai teaches that the compound of formula (1) ([0212, 0066]) acts as an antioxidant ([0066]) which is a preservative that is acidic due to the sulfonic acid groups ([0066]). Accordingly, Nagai teaches that an amount A of the acidic preservative in the water-based ink, is 3.2 % by mass relative to a total mass of the water-based ink (3 wt% of compound of formula (1) + 0.2 wt% of sodium dehydroacetate [0212]), which is within the claimed range of 0.3% by mass to 6.0% by mass.
Regarding claim 8, Nagai teaches that the water-based ink further comprises a surfactant ([0212]) that is an acetylene-based surfactant (acetylenic glycol-based surfactant [0143]).
Regarding claim 9, Nagai teaches that a content of the surfactant in the water-based ink is 1.0 % by mass relative to a total mass of the water-based ink (0.5 wt.% +0.5 wt%, surfactant [0212]) which is within the claimed range of 0.05% by mass to 3.0% by mass.
Regarding claims 10, 12, Nagai teaches that the water-based ink further comprises a penetrant (penetrating agent [0153]) which comprises at least one selected from the group consisting of 1,2-hexanediol (improving the dissolution [0150]) which is an alkylene diol, and triethylene glycol-n-butyl ether (BTG) (triethylene glycol monobutyl ether [0153]) which is a glycol ether compound.
Regarding claim 11, Nagai teaches that an amount of the penetrant (penetrating agent [0153]) comprising triethylene glycol-n-butyl ether (BTG) (triethylene glycol monobutyl ether [0212, 0153]) in the water-based ink, is 3% by mass relative to a total mass of the water-based ink (triethylene glycol monobutyl ether [0212]) , which is within the claimed range of 1.0% by mass to 10.0% mass.
Regarding claims 6, 13, Nagai teaches that the compound of formula (1) ([0212, 0066]) acts as an antioxidant ([0066]) which is a preservative that is acidic due to the sulfonic acid groups ([0066]). Accordingly, Nagai teaches that an amount A2 of the acidic preservative comprising a dehydroacetate in the water-based ink, is 3.2 % by mass, relative to a total mass of the water-based ink (3 wt% of compound of formula (1) + 0.2 wt% of sodium dehydroacetate [0212]) which is within the claimed range of 0.3% by mass to 6.0% by mass.
In addition, Nagai teaches that an amount B of the surfactant in the water-based ink is 1.0 % by mass relative to a total mass of the water-based ink (0.5 wt.% +0.5 wt%, surfactant [0212]), such that amount A2 and amount B satisfy Condition (X2) of Applicant in that the ratio A2/B = 3.2/1.0 = 3.2 which is within the claimed range of 1 to 60.
Regarding claims 6, 14, Nagai teaches that the compound of formula (1) ([0212, 0066]) acts as an antioxidant ([0066]) which is a preservative that is acidic due to the sulfonic acid groups ([0066]). Accordingly, Nagai teaches that an amount A2 of the acidic preservative comprising a dehydroacetate in the water-based ink, is 3.2 % by mass, relative to a total mass of the water-based ink (3 wt% of compound of formula (1) + 0.2 wt% of sodium dehydroacetate [0212]) which is within the claimed range of 0.3% by mass to 6.0% by mass.
In addition, Nagai teaches that an amount C of the penetrant (penetrating agent [0153]) comprising triethylene glycol-n-butyl ether (BTG) (triethylene glycol monobutyl ether [0212, 0153]) in the water-based ink, is 3% by mass relative to a total mass of the water-based ink ([0212]), such that amount A2 and amount C satisfy Condition (Y2) of Applicant in that the ratio A2/C = 3.2/3 = 1.1, which is within the claimed range of 0.02 to 6.
Regarding claim 15, Nagai teaches that the surfactant comprises an acetylene-based surfactant (acetylenic glycol-based surfactant [0143]), the penetrant (penetrating agent [0153]) comprises at least one selected from the group consisting of 1,2-hexanediol (improving the dissolution [0150]) which is an alkylene diol, and triethylene glycol-n-butyl ether (BTG) (triethylene glycol monobutyl ether [0153]), and the acidic preservative comprises at least one selected from the group consisting of sodium dehydroacetate ([0212], antiseptic or antifungal [0159]) which is a dehydroacetate and sodium sorbate ([0159]) which is a polyvalent unsaturated fatty acid salt.
Regarding claim 16, Nagai teaches that the polyvalent unsaturated fatty acid salt is a sorbate ([0159]).
Regarding claim 17, Nagai teaches that the water-based ink is suitable for inkjet recording ([0016]).
Regarding claim 18, Nagai teaches a printed recording medium (inkjet recording [0016]) comprising: a recording medium (plain paper [0016]); and the water-based ink printed on the recording medium (printing on plain paper [0004]).
Regarding claim 19, Nagai teaches an ink cartridge (recording liquid cartridge [0065]) comprising the water-based ink stored therein (recording liquid [0065]).
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.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nagai, as applied to claims 1-6, 8-19 above, and further in view of Nakayama (US 6,420,091).
Nagai teaches the water-based ink comprising a dye; water; an acidic preservative; a surfactant and a penetrant, as described above.
In addition, Nagai teaches that the acidic preservative comprises a dehydroacetate (sodium dehydroacetate [0212], antiseptic or antifungal [0159]) which is a salt of dehydroacetic acid. Nagai provides an example of a total content of the dehydroacetate of 0.2% by mass relative to a total mass of the water-based ink (no mention of a dehydroacetic acid such that a total content of dehydroacetic acid is 0% [0212]) which is outside the claimed range of 1.0% by mass to 5.0% by mass ,and fails to teach a higher % by mass of the dehydroacetate.
However, the 0.2% by mass of the dehydroacetate relative to a total mass of the water-based ink in the example of Nagai ([021]) is just below the claimed lower limit of 1.0% by mass, and is merely exemplary.
Nakayama teaches that a content of dehydroacetate can be increased to an upper limit of 2.0 wt% (preservative, sodium dehydroacetate, col 23, lines 60-65, no mention of a dehydroacetic acid such that a total content of dehydroacetic acid is 0%) relative to a total mass of a water-based solution (water-soluble … protective agent in the surface-finishing solution, col 23, lines 40-45), which is within the claimed range of 1.0% by mass to 5.0% by mass, for the purpose of improving the preservative protection (protective agent … may contain a preservative, col 23, lines 60-65).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have increased the total content of the dehydroacetate and dehydroacetic acid in the water-based ink of Nagai, from 0.2% by mass relative to a total mass of the water-based ink, to one that is within a range of 1.0% by mass to 5.0% by mass, in order to improve the preservative protection, as taught by Nakayama.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782