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 Amendment
Withdrawn Rejections
The 35 U.S.C. 112(b) rejections of claims 1-19 are withdrawn due to Applicant’s amendments and clarifications in the response filed on June 5, 2026.
The nonstatutory obviousness-type double-patenting rejections of claims 1-19 over the conflicting claims 1, 3-18 of copending Application No. 18/146,524 (reference application) in view of Nagai as the primary combination, are withdrawn due to Applicant’s amendment filed on June 5, 2026.
The 35 U.S.C. 102(a/1,2) and 35 U.S.C. 103 rejections of claims 1-19 over Nagai as the primary reference, are withdrawn due to Applicant’s amendment filed on June 5, 2026.
New Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Double Patenting
Claims 1, 3-5, 7-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8-18 of copending Application No. 18/146,524 (reference application) in view of Nagai (US 2002/0135650).
Regarding claims 1, 3-5, 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.
Additionally, the range of 1.0% by mass to 5.0% by mass relative to a total mass of the water-based ink, for a total content of the polyvalent unsaturated fatty acid, the polyvalent unsaturated fatty acid salt, the dehydroacetic acid, and the dehydroacetate, in claim 1, is contained in the conflicting range of 0.5% by mass to 5.0% by mass of the acidic preservative comprising at least one of the group of polyvalent unsaturated fatty acid, the polyvalent unsaturated fatty acid salt, the dehydroacetic acid, and the dehydroacetate in the conflicting claim 1.
Regarding claim 7, the conflicting claim 1 recites the overlapping range of 0.5% by mass to 5.0% by mass relative to a total mass of the water-based ink, for the acidic preservative, but fails to limit the acidic preservative to the subgroup of dehydroacetic acid and dehydroacetate.
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 to further limited the acidic preservative group in the conflicting claim 1, to the subgroup of dehydroacetic acid and dehydroacetate, such that a total content of dehydroacetic acid and dehydroacetate is within a range of 1.0% by mass to 5.0% by mass, relative to a total mass of the water-based ink of the conflicting claim 1, in order to obtain the desired antiseptic and antifungal properties, as taught by Nagai.
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 Condition (X1) of the presently examined claim, in that the conflicting range of 0.5 to 50 overlaps the presently examined range of 1 to 60 (X1), but fails to further limit the acidic preservative to the presently claimed subgroup of polyvalent unsaturated fatty acid and polyvalent unsaturated fatty acid salt for Condition (X1).
However, Nagai teaches that a polyvalent unsaturated fatty acid salt can be used as an acidic preservative by itself (an antiseptic or an antifungal agent, … sodium sorbate [0159]), 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 to further limited the acidic preservative group in the conflicting claim 12, to satisfy Condition (X1) of the presently examined claim, such that Condition (X1) of the presently examined claim, where the acidic preservative comprises at least a polyvalent unsaturated fatty acid salt, 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 Condition (Y1) of the presently examined claim, in that the conflicting range of 0.1 to 5 is within the presently examined range of 0.02 to 6, but fails to limit the acidic preservative to the presently claimed subgroup of polyvalent unsaturated fatty acid and polyvalent unsaturated fatty acid salt for Condition (Y1).
However, Nagai teaches that a polyvalent unsaturated fatty acid salt can be used as an acidic preservative by itself (an antiseptic or an antifungal agent, … sodium sorbate [0159]), 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 further limited the acidic preservative group in the conflicting claim 13, to satisfy Condition (Y1) of the presently examined claim, such that Condition (Y1) of the presently examined claim, where the acidic preservative comprises at least a polyvalent unsaturated fatty acid salt, is satisfied in order to obtain the desired antiseptic and antifungal properties, as taught by Nagai.
Regarding claim 20, the conflicting claim 12 recites an amount of the acidic preservative and an amount of the surfactant that satisfy Condition (X2) of the presently examined claim, in that the conflicting range of 0.5 to 50 overlaps the presently examined range of 1 to 60 (X2), but fails to further limit the acidic preservative to the presently claimed 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 to further limited the acidic preservative group in the conflicting claim 12, to satisfy Condition (X2) of the presently examined claim, such that 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 21, the conflicting claim 13 recites an amount of the acidic preservative and an amount of the penetrant that satisfy Condition (Y2) of the presently examined claim, in that the conflicting range of 0.1 to 5 is within the presently examined range of 0.02 to 6, but fails to limit the acidic preservative to the 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 to further limited the acidic preservative group in the conflicting claim 13, to satisfy Condition (Y2) of the presently examined claim, such that 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 Rejections - 35 USC § 103
Claims 1, 5, 7-12, 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Nagai (US 2002/0135650) in view of Masaaki (JPO English translation of JP-52-12008-A).
Regarding claim 1, Nagai teaches a water-based ink (aqueous ink [0002]) comprising: a dye ([0212]), water (balance [0212]); an acidic preservative consisting of sodium dehydroacetate ([0212], antiseptic or antifungal [0159]) which is a species of dehydroacetate; a surfactant ([0212]) and a penetrant (triethylene glycol monobutyl ether [0212], penetrating agent [0153]).
Although Nagai only provides examples in which a content of the dehydroacetate in the water-based ink is 0.2% by mass, relative to a total mass of the water-based ink (0.2 wt% of sodium dehydroacetate, Example 1 [0191], antiseptic or antifungal [0159]), which is less than the lower limit of the claimed range of 1.0% by mass to 5.0% by mass, Nagai teaches that the lesser content of the dehydroacetate, is merely exemplary (embodiments disclosed in this application are to be considered in all respects as illustrative and not limiting [0245]).
In addition, Nagai teaches that the content of the dehydroacetate is capable of suppressing generation of fungal colonies (antiseptic or antifungal [0159]).
Masaaki teaches that a content of a dehydroacetoacetate (sodium dehydroacetoacetate, 1st para of page 2) in a water-based ink (antifungal agent, last para of page 1) which is capable of suppressing generation of fungal colonies (antifungal, 1st para of page 2), is greater than 0.2% by mass, being from 0.5 to 4.0% by mass, relative to a total mass of the water-based ink (3rd para of page 2), which is within the claimed range of 0.5% by mass to 5.0% by mass, for the purpose of preventing any fungal growth (mildew proof, 2nd para of page 2), not just suppressing generation of fungal colonies. Sodium dehydroacetoacetate is a derivative of sodium dehydroacetate.
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 in the water-based ink of Nagai, from 0.2% by mass, to one that is within a range of 1.0% by mass to 5.0% by mass, relative to a total mass of the water-based ink, in order to not just suppress generation of fungal colonies, but to prevent any fungal growth, as taught by Masaaki.
Regarding claim 5, Nagai teaches that the dehydroacetate is sodium dehydroacetate ([0212, 0159]).
Regarding claim 7, although Nagai only provides examples in which a content of the dehydroacetate in the water-based ink is 0.2% by mass, relative to a total mass of the water-based ink (0.2 wt% of sodium dehydroacetate, Example 1 [0191], antiseptic or antifungal [0159]), which is less than the lower limit of the claimed range of 1.0% by mass to 5.0% by mass, Nagai teaches that the lesser content of the dehydroacetate, is merely exemplary (embodiments disclosed in this application are to be considered in all respects as illustrative and not limiting [0245]). In addition, Nagai teaches that the content of the dehydroacetate is capable of suppressing generation of fungal colonies (antiseptic or antifungal [0159]).
Masaaki teaches that a content of a dehydroacetoacetate (sodium dehydroacetoacetate, 1st para of page 2) in a water-based ink (antifungal agent, last para of page 1) which is capable of suppressing generation of fungal colonies (antifungal, 1st para of page 2), is greater than 0.2% by mass, being from 0.5 to 4.0% by mass, relative to a total mass of the water-based ink (3rd para of page 2), which overlaps the claimed range of 1.0% by mass to 5.0% by mass, for the purpose of preventing any fungal growth (mildew proof, 2nd para of page 2), not just suppressing generation of fungal colonies. Sodium dehydroacetoacetate is a derivative of sodium dehydroacetate.
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 in the water-based ink of Nagai, from 0.2% by mass, to one that is within a range of 1.0% by mass to 5.0% by mass, relative to a total mass of the water-based ink, in order to not just suppress generation of fungal colonies, but to prevent any fungal growth, as taught by Masaaki.
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 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]).
Regarding claim 20, Nagai, as modified by Masaaki, teaches that the acidic preservative comprising a dehydroacetate in the water-based ink, can be 5.0 % by weight, relative to a total weight of the water-based ink, as described above, such that amount A2 of Applicant = 5.0% by weight.
In addition, Nagai teaches that an amount of the surfactant in the water-based ink is 1.0 % by weight relative to a total weight of the water-based ink (0.5 wt.% +0.5 wt%, surfactant [0212]), such that amount B of Applicant = 1.0% by weight; and amount A2 of Applicant and amount B of Applicant satisfy Condition (X2) of Applicant in that the ratio A1/B = 5.0/1.0 = 5 which is within the claimed range of 1 to 60.
Regarding claim 21, Nagai, as modified by Masaaki, teaches that the acidic preservative comprising a dehydroacetate in the water-based ink, can be 5.0 % by weight, relative to a total weight of the water-based ink, as described above, such that amount A2 of Applicant = 5.0% by weight.
In addition, 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 weight relative to a total weight of the water-based ink ([0212]), such that amount C of Applicant = 3% by weight; and amount A2 of Applicant and amount C of Applicant satisfy Condition (Y2) of Applicant in that the ratio A2/C = 5/3 = 1.67, which is within the claimed range of 0.02 to 6.
Claims 1, 3-4, 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Nagai (US 2002/0135650) in view of Lin (Clarivate Analytics English translation of CN-108385412-A).
Regarding claim 1, Nagai teaches a water-based ink (aqueous ink [0002]) comprising: a dye ([0212]), water (balance [0212]); an acidic preservative (antiseptic or antifungal [0159]) consisting of 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]). Nagai is silent regarding an amount of the polyvalent unsaturated fatty acid salt by mass relative to a total mass of the water-based ink, and hence fails to teach that a total content of the polyvalent unsaturated fatty acid salt is within the claimed range of 1.0% by mass to 5.0% by mass.
However, Nagai teaches that the polyvalent unsaturated fatty acid salt is capable of suppressing generation of fungal colonies (antiseptic or antifungal [0159]).
Lin teaches that a working amount of a polyvalent unsaturated fatty acid salt (sodium sorbate, 4th last para of page 2) is within a range of 1.0% to 5.0% by mass relative to a total mass of a water-based ink comprising a dye and water (4th last para of page 2).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided a total content of the polyvalent unsaturated fatty acid salt that is within a range of 1.0% to 5.0% by mass relative to a total mass of the water-based ink of Nagai, in order to obtain the desired suppression of fungal colonies, as taught by Lin in light of Nagai.
Regarding claims 3-4, Nagai teaches that the polyvalent unsaturated fatty acid salt is sodium sorbate [0159]).
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 claim 13, Nagai teaches that the acidic preservative consists of sodium sorbate (antiseptic or antifungal [0159]) which is a polyvalent unsaturated fatty acid salt. Nagai is silent regarding a total content of the polyvalent unsaturated fatty acid salt by mass relative to a total mass of the water-based ink, and hence fails to teach that amount A1 of Applicant is within the claimed range of 1.0% by mass to 5.0% by mass.
However, Nagai teaches that the polyvalent unsaturated fatty acid salt is capable of suppressing generation of fungal colonies (antiseptic or antifungal [0159]).
Lin teaches that a working total content of a polyvalent unsaturated fatty acid salt (sodium sorbate, 4th last para of page 2) is within a range of 1.0% to 5.0% by mass relative to a total mass of a water-based ink comprising a dye and water (4th last para of page 2), such that amount A1 of Applicant is within the claimed range of 1.0% by mass to 5.0% by mass.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided a total content of the polyvalent unsaturated fatty acid salt that is within a range of 1.0% to 5.0% by mass relative to a total mass of the water-based ink of Nagai, such that amount A1 of Applicant is of 1.0% by mass to 5.0% by mass, in order to obtain the desired suppression of fungal colonies, as taught by Lin, in light of Nagai.
In addition, Nagai teaches that an amount of the surfactant in the water-based ink is 1.0 % by weight relative to a total weight of the water-based ink (0.5 wt.% +0.5 wt%, surfactant [0212]), such that amount B of Applicant = 1.0% by weight.
Accordingly, amount A1 of Applicant and amount B of Applicant in the water-based ink of Nagai, as modified by Lin, satisfy Condition (X1) of Applicant in that the ratio A1/B = 5.0/1.0 = 5 is within the claimed range of 1 to 55.
Regarding claim 14, Nagai teaches that the acidic preservative comprises a sodium sorbate (antiseptic or antifungal [0159]) which is a polyvalent unsaturated fatty acid salt. Nagai is silent regarding an amount of the polyvalent unsaturated fatty acid salt by mass relative to a total mass of the water-based ink, and hence fails to teach that amount A1 of Applicant is within the claimed range of 1.0% by mass to 5.0% by mass.
However, Nagai teaches that the polyvalent unsaturated fatty acid salt is capable of suppressing generation of fungal colonies (antiseptic or antifungal [0159]).
Lin teaches that a working content of a polyvalent unsaturated fatty acid salt (sodium sorbate, 4th last para of page 2) is within a range of 1.0% to 5.0% by mass relative to a total mass of a water-based ink comprising a dye and water (4th last para of page 2), such that A1 of Applicant is within the claimed range of 1.0% by mass to 5.0% by mass.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided a total content of the polyvalent unsaturated fatty acid salt that is within a range of 1.0% to 5.0% by mass relative to a total mass of the water-based ink of Nagai, such that A1 of Applicant is of 1.0% by mass to 5.0% by mass, in order to obtain the desired suppression of fungal colonies, as taught by Lin, in light of Nagai.
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]).
Accordingly, amount A1 and amount C of Applicant in the water-based ink of Nagai, as modified by Lin, satisfy Condition (Y1) of Applicant in that the ratio A1/C = 5/3 = 1.7, which is within the claimed range of 0.1 to 10.
Regarding claims 15-16, 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 (antiseptic or antifungal [0159]) is sodium sorbate ([0159]) which is a polyvalent unsaturated fatty acid salt.
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]).
Response to Arguments
Applicant’s arguments have been considered but are moot because of the new secondary references, and hence the new combinations of references in the new grounds of rejection.
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 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 work week 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
Prosecution Insights