DETAILED ACTION
Response to Amendments
In response to the amendment received on 01/13/2026:
• Claims 1-4 are currently pending. The rejection of claim 4 under 35 U.S.C. 112(b) is withdrawn in light of the amendments to the claims.
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 § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakano (US-20070237911-A1) (hereinafter referred to as “Nakano”).
Regarding claim 1, Nakano teaches an aqueous pre-treatment liquid (see Nakano at para. 0019, teaching a coating liquid for an ink receiving layer; also see Nakano at para. 0096 and the example at para. 0161, teaching the coating liquid may be aqueous; it necessarily follows that since the coating liquid is applied before the ink, the coating liquid is a “pre-treatment” liquid like claimed; also see Applicant’s specification at pg. 1, lines 23-25, equating “ink-receiving solutions” with the term “pre-treatment liquids”), the pre-treatment liquid comprising:
a. water (see Nakano at para. 0096 and the example at para. 0161, teaching the coating liquid may be aqueous);
b. magnesium-sulfate (see Nakano at para. 0059 and 0061, teaching the coating liquid may contain a water soluble polyvalent metallic salt, such as magnesium sulfate); and
c. a crystallization retarding agent selected from the group consisting of: β-alanine, proline and y-aminobutyric acid (see Nakano at para. 0020, teaching the coating liquid may contain an amino acid; also see Nakano at para. 0031-0032, teaching proline as a suitable amino acid).
It is noted that the limitation of claim 1 necessitating the pre-treatment liquid to be “for use in ink jet printing” is a recitation of intended use. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Regarding claim 4, see claim 1 rejection above, which is incorporated herein in its entirety; also see Nakano at para. 0099, teaching the coating liquid as being applied onto a substrate; also see Nakano at para. 0187, teaching examples where an ink is inkjet printed on the substrate following application of the coating liquid; thus, Nakano necessarily teaches their coating liquid may be applied to a substrate, followed by inkjet printing of an ink onto the substrate, as exemplified in their example embodiments; further, the claimed limitation “applying an aqueous pre-treatment liquid for use in ink jet printing” suggests the pre-treatment liquid as being adapted for ink-jet printing, and not necessarily being applied via ink-jet printing; given that the coating liquid of Nakano is the same as that claimed, it necessarily follows that the coating liquid of Nakano is suitably adapted for ink-jet printing, see MPEP § 2111-2112; similarly, given that the coating liquid of Nakano is the same as that claimed, it necessarily follows that the method meets the claimed property of counteracting curl of a print; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Katsuragi et al. (US-20020069789-A1) (hereinafter referred to as “Katsuragi”) in view of Shibatani et al. (JP-2005096365-A), with reference to the previously included machine translation (hereinafter referred to as “Shibatani”).
Regarding claim 1, Katsuragi teaches an aqueous pre-treatment liquid for use in ink jet printing (see Katsuragi at para. 0012 and 0110, teaching a liquid composition for ink-jet recording which may be applied before a color ink; the liquid composition of Katsuragi corresponds to the claimed “pre-treatment fluid”; also see the example liquid compositions at para. 0174 of Katsuragi, teaching the liquid compositions may be aqueous compositions), the pre-treatment liquid comprising:
a. water (see Katsuragi at para. 0012, teaching the liquid composition as containing a liquid medium; also see the example liquid compositions at para. 0174 of Katsuragi, teaching the liquid compositions as being aqueous compositions; thus, Katsuragi reasonably teaches embodiments in which their liquid composition contains water, as exemplified in their example embodiments);
c. a crystallization retarding agent selected from the group consisting of: β-alanine, proline and y-aminobutyric acid (see Katsuragi at para. 0012, teaching the liquid composition as comprising a material selected from the group consisting of acids including amino groups and salts thereof; also see Katsuragi at para. 0054-0055, teaching this component can include β-alanine).
While Katsuragi teaches the liquid composition outlined above, Katsuragi fails to explicitly teach the composition as containing b. magnesium sulfate.
However, Shibatani teaches an ink and a reaction liquid (see Shibatani at para. 0037). Shibatani further teaches the reaction liquid has a property of aggregating a color material in the ink via a coagulant, such as a polyvalent metal salt (see Shibatani at para. 0041). Shibatani further teaches magnesium sulfate as a preferred polyvalent metal salt from the viewpoint of the quality of the recorded matter, the corrosiveness on the recording head, the safety/toxicity, and cost (see Shibatani at para. 0041).
Katsuragi teaches their liquid composition as containing a polyvalent metal salt, and that the polyvalent metal salt facilitates coagulation of the color materials in the ink (see Katsuragi at para. 0012 and 0059). Moreover, Katsuragi teaches the polyvalent metal salt may include magnesium salts of inorganic acids, such as sulfuric acid (see Katsuragi at para. 0043).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use magnesium sulfate as the polyvalent metal salt in the liquid composition of Katsuragi. One of ordinary skill in the art would have been motivated to do so from the viewpoint of the quality of the recorded matter, the corrosiveness on the recording head, the safety/toxicity, and cost (see Shibatani at para. 0041).
Regarding claim 2, see Katsuragi at para. 0053, teaching the liquid composition as containing the polyvalent metal salt in an amount from 0.005% to 20% based on the total amount of the liquid composition, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 3, see Katsuragi at para. 0057, teaching the content of the material selected from the group consisting of acids including amino groups and salts thereof (e.g., β-alanine) in the liquid composition as ranging from 0.005% to 20%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 4, see claim 1 rejection above, which is incorporated herein in its entirety; also see Katsuragi at para. 0058 and 0112, teaching the liquid composition as being used in an ink-jet recording method; also see Katsuragi at para. 0013, teaching the liquid composition as being ejected first followed by ejection of a color ink onto where the liquid composition was applied (“contact state”, see Katsuragi at para. 0013); moreover, given that the liquid composition of modified Katsuragi is the same as that claimed, it necessarily follows that the method meets the claimed property of counteracting curl of a print; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II).
Response to Arguments
Applicant's arguments filed 01/13/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue Nakano does not disclose the claimed composition in a single embodiment, and thus, cannot anticipate the claimed invention (see Applicant’s Remarks at pg. 4). Applicants further argue Nakano does not provide any proper reason, rationale, or motivation to specifically select proline or magnesium sulfate from the list of suitable materials, and that the examples of Nakano do not disclose using magnesium sulfate (see Applicant’s Remarks at pg. 5). Moreover, Applicants argue at best, any indication to select the claimed components would be an “obvious to try” rationale, with the combination of components outlined by the Examiner in Nakano being “impermissible hindsight” (see Applicant’s specification at pg. 5-6). Accordingly, Applicants argue one of ordinary skill would not have arrived at the claimed combination recited in claim 1 (see Applicant’s Remarks at pg. 5).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Nakano explicitly teaches their coating liquid may contain an amino acid, such as proline (see Nakano at para. 0019, 0031-0032, and 0034). Moreover, Nakano explicitly teaches their coating liquid may contain a polyvalent magnesium salt, such as magnesium sulfate (see Nakano at para. 0059 and 0061). Accordingly, Nakano necessarily teaches a composition containing proline and magnesium sulfate, thus anticipating the claimed invention. The “rationale” for selecting such components lies in the teachings of Nakano clearly establishing their suitability as ingredients in the coating liquid. Simply because Nakano does not teach any examples containing either does not detract from the broader teaching of Nakano specifying the suitable use of such components. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II).
Furthermore, Nakano does not disclose a broad genus that requires or suggests an “obvious to try” approach for a narrower species; rather, Nakano explicitly teaches the claimed ingredients of proline and magnesium sulfate as suitable ingredients in their composition (see Nakano at para. 0019, 0031-0032, 0034, 0059, and 0061). The Examiner did not use impermissible hindsight reasoning given the explicit disclosure of Nakano, i.e., one of ordinary skill would readily find Nakano to anticipate the claimed invention before the effective filing date.
Next, Applicants argue the examples in their specification show the specifically claimed combination of magnesium sulfate and a crystallization retarding agent leads to reduced crystallization and curl of a print, providing a surprising advantage not disclosed by Nakano, Katsuragi, or Shibatani (see Applicant’s Remarks at pg. 7 and 9).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
For easier side-by-side comparisons, the Examiner has re-written Applicants’ examples (see Applicant’s specification at pg. 18-19 and the results from Fig. 1-3) in Table form, as shown below:
Pretreatment Liquid 1
Pretreatment Liquid 2
Example 3
Example 4
Example 5
Example 6
Comparative Example A
Example No.
Example 1
Example 6
CE-A
Magnesium Sulfate Heptahydrate
27.11%
27.11%
25%
25%
25%
25%
27.1%
β-Alanine
20%
20%
Acetic Acid
5%
5%
N-n-butyl Diethanol Amine
0.85%
0.85%
Empigen BB
0.40%
0.40%
Multiwet SU
0.20%
0.20%
Sorbitol
20%
γ-amino butyricacid
20%
Proline
20%
Xylitol
17.5%
Water
Balance
Balance
Balance
Balance
Balance
Balance
Balance
Corresponding Figure
Fig. 1B
Fig. 3C
Fig. 3B
Fig. 2A
Fig. 2B
Fig. 2C
Fig. 2D
Fig. 1A
Reduced Crystallization?
Yes
N/a
Yes
Yes
Yes
Yes
No
Applicants first argue their pre-treatment liquid as demonstrating reduced crystallization (see Applicant’s Remarks at pg. 7). However, Applicants do not provide sufficient comparative examples to support this conclusion. Looking at the Table presented above, Applicants provide only a single comparative example, Comparative Example A (CE-A). CE-A lacks the other components present in Pretreatment liquid 1, e.g., acetic acid, N-n-butyl diethanol amine, Empigen BB, and Multiwet SU. It is entirely possible such additional components, e.g., acetic acid and N-n-butyl diethanol amine, are contributing to the reduced crystallization effect rather than the presence of β-alanine specifically. Thus, doubt is raised as to the specific criticality of the combination as claimed (i.e., sufficient comparisons cannot be made given the differences in the compositional structure of Example 1 and CE-A).
Moreover, neither CE-A nor Example 1 (pretreatment liquid 1) can be sufficiently compared to Examples 3-6. This is because Examples 3-6 contain a different amount of magnesium sulfate (25% in Examples 3-6 versus 27.1% in CE-A and 27.11% in Example 1), AND because crystallization was measured at different conditions (5 grams left at room temperature for three days for CE-A + Example 1 (see spec at pg. 18-19) versus 1 mL titrated and then dried at 30% relative humidity for one week for Examples 3-6 (see spec at pg. 19)). Accordingly, Examples 3-6 have no comparative examples to be compared to. In other words, it is entirely possible that if, for example, proline was removed from Example 6, Example 6 would still demonstrate no crystallization. No comparative evidence is provided to dispute this. As such, doubts are raised with respect to the claimed composition.
Additionally, Applicants do not provide a single comparative example where a different polyvalent metal salt besides magnesium sulfate is used, thus raising doubts as to the importance of the claimed combination. For example, it is entirely possible for a different polyvalent metal salt, e.g., calcium sulfate, to demonstrate reduced crystallinity, weakening the claim as to the importance of the magnesium sulfate. Without sufficient comparative examples demonstrating this, doubts are raised as to the criticality of the claimed combination alleged by Applicants of the magnesium sulfate with the crystallization retarding agent.
Moving on to the curl, Applicants provide three examples: Example 8, which is a comparative example using no pretreatment liquid, which demonstrates curling; Example 9, which uses pretreatment liquid 2 (via example 6 above), which demonstrates significantly reduced curl; and Example 10, which uses use pretreatment liquid 1 (via example 1 above), which demonstrates significantly reduced curl (see Applicant’s spec at pg. 20 and Fig. 3). However, these examples are insufficient to demonstrate criticality with respect to curling.
First, the examples in Applicant’s specification are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants test no examples with respect to curling where proline or γ-amino butyric acid are used. The only examples—pretreatment liquid 1 and 2—test β-Alanine and xylitol, respectively. As such, it is unclear whether Applicants alleged showing of unexpected results with respect to curling applies to the varying embodiments for the proline and γ-amino butyric included in claim 1.
Additionally, Example 9, which uses pretreatment liquid 2 (via example 6) demonstrates as good results as Example 8, which uses pretreatment liquid 1 (via example 1). Example 9 contains xylitol, and lacks any of β-Alanine, γ-amino butyricacid, and proline. Thus, doubt is raised as to the criticality of Applicant’s claimed composition, given that compositions that don’t meet claim 1 (e.g., Example 9) still demonstrate significantly reduced curling.
Next, Applicants argue Katsuragi provides no explicit suggestion to select β-Alanine from the list of suitable acids that may be present in the liquid composition or for any specific technical effect (see Applicant’s Remarks at pg. 8). Applicants further argue that neither Katsuragi nor Shibatani reference crystallization or print curling, provide a rationale to explore means of reducing crystallization, or provide a reason to select β-Alanine for reducing crystallization risk of an optional metal salt (see Applicant’s Remarks at pg. 8-9 and 10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Like mentioned for Nakano above, Katsuragi explicitly teaches β-Alanine as a suitable acid for their composition, thus necessarily providing a “rationale” to select the compound by virtue of its clearly taught suitability (see Katsuragi at para. 0054). Moreover, as previously mentioned above, Applicant’s cited data does not convincingly demonstrate unexpected results with respect to crystallinity and reduced print curl. Additionally, given the composition of modified Katsuragi is the same as that claimed, the composition necessarily demonstrates the properties of reduced crystallinity and reduced print curl, even if such properties are not explicitly mentioned by the references. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Consequently, modified Katsuragi still reads on the claims.
Next, Applicants argue Katsuragi merely discloses the polyvalent metal salt as optional, and that Katsuragi teaches no examples where a polyvalent metal salt is included in the composition (see Applicant’s Remarks at pg. 9). Moreover, Applicants argue Katsuragi teaches numerous possible polyvalent metal salts, and that in view of this, one of ordinary skill would have no need to consult Shibatani for possible salts like magnesium sulfate (see Applicant’s Remarks at pg. 9).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Katsuragi teaches their polyvalent salt may include magnesium salts, including magnesium salts of sulfuric acid (see Katsuragi at para. 0043). Further, Shibatani teaches a motivation to specifically select magnesium sulfate as a polyvalent metal salt, namely, reduced toxicity, improvement in the quality of the recorded matter, reduced corrosiveness on the recording head, and reduced cost (see Shibatani at para. 0041). Accordingly, one of ordinary skill would readily look to the magnesium sulfate of Shibatani for such advantages. The fact that Katsuragi teaches multiple possibilities for their polyvalent metal salt does not automatically preclude one of ordinary skill from looking to other references regarding polyvalent metal salts for certain advantages, especially considering Katsuragi explicitly teaches their polyvalent metal salt may include magnesium salts (see Katsuragi at para. 0043). Furthermore, the notion that the polyvalent metal salt of Katsuragi is “optional” or is not present in any examples does not detract from the broader notion that the composition of Katsuragi may suitably contain a polyvalent metal salt, including magnesium salts.
Next, Applicants argue that even if one of ordinary skill were to select magnesium sulfate based on the disclosure of Shibatani, one of ordinary skill would have to perform numerous experiments of at least all listed acids and combining them with magnesium sulfate, and would thus have no reasonable expectation of success in conducting such an action in view of the undue burden and unpredictability of performing numerous random experiments (see Applicant’s Remarks at pg. 10). Accordingly, Applicants argue the Examiner is using impermissible hindsight (see Applicant’s Remarks at pg. 10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
One of ordinary skill would have a reasonable expectation of success in using magnesium sulfate with the β-Alanine taught by Katsuragi. This is because Katsuragi explicitly teaches β-Alanine as a suitable acid, and further explicitly teaches magnesium salts may be used as the polyvalent metal salt (see Katsuragi at para. 0043 and 0055). Further, Shibatani and Katsuragi teach the exact same use of the polyvalent metal salt in their compositions, namely, improved coagulation of the colorant in the later-applied ink (see Katsuragi at para. 0012, 0059; see Shibatani at para. 0041). There is no undue experimentation here. One of ordinary skill in the art would not indiscriminately be trying every single possible combination to see what would be successful. Rather, one of ordinary skill would readily recognize β-Alanine as a suitable acid given Katsuragi’s explicit teachings, and further would reasonably expect and have a motivation to suitably use said acid with the magnesium sulfate taught by Shibatani, for the advantageous reasons outlined above. Additionally, the Examiner is not using impermissible hindsight, because of the motivation provided by Shibatani to incorporate magnesium sulfate in Katsuragi (see Shibatani at para. 0041), because of the teaching of Katsuragi for magnesium salts as suitable polyvalent metal salts (see Katsuragi at para. 0043), and because of the fact that all teachings relied upon were available to one of ordinary skill in the art before the effective filing date of the claimed invention. Consequently, a proper prima facie case of obviousness is established.
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 extension fee 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 date of this final action.
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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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