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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/09/2026 has been entered.
Response to Amendments
In response to the amendment received on 07/09/2026:
• Claims 1 and 3-6 are currently pending. Claim 2 is canceled. The 35 U.S.C. 102 rejection of claims 1 and 4 over Nakano (US-20070237911-A1) is withdrawn in light of the amendments to the claims.
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 and 3-6 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 claims 1 and 5, 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 being β-alanine (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);
wherein the magnesium-sulfate is present in a concentration of above 10 wt% based on anhydrous MgSO4 relative to the total pre-treatment liquid composition (10 to 60 wt%, regarding claim 5) (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 ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05).
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 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 claims 4 and 6, 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 07/09/2026 have been fully considered.
First, the Examiner agrees with Applicants that the amendments to the claims, specifically the moving of dependent claim 2 up into independent claim 1, overcomes the previous 102 rejection over Nakano (see Applicant’s Remarks at pg. 2-3). Accordingly, the Examiner has withdrawn the rejection over Nakano.
With respect to Applicant’s remaining arguments, however, they are respectfully not found to be persuasive for at least the reasons set forth below:
First, Applicants argue Katsuragi’s examples do not disclose compositions containing β-alanine, and that there is no reason or technical effect to specifically select β-alanine in the list of suitable acids taught by Katsuragi (see Applicant’s Remarks at pg. 7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Katsuragi explicitly teaches their composition may contain an acid, such as β-alanine (see Katsuragi at para. 0054). Accordingly, Katsuragi necessarily teaches a composition containing β-alanine, regardless of a lack of a motivation or technical effect to specifically select β-alanine. The “rationale” for selecting β-alanine lies in the teaching of Katsuragi clearly establishing β-alanine as a suitable acid in their composition. Simply because Katsuragi does not teach any examples containing β-alanine does not detract from Katsuragi’s broad teaching indicating β-alanine to be a suitable acid. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II).
Next, Applicants argue Katsuragi does not provide any reason or motivation to replace the numerous polyvalent metal salts already taught in Katsuragi with a magnesium sulfate like taught by Shibatani (see Applicant’s Remarks at pg. 8). Applicants further argue Shibatani teaches an example containing only 4.21 wt% of anhydrous magnesium sulfate, and thus, one of ordinary skill would not have any reason or motivation to use at least 10 wt% of anhydrous magnesium sulfate in a pre-treatment liquid composition (see Applicant’s Remarks at pg. 8).
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).
Additionally, while Shibatani teaches one example containing 4.2 wt% of anhydrous magnesium sulfate, Shibatani broadly teaches the content of the polyvalent metal salt to range from 0.5 to 20 wt% with respect to the reaction liquid from the viewpoint of image density, storage stability, discharge stability, and the corrosion of the recording head (see Shibatani at para. 0042). Accordingly, Shibatani’s broad content range still overlaps Katsuragi’s range of 0.005 to 20 wt% (see Katsuragi at para. 0053) as well as the claimed range. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II).
Next, Applicants argue Katsuragi provides no motivation or teaching to select β-alanine for reducing crystallization risk, let alone for an optional polyvalent metal salt (see Applicant’s Remarks at pg. 8). Applicants further argue Katsuragi does not disclose combining β-alanine with magnesium sulfate, and that no examples are provided as such (see Applicant’s Remarks at pg. 8).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
As mentioned above, Katsuragi explicitly teaches their composition may contain an acid, such as β-alanine (see Katsuragi at para. 0054). Accordingly, Katsuragi necessarily teaches a composition containing β-alanine, regardless of a lack of a motivation or technical effect to specifically select β-alanine. Furthermore, Shibatani provides a motivation to select magnesium sulfate as a polyvalent metal salt given its benefits in terms of quality of the recorded matter, corrosiveness on the recording head, safety, toxicity, and cost (see Shibatani at para. 0041). Accordingly, one of ordinary skill would be drawn to magnesium sulfate to obtain the benefits taught by Shibatani, and would further have a reasonable expectation of success in incorporating magnesium sulfate into Katsuragi given Katsuragi’s explicit teaching of magnesium salts as suitable polyvalent metal salts (see Katsuragi at para. 0043). Simply because Katsuragi does not teach any examples incorporating magnesium sulfate or β-alanine does not detract from the obvious modification shown above. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). Additionally, the notion that the polyvalent metal salt of Katsuragi is “optional” does not detract from the broader teaching that the composition of Katsuragi may suitably contain a polyvalent metal salt, including magnesium salts (see Katsuragi at para. 0054-0055).
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. 8). Accordingly, Applicants argue the Examiner is using impermissible hindsight (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.
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.
Next, Applicants argue neither Katsuragi nor Shibatani mention reducing crystallization behavior in the reaction liquid (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 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). Further, Shibatani provides a motivation to select magnesium sulfate, as previously mentioned above. Accordingly, the references teach the combination of β-Alanine with magnesium sulfate, regardless of the lack of mention of reduced crystallization.
Moreover, given the composition of modified Katsuragi is the same as that claimed, the composition necessarily demonstrates the property of reduced crystallinity, even if such property is not explicitly mentioned by the references. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Furthermore, as previously demonstrated in the Final Rejection dated 05/11/2026, Applicant’s cited data does not convincingly demonstrate unexpected results with respect to crystallinity and reduced print curl. Consequently, modified Katsuragi still reads on the claims.
Lastly, to the extent that any of the previous responses from the Response to Arguments section in the Final Rejection dated 05/11/2026 apply, they are incorporated here.
Conclusion
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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