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 .
Summary
The Applicant’s arguments and claim amendments received on May 1, 2026 are entered into the file. Currently, claims 1, 5, and 9 are amended; resulting in claims 1-13 pending for examination.
Claim Objections
Claim 1 is objected to because of the following informalities: In lines 7-9 of claim 1, the relationships in Expressions (1)-(3) currently read:
Expression (1) 0 ≤ |ICh-Mh1| ≤ 25%;
Expression (2) 0 ≤ |IMh-Yh1| ≤ 25%; and
Expression (3) 0 ≤ |IYh-Ch1| ≤ 25%
Given that there are no claim markings in lines 7-9, the claim appears to have been unintentionally amended to include the letter I and number 1 inside each pair of vertical bars used to designate the absolute value. For the purpose of examination, the above expressions will be interpreted consistent with the expressions shown in the original claim (i.e., where the absolute value of the difference between each pair of Ch, Mh, and Yh is within the range of 0 to 25%, inclusive).
It is also noted that there is a period at the end of line 9 in claim 1, such that the claim contains multiple periods. Each claim must contain only one period at the end of the claim. See MPEP 608.01(m).
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP 2015-067743, machine translation previously provided) in view of Hamanaka et al. (JP 2018-123182, machine translation previously provided).
Regarding claims 1, 3, and 4, Saito et al. teaches an actinic ray-curable ink-jet ink and ink set that can provide vivid color images on colored or transparent substrates, wherein the inks may be ejected from an inkjet nozzle onto a printing substrate (substrate) by an inkjet system to form an ink layer (decorative layer) ([0009], [0044]). The actinic ray-curable inkjet ink contains a white pigment and a colorant other than a white pigment, for example, a pigment that exhibits a magenta, cyan, or yellow color, wherein several of these inks may be used as an ink set [0033].
Although Saito et al. lists a variety of exemplary pigments that can be used in the magenta ink, including C.I. Pigment Red 122, and that the color pigment can be included in an amount of 0.5 to 20% by mass relative to the total amount of the ink in order to obtain sufficient image density and light resistance of the printed image ([0029], [0032], [0054]), the reference does not expressly teach that the magenta ink contains an iron oxide pigment and has a hue angle within the range of 26° to 42° when formed into a dried film as claimed.
Hamanaka et al. teaches an ink set that can produce printed matter whose aesthetic appearance is not significantly impaired even after outdoor exposure [0001]. Hamanaka et al. teaches that from the viewpoint of weather resistance, suitable pigments that can be used in the magenta inks include Pigment Red 9, 101, 122, 202, and 254, and Pigment Violet 19 ([0017], [0028]). Similar to Saito et al., Hamanaka et al. also teaches that the content of the pigment in each ink is preferably 0.5% by mass or more and 10% by mass or less [0028].
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ink set taught by Saito et al. by using Pigment Red 101 (iron oxide pigment) instead of or in combination with Pigment Red 122 in the magenta ink at an amount within the claimed range, as suggested by Hamanaka et al., based on the art-recognized equivalence of Pigment Red 101 and Pigment Red 122 for the same purpose of imparting color to a magenta inkjet ink. Moreover, it would have been obvious to one of ordinary skill in the art to adjust the type and/or amount of the pigments included within the magenta ink in order to arrive at a magenta ink having a desired hue angle, such as within the claimed range, in order to enable the ink set to print ink layers having the desired range of colors.
It is noted that both Saito et al. and Hamanaka et al. teach amounts of the color pigment used in the magenta ink which overlap or fall within the claimed range of 0.5 to 15 mass%. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Saito et al. further differs from the claimed invention in that although the reference teaches that the average particle size (D50) of the pigment in the magenta ink is in the range of 10 to 200 nm, preferably about 50 to 150 nm, in order to obtain sufficient image density and light resistance of the printed image ([0032]), the reference does not expressly teach values for the D10 and D100 of the pigment in the magenta ink.
Similar to Saito et al., Hamanaka et al. teaches that the D50 of the pigments contained in the magenta ink is preferably 90 nm or more and 175 nm or less from the viewpoint of ensuring storage stability and maintaining the appearance of printed matter over a long period of time [0023]. Hamanaka et al. further teaches colored inks having a D90 of 150 to 800 nm, preferably 200 to 600 nm, and a D10 of 100 to 300, preferably 100 to 200, where the D90 and D10 are set within these ranges to improve the aesthetic appearance and the weather resistance of the printed matter [0024].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ink set of Saito et al. in view of Hamanaka et al. by setting values for the D10, D50, and D100 of color pigments such as the iron oxide pigment in the magenta ink within the claimed ranges, as suggested by Hamanaka et al., in order to ensure storage stability of the magenta ink and to improve the aesthetic appearance and weather resistance of the printed matter formed from the ink.
With respect to the claimed Relational Expressions (1) to (3) directed to the difference in contrast ratios (Ch, Mh, Yh) of 10 µm thick dried films of the cyan, magenta, and yellow inks, while it is acknowledged that Saito et al. in view of Hamanaka et al. does not expressly disclose the claimed contrast ratios (Ch, Mh, and Yh), the reference teaches all of the claimed features/materials/layers. Therefore, the claimed physical properties, i.e., contrast ratios satisfying the claimed Relational Expressions (1) to (3), would be inherently achieved by an ink set disclosed by Saito et al. and Hamanaka et al. The term “contrast ratio” as is it used in the present invention is understood to mean the ratio between the L* value of the dried ink film printed on a black background and the L* value of the dried ink film printed on a white background (i.e., L*b / L*w x 100%) (see paragraph [0050] of the as-filed specification). The instant specification has not provided adequate teachings that the claimed properties are obtainable only with the claimed features/layers/materials. Should the Applicant disagree, it is requested that evidence is provided to support their position. See also MPEP 2112, 2112.01 and analogous burden of proof in MPEP 2113.
As evidence that the claimed Relational Expressions (1) to (3) are inherent to the ink set taught by Saito et al. in view of Hamanaka et al., Saito et al. teaches that the average particle size of the pigment in the magenta ink, cyan ink, or yellow ink is in the range of 10 to 200 nm, preferably about 50 to 150 nm, and has a content of 0.5 to 20% by mass of the ink ([0032]), and Hamanaka et al. similarly suggests setting the D50 of a colored pigment within the range of 150 to 400 nm, the D90 within the range of 150 to 700 nm, and the D10 within the range of 100 to 300 nm, at a content of 0.5 to 10% by mass of the ink ([0011]-[0012], [0028]). The white pigment used in the magenta, cyan, or yellow inks has a particle size in the range of 220 to 320 nm, preferably 240 to 300 nm, and is preferably contained in the ink in an amount of 1 to 20% by weight [0026].
In looking to paragraph [0051] of the as-filed specification, examples of a method of adjusting the contrast ratio of each of the cyan ink, the magenta ink, and the yellow ink include selection of a pigment type and a pigment particle diameter, and that it is effective to use a white pigment for each of the cyan, magenta, and yellow inks for increasing the contrast ratio. In particular, paragraph [0058] discloses that the amount of pigment in each of the cyan, magenta, and yellow inks is, for example, 5 to 25 mass%, and that when the amount the pigment is too small, the ink cannot exhibit sufficient hiding power. Examples of suitable pigments include C.I. Pigment Blue 15:4, C.I. Pigment Red 122, and C.I. Pigment Yellow 150 ([0052], [0054], [0056]). Examples of the white pigment include inorganic pigments such as titanium oxide, where the amount of the white pigment in each ink is, for example, 1 to 25 mass%, preferably 5 to 15 mass% [0062]. An average dispersed-particle diameter of the pigments used in the cyan, magenta, and yellow inks is preferably within a range of 40 to 400 nm, and a D50 of the white pigments in each of the inks is preferably 100 to 300 nm ([0064]-[0065]). Saito et al. in view of Hamanaka et al. therefore teaches all of the features that the instant specification discloses as essential to achieving the desired contrast ratios.
Furthermore, it is noted that when the ink set taught by Saito et al. is selected from cyan, magenta, and yellow inks having the same (or similar) amounts of white pigment therein, the claimed Relational Expressions (1)-(3) are considered to be inherently satisfied. For example, when Examples 3, 7, and 10 of Saito et al., each containing 10 wt% of white pigment, are used as the cyan, magenta, and yellow inks of the ink set, the difference between the contrast ratios (i.e., |Ch-Mh|, |Mh-Yh|, and |Yh-Ch|) of the inks when formed as a dried film having a thickness of 10 µm would fall within the range of 0 to 25%. Tables 1 and 2 of Saito et al. disclose the contrast ratio of a 6 µm thick film of the cyan ink of Example 3, where the L*b value is 41.514, while the L*w value is 64.99, resulting in a contrast ratio of about 64%. Table 1 further discloses the L*b values of 6 µm thick films of the magenta and yellow inks of Examples 7 and 10 as 37.06 and 55.38, respectively. Although L*w values are not provided for Examples 7 and 10, it is noted that these inks would be expected to exhibit a similar hiding power to the cyan ink of Example 3 due to the identical amounts of white pigment included therein. Tables 1-10 of the instant specification provide evidence that the differences in contrast ratios are small (i.e., that |Ch-Mh|, |Mh-Yh|, and |Yh-Ch| fall within the claimed ranges of 0-25%) when the amount of white pigment included in each of the cyan, magenta, and yellow inks is the same.
For the reasons presented above, the claimed Relational Expressions (1)-(3) are presumed to be inherent for ink sets formed of each combination of cyan, magenta, and yellow inks taught by Saito et al. which have the same amount of white pigment therein (i.e., Comparative Examples 1, 2, and 3; Examples 1, 5, and 8; Examples 2, 6, and 9; and Examples 3, 7, and 10).
Regarding claim 2, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above, and Saito et al. further teaches that the printing substrate may be a white substrate ([0046], [0078]), which has an L* value within the claimed range of 40.0 to 98.0.
Regarding claims 5 and 6, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above. As explained above with respect to claim 1, the exemplary cyan inks shown in Table 1 of Saito et al. contain C.I. Pigment Blue 15:4 as the cyan pigment, while the exemplary yellow inks contain C.I. Pigment Yellow 150 as the yellow pigment ([0052]-[0056]). As evidenced by the cyan ink (C3) shown in Table 3 and the yellow ink (Y3) shown in Table 5 of the instant specification, C.I. Pigment Blue 15:4 exhibits a hue angle of about 240°, while C.I. Pigment Yellow 150 exhibits a hue angle of about 96°, such that the claimed hue angle ranges of dried films of the cyan ink and the yellow ink as measured on a white substrate would be inherently satisfied by the exemplary cyan and yellow inks taught by Saito et al.
Similarly, when C.I. Pigment Blue 15:4, Pigment Red 101, and C.I. Pigment Yellow 150 are used as the pigments in the cyan, magenta, and yellow inks, as taught by Saito et al. in view of Hamanaka et al., the claimed ranges for the hue angles of dried films formed by color mixing the cyan and magenta inks, the magenta and yellow inks, and the yellow and cyan inks at a 1:1 volume ratio are inherently satisfied.
Regarding claim 7, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above. As noted above with respect to claim 1, any combination of the cyan, magenta, and yellow inks taught by Saito et al. which have the same amount of white pigment therein (i.e., Comparative Examples 1, 2, and 3; Examples 1, 5, and 8; Examples 2, 6, and 9; and Examples 3, 7, and 10) are considered to satisfy the claimed Relational Expressions (1)-(3) set forth in claim 1. Furthermore, given that the cyan ink of Example 3 having a white pigment content of 10 wt% exhibits a contrast ratio of about 64% when applied at a thickness of 6 µm, while the cyan ink of Comparative Example 1 having a white pigment content of 0 wt% exhibit a contrast ratio of about 8%, the cyan ink of Example 2 having a white pigment content of 5 wt% would be expected to exhibit a contrast ratio within the claimed range of 55 ± 25% (i.e., 30 to 80%) when formed at a thickness of 10 µm.
In particular, it is understood based on the data shown in Saito et al. that decreasing the amount of white pigment results in a corresponding decrease in the contrast ratio. Likewise, one of ordinary skill in the art would recognize that increasing the thickness of the printed ink film results in a corresponding increase in the contrast ratio. Therefore, when the ink set contains the cyan, magenta, and yellow inks each including 5 wt% of titanium dioxide white pigment as disclosed in Examples 2, 6, and 9 of Saito et al., the inks would inherently satisfy both the Relational Expressions (1)-(3) of claim 1 and the property set forth in claim 7, wherein Ch, Mh, and Yh are all within the range of 30-80%.
Regarding claim 8, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above, and Saito et al. further teaches that the actinic radiation-curable inkjet ink contains a polymerizable compound in addition to the white pigment and colorant, wherein the polymerizable compound includes a polyfunctional monomer (alkylene oxide structural unit) such as ethylene glycol, polyethylene glycol, propylene glycol, etc. ([0016]-[0018], [0052], [0054], [0056]).
Regarding claim 12, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above, and Saito et al. further teaches that the printing substrate may be a plain paper or coated paper ([0046]), wherein the paper base material in the coated paper may be taken to correspond to the claimed substrate, while the coating formed on the paper base material corresponds to the claimed ink receiving layer on which the inks are printed.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP 2015-067743, machine translation previously provided) in view of Hamanaka et al. (JP 2018-123182, machine translation previously provided) as applied to claim 1 above, and further in view of Li et al. (US 2018/0155561, previously cited).
Regarding claims 9 and 10, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above, including that the pigment in the magenta ink may be Pigment Red 101 (Hamanaka, [0028]). Although Pigment Red 101 is an iron oxide pigment that is primary composed of Fe2O3 (hematite), Hamanaka et al. is silent to a content of magnetite in the Pigment Red 101, and thus does not expressly teach that a content of magnetite in the iron oxide pigment is 5 mass% or less.
Li et al. teaches an inkjet ink composition comprising a colorant including surface-modified iron oxide nanoparticles [0002]. Li et al. teaches that the color of the ink can be tuned, e.g., to red, yellow, brown, or black, by varying the crystal structures and/or oxidation states of the iron oxide nanoparticles ([0009], [0107]). For example, the iron oxide nanoparticles can be either Fe3O4, γ-Fe2O3, or α-Fe2O3, or mixtures thereof, wherein Fe3O4 is black, γ-Fe2O3 is brown, and α-Fe2O3 is transparent [0108].
It would, therefore, have been obvious to one of ordinary skill in the art to adjust the amounts of Fe3O4 (magnetite), γ-Fe2O3 (maghemite), and α-Fe2O3 (magnetite) in the iron oxide pigment, such as by limiting the amount of magnetite to within the claimed range, depending on the desired color of the ink composition. One of ordinary skill in the art would be motivated to limit the amount of magnetite in the iron oxide pigment to 5 mass% or less in order to prevent the reddish color of the pigment from becoming too dark or black.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP 2015-067743, machine translation via EPO provided) in view of Hamanaka et al. (JP 2018-123182, machine translation previously provided) as applied to claim 1 above, and further in view of Yip et al. (US 2005/0023244).
Regarding claims 11-13, Saito et al. in view of Hamanaka et al. teaches all of the limitations of claim 1 above. Although Saito et al. teaches that the inks may be ejected as droplets (dot-shaped inks) from an inkjet nozzle onto the printing substrate, and further teaches that the printing substrate may be a coated paper ([0044]-[0046]), the reference is silent to an average dot diameter of the inks and does not expressly teach that the coated body comprises an ink receiving layer which contains a crosslinked resin.
Yip et al. teaches a method for increasing the diameter of an ink jet ink dot resulting from the application of an ink jet ink drop applied to the surface of a recording medium (Abstract). In particular, Yip et al. teaches that the recording medium comprises a support and an image-receiving layer formed thereon, wherein the support may be a coated paper, and the image-receiving layer comprises particles, a polymeric binder, and a cross-linking agent ([0014]-[0017], [0023]). By including particles in the cross-linked image-receiving layer, the dot gain of an ink jet ink drop applied to the recording medium can be set within the range of 3 to 15 ([0011], [0030]). Yip et al. teaches that the initial drop diameter of the ink jet ink is 31.7 µm ([0057]), such that the final dot diameter is about 95 to about 475 µm, which overlaps the claimed range of 70 to 250 µm. Yip et al. teaches that a dot gain within the above range enables an increase in the final dot diameter without having to increase the drop volume, resulting in increased printer productivity since fewer dots are needed to cover an area of the recording medium, and reducing the drying times ([0011], [0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coated body taught by Saito et al. in view of Hamanaka et al. by including a cross-linked image-receiving layer as taught by Yip et al. on the printing substrate prior to printing such that the final dot diameter of the inks is within the claimed range. One of ordinary skill in the art would be motivated to increase the dot diameter of the inks in order to increase the printer productivity and to reduce the drying time of the printed inks.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 5 and 6 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 are overcome by the Applicant’s amendments and remarks in the response filed May 1, 2026.
In particular, the Applicant submits on pages 6-7 of the remarks that the position set forth in the previous rejections under 35 U.S.C. 112(b) effectively prioritize a “semantic label” over the recited “objective numerical boundaries”. In other words, the Applicant argues that the term “magenta” is merely a semantic label that should be interpreted as being defined by the objective numerical boundaries of the recited hue angle of 26° to 42°. In looking to Table 4 and paragraph [0168] of the instant specification, the exemplary magenta inks according to the present invention have hue angles ranging from 34° to 37° (e.g., using Pigment Red 101), 61° to 65°, and 346° (e.g., using Pigment Red 122). Although these hue angles shown in Table 4 establish that the term “magenta” in the context of the present invention can encompass both red-blue and red-yellow colors, the claimed hue angle range of 26° to 42° unambiguously limits the range of possible “magenta” colors to those that fall within the objective and quantitatively defined hue angle range. The previous indefiniteness rejections are therefore withdrawn under the interpretation that the scope of the term “magenta” in the present invention is broader than its ordinary and customary meaning in the art and thus does not conflict with the claimed hue angle range of 26° to 42°. See MPEP 2111.01(IV).
Response-Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see pages 7-8 of the remarks filed May 1, 2026, with respect to amended independent claim 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. In light of the amendments to claim 1, the previous rejections under 35 U.S.C. 102 based on Saito et al. are withdrawn, and Hamanaka et al. is relied upon as a secondary reference in combination with Saito et al. under 35 U.S.C. 103 to address the newly added limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Saito (US 2010/0247772) teaches a nonaqueous ink comprising colorant particles having a narrow particle diameter distribution (monodispersity), where the difference between D90 and D10 is 100 nm or less in order to reduce light scattering and aggregations of particle [0040]. Saito teaches that when the average particle diameter (D50) is too small, it is difficult to keep the particles in the ink stabilized for a long period of time, and leads to a deterioration in light resistance [0034].
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 or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/REBECCA L GRUSBY/Primary Examiner, Art Unit 1785
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