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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group 1, claim 1-8, 12-16 and 20 in the reply filed on 03/31/2026 is acknowledged. Accordingly, claims 9-11 and 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-8, 12-16 and 20 are currently under examination on the merits.
Claim Objections
Claims 1, 3 and 12 are objected to because of the following informalities: “[Chem.1]” and “[Chem. 2]” and the ellipsis in front of (1) and (2) should be deleted. Appropriate correction is required
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-8, 12-16 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected as being vague and indefinite when it recites "…comprising an organic solvent, the organic solvent containing an amide-based solvent, an organic solvent represented by the following formula (1), …”, because the recitations cause confusion; specifically, it is not clear what is “the organic solvent” as recited in the dependent claims. In this office action. It is taken that the composition comprising an amide-based solvent and an organic solvent represented by formula (1). Claims 2-8, 12-16 and 20 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
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 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 1-5, 7-8, 12-13, 15-16 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yoshimori et al (US 12,473,448, ‘448 hereafter).
Regarding claims 1-5, 7, 12-13, 15 and 20, ‘287 discloses a nonaqueous ink composition for inkjet printing comprising an organic solvent being dipropylene glycol monomethyl ether (Examples, Table 1), satisfying presently claimed formula (1), wherein R1 is an alkyl group having 1 carbon atom, R2 is a propylene group, and n is 2, which inherently has a flash point being around 75°C, satisfying present claims 5, 13 and 20; and an amide-based solvent being N,N-diethylformamide, N,N-diethylpropanamide, or N,N-diethylacetamide (Examples in Table 1), satisfying present claims 3-4 and 12. The mass ratio of the amide-based solvent to the organic solvent is 75/25, which is within presently claimed range of 95:5 to 3:97 as in claim 2 (see Table 1, Example 1, 30:10). It is noted that “to be ejected by an inkjet method” as in the present claim 1 and “is ejected by inkjet method” as in the present claims 7 and 15 are in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since the applied prior art discloses the cited intended use being inkjet printing, the instant claims stand fully and properly rejected.
Regarding claims 8 and 16, ‘448 also discloses that the ink composition can be applied on a resin base material (C27/L5-L22).
Claims 1-5, 7-8, 12-13, 15-16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hazama et al (JP2005/015672, of record, ‘672 hereafter).
Regarding claims 1-5, 7, 12-13, 15 and 20, ‘672 discloses a nonaqueous ink composition for inkjet printing comprising an organic solvent being dipropylene glycol monomethyl ether ([0017], Example 4, [0034]), satisfying presently claimed formula (1), wherein R1 is an alkyl group having 1 carbon atom, R2 is a propylene group, and n is 2, which inherently has a flash point being around 75°C, satisfying present claims 5, 13 and 20; and an amide-based solvent being N,N-diethylformamide, N,N-diethylpropanamide, or N,N-diethylacetamide (see [0015], Examples 3 and 4, [0033], [0034]), satisfying present claims 3-4 and 12. The mass ratio of the amide-based solvent to the organic solvent is 33:67 ([0034], Example 4, 5:10), which is within presently claimed range of 95:5 to 3:97 as in claim 2. It is noted that “to be ejected by an inkjet method” and “is ejected by inkjet method” as in the present claims 7 and 15 are in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since the applied prior art discloses the cited intended use being ink-jet printing, the instant claims stand fully and properly rejected.
Regrading claims 8 and 16, ‘448 also discloses the ink composition can be applied on a resin base material ([0039]-[0041]).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 6 and 14 are rejected under 35 U.S.C. 103 as unpatentable over Yoshimori et al (US 12,473,448, ‘448 hereafter).
Regarding claims 6 and 14, ‘448 teaches all the limitations of claims 1 and 2, ‘448 also discloses that the ink composition further include a resin (C22/L47-C23/L7), but does not specifically set forth that the resin has an intrinsic viscosity at 25°C of 90 mL/g or more in a range of 5 mass% or less in a total amount of the resin. However, ‘448 discloses the resin used in the composition having a weight average molecular weight being 30,000 (C27/L55-L67), which is identical to the resin used in the present application (Table 1, Acrylic resin 1), thus it is expected that the composition of ‘448 also contains a resin having an intrinsic viscosity at 25°C of 90 mL/g or more in a range of as presently claimed. "Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).( See MPEP 2112.01).
Claims 6 and 14 are rejected under 35 U.S.C. 103 as unpatentable over Hazama et al (JP2005/015672, of record, ‘672 hereafter).
Regarding claims 6 and 14, ‘672 teaches all the limitations of claims 1 and 2, ‘672 also discloses that the ink composition further include a resin ([0019]), but does not specifically set forth that the resin has an intrinsic viscosity at 25°C of 90 mL/g or more in a range of 5 mass% or less in a total amount of the resin. However, it is well-known in the art that the amount and the molecular weight of a resin (represented by intrinsic viscosity in this case) in an ink composition directly affect viscosity of the ink composition, thus the amount and the molecular weight of the resin used in the ink composition are effective variables in terms of viscosity of the ink composition. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to use a resin having desired amount and molecular weight, including the amount and the molecular weight in the presently claimed ranges, so as to produce an ink composition having suitable viscosity for ink-jet printing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
Prosecution Insights