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 Arguments
Applicant's arguments filed 04/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the principles of inherency cannot be relied upon to meet the claimed ratio. However, claim 1 is rejected below under 35 USC 103 obvious type rejection, and in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). MPEP 2144.01 In this case, the principles of implicit disclosure is used to show the obviousness of satisfying the claimed ratio as the Myodo satisfies all physical conditions of the claimed sections while also teaching the claimed bubble diameters, so it follows that Myodo is implicitly capable of satisfying the relation: 0≤A/B<1.0, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007). MPEP 2144.05 (II). Further delineation is needed to adequately define the claimed invention over the prior art.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Myodo et al. (US Patent No. 11,850,625).
Re: Claim 1, Myodo discloses the claimed invention including an ink-filled cartridge comprising,
a cartridge comprising:
a cylindrical syringe (1) having a discharge nozzle (11) on one end and having an opening (12) on the other end (Fig. 1); and
a plunger (3) configured to slide from the opening of the syringe to define the filling capacity within the syringe (Fig. 1); and
an ink filled (2) in a defined space within the syringe of the cartridge (Fig. 1);
wherein:
the ink has a viscosity at 25° C. of from 50 to 2,000 dPa·s, as measured in accordance with “10. Viscosity Measurement Method Using Cone-plate Rotational Viscometer” specified in JIS K 8803: 2011, using a cone-plate viscometer at 25° C. and 5 rpm for 30 seconds (Col. 17, lines 58-59, viscosity of 650Pa S);
the ink in the syringe contains one or more air bubbles having a diameter of 0.1 mm or more (Col. 15, lines 41-42, .250 mm diameter); and
when a distance from a lower end of the discharge nozzle to the plunger, in a cylindrical axis direction of the syringe, is defined as L, and when the lower end of the discharge nozzle is defined as a starting point (S) (Depicted in Fig. 1), a point at a distance of L/2 therefrom is defined as a point (M) and the plunger is defined as an end point (F), a total volume A (cm3) of air bubbles in a portion of the syringe corresponding to a distance from the starting point (S) to the point (M), and a total volume B (cm3) of air bubbles in a portion of the syringe corresponding to a distance from the point (M) to the end point (F) (Depicted in Fig. 1, the device of Myodo satisfies all the dimensions including air bubbles forming a total volume within corresponding sections of the syringe as claimed), except for expressing stating that the device of Myodo satisfying the following relation: 0≤A/B<1.0. However, the device of Myodo satisfies all the structural conditions of the claimed sections while also teaching the claimed bubble diameters, it follows that Myodo is implicitly capable of satisfying the relation: 0≤A/B<1.0, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re: Claim 2, Myodo discloses the claimed invention including a total volume A′ (cm3) of air bubbles in a portion of the syringe corresponding to the distance from the starting point (S) to a point (M′) at a distance of 0.9 L therefrom, in the cylindrical axis direction of the syringe, and a total volume B′ (cm3) of air bubbles in a portion of the syringe corresponding to the distance from the point (M′) to the end point (F), in the cylindrical axis direction (Depicted in Fig. 1, the device of Myodo inherently satisfies all the dimensions including air bubbles forming a total volume within corresponding sections of the syringe as claimed), except for expressing stating that the device of Myodo satisfying the following relation: 0≤A′/B′<1.0. However, the device of Myodo satisfies all the structural conditions of the claimed sections while also teaching the claimed bubble diameters, it follows that Myodo is implicitly capable of satisfying the relation: 0≤A′/B′<1.0, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re: Claim 3, Myodo discloses the claimed invention including the air bubbles present in the portion of the syringe corresponding to the distance from the starting point (S) to the point (M′) have a diameter except expressly stating the diameter of bubbles in a certain direction are between 0.1 to 0.3 mm. However, the device of Myodo satisfies all the structural conditions of the claimed sections while also teaching the generally claimed bubble diameters, it follows that Myodo is implicitly capable of satisfying the claimed bubble diameter, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re: Claim 4, Myodo discloses the claimed invention including when a volume of the ink filled in the portion of the syringe corresponding to the distance from the point (M) to the end point (F) is defined as C (cm3), a ratio of the total volume B of air bubbles with respect to the volume C of the ink except for expressing stating that the device of Myodo satisfying the following relation: 0≤B/C≤1.0×10−1. However, the device of Myodo satisfies all the structural conditions of the claimed sections while also teaching the generally claimed bubble diameters, it follows that Myodo is implicitly capable of satisfying the relation: 0≤B/C≤1.0×10−1, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re: Claim 5, Myodo discloses the claimed invention including the ink-filled cartridge is stored in an environment in which the temperature of the filled ink reaches 10° C. or lower (Col. 1, lines 64-67, storage at 10C or lower).
Re: Claim 6, Myodo discloses the claimed invention including the ink comprises at least a thermosetting resin, a curing agent, and a filler (Col. 7, lines 1-4, resin, filler, and curing).
Re: Claim 7, Myodo discloses the claimed invention including the ink is a filling ink for filling a hole in a printed wiring board (Col. 7, line 4, colorant added to the resin and the device is inherently capable of being used to fill holes in wiring boards).
Re: Claim 8, Myodo discloses the claimed invention including the ink-filled cartridge comprises a tip cap (21) on the upper end of the discharge nozzle (Fig. 1).
Re: Claim 9, the device of Myodo is inherently capable of performing the claimed method comprising, at the time of using the ink-filled cartridge which has been stored in an environment of 10° C. or lower in a room temperature environment (Col. 1, lines 64-67, storage at 10C or lower), and further maintaining the cartridge such that a discharge nozzle side thereof faces downward and a plunger side thereof faces upward, until a temperature of the ink reaches room temperature from 10° C. or lower (Col. 3, lines 25-30, user thaws cartridge from storage temp and further cartridge inherently capable of being held in any position during that process).
Conclusion
THIS ACTION IS MADE FINAL. 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 CHARLES P. CHEYNEY whose telephone number is (571)272-9971. The examiner can normally be reached Monday - Friday, 8:00 am - 4:30 pm.
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/CHARLES P. CHEYNEY/Primary Examiner, Art Unit 3754
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