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 .
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.
Claim(s) 1-5 & 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valentini et al. (# US 2003/0184629) in view of Kiyomoto et al. (# US 2011/0048278).
Valentine discloses:
1. An ink jet printing composition (see Abstract), comprising:
from 1.00% to 6.00% by weight of at least one pigment ([0027]-[0033]; 0.1 to 10%; [0083]);
from 5.00% to 11.00% by weight of at least one polymer (polyurethane; 0.1 to 10%; [0084]);
from 14.50% to 17.50% by weight of at least one co-solvent (1 to 15%; [0094]);
from 4.50% to 5.50% by weight of at least one humectant, the humectant being propylene glycol ([0087]-[0094]);
from 1.00% to 2.75% by weight of at least one surfactant (0.2 to 2.0%; [0087]); and
water (see Table: 1, 3).
Given that the Valentini et al. reference discloses a range of pigment, polymer, solvent, surfactant and water that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught ranges, including those presently claimed, to obtain a suitable composition. It is also noted that according to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276,205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclose by the prior art", see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
Valentine et al. explicitly did not discloses:
1. The co-solvent being 3-methoxy-3-methyl-1-butanol, and humectant being propylene glycol (see Table: 2).
Kiyomoto et al. teaches that to have the ink composition with excellent dispersion stability and ejection stability,
The ink composition comprises the co-solvent being 3-methoxy-3-methyl-1-butanol (([0054]-[0056]), and humectant being propylene glycol (see Table: 2).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of Valentine et al. by the aforementioned teaching of Kiyomoto et al. in order to have the ink composition with excellent dispersion stability and ejection stability.
2. The printing composition of claim 1, wherein the printing composition has a viscosity from 2 cP to 10 cP as measured by ASTM D7867-13 (2020) (2 to 20 mPa.s; [0096]).
Given that the Valentini et al. reference discloses a range of viscosity that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught ranges, including those presently claimed, to obtain a suitable composition. It is also noted that according to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276,205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclose by the prior art", see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990)
3. The printing composition of claim 1, wherein the at least one polymer is at least one polymer dispersion, at least one polymer emulsion, or at least one polymer solution that is anionic ([0036]; [0057]).
4. The printing composition of claim 1, wherein the at least one polymer comprises a low-molecular weight polymer (optionally a low molecular weight, isocyanate-reactive chain extender, and optionally an isocyanate-reactive; [0040]).
5. The printing composition of claim 4, wherein the low-molecular weight polymer is a plasticizer that is used for increased flexibility and plasticity (optionally a low molecular weight, isocyanate-reactive chain extender, and optionally an isocyanate-reactive; [0040]).
8. The printing composition of claim 1, wherein at least one of the at least one pigment, the at least one polymer, the at least one co-solvent, the at least one humectant, and the at least one surfactant are Swiss Ordinance on Materials and Articles in Contact with Food (SR 817.023.21), Annex 10 (Edition 2.1 of Dec. 1, 2020) compliant (see Examples).
Claim(s) 45-46 & 51-55 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valentini et al. (# US 2003/0184629) in view of Kiyomoto et al. (# US 2011/0048278).
Valentine discloses:
45. A method of printing (see claim 12), comprising:
providing a substrate (plain paper; see claims 12, 13);
applying an ink jet printing composition to a surface of the substrate (see claim 12), the ink jet printing composition (see Abstract) comprising
from 1.00% to 6.00% by weight of at least one pigment ([0027]-[0033]; 0.1 to 10%; [0083]),
from 5.00% to 11.00% by weight of at least one polymer (polyurethane; 0.1 to 10%; [0084]),
from 14.50% to 17.50% by weight of at least one co-solvent (glycol ether; 1 to 15%; [0094]),
from 4.50% to 5.50% by weight of at least one humectant ([0087]-[0094]; see Table: 1, 3),
from 1.00% to 2.75% by weight of at least one surfactant (0.2 to 2.0%; [0087]), and
water (see Table: 1,3); and
drying the substrate (The benefits of the present invention are realized without any special post-treatment after printing. No "fixation" step is required such as heat or UV curing or treatment with a reaction solution, although such operations might be useful for other reasons and no particular limitations are implied. [0124]).
Given that the Valentini et al. reference discloses a range of pigment, polymer, solvent, surfactant and water that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught ranges, including those presently claimed, to obtain a suitable composition. It is also noted that according to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276,205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclose by the prior art", see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990)
Valentine et al. explicitly did not discloses:
45. The co-solvent being 3-methoxy-3-methyl-1-butanol, and humectant being propylene glycol (see Table: 2).
Kiyomoto et al. teaches that to have the ink composition with excellent dispersion stability and ejection stability,
The ink composition comprises the co-solvent being 3-methoxy-3-methyl-1-butanol (([0054]-[0056]), and humectant being propylene glycol (see Table: 2).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of Valentine et al. by the aforementioned teaching of Kiyomoto et al. in order to have the ink composition with excellent dispersion stability and ejection stability, which give high quality printed image.
46. The method of claim 45, wherein the substrate is a flexible substrate (plain paper; see claim 12, 13).
51. The method of claim 45, wherein the printing composition has a viscosity from 2 cP to 10 cP as measured by ASTM D7867-13 (2020) (2 to 20 mPa.s; [0096]).
52. The method of claim 45, wherein the at least one polymer is at least one polymer dispersion, at least one polymer emulsion or at least one polymer solution that is anionic ([0036]; [0057]).
53. The method of claim 45, wherein the at least one polymer comprises a low-molecular weight polymer (optionally a low molecular weight, isocyanate-reactive chain extender, and optionally an isocyanate-reactive; [0040]).
54. The method of claim 53, wherein the low-molecular weight polymer is a plasticizer that is used for increased flexibility and plasticity (optionally a low molecular weight, isocyanate-reactive chain extender, and optionally an isocyanate-reactive; [0040]).
55. The method of claim 45, wherein at least one of the at least one pigment, the at least one polymer, the at least one co-solvent, the at least one humectant, and the at least one surfactant are Swiss Ordinance on Materials and Articles in Contact with Food (SR 817.023.21), Annex 10 (Edition 2.1 of Dec. 1, 2020) compliant (see Examples).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valentini et al. (# US 2003/0184629) in view of Kiyomoto et al. (# US 2011/0048278) as applied to claims 1-5 & 8 above, and further in view of Yokota et al. (# US 2020/0253247).
Valentini et al. teaches all the limitation of printing composition except:
6. The printing composition of claim 1 further comprising 0.10% to 0.50% by weight of at least one emulsifier.
7. The printing composition of claim 6, wherein the at least one emulsifier is a phospholipid.
Yokota et al. teaches to have foam free ink composition,
6. The printing composition of claim 1 further comprising 0.10% to 0.50% by weight of at least one emulsifier (0.3 to 10%; [0082]).
7. The printing composition of claim 6, wherein the at least one emulsifier is a phospholipid ([0070]-[0075]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of Valentini et al. as modified by the aforementioned teaching of Yokota et al. in order to have foam free ink composition, which gives high quality printed image.
Claim(s) 56-57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valentini et al. (# US 2003/0184629) in view of Kiyomoto et al. (# US 2011/0048278) as applied to claims 45-46 & 51-55 above, and further in view of Yokota et al. (# US 2020/0253247).
Valentini et al. teaches all the limitation of method of printing except:
56. The method of claim 45 wherein the ink jet printing composition further comprising 0.10% to 0.50% by weight of at least one emulsifier.
57. The method of claim 56, wherein the at least one emulsifier is a phospholipid.
Yokota et al. teaches to have foam free ink composition,
56. The method of claim 45 wherein the ink jet printing composition further comprising 0.10% to 0.50% by weight of at least one emulsifier (0.3 to 10%; [0082]).
57. The method of claim 56, wherein the at least one emulsifier is a phospholipid ([0070]-[0075]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of Valentini et al. as modified by the aforementioned teaching of Yokota et al. in order to have foam free ink composition, which gives high quality printed image.
Claim(s) 48-50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valentini et al. (# US 2003/0184629) in view of Kiyomoto et al. (# US 2011/0048278) as applied to claims 45-46 & 51-55 above, and further in view of Schwendimann et al. (# US 8114485).
Valentini et al. teaches all the limitation of printing method except:
48. The method of claim 46, wherein the substrate is a heat-shrinkable substrate and wherein the co-solvent has an evaporation profile that allows drying and adherence of the printing composition applied to the heat-shrinkable substrate at temperatures up to the threshold for dimensional integrity of the heat- shrinkable substrate.
49. The method of claim 45, wherein the substrate is processed by a surface energy modification system.
50. The method of claim 49, wherein the surface energy modification system is corona treatment.
Schwendimann et al. teaches to have water resistant image,
48. The method of claim 47, wherein the substrate is a heat-shrinkable substrate and wherein the co-solvent has an evaporation profile that allows drying and adherence of the printing composition applied to the heat-shrinkable substrate at temperatures up to the threshold for dimensional integrity of the heat- shrinkable substrate (column: 2, line: 35-45).
49. The method of claim 45, wherein the substrate is processed by a surface energy modification system (column: 3, line: 5-15)
50. The method of claim 49, wherein the surface energy modification system is corona treatment (column: 3, line: 5-15).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the medium in the printing method ink composition of Valentini et al. as modified by the aforementioned teaching of Schwendimann et al. in order to have the water resistance image.
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 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 MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
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, Ricardo Magallanes can be reached at 571-272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853