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 .
Examiner’s Comments
Applicants’ response filed on 11/13/2025 has been fully considered. Claims 2 and 8 are canceled and claims 1 and 3-7 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/13/2025 has been entered.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Urasaki et al (US 2021/0108373 A1) in view of Romano (US 2014/0030451 A1) in further view of Nemoto et al (EP 1 095 784 A2).
Regarding claim 1, Urasaki discloses a printing sheet (coated printing paper; paragraph [0023]) comprising a substrate (base paper; paragraph [0023]); and a coated layer (outermost coating layer; paragraph [0027]) made by blending clay in a ratio of 35% by mass or more and 65% by mass or less (content ratio of kaolin to calcium carbonate is 1:9 to 6:4 and proportion of kaolin and carbonate in the pigment of the outermost coating layer is 80% by mass or more; paragraphs [0035] and [0037]) and heavy calcium carbonate in a ratio of 5% by mass or more and 30% by mass or less (content ratio of kaolin to calcium carbonate is 1:9 to 6:4 where the proportion of kaolin and carbonate in the pigment of the outermost coating layer is 80% by mass or more and calcium carbonate is ground calcium carbonate; paragraphs [0035] and [0037]) in a continuous phase made of an acrylic polymer on one surface or both surfaces of the substrate (outermost coating layer provided on at least one side of the base paper and comprising latex comprising acrylic resin; paragraphs [0027] and [0042]).
Ground calcium carbonate is another name for heavy calcium carbonate.
Urasaki discloses 100 parts by mass of pigment in the outermost coating layer where the proportion of kaolin and calcium carbonate is 80% by mass or more in the pigment for the outermost coating layer (paragraphs [0037] and [0046]). This would result in 80-100 total parts by mass of pigment. Based on the ratio of kaolin to calcium carbonate being 1:9 to 6:4, the parts by mass of kaolin in the outermost coating layer would be 8-60 parts by mass and the parts by mass of calcium carbonate in the outermost coating layer would be 32-90 parts by mass of calcium carbonate. The outermost coating layer further discloses 5-13 parts by mass of starches and latex with respect to 100 parts by mass of pigment (paragraph [0046]), 0.02-0.3 parts by mass of dispersant with respect to 100 parts by mass of pigment (paragraph [0049]), 0.25-0.6 parts by mass of lubricant with respect to 100 parts by mass of pigment (paragraph [0052]) and 0.25-0.5 parts by mass of cationic resin with respect to 100 parts by mass of pigment (paragraph [0056]). The total parts by mass of all components in the outermost coating layer is 105.52-114.4 parts by mass.
The total mass of clay in the outermost coating layer 7% by mass (8/114.4 x 100%) to 56.86% by mass (60/105.52 x 100%). This range overlaps the claimed range for the amount of clay in the coated layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to increase solid content of the coating layer and ink absorption while requiring less binder in order to reduce manufacturing cost as less than the required amount of clay would not provide the desired solid content and low ink absorption leading to more binder making the layer expensive to make and more than the required amount of clay would lead to too much ink absorption resulting in bleed through of the image. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The total mass of heavy calcium carbonate in the outermost coating layer 27.97% by mass (32/114.4 x 100%) to 68.23% by mass (72/105.52 x 100%). This range overlaps the claimed range for the amount of clay in the coated layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to increase solid content of the coating layer and ink absorption while requiring less binder in order to reduce manufacturing cost as less than the required amount of heavy calcium carbonate would not provide the desired solid content and low ink absorption leading to more binder making the layer expensive to make and more than the required amount of heavy calcium carbonate would lead to too much ink absorption resulting in bleed through of the image. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Urasaki does not disclose its coated printing paper comprising the outermost coating layer comprising either zinc pyrithione or zinc oxide and would therefore meet the limitation of the proviso that a coated layer in which zinc pyrithione is blended in a ratio of 0.40% by mass or more and 2.00% by mass or less and/or zinc oxide having a volume average particle diameter of 0.05 m or more and 2.00 m or less is blended in a ratio of 0.10% by mass or more and 1.00% by mass or less in the continuous phase when the entire mass of the coated layer is determined to be 100% is excluded.
Urasaki does not disclose the printing sheet comprising a volume average particle diameter of the heavy calcium carbonate is 0.05 µm or more and 2.00 µm or less.
However, Romano discloses a printing sheet (inkjet recording medium; paragraph [0006]) comprising a volume average particle diameter of the heavy calcium carbonate is 0.05 µm or more and 2.00 µm or less (inkjet-receptive coating is formed from a coating composition, wherein the coating composition comprises a primary pigment comprising ground calcium carbonate, a secondary pigment comprising clay and a primary binder comprising acrylic polymer; and wherein the primary pigment has a median particle size of 1.0-1.8 microns; paragraphs [0011], [0014] and [0017]).
It would have been obvious to one of ordinary skill in the art to modify the printing sheet of Urasaki to substitute the ground calcium carbonate of Urasaki for the ground calcium carbonate having a median particle size of 1.0-1.8 microns of Romano for because having the required calcium carbonate provides fast drying time and excellent image quality when printed with high speed inkjet devices (paragraph [0005] of Romano).
Urasaki does not disclose the printing sheet comprising the substrate being a substrate comprising a polyolefin-based resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio.
However, Nemoto discloses a printing sheet (an ink jet recording sheet; paragraph [0001]) comprising a substrate being a substrate comprising a polyolefin-based resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio (substrate comprising a polyolefin laminate layer on at least one surface of a base paper sheet, wherein the polyolefin laminate layer comprises 0.1 to 30 parts of a white-coloring pigment based on 100 parts of polyolefin resin and wherein the white-coloring pigment comprises calcium carbonate; paragraphs [0057] and [0062]).
The ratio of white-coloring pigment to polyolefin resin overlaps the claimed ratio of polyolefin resin to inorganic substance powder.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have sufficient whiteness and opacity and allow for the particles of the pigment to be evenly dispersed (paragraph [0062] of Nemoto). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to modify the printing sheet (coated printing paper) of Urasaki to substitute the base paper of Urasaki for the substrate comprising a polyolefin laminate layer disposed on a base paper sheet of Nemoto on the because having the substrate comprising a polyolefin laminate layer with a white-coloring pigment, such as calcium carbonate, provides sufficient whiteness and opacity and allows for the particles of the pigment to be evenly dispersed (paragraph [0062] of Nemoto).
Regarding claim 3, Urasaki, Romano and Nemoto disclose the printing sheet of claim 1 as noted above.
Urasaki does not disclose the printing sheet comprising the inorganic substance powder being calcium carbonate powder.
However, Nemoto discloses an ink jet recording sheet comprising substrate comprising a polyolefin laminate layer on at least one surface of a base paper sheet (paragraph [0057]), wherein the polyolefin laminate layer comprises 0.1 to 30 parts of a white-coloring pigment based on 100 parts of polyolefin resin (substrate comprising a polyolefin resin and an inorganic substance powder; paragraph [0062]) and wherein the white-coloring pigment comprises calcium carbonate (calcium carbonate powder; paragraph [0062]).
It would have been obvious to one of ordinary skill in the art to modify the inkjet recording medium of Romano to include the substrate comprising a polyolefin laminate layer of Nemoto for the paper substrate of Romano because having substrate comprising a polyolefin laminate layer with a white-coloring pigment, such as calcium carbonate, sufficient whiteness and opacity and allows for the particles of the pigment to be evenly dispersed (paragraph [0062] of Nemoto).
Regarding claim 4, Urasaki, Romano and Nemoto disclose the printing sheet of claim 1 as noted above.
Urasaki does not disclose the printing sheet comprising a volume average particle diameter of the clay being 0.05 µm or more and 2.00 µm or less.
However, Romano discloses a printing sheet (inkjet recording medium; paragraph [0006]) comprising a volume average particle diameter of the clay being 0.05 µm or more and 2.00 µm or less (inkjet-receptive coating is formed from a coating composition comprising a secondary pigment comprising clay and having a particle size of less than 2 microns; paragraphs [0014]-[0016]).
The particle size of the secondary pigment of clay overlaps the claimed range for the volume average particle diameter of clay.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have improved gloss, whiteness and other coating properties (paragraph [0016] of Romano). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to modify the printing sheet of Urasaki to substitute the kaolin of Urasaki for the secondary pigment of clay having a particle size of less than 2 microns of Romano for because having the required clay provides improved gloss, whiteness and other coating properties (paragraph [0016] of Romano).
Regarding claim 5, Urasaki, Romano and Nemoto disclose the printing sheet of claim 1 as noted above and Urasaki discloses the printing sheet comprising the acrylic polymer being a (meth)acrylic acid ester (coating layer comprising latex comprising acrylic resin comprising methacrylic acid ester polymer; paragraph [0042]).
Regarding claim 6, Urasaki, Romano and Nemoto disclose the printing sheet of claim 1 as noted above and Urasaki discloses the printing sheet comprising the (meth)acrylic acid ester being methyl methacrylate (coating layer comprising latex comprising acrylic resin comprising methyl methacrylate-butadiene copolymer; paragraph [0042]).
Regarding claim 7, Urasaki disclose a method for producing a printing sheet (method of providing a coating layer on a base paper; paragraph [0030]), the method comprising a step of applying an aqueous acrylic polymer emulsion (applying and drying a coating composition to form a coating layer where the coating layer comprises a latex comprising acrylic resin; paragraphs [0027], [0030] and [0042]) made by blending clay in a ratio of 35% by mass or more and 65% by mass or less (content ratio of kaolin to calcium carbonate is 1:9 to 6:4 and proportion of kaolin and carbonate in the pigment of the outermost coating layer is 80% by mass or more; paragraphs [0035] and [0037]) and heavy calcium carbonate having a volume average particle diameter of 0.05 µm or more and 2.00 µm or less in a ratio of 5% by mass or more and 30% by mass or less in a dry mass in a continuous phase made of an acrylic polymer (content ratio of kaolin to calcium carbonate is 1:9 to 6:4 where the proportion of kaolin and carbonate in the pigment of the outermost coating layer is 80% by mass or more and calcium carbonate is ground calcium carbonate; paragraphs [0035] and [0037]) to one surface or both surfaces of a substrate (outermost coating layer provided on at least one side of the base paper and comprising latex comprising acrylic resin; paragraphs [0027] and [0042]) and wherein the aqueous acrylic polymer emulsion is applied to one surface or both surfaces of the substrate sheet (outermost coating layer provided on at least one side of the base paper and comprising latex comprising acrylic resin; paragraphs [0027] and [0042]).
Ground calcium carbonate is another name for heavy calcium carbonate.
Urasaki discloses 100 parts by mass of pigment in the outermost coating layer where the proportion of kaolin and calcium carbonate is 80% by mass or more in the pigment for the outermost coating layer (paragraphs [0037] and [0046]). This would result in 80-100 total parts by mass of pigment. Based on the ratio of kaolin to calcium carbonate being 1:9 to 6:4, the parts by mass of kaolin in the outermost coating layer would be 8-60 parts by mass and the parts by mass of calcium carbonate in the outermost coating layer would be 32-90 parts by mass of calcium carbonate. The outermost coating layer further discloses 5-13 parts by mass of starches and latex with respect to 100 parts by mass of pigment (paragraph [0046]), 0.02-0.3 parts by mass of dispersant with respect to 100 parts by mass of pigment (paragraph [0049]), 0.25-0.6 parts by mass of lubricant with respect to 100 parts by mass of pigment (paragraph [0052]) and 0.25-0.5 parts by mass of cationic resin with respect to 100 parts by mass of pigment (paragraph [0056]). The total parts by mass of all components in the outermost coating layer is 105.52-114.4 parts by mass.
The total mass of clay in the outermost coating layer 7% by mass (8/114.4 x 100%) to 56.86% by mass (60/105.52 x 100%). This range overlaps the claimed range for the amount of clay in the coated layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to increase solid content of the coating layer and ink absorption while requiring less binder in order to reduce manufacturing cost as less than the required amount of clay would not provide the desired solid content and low ink absorption leading to more binder making the layer expensive to make and more than the required amount of clay would lead to too much ink absorption resulting in bleed through of the image. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The total mass of heavy calcium carbonate in the outermost coating layer 27.97% by mass (32/114.4 x 100%) to 68.23% by mass (72/105.52 x 100%). This range overlaps the claimed range for the amount of clay in the coated layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to increase solid content of the coating layer and ink absorption while requiring less binder in order to reduce manufacturing cost as less than the required amount of heavy calcium carbonate would not provide the desired solid content and low ink absorption leading to more binder making the layer expensive to make and more than the required amount of heavy calcium carbonate would lead to too much ink absorption resulting in bleed through of the image. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Urasaki does not disclose its coated printing paper comprising the outermost coating layer comprising either zinc pyrithione or zinc oxide and would therefore meet the limitation of the proviso that a coated layer in which zinc pyrithione is blended in a ratio of 0.40% by mass or more and 2.00% by mass or less and/or zinc oxide having a volume average particle diameter of 0.05 m or more and 2.00 m or less is blended in a ratio of 0.10% by mass or more and 1.00% by mass or less in the continuous phase when the entire mass of the coated layer is determined to be 100% is excluded.
Urasaki does not disclose the method comprising a volume average particle diameter of the heavy calcium carbonate is 0.05 µm or more and 2.00 µm or less.
However, Romano discloses a printing sheet (inkjet recording medium; paragraph [0006]) comprising a volume average particle diameter of the heavy calcium carbonate is 0.05 µm or more and 2.00 µm or less (inkjet-receptive coating is formed from a coating composition, wherein the coating composition comprises a primary pigment comprising ground calcium carbonate, a secondary pigment comprising clay and a primary binder comprising acrylic polymer; and wherein the primary pigment has a median particle size of 1.0-1.8 microns; paragraphs [0011], [0014] and [0017]).
It would have been obvious to one of ordinary skill in the art to modify the method of Urasaki to substitute the ground calcium carbonate of Urasaki for the ground calcium carbonate having a median particle size of 1.0-1.8 microns of Romano for because having the required calcium carbonate provides fast drying time and excellent image quality when printed with high speed inkjet devices (paragraph [0005] of Romano).
Urasaki does not disclose the method comprising the substrate comprising a polyolefin resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio is molded into a sheet by extrusion; and subjecting the sheet to a stretching treatment step.
However, Nemoto discloses a method comprising a substrate comprising a polyolefin resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio (the polyolefin laminate layer comprises 0.1 to 30 parts of a white-coloring pigment based on 100 parts of polyolefin resin and wherein the white-coloring pigment comprises calcium carbonate; paragraph [0062]) is molded into a sheet by extrusion (extrusion-laminating a polyolefin laminate layer on at least one surface of a base paper sheet; paragraph [0056]); and subjecting the sheet to a stretching treatment step (calendering the resultant paper sheet by a super calendar; paragraph [0058])
The ratio of white-coloring pigment to polyolefin resin overlaps the claimed ratio of polyolefin resin to inorganic substance powder.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have sufficient whiteness and opacity and allow for the particles of the pigment to be evenly dispersed (paragraph [0062] of Nemoto). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to modify the method of Urasaki to substitute the base paper of Urasaki for the substrate comprising a polyolefin laminate layer disposed on a base paper sheet of Nemoto on the because having the substrate comprising a polyolefin laminate layer with a white-coloring pigment, such as calcium carbonate, provides sufficient whiteness and opacity and allows for the particles of the pigment to be evenly dispersed (paragraph [0062] of Nemoto).
It would have been obvious to one of ordinary skill in the art to modify the method of Urasaki to include the steps of extrusion-laminating a polyolefin laminate layer on at least one surface of a base paper sheet and calendering the resultant paper sheet by a super calendar of Nemoto before the step of applying the coating layer of Urasaki because having a substrate comprising a polyolefin laminate layer with a white-coloring pigment, such as calcium carbonate, sufficient whiteness and opacity and allows for the particles of the pigment to be evenly dispersed (paragraph [0062] of Nemoto).
Response to Arguments
Applicant’s arguments, see pages 5-9, filed 11/13/2025, with respect to the 103 rejections have been fully considered and are persuasive. Therefore, the previous rejection have been withdrawn. however, upon further consideration, new grounds of rejection are noted above.
Applicants argue that Romano and Nemoto fail to disclose clay in a ratio of 35% by mass or more and 65% by mass or less and heavy calcium carbonate in a ratio of 5% by mass or more and 30% by mass or less and a substrate comprising a polyolefin-based resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio.
This argument is persuasive as the combination of Romano and Nemoto do not disclose clay in a ratio of 35% by mass or more and 65% by mass or less and heavy calcium carbonate in a ratio of 5% by mass or more and 30% by mass or less and a substrate comprising a polyolefin-based resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio. Therefore, the previous rejection has been withdrawn. However, new grounds of rejection have been noted above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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, Mark Ruthkosky can be reached at (571)-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SATHAVARAM I REDDY/Examiner, Art Unit 1785