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 § 112
Claims 1-11 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.
In claim 1, to the extent the “pigment dispersion resin” and the “water-soluble resin” include similarly-constituted materials, it is unclear whether both can simultaneously be met by the same resin. Specifically, each resin may contain structural units from polymerizable monomers containing a C1-3 alkyl group [0065]/[0079] (e.g., (meth)acrylate), an anionic group [0053]/[0083] and an aromatic structure [0057]/[0089] (e.g., styrene). Thus, given the redundancy of the recited resins, it is not apparent whether the ink set comprises two different resins or whether it can comprise a single resin which simultaneously meets the definitions of both a pigment dispersion resin and a water-soluble resin.
In claim 6, there is no express antecedent basis for resin component (X) having “an acid value”.
In claim 6, the confusing language “an organic acid corresponding to the formate” is not understood. Do Applicants’ intend the pKa of formic acid which is the organic acid of formate?
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.
Claims 1-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000094825 A (Maeda) abstract and machine translation.
Maeda discloses an ink set for paper comprising:
a coating solution (meets Applicants’ treatment liquid) containing:
water (meets Applicant’s water);
a dissociative polyvalent metallic salt such as calcium formate [0017] (meets Applicants’ formate and molecular weight thereof); and
a water-miscible organic solvent such as methanol [0023] (meets Applicants’ water-soluble organic solvent); and
an ink (meets Applicants’ ink for an ink jet) containing:
water (meets Applicant’s water);
a water-soluble resin “having particularly good pigment dispersibility” [0023] (meets Applicants’ pigment dispersion resin and water-soluble resin);
a pigment (meets Applicants’ pigment); and
a water-miscible solvent such as (poly) alkylene glycols and ethers thereof (meet Applicants’ water-soluble organic solvent) (e.g., abstract, [0017], [0023], examples, claims).
Maeda sets forth various examples (Table 1) of ink sets comprising coating solutions and inks which differ from the present claims only in that the coating solutions do not contain a water-soluble organic solvent. Illustratively, Example 1 comprises (A) a coating solution containing water and calcium formate (meets Applicants’ treatment liquid except for the absence of a water-soluble organic solvent) and (B) an ink containing a methacrylic acid/methyl methacrylate/stearyl methacrylate copolymer dissolved in water (varnish A), a pigment and water-soluble solvent PGmB (propylene glycol monobutyl ether) (meets Applicants’ ink when a single resin simultaneously meets the definitions of both a pigment dispersion resin and a water-soluble resin). Notably, given that Maeda clearly discloses that the acrylic copolymer water-soluble resins have “good pigment dispersibility”, such also function as the presently claimed pigment dispersion resin. In the event the present claims are amended to specifically recite that the pigment dispersion resin and a water-soluble resin are different, it would have been obvious to one having ordinary skill in the art to use more than one water-soluble resin for their expected additive effect and with the reasonable expectation of success. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]the idea of combining them flows logically from their having been individually taught in the prior art”, In re Kerkhoven, 205 USPQ 1069.
As to claims 1 and 2, while Maeda’s coating solutions in the examples do not further include a water-soluble organic solvent, the inclusion of such for their expected additive effect of increasing the drying property is clearly within Maeda’s inventive disclosure, and obvious to one having ordinary skill in the art. Specifically, Maeda teaches that
“it is preferably to use a coating liquid with quick drying or high viscosity and reduce the permeability as much as possible, and use a highly volatile water-miscible organic solvent such as methanol, acetone or methyl acetate” (i.e., water-soluble solvents).
As to claims 3 and 5, Maeda’s exemplified methacrylic acid/methyl methacrylate/stearyl methacrylate copolymer contains a C1-3 alkyl group (methacrylate) and an anionic group (methacrylic acid). It is within the scope of Maeda’s inventive disclosure (page 5), and obvious to one having ordinary skill in the art, to use a water-soluble resin further containing a styrene or vinyl toluene unit (aromatic cyclic monomers). Thus, it would have been obvious to one having ordinary skill in the art to further include an aromatic monomer in the acrylic copolymers used in the examples for their expected additive effect and with the reasonable expectation of success.
As to claim 4, Maeda discloses the use styrene and vinyl toluene (aromatic cyclic monomers).
As to claim 6, given that Maeda’s exemplified acrylic copolymer per varnish C has an acid value of 165 mg KOH/g and calcium formate has a pKa of 3.77 (per present Example 10), Maeda provides a corresponding value of ~44 (165/3.77).
As to claims 8 and 9, Maeda discloses an inkjet recording method comprising applying the coating solution onto paper (permeable substrate) and a step of applying the ink onto the coated paper.
As to claim 10, it would be expected that applying the above-described similarly-constituted coating solutions and inks to Maeda’s paper would engender the same water droplet contact angle. Notably, Maeda’s image recording method provides good water resistance.
As to claim 11, absent evidence of unusual or unexpected results, it would have been within the purview of one having ordinary in the art to select an appropriate ratio of coating solution to ink (inclusive of that presently claimed) in accordance with the ultimate properties desired.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2000094825 A (Maeda), described hereinabove, in view of US 2019/0016911 (Okamoto).
Maeda does not expressly disclose the presently claimed water-soluble organic solvents for the coating solution. However, Okamoto, directed to a similar-such pretreatment solutions for ink sets, discloses that solvents such as propylene, dipropylene, tripropylene, diethylene and triethylene glycol monoalkyl ethers [0100] are functional water-soluble solvent alternatives to methanol, etc. [0096] for the pretreatment solution. Thus, it would have been obvious to one having ordinary skill in the art to use a water-soluble organic solvent as presently claimed as a functional alternative solvent for Maeda’s coating solution with the reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/ Primary Examiner, Art Unit 1765
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