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, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sagara et al. (US 2016/0264807) in view of Hongo et al. (US 2021/0395552) and Fujita et al. (JP2022087006). Regarding claim 1, Sagara et al. disclose “an ink set comprising: an inkjet ink (title); and a pretreatment liquid (paragraph 162), wherein the inkjet ink contains a pigment (paragraph 60), anionic urethane resin particles (paragraph 28), and an aqueous medium (paragraph 146), in the inkjet ink, the anionic urethane resin particles have a percentage content of at least 1.0% by mass and no greater than 12.0% by mass (paragraph 34).” Sagara et al. fail to disclose that “the pretreatment liquid contains nonionic urethane resin particles, (meth)acrylic resin particles, and polyester resin particles,” leaving the choice up to one having ordinary skill in the art. Hongo et al. disclose a pretreatment liquid for a similar ink that comprises acrylic resin and polyester resin particles (paragraph 261). It has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the pretreatment liquid of Hongo et al. as the pretreatment liquid of Sagara et al. because it has been shown in the art to be suitable for the intended purpose. Fujita et al. teach adding nonionic urethane particles to a pretreatment liquid because it can form a pretreatment layer which has excellent properties and laminating strength (paragraph 16). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to add nonionic urethane particles to the pretreatment liquid in Sagara et al., as modified, in order to achieve excellent properties and laminating strength. Sagara et al. also fail to disclose the specific proportions of each of the components in the pretreatment liquid. However, it has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. In this instance, Fujita et al. teach that the amount of the nonionic urethane resin particles should be between 5 and 30% by mass and that the amount controls the wettability, adhesion, and transparency of the layer (paragraph 30). Hongo et al. teach that acrylic and polyester resin particles should be used together (paragraph 261), and that the amount of resin particles is preferably between 1 and 15% by mass (paragraph 278). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to set the amount of the nonionic urethane resin particles to “have a percentage content of at least 2.0% by mass and no greater than 15.0% by mass,” to set the amount of acrylic resin particles to have “a percentage content of at least 2.0% by mass and no greater than 10.0% by mass,” and to set the amount of polyester resin particles to have “a percentage content of at least 2.0% by mass and no greater than 10.0% by mass” through routine experimentation in order to determine the optimal or workable amount of each component. Regarding claim 4, Sagara et al. further disclose “an inkjet recording method for forming an image on a recording medium with the ink set according to claim 1 (see the rejection of claim 1 above), comprising: applying the pretreatment liquid to the recording medium (paragraph 162); and forming the image by ejecting the inkjet ink toward the recording medium using a head after the applying (paragraphs 160 and 172).” Regarding claim 5, Sagara et al. further disclose “wherein the recording medium is a non-permeable recording medium (paragraph 162).”
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sagara et al., Hongo et al., and Fujita et al., further in view of Shimono et al. (US 2017/0349774). Regarding claim 6, Sagara et al. disclose “an ink set comprising: an inkjet ink (title); and a pretreatment liquid (paragraph 162), wherein the inkjet ink contains a pigment (paragraph 60), anionic urethane resin particles (paragraph 28), and an aqueous medium (paragraph 146).” Sagara et al. fail to disclose that “the pretreatment liquid contains nonionic urethane resin particles, (meth)acrylic resin particles, and polyester resin particles,” leaving the choice up to one having ordinary skill in the art. Hongo et al. disclose a pretreatment liquid for a similar ink that comprises acrylic resin and polyester resin particles (paragraph 261). It has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the pretreatment liquid of Hongo et al. as the pretreatment liquid of Sagara et al. because it has been shown in the art to be suitable for the intended purpose. Fujita et al. teach adding nonionic urethane particles to a pretreatment liquid because it can form a pretreatment layer which has excellent properties and laminating strength (paragraph 16). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to add nonionic urethane particles to the pretreatment liquid in Sagara et al., as modified, in order to achieve excellent properties and laminating strength. Hongo et al. are silent as to the type of (meth)acrylic resin particles; that is, Hongo et al. fail to disclose “the (meth)acrylic resin particles are particles of (meth)acrylic resin including a repeating unit derived from at least one monomer of (meth)acrylic acid alkyl ester and (meth)acrylic acid; and a repeating unit derived from a (meth)acryl acid hydroxyalkyl ester.” However, Shimono et al. a treatment liquid with resin particles with a repeating unit of methyl methacrylate and 2-hydroxyethyl methacrylate (paragraphs 13 and 468). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the resin particles of Shimono et al. as the (meth)acrylic resin particles in the modified ink set of Sagara et al. because they have been shown to be suitable for the intended purpose. See MPEP §2144.07.
Response to Arguments
Applicant's arguments filed 09/02/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853
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