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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/131215 (hereinafter, MATSUMOTO).
Regarding claim 1, MATSUMOTO teaches an ink set containing one or more of a first ink and second ink.
The first ink is a water-based ink containing a colorant (A), a polymer (B), an organic solvent (C), and water. The first ink contains one or more pigments selected from chromatic organic pigments and black pigments (p. 5). The colorant (A) (chromatic pigment and a black pigment) is at least one selected from (i) self-dispersion pigment and (ii) particles in which the pigment is dispersed as a polymer dispersant (p. 9). The polymer (B) can be used as the polymer dispersant and the polymer of the water-insoluble polymer. Examples of polymer (B) includes styrene butadiene resin, styrene-acrylic resin, vinyl acetate resin, vinyl chloride resin, and etc. (p. 9) (the polymers read on a random polymer).
The second ink is a water-based ink containing a colorant (A), a polymer (B), an organic solvent (C), and water. The colorant (A) is a white pigments such as titanium oxide, zinc oxide, silica, alumina, magnesium oxide, and the like (p. 8). The polymer (B) can be used as the polymer dispersant and the polymer of the water-insoluble polymer. An Example of polymer (B) include styrene butadiene resin (p. 9) (styrene butadiene resin reads on a block copolymer).
Regarding claim 13, MATSUMOTO teaches the inkjet recording method for recording a first ink and a second ink wherein the first ink and the second ink are water-based inks each containing a colorant (A), a polymer (B), an organic solvent (C), and water. An image is formed with at least one first ink and then superimposing the second ink on at least part of the formed image, a background image is formed (Abstract; pp. 3-4).
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 12, and 13 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2, 7, and 18 of U.S. Patent No. 12,516,209. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US ‘209 claims an ink set comprising a colored ink comprising a colored pigment which is at least one chromatic pigment or a black pigment, a pigment dispersant, and water; and a white ink comprising a white pigment, a pigment dispersed, and water, wherein the pigment dispersant in the white ink comprises a polymer having a crosslinked structure or a block polymer, and wherein the pigment dispersant in the colored ink comprises a polymer having structural unites derived from an ethylenically unsaturated compound having an aromatic ring structure or an alicyclic structure, and having a crosslinked structure.
The inkset according to claim 1, wherein the pigment dispersant in the white comprises the block copolymer.
The inkset according to claim 1, further comprising a pretreatment liquid comprising an aggregating agent.
An image recording method that uses the ink set according to claim 11, the method comprising: applying the colored ink onto an impermeable base material; and applying the white ink onto a colored ink film formed by the application of the colored ink.
US ‘209 encompasses the scope of the present invention.
Allowable Subject Matter
Claims 2-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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