DETAILED ACTION
1 This action is responsive to the amendment filed on July 17, 2026.
2 The rejections of the claims under 112, second paragraph and 102 are withdrawn because of the applicant’s amendment.
NEW GROUND OF REJECTION
Claim Rejections - 35 USC § 112
3 The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 9-10 and 13 recite the added limitation “wherein the aromatic compound is free of azo (-N=N-) groups”. The added limitation in the claim lacks literal basis in the specification as originally filed, see Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff'd mem. 738 F.2d 453 (Fed. Cir. 1984). The specification does not recite or provide any guiding about this limitation in the claimed specification.
Claims 2-8, 11-12 and 14-15 are dependent upon a rejected base claim. Therefore, claims 2-8, 11-12 and 14-15 are rejected as well.
Claim Rejections - 35 USC § 112
4 The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 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.
Claims 1, 9-10 and 13 recite the limitation “3-pyrazole”. It is unclear if the applicants mean “3-substituted pyrazole”? or three pyrazole rings?. Clarification and/or correction are required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1, 9-10 and 13 recite the broad recitation “ an aromatic compound having a nucleus-independent chemical shift(1) in the range of -105 or more and -12 or less”, and the claims also recite “3,5-disubstituted pyrazole linker” as specific species that represents the claimed aromatic compound having a nucleus-independent chemical shift(1) in the range of -105 or more and -12 or less”, which is the narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-8, 11-12 and 14-15 are dependent upon a rejected base claim. Therefore, claims 2-8, 11-12 and 14-15 are rejected as well.
Double Patenting
5 The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 11, 14 and 17-19 of copending Application No. U.S. 18/536,397. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application No. 18/536,397 teach and disclose fabric treatment agent for use in textile printing comprising aromatic compounds similar to those claimed in claims 1-9 (see claims 1 and 4-8 and 11) and wherein the claims of the copending application No. 18/536,397, teach textile printing method similar to those claimed as claimed in claims 10-12 (see claims 14 and 17-19). Therefore, this is an obvious formulation.
The claims of the copending application No. 18/536,397, differ from the instant claims by teaching aromatic chemical compounds that read on the claimed limitations.
Therefore, in view of the teaching of the claims of the copending application No. 18/536,397, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to formulate a fabric treatment agent to arrive at the claimed invention, and would expect such an agent to those similar property to those claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
6 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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over (US 20150062265 A1) in view of Ohashi et al. (CN 110305530 A). English translation of the Patent No. CN 11035530 A is used in this Office action.
Omori et al. (US’ 265 A1) teaches an ink composition (fabric treatment agent) for use in textile (including nonwoven fabric) as claimed in claim 8 (see page 44, paragraph, 0374), wherein the ink composition (fabric treatment agent) comprises a color materials (pigments) see page 36, paragraph, 0243) and aromatic heterocyclic compounds having 5 or more aromatic rings as claimed in claims 1-2 and 4-5 (see page 30, paragraph, 0191, formula (B-VII). Omori et al. (US’ 265 A1) also teaches treatment agent comprises organic solvents include polyethylene glycol having (I/O: 2.0) as claimed in claim 3 (see page 37, paragraph, 0268) and as applicant discloses in his own specification pages 7-8, paragraph, 0048). Omori et al. (US’ 265 A1) also teaches inkjet recording method by using ink composition for dyeing fabric, comprising pigments and heterocyclic aromatic compounds as claimed in claims 10--11 (see page 30, paragraph, 0191, formula (B-VII) and page 44, paragraphs, 0366-0368), and wherein the fabric includes cellulose carboxymethyl cellulose (synthetic cellulose fibers) as claimed in claim 11 (see page 44, paragraph, 0362). Omori et al. (US’ 265 A1) also teaches a textile printing ink composition comprising coloring material (pigment) as claimed in claim 12 (see page 36, paragraph, 0243) which is obviously have similar sublimation temperature as claimed in claims 8 and 14- 15.
The instant claims differ from the teaching of Omori et al. (US’ 265 A1) by reciting a fabric treatment agent comprising an aromatic compound having a nucleus-independent chemical shift and wherein the aromatic compound is free of azo groups and/or has a 3-pyrazole or a 3,5-disubsttuted pyrazole linker as claimed.
Ohashi et al. (CN, 530 A) in analogous art of fabric treatment formulation, teaches an ink for printing and dyeing composition comprising aromatic compounds include 3,5-dimethyl pyrazole, 3,-5-diphenyl pyrazole and 3-methyl pyrazole which are similar to the claimed aromatic compounds that recited in claims 1, 9-10 and 13 (see page 39, fifth paragraph), which is obvious to have similar properties include nucleus-independent chemical shift as claimed in claims 1, 6 -7, 9 and 10.
Therefore, in view of the teaching of Ohashi et al. (CN, 530 A), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to be modified to modify the fabric treatment composition of Omori et al. (US’ 265 A1) by incorporating the pyrazole compounds as taught by Ohashi et al. (CN, 530 A) to arrive at the claimed subject matter, such a modification would have been obvious because one of the ordinary skill in the art would expect that the use of pyrazole compounds as taught by Ohashi et al. (CN, 530 A), would be similarly useful and applicable to the analogous fabric treatment composition taught by Omori et al. (US’ 265 A1), absent unexpected results.
Response to Applicant’s Arguments
7 Applicant’s arguments with respect the rejections under 112, second paragraph, and 102 have been considered but are moot because the rejections are withdrawn and new ground of rejection is applied in this Office action.
8 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). Applicants are 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 EISA B ELHILO whose telephone number is (571)272-1315. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571)272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EISA B ELHILO/Primary Examiner, Art Unit 1761
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