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 .
Response to Amendments
• Claims 2-15 are currently pending. Claim 1 is cancelled.
Election/Restrictions
Applicant's election with traverse in the reply filed on 08/03/2023 is acknowledged. The traversal is found to be persuasive. Accordingly, the Restriction requirement mailed 06/12/2023 has been withdrawn, and claims 1-15 are currently pending with there being no withdrawn claims.
In view of the above noted withdrawal of the restriction requirement, Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all
the limitations of, a claim that is allowable in the present application, such claim may be subject
to provisional statutory and/or nonstatutory double patenting rejections over the claims of the
instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Duplicate Claims
• Applicant is advised that should claim 10 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
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 7, 9, and 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 7, the claim claims a “recording method…comprising a resin dispersant…” However, this is confusing. A recording method cannot “comprise” a dispersant. To correct, the Examiner suggests amending the claim to specify the ink used in the recording method comprises the dispersant. For the purposes of examination, the Examiner is interpreting as such.
In claim 9, the claim claims a “recording method…comprising a silicone-based surfactant.” However, this is confusing. A recording method cannot “comprise” a surfactant. To correct, the Examiner suggests amending the claim to specify the ink used in the recording method comprises the surfactant. For the purposes of examination, the Examiner is interpreting as such.
In claim 11, the claim claims “the non-white ink jet ink composition contains the diol-based organic solvent with a normal boiling point of 220°C or lower.” However, it is unclear whether this limitation is necessitating the exact same solvent to be used in both compositions (e.g., propylene glycol in the non-white ink and propylene glycol in the white ink), or whether the limitation allows for two different diol-based solvents with boiling points of 220°C or lower to be used (e.g., ethylene glycol in the non-white ink and propylene glycol in the white ink). Applicant’s specification seems to suggest either case (see Applicant’s specification at para. 0087), and the Examiner is interpreting as such. To correct, the Examiner suggests amending the claim as follows: “the non-white ink jet ink composition contains a diol-based organic solvent with a normal boiling point of 220°C or lower.”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 4-8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koyanagi et al. (JP-2010030305-A), with reference to the included machine translation (hereinafter referred to as “Koyanagi”).
Regarding claims 8 and 12, Koyanagi teaches a recording method using an ink jet composition (see Koyanagi at pg. 2, para. 5, teaching a recording method of attaching a reaction liquid on a recording medium following by a step of attaching an ink composition; also see Koyanagi at pg. 3, para. 7, teaching the recording method may be an inkjet recording method), the method comprising:
• a white ink adhesion step of ejecting the ink jet ink composition from an ink jet head to cause the ink jet ink composition to adhere to a recording medium (see Koyanagi at pg. 2, para. 5, teaching a step of recording an image by attaching an ink composition; also see Koyanagi at pg. 3, para. 7, teaching the recording method may be an inkjet recording method; also see Koyanagi at pg. 8, last paragraph, teaching the pigment in the ink may be titanium oxide, i.e., a white pigment);
• the recording medium being a low-absorbent recording medium or a non-absorbent recording medium (non-absorbent recording medium, regarding claim 8) (see Koyanagi at pg. 3, second to last paragraph, teaching the substrate may be a non-absorbing recording medium);
• the ink jet composition being an aqueous ink (see Koyanagi at Abstract, pg. 3, last paragraph, and the examples at pg. 15, teaching the ink as being an aqueous ink) including:
• water; a white pigment; an organic solvent; resin particles; an alkanolamine; and an inorganic alkali (see Koyanagi at pg. 3, last paragraph, teaching the ink as containing water, an anionic resin emulsion, a coloring material, and a water-soluble organic solvent; also see Koyanagi at pg. 8, last paragraph, teaching the colorant in the ink may be titanium oxide, i.e., a white pigment; also see Koyanagi at pg. 11, para. 7, teaching the ink composition may contain a tertiary amine and an alkali metal hydroxide; also see Koyanagi at pg. 12, para. 3, teaching triethanolamine as a suitable tertiary amine, which is an alkanolamine; also see Koyanagi at pg. 12, para. 5, teaching sodium hydroxide as a suitable alkali metal hydroxide, which is an inorganic alkali); wherein
• the organic solvent contains a diol-based organic solvent, the diol-based organic solvent contains a diol-based organic solvent with a normal boiling point of 220 °C or lower (see Koyanagi at pg. 10, para. 5, teaching propylene glycol as a suitable solvent; propylene glycol, i.e., 1,2-propanediol, is a diol-based organic solvent with a boiling point of 188 °C, as disclosed by Applicant’s specification at para. 0031);
• a content of the diol-based organic solvent with a normal boiling point of 220 °C or lower is 60% by mass or more with respect to a total mass of the diol-based organic solvent (see Koyanagi at pg. 11, para. 2, teaching the water-soluble organic solvent may be used alone; consequently, Koyanagi necessarily teaches the water-soluble solvent may contain only propylene glycol, or 100% by mass of propylene glycol); and
• the resin particles contain a resin with a glass transition point of 75 °C or lower (see Koyanagi at pg. 4, para. 9, teaching the glass transition point of the resin emulsion to range from 10 °C or lower, which falls completely within the claimed range).
Regarding claim 4, see Koyanagi at pg. 4, para. 3, teaching the resin may be an acrylic resin.
Regarding claims 5-6, see Koyanagi at pg. 11, para. 2, teaching the water-soluble organic solvent may be used alone; consequently, Koyanagi necessarily teaches the water-soluble solvent may contain only propylene glycol, or 100% by mass of propylene glycol; thus, Koyanagi necessarily teaches embodiments where the ink contains 0% of a diol-based organic solvent with a normal boiling point of higher than 230 °C and 0% of an organic solvent other than the diol-based organic solvent.
Regarding claim 7, see Koyanagi at pg. 9, last three paragraphs and pg. 10, para. 1, teaching the pigment in the ink may be dispersed with a dispersant, such as styrene-acrylic acid copolymers; styrene-acrylic acid copolymers necessarily have an acidic group via the “acrylic acid.”
Claim Rejections - 35 USC § 103
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi.
Regarding claim 2, see Koyanagi at pg. 12, para. 3, teaching the content of the tertiary amine (e.g., triethanolamine) to range from 0.1 to 10% by weight in the ink; this range overlaps the claimed range of “1.0% by mass or less,” establishing a prima facie case of obviousness, see MPEP § 2144.05; also see Koyanagi at pg. 12, para. 5, teaching the content of the alkali metal hydroxide (e.g., sodium hydroxide) to range from 0.01 to 5% by weight in the ink; this range overlaps the claimed range of “0.3% by mass or less,” establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 3, see Koyanagi at pg. 11, para. 3, teaching the content of the organic solvent to range from 0.5 to 40% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi, as applied to claim 12 above, and further in view of Seguchi (US-20200207140-A1) (hereinafter referred to as “Seguchi”).
Regarding claim 9, while Koyanagi teaches the recording method according to claim 12 outlined above, Koyanagi fails to explicitly teach the ink as comprising a silicone-based surfactant.
However, Seguchi teaches an aqueous ink composition which may contain a surfactant, such as an acetylene glycol surfactant or a silicone surfactant (see Seguchi at para. 0088). In general, silicone surfactants are ubiquitous in the ink art.
Koyanagi teaches their ink may contain a surfactant (see Koyanagi at pg. 11, para. 4).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add a silicone surfactant like that taught by Seguchi to the ink of Koyanagi, as combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Claims 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi, as applied to claim 12 above, and further in view of Hiraoka et al. (US-20080011189-A1) (hereinafter referred to as “Hiraoka”).
Regarding claims 10 and 13, Koyanagi teaches the recording method according to claim 12 outlined above, wherein the recording method further comprises an ink adhesion step of ejecting an ink composition from the ink jet head to cause the ink jet ink composition to adhere to the recording medium, wherein the ink jet ink composition is an aqueous ink containing water, a pigment, an organic solvent, and resin particles (see Koyanagi at pg. 2, para. 5, teaching a recording method comprising a step of attaching a reaction liquid to a recording medium; also see Koyanagi at pg. 12, para. 9, teaching the reaction liquid as comprising a cationic resin emulsion, i.e., resin particles; also see Koyanagi at pg. 13, para. 10, teaching the reaction solution as comprising a high boiling point organic solvent; also see Koyanagi at pg. 16, teaching an example reaction solution containing water; thus, Koyanagi reasonably teaches their reaction solution to contain water, as exemplified in the example embodiments; also see Koyanagi at pg. 14, para. 8, teaching the reaction liquid may be colored by adding a coloring material or extender pigment; also see Koyanagi at pg. 3, para. 7, teaching the recording method may be an inkjet recording method).
While Koyanagi teaches the recording method above, Koyanagi fails to explicitly teach the reaction liquid to comprise a non-white pigment.
However, Hiraoka teaches an ink set comprising an inkjet ink and a processing liquid (see Hiraoka at para. 0007-0009). Hiraoka further teaches the processing liquid may contain a colorant, and that since the processing liquid contains a colorant, the image density enhancing effect may be obtained (see Hiraoka at para. 0063). Moreover, Hiraoka teaches the colorant in the processing liquid may be one of the pigments described for the inkjet ink, which includes non-white pigments such as yellow pigments (see Hiraoka at para. 0040 and 0095).
Koyanagi teaches the reaction liquid may be colored by adding a coloring material or extender pigment (see Koyanagi at pg. 14, para. 8).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add a non-white pigment, e.g., a yellow pigment, to the reaction liquid of Koyanagi. One of ordinary skill in the art would have been motivated to do so in order to enhance an image density effect (see Hiraoka at para. 0040, 0063, and 0095). Moreover, combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Regarding claim 11, see Koyanagi at pg. 13, para. 10-11, teaching the reaction solution may contain a high boiling point organic solvent, such as propylene glycol; also see Koyanagi at pg. 13, second to last paragraph, teaching the content of the high-boiling point organic solvent ranges from 0.5 to 40 wt% in the reaction solution; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi in view of Hiraoka, as applied to claim 13 above, and further in view of Matsuzaki (US-20190092959-A1) (hereinafter referred to as “Matsuzaki”).
Regarding claim 14, while Koyanagi teaches the recording method according to claim 13 outlined above, Koyanagi fails to explicitly teach the white ink adhesion step as being performed after the non-white ink adhesion step, wherein the ink jet ink composition is caused to adhere to the non-white ink jet ink composition adhering to the recording medium in an overlaid manner.
However, Matsuzaki teaches a recording method comprising attaching a reaction liquid and an ink composition to a recording medium (see Matsuzaki at para. 0166). Matsuzaki further teaches the reaction liquid attaching step may be before, simultaneous with, or after the attachment of the ink composition, and that attaching the reaction liquid before the attachment of the ink composition is preferable in terms of increasing the reactivity with the ink composition (see Matsuzaki at para. 0168). In general, attaching reaction liquids prior to attaching the ink is ubiquitous in the art.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to attach the reaction solution of Koyanagi before the attachment of the ink of Koyanagi. One of ordinary skill in the art would have been motivated to do so in order to increase the reactivity of the reaction solution with the ink composition (see Matsuzaki at para. 0168).
It necessarily follows that once the ink is applied after the reaction solution attaching step, the ink of Koyanagi is overlaid on the reaction solution.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi in view of Hiraoka, as applied to claim 13 above, and further in view of Seguchi.
Regarding claim 15, while Koyanagi teaches the recording method according to claim 13 outlined above, Koyanagi fails to explicitly teach the method as further comprising a drying step of heating the recording medium to a temperature of 60 °C or higher and 90 °C or lower after the non-white ink adhesion step and the white ink adhesion step.
However, Seguchi teaches an ink jet recording method comprising a treatment liquid attachment step and an ink attachment step (see Seguchi at para. 0006). Seguchi further teaches that following these steps, the recording medium may be heated in a postheating step, which allows the water in the aqueous ink to evaporate quickly, producing a good and high-quality image in a short time (see Seguchi at para. 0183). Moreover, Seguchi teaches the surface temperature of the recording medium may range from 60 °C to 120 °C which helps to produce a high quality image in a short time (see Seguchi at para. 0183).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add a postheating step following printing of the reaction solution and ink of Koyanagi, where the recording medium is heated to a temperature of 60 °C to 120 °C. One of ordinary skill in the art would have been motivated to do so in order to evaporate the water quickly, producing a good and high-quality image in a short time (see Seguchi at para. 0183).
This range of 60 °C to 120 °C overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a few potential amendments to overcome the current grounds of rejection. It is noted that these amendments are suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendments won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if any such amendments are added (i.e., allowability is NOT guaranteed following the incorporation of such amendments). Lastly, Applicants may use all or none of such suggestions – they are merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendments further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion 1 (support found at para. 00129 and the examples of Applicant’s specification, which teach an example with a resin having a glass transition temperature of 25 °C):
“…based organic solvent, and
the resin particles contain a resin with a glass transition point ranging from 25°C to 75°C
Amendment Suggestion 2 (support found at para. 0058-0059 of Applicant’s specification):
“…an alkanolamine; and
an inorganic alkali, wherein
the inorganic alkali comprises one or more selected from the group consisting of sodium carbonate, sodium hydrogencarbonate, potassium hydrogencarbonate, monosodium phosphate, monopotassium phosphate, disodium phosphate, and trisodium phosphate, and
a content of the inorganic alkali is 0.3% by mass or less, wherein
the organic solvent contains a diol-based organic solvent…”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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, Amber R Orlando can be reached on 571-270-3149. 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.
/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731