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 .
Election/Restrictions
Applicant's election of Group II, claim 11, without traverse in the reply filed on 01/27/2026 is acknowledged. Because Applicants amended the claims to be directed to a single group, the Restriction Requirement dated 12/10/2025 of Groups I-III is hereby withdrawn.
In view of the withdrawal of the restriction requirement as to the rejoined inventions, Applicant(s) are 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 Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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.
Response to Amendment
• Claims 2-11 are currently pending. Claims 1 and 12-14 are canceled.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to multiple abstract ideas without significantly more. Claim 11 recites:
“a content A…satisfies the following Equation (1): Xmin – 5 ≤ A ≤ Xmax + 5 Equation (1),
where…Xmin and Xmax are each a value defined by the following definition 1” (pg. 5, lines 1-6)
“and based on the change in mass…a moisture absorption rate (g/h) of the liquid
composition P1 to the ink Q1 is calculated” (pg. 5, lines 19-21)
“a moisture absorption rate (g/h) of the ink Q1 to the liquid composition P1 is also
calculated” (pg. 5, lines 22-23)
(4) “…and the moisture absorption rates of the liquid compositions and n types of
moisture absorption rates of the ink Q1 corresponding thereto are calculated” (pg. 6, lines 1-3)
“in a graph…an approximate straight line of the moisture absorption rates (g/h) of
the liquid compositions and an approximate straight line of the n types of moisture absorption rates (g/h) of the ink Q1 are formed…a content B located at a point in which…are intersected to each other is represented by X1, in the procedure 3….so that X1, X2, ••• Xm are obtained, and as the definition 1…the maximum value is represented by Xmax, and the minimum
value is represented by Xmin…” (pg. 6, lines 4-20)
For ease, the above limitations will simply be referred to by their corresponding numbers above of (1)-(5).
First, limitation (1) is directed to a mathematical equation that requires a mathematical calculation by plugging in the Xmin and Xmax values into the Equation (1). See MPEP 2106.04(a)(2)(B)-(C). Additionally, limitations (2)-(4) are directed to mathematical calculations, as evidenced by the explicit use of the phrase “is/are calculated” in the limitations. See MPEP 2106.04(a)(2)(I)(C). Moreover, limitation (5) is directed to a mental process, given the graphing step, the observation of the intersecting X1, X2, ••• Xm values, and the determining of Xmin and Xmax are evaluations that may be performed in mind. See MPEP 2106.04(a)(2)(III). Accordingly, all the above limitations (1)-(5) are directed to abstract ideas.
Next, these judicial exceptions are not integrated into a practical application. The claim recites additional elements of:
“providing a water-based maintenance liquid” (pg. 4, line 2);
“the maintenance liquid comprising: water; and a moisturizing agent component
containing at least one type of moisturizing agent, wherein the moisturizing agent component is a water-soluble organic compound” (pg. 4, lines 10-16);
“wherein in the procedure 1, at least three types of liquid compositions…and the at
least two types of water-based ink compositions…are prepared” (pg. 5, lines 7-13);
“a container α in which the liquid composition P1 is received and a container β in
which the ink Q1 is received…are left still in a tightly closed container in an environment at a temperature of 25°C and a relative humidity of 50%” (pg. 5, lines 16-19);
“supplying the maintenance liquid to the cap portion…so as to moisturize the nozzle
surface” (pg. 6, lines 21-23).
Such additional elements (a)-(e) are regarded as both a generic linking to a field of use and insignificant extra-solution activity. For field of use, the maintenance liquid (limitations (a) and (b)) is recited at a high-level of generality, i.e., as containing broadly water and a water-soluble moisturizing agent, such that it amounts to no more than mere application of the claimed calculations to a single field of use of maintenance liquids. Further, the preparation of the liquid compositions, the inks, and the placement of them into containers (limitations (c) and (d)) are mere pre-solution data-gathering steps for the resulting moisture-absorption rate calculation. The specific temperature and humidity values are further generic room temperature and humidity values that do not practically integrate the mathematical calculation steps. Additionally, maintenance liquids are ubiquitously used to moisturize inkjet nozzles and cap portions (limitation (e)), and thus, the supplying of a maintenance liquid to a cap portion is a generic post-solution activity that is merely tangential to the overall calculation/mental processes of limitations (1)-(5). Consequently, the judicial exceptions of limitations (1)-(5) are not integrated into a practical application.
Next, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As mentioned previously above, the additional elements include limitations (a)-(e). Applicant’s specification indicates supplying a maintenance liquid to a cap portion (limitation (e)) to be a well-known step (see Applicant’s specification at para. 0004-0005); further, maintenance liquids containing water and a moisturizing agent for inkjet printers are ”well-known in the art,” as disclosed in US-20160068790-A1 at para. 0007 (limitations (a) and (b)). Thus, these limitations (a), (b), and (e) are well-understood, routine, and/or conventional in the art. Furthermore, the remaining steps of (c) and (d) are merely tangential extra-solution activity or field-of-use, as indicated previously above. Accordingly, the additional elements do not amount to significantly more than the judicial exceptions (1)-(5) above.
Claims 2-10 are also rejected by virtue of their dependency on claim 11.
Claim Interpretation
In claim 11, the claim is written in a manner in which it is ambiguous as to whether the procedures 1-3 are intended to be active steps in the method or not. Thus, the Examiner is opting to treat it both ways, i.e., they may be active steps or not.
It is noted that the above 101 rejection is applied in the interpretation that the procedures 1-3 claimed in claim 11 are active steps in the claim. Later on, in the claim 11 rejection over Curme, the Examiner interprets the procedures 1-3 to be non-active steps, i.e., more akin to a property limitation.
The Examiner encourages Applicants to clarify or amend as to whether the procedures 1-3 are meant to be active steps or not; the resulting 101 and 102 analysis may alter depending on this clarification or amendment.
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 2-11 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 11, pg. 5, line 1; and lines 9-10, the phrase “(percent by mass)” is in parentheses, making it unclear whether such a limitation is optional or not. To correct, the Examiner suggests amending the claim to specify the percent by mass unit without using parentheses, e.g., “, in percent by mass,”. The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, lines 21-22; pg. 6, lines 7-9, 11, 13, and 14, the phrase “(g/h)” is in parentheses, making it unclear whether such a limitation is optional or not. To correct, the Examiner suggests amending the claim to specify the g/h unit without using parentheses, e.g, “, in g/h,”. The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, lines 13-15, the phrase “and the moisturizing agent component of the liquid composition has the same composition as that of the…” lacks sufficient antecedent basis. It is unclear which liquid composition is being referred to, given there are at least three. To correct, the Examiner suggests amending the claim as follows: “and the moisturizing agent component of each respective the…” The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, line 18, the phrase “tightly closed container” is unclear. The term “tightly” is a relative term that is undefined, and it is unclear what tightly actually refers to. To correct, the Examiner suggests deleting the term “tightly.” The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, line 23, the phrase “calculated in a manner similar to that described above” is unclear. “Similar” is a relative term, and it is not apparent what constitutes something “similar” to the calculation. To correct, the Examiner suggests amending the claim as follows: “is also calculated in a same manner as that described above.” The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, line 17, the phrase “the mass thereof being the same” is unclear. It is unclear which “mass” is being referred to – the mass of the liquid composition P1 or the mass of the ink Q1? To correct, the Examiner suggests amending the claim as follows: “the mass of the ink Q1 being the same as that…” The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 6, line 1 and lines 17-18, the phrase “conditions similar to the above conditions” “Similar” is a relative term, and it is not apparent what constitutes something “similar” to the claimed conditions. To correct, the Examiner suggests amending the claim as follows: “the same conditions as the above conditions.” The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 6, lines 9, 10, and 12-14, the phrase “approximate straight line” is unclear. It is unclear what an “approximate straight” line entails. To correct, the Examiner suggests amending the claim to delete all instances of the term “approximate” (i.e., leaving just the word “straight line”). The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 4, lines 2-10, the phrase “…used for a recording apparatus, the recording apparatus being an apparatus to perform recording by ejecting at least two types of water-based ink compositions…to a cap portion which covers the nozzle surface” is an intended use limitation that does not positively limit the claimed maintenance liquid. As such, the phrase “the at least two types of water-based ink compositions” at claim 11, pg. 5, lines 11-12 lacks sufficient antecedent basis, given the phrase “the at least two types of water-based ink compositions” refers to a non-positively recited element within an earlier intended use limitation. To correct, the Examiner suggests amending the claim so that the water-based inks are positively recited earlier in the claim. For the purposes of examination, the Examiner is interpreting the phrase “the at least two types of water-based ink compositions” to refer to the previous inks mentioned in the intended use limitation, and to not be positively recited elements of the claim. Claims 2-10 are also rejected by virtue of their dependency on claim 11. Similarly as above, in claim 11, pg. 6, last three paragraphs, the phrase “the cap portion which covers the nozzle surface of the ink jet head of the recording apparatus” lacks sufficient antecedent basis given the phrase refers to non-positively recited element(s) within an earlier intended use limitation. To correct, the Examiner suggests amending the claim so that the recited elements are positively recited earlier in the claim. For the purposes of examination, the Examiner is interpreting the phrase “the cap portion which covers the nozzle surface of the ink jet head of the recording apparatus” to not be positively recited in the claim. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, lines 5-6, the phrase “where when the following procedures 1 to 3 are performed” generates confusion. The claim as written may suggest the procedures 1-3 to be optional (“when [the procedures] are performed”); however, in the case that the procedures are NOT performed, the Equation (1) becomes undefined, as there is no clear indication what Xmin or Xmax are in the event the procedures are not performed. As such, an indefinite issue arises. For the purposes of examination, the Examiner is interpreting Xmin and Xmax to refer solely to the procedures 1-3 being performed. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, lines 20-23, the phrase “moisture absorption rate (g/h) of the liquid composition P1 to the ink Q1 is calculated” and the phrase “moisture absorption rate (g/h) of the ink Q1 to the liquid composition P1 is also calculated” are unclear. It is unclear how the moisture absorption rate of the ink Q1 is directed to the liquid composition. To correct, the Examiner suggests amending the phrases as follows: (1) “moisture absorption rate (g/h) of the liquid composition P1 1
In claim 11, pg. 6, lines 19-20, the phrases “the maximum value” and “the minimum value” lack sufficient antecedent basis, given there is no previous mention of these values. To correct, the Examiner suggest amending the claim as follows: “…as the definition 1, of among X1, X2, ••• Xm thus obtained is represented by Xmax and the minimum value of among X1, X2, ••• Xm thus obtained is represented by Xmin…” For the purposes of examination, the Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 11, pg. 5, line 24 and pg. 6, line 16, the phrases “except for that the liquid composition P1 is changed” and “except for that the ink Q1 is changed” are confusing. The phrase “except for that” leads to confusion as to whether the step is actually performed or not, i.e., whether it is an active step. For the purposes of examination, the Examiner is interpreting the claim to refer to composition P1 being switched out with the next composition, i.e., a step being performed. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claims 2, 3, 6, and 7, the phrase “(percent by mass)” is in parentheses, making it unclear whether such a limitation is optional or not. To correct, the Examiner suggests amending the claim to specify the percent by mass unit without using parentheses, e.g., “, in percent by mass,”. The Examiner is interpreting as such. Claims 2-10 are also rejected by virtue of their dependency on claim 11.
In claim 8, the content range for the colorant is claimed to be “7.0 percent by mass or more”; however, this encompasses a value including 100% by mass, which is impossible, given that the inks must contain water. To correct, the Examiner suggests amending the claim to read: “…7.0 percent by mass or more and 15.0 percent by mass or less.” See Applicant’s specification at para. 0116.
In claims 2-10, the preamble of each claim recites “The maintenance liquid according to claim 11”; however, claim 11 recites a maintenance method and not a maintenance liquid. Accordingly, a discrepancy exists between the preambles of claims 2-10 and that of claim 11. To correct, the Examiner suggests amending the preamble of claims 2-10 to recite “The maintenance method according to claim 11…”
It is noted that all suggestions made by the Examiner are cursory suggestions made after a brief look, and may or may not resolve the 112(b) issues presented above.
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 2-8 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Curme et al. (Curme, George O., et al. Glycols. Reinhold Publishing Group, 1952. https://babel.hathitrust.org/cgi/pt?id=mdp.39015002066663&seq=) (hereinafter referred to as “Curme”), with evidence from Ito et al. (US-20190300742-A1) (hereinafter referred to as “Ito”) as to the rejection of claim 5 only.
Regarding claim 11, Curme teaches the formation of aqueous propylene glycol solutions starting at 0 wt% and going all the way to 100 wt% in increments of 5 wt% (see Curme at pg. 231), see the table below:
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Accordingly, at least one of the aqueous compositions of Curme necessarily read on the claimed maintenance liquid, where propylene glycol corresponds to the claimed “water-soluble moisturizing agent.” This is because the content A in the Equation (1) is in increments of plus-or-minus five, and thus, at least one of the aqueous compositions of Curme necessarily satisfies the Equation (1).
It is noted that the “used for a recording apparatus…which covers the nozzle surface” limitation (claim 11, pg. 4, lines 2-10) is a recitation of intended use. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Further, it necessarily follows that the propylene glycol aqueous solution of Curme suitably functions as a maintenance liquid like that claimed, given the compositions of Curme contain all the claimed limitations for the maintenance liquid (propylene glycol suitably functions as a moisturizing agent, see Applicant’s specification at para. 054). See MPEP § 2111.
Moreover, the procedures 1 to 3 do not appear to be active steps of the claim, given the claim reads “when the following procedures are performed.” Accordingly, given that the aqueous propylene glycol solutions of Curme encompass all possible content variations from the Equation (1), the procedures 1-3 limitations necessarily are satisfied. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Lastly, the final step of “supplying the maintenance liquid…so as to moisturize the nozzle surface” (claim 11, pg. 6, last three lines) is not a positively recited element of the claim, see the relevant interpretation set forth in the 112(b) rejection above.
Regarding claim 2, the table of Curme teaches an aqueous propylene glycol solution of 25 wt% (see Curme at pg. 231). Propylene glycol is measured by Applicants to have an Xmin and Xmax range of 22.4 to 27.4 (see Applicant’s specification at pg. 73). Accordingly, the 25 wt% propylene glycol solution of Curme reads on the claim, given that 25 wt% falls between 22.4 and 27.4 wt%.
Regarding claim 3, Curme teaches an aqueous propylene glycol solution of 25 wt% (see Curme at pg. 231). Propylene glycol is measured by Applicants to have an Xmin and Xmax range of 22.4 to 27.4 (see Applicant’s specification at pg. 73); plugging these values into the claim 3 equation gives: 22.4 + [(27.4 – 22.4)/4] ≤ 25 ≤ 27.4 - [(27.4 – 22.4)/4] [Wingdings font/0xE0] 23.65 ≤ 25 ≤ 26.15. Thus, the 25 wt% propylene glycol solution of Curme satisfies the claim 3 equation.
Regarding claims 4, 8, and 10, the claimed “the at least two types of water-based ink compositions” is not a positively recited limitation of the claim, given they fall within the intended use recitation earlier in claim 11. Accordingly, the propylene glycol aqueous solutions of Curme necessarily read on the claim (also see 112(b) rejections above).
Regarding claim 5, propylene glycol has a boiling point of 188 °C, as evidenced by Ito at para. 0066.
Regarding claim 6, Curme teaches an aqueous propylene glycol solution of 25 wt% (see Curme at pg. 231), which falls within the claimed range.
Regarding claim 7, propylene glycol is measured by Applicants to have an Xmin and Xmax range of 22.4 to 27.4 (see Applicant’s specification at pg. 73), for a difference of 5, which falls within the claimed range.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code 102 not included in this action can be found earlier above.
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.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Curme, or, in the alternative, under 35 U.S.C 103 as obvious over Curme in view of Kawada et al. (US-4176361-A) (hereinafter referred to as “Kawada”).
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Regarding claim 9, Curme teaches 25 wt% solutions of propylene glycol containing an antiseptic (see Curme at pg. 245), see below:
Accordingly, Curme necessarily teaches their propylene glycol solution may contain an antiseptic.
In the alternative, it is generally well-known to include antiseptic agents into a variety of applications, including in propylene glycol-containing compositions, in order to prevent the growth of bacteria (see Kawada at col. 3, lines 38-40; and col. 4, lines 3-16).
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 an antiseptic agent to the propylene glycol aqueous solutions of Curme. One of ordinary skill in the art would have been motivated to do so in order to prevent the growth of bacteria over time, e.g., during storage (see Kawada at col. 4, lines 3-16).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Voets et al. (US-20160068790-A1) teach a maintenance liquid (see Voets at Abstract).
Ota (US-20070132807-A1) teaches a maintenance liquid (see Ota at Abstract).
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.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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