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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 2, 2026, has been entered.
Response to Amendment
Withdrawn Rejections
The objections to claims 2-3, 9 are withdrawn due to Applicant’s amendment on July 2, 2026.
The 35 U.S.C. 112(b) rejection of claim 5 is withdrawn due to Applicant’s amendment and clarification in the response filed on July 2, 2026.
The 35 U.S.C. 102(a/1,2) and 35 U.S.C. 103 rejections of claims 1-10, 13-14 over Fujii as the primary reference, are withdrawn due to Applicant’s amendment and clarifications in the response filed on July 2, 2026.
New Rejections
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7-8, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi (Clarivate Analytics English translation of JP-6701755-B2) in view of Fujii, WO-2019/235141-A1 (US 2021/054223 is used here).
Regarding claim 1, Wakabayashi teaches a primer composition (pretreatment liquid, 5th para of page 2, oil-based ink is made to adhere to the surface of the recording medium which has been subjected to the pretreatment, 2nd para of page 15) for inkjet printing (inkjet recording, 5th para of page 2) on a plastic polymer film (plastic film, 4th last para of page 14), constituted by: a) at least one resin having affinity with the plastic polymer of said film (maleic anhydride resin derivative, 5th para of page 3); b) at least one aliphatic C2-C3 organic mono- or bi-carboxylic acid (acetic acid, propionic acid, lactic acid, para 6 of page 3); and c) a solvent consisting of an organic solvent (5th para of page 2). Wakabayashi fails to be more specific regarding the organic solvent, except to say that it can be a polar organic solvent (2nd para of page 3), and hence fails to teach that it is an aliphatic alcohol that has a boiling point comprised between 35 and 250[Symbol font/0xB0]C.
However, Fujii teaches that a primer composition (the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]) for inkjet printing (ink jet recording [0195]) on a plastic polymer film (impermeable medium include a base material formed of a thermoplastic resin [0167]) contains: a) at least one resin having affinity with the plastic polymer of said film (contains a resin, in this manner, the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]); b) at least one aliphatic organic carboxylic acid ([0060], di-… -valent organic acid, functional group is carboxy group [0062]); and c) an organic solvent which is selected from at least one aliphatic alcohol (examples include polyhydric alcohols 1,2,6-hexanetriol, 1,2-hexanediol, alkyl alcohols having 1 to 4 carbon atoms [0140]) having a boiling point comprised in a range of 80 to 250°C (organic solvent [0250] examples include … polyhydric alcohols represented by … 1,2,6-hexane triol [0251], hexanediol [0254]) which is within the claimed range of between 35 and 250°C, for the purpose of providing the desired combination of prevention of premature drying (anti-drying [00251]), and good wetting of the surface of the substrate ([0249]) which is the plastic polymer film (base material formed of a thermoplastic resin [0167]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided at least one aliphatic alcohol having a boiling point comprised in a range of between 35 and 250°C, in the organic solvent c) of the primer composition for inkjet printing on the plastic polymer film of Wakabayashi, in order to obtain the desired combination of prevention of premature drying, and good wetting of the surface of the plastic polymer film, as taught by Fujii.
Although Wakabayashi, as modified by Fujii, fails to specify that the primer composition for inkjet printing on the plastic polymer film, is a primer composition for digital inkjet printing on the plastic polymer film, this is a recitation of intended use. An intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Wakabayashi, as modified by Fujii, teaches the presently claimed primer composition for inkjet printing on the plastic polymer film, as described above.
Regarding claim 2, Wakabayashi teaches that the plastic polymer film is a general plastic film which includes polypropylene film, polyethylene film, polyethylene terephthalate film and polyvinyl chloride film (4th last para of page 14).
Regarding claim 3, Wakabayashi teaches that the at least one resin having affinity with the plastic polymer of said film a) is selected from acrylic resin (acrylic-modified maleic anhydride resin, 2nd last para of page 2).
Regarding claim 4, Wakabayashi teaches that the at least one aliphatic organic mono-carboxylic acid b) is acetic acid or propionic acid (6th para of page 3).
Regarding claim 7, Wakabayashi teaches that the resin a) is contained in a range of 3% to 16% w/total w of the primer composition as prepared (by mass with respect to the total mass (100% by mass) of the pretreatment liquid, last para of page 2 and 1st para of page 3) which overlaps the claimed range of between 10 and 90%.
Regarding claim 8, Wakabayashi teaches that the at least one organic mono-carboxylic acid is contained in total amounts within a range of 1% to 5% w/total w of the primer composition as prepared (based on the total mass (100 mass%) of the pretreatment liquid, 6th para of page 3) which is within the claimed range of between 1 and 10%.
Regarding claim 13, Wakabayashi teaches that the plastic polymer film is laminated with one or more plastic films of the same or different polymer (surface of which is coated with a hydrophilic polymer, 3rd last para of page 14).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi in view of Fujii, as applied to claims 1-4, 7-8, 13 above, and further in view of Koichi (Clarivate Analytics English translation of JP-4088995-B2).
Wakabayashi, as modified by Fujii, teaches the primer composition for digital inkjet printing on a plastic film, constituted by: a) at least one resin having affinity with the plastic polymer of the plastic film; b) at least one aliphatic C2-C3 organic mono-carboxylic acid; and c) one or more organic solvents having a boiling point that is comprised between 35 and 250[Symbol font/0xB0]C, as described above. Wakabayashi, as modified by Fujii, teaches that the organic solvent c) includes at least one aliphatic alcohol (alkyl alcohols having 1 to 4 carbon atoms [0140], Fujii), but fails to teach that the organic solvent c) consists of and is ethyl acetate.
However, Koichi teaches that in a primer composition (organic primer layer [0079]), an aliphatic alcohol (lower aliphatic alcohols such as methanol, ethanol, isopropanol, n-butanol, and isobutanol [0068] which are alkyl alcohols having 1 to 4 carbon atoms) can be replaced by ethyl acetate, as an organic solvent c) ([0068]), for the purpose of providing the desired ease of handling ([0068]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided ethyl acetate in place of the aliphatic alcohol in the organic solvent c) of the primer composition for digital inkjet printing on a plastic film, of Wakabayashi, as modified by Fujii, in order to obtain the desired ease of handling, as taught by Koichi.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi in view of Fujii, as applied to claims 1-4, 7-8, 13 above, and further in view of Doumaux (US 2019/0233671).
Wakabayashi, as modified by Fujii, teaches the primer composition for digital inkjet printing on a plastic film, constituted by: a) at least one resin having affinity with the plastic polymer of the plastic film; b) at least one aliphatic C2-C3 organic mono-carboxylic acid; and c) one or more organic solvents having a boiling point that is comprised between 35 and 250[Symbol font/0xB0]C, as described above. Wakabayashi teaches that the aliphatic C2 organic mono-carboxylic acid is acetic acid (para 6 of page 3), but fails to teach that it is substituted in the aliphatic chain with a halogen atom, and has a pKa between 0.2 and 5.
However, Fujii teaches that the organic carboxylic acid can have a pKa that is as low as 2.5 ([0063]), for the purpose of providing the desired combination of storage stability, transfer suppression ([0064]) and aggregating property ([0065]).
Doumaux teaches that in a primer composition (fixing composition is suited for use as a pre-treatment undercoat [0060]), the aliphatic C2 organic mono-carboxylic acid which is acetic acid, can be replaced by chloroacetic acid ([0038]) which is the aliphatic C2 organic mono-carboxylic acid that is substituted in the aliphatic chain with a halogen atom, and has a pKa between 0.2 and 5, as disclosed in Applicant’s specification (lines 5-10 of page 5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided an aliphatic C2 organic mono-carboxylic acid that is substituted in the aliphatic chain with a halogen atom, and having a pKa between 0.2 and 5, in place of the aliphatic C2 organic mono-carboxylic acid, having a pKa between 0.2 and 5, in the primer composition for digital inkjet printing on a plastic film, of Wakabayashi, as modified by Fujii, in order to obtain the desired combination of storage stability, transfer suppression and aggregating property, as taught by Doumaux in light of Fujii.
Claims 10,15 are rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi (Clarivate Analytics English translation of JP-6701755-B2) in view of
Fujii, WO-2019/235141-A1 (US 2021/054223 is used here) and Loccufier (US 2019/0367762).
Wakabayashi teaches a primer composition (pretreatment liquid, 5th para of page 2, oil-based ink is made to adhere to the surface of the recording medium which has been subjected to the pretreatment, 2nd para of page 15) for inkjet printing (inkjet recording, 5th para of page 2) on a plastic polymer film (plastic film, 4th last para of page 14), constituted by: a) at least one resin having affinity with the plastic polymer of said film (maleic anhydride resin derivative, 5th para of page 3); b) at least one aliphatic C2-C3 organic mono- or bi-carboxylic acid (acetic acid, propionic acid, lactic acid, para 6 of page 3); and c) a solvent consisting of an organic solvent (5th para of page 2). Wakabayashi fails to be more specific regarding the organic solvent, except to say that it can be a polar organic solvent (2nd para of page 3), and hence fails to teach that it is an aliphatic alcohol that has a boiling point comprised between 35 and 250[Symbol font/0xB0]C.
However, Fujii teaches that a primer composition (the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]) for inkjet printing (ink jet recording [0195]) on a plastic polymer film (impermeable medium include a base material formed of a thermoplastic resin [0167]) contains: a) at least one resin having affinity with the plastic polymer of said film (contains a resin, in this manner, the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]); b) at least one organic carboxylic acid ([0060], di- … valent organic acid, functional group is carboxy group [0062]); and c) an organic solvent which is selected from at least one aliphatic alcohol (examples include polyhydric alcohols 1,2,6-hexanetriol, 1,2-hexanediol, alkyl alcohols having 1 to 4 carbon atoms [0140]) having a boiling point comprised in a range of 80 to 250°C (organic solvent [0250] examples include … polyhydric alcohols represented by … 1,2,6-hexane triol [0251], hexanediol [0254]) which is within the claimed range of between 35 and 250°C, for the purpose of providing the desired combination of prevention of premature drying (anti-drying [00251]), and good wetting of the surface of the substrate ([0249]) which is the plastic polymer film (base material formed of a thermoplastic resin [0167]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided at least one aliphatic alcohol having a boiling point comprised in a range of between 35 and 250°C, in the organic solvent c) of the primer composition for inkjet printing on the plastic polymer film, of Wakabayashi, in order to obtain the desired combination of prevention of premature drying, and good wetting of the surface of the plastic polymer film, as taught by Fujii.
Wakabayashi fails to teach that the primer composition is further constituted by d) titanium dioxide and/or substances capable of imparting white coloration.
However, Loccufier teaches that a primer composition is further constituted by substances that impart white coloration (substrate … polymeric surface … may also be primed, e.g. by a white ink [0109]), including titanium dioxide ([0054]), contained in concentrations comprised within a range of about 15 to about 80% by weight of the total weight of the composition as prepared (total slurry weight [0058]), which is within the claimed range of between 10 and 90% by weight, for the purpose of providing utility in printing on a dark substrate (textile [0054] plastic substrate [0110]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have further constituted d) substances imparting white coloration, including titanium dioxide, in concentrations within a range of between 10 and 90% by weight of the total weight of the composition as prepared, in the primer composition for digital inkjet printing on a plastic film, of Wakabayashi, as modified by Fujii, in order to obtain the desired utility in printing on a dark substrate, as taught by Loccufier.
Although Wakabayashi, as modified by Fujii and Loccufier, fails to specify that the primer composition for inkjet printing on the plastic polymer film, is a primer composition for digital inkjet printing on the plastic polymer film, this is a recitation of intended use. An intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Wakabayashi, as modified by Fujii and Loccufier, teaches the presently claimed primer composition for inkjet printing on the plastic polymer film, as described above.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi (Clarivate Analytics English translation of JP-6701755-B2) in view of Fujii, WO-2019/235141-A1 (US 2021/054223 is used here).
Wakabayashi teaches a primer composition (pretreatment liquid, 5th para of page 2, oil-based ink is made to adhere to the surface of the recording medium which has been subjected to the pretreatment, 2nd para of page 15) for inkjet printing (inkjet recording, 5th para of page 2) on a plastic polymer film (plastic film, 4th last para of page 14), constituted by: a) at least one resin having affinity with the plastic polymer of said film (maleic anhydride resin derivative, 5th para of page 3, poly(meth)acrylic acids, 4th last para of page 4); b) at least one aliphatic C2-C3 organic mono- or bi-carboxylic acid (acetic acid, propionic acid, lactic acid, para 6 of page 3) in a concentration that is within a range of 1 to 5% by weight based on the total weight of the primer composition as prepared (based on the total mass (100 mass%) of the pretreatment liquid, 6th para of page 3) which is within the claimed range of between 1 and 10%; and c) a solvent consisting of an organic solvent (5th para of page 2). Wakabayashi fails to be more specific regarding the organic solvent, except to say that it can be a polar organic solvent (2nd para of page 3), and hence fails to teach that it is ethanol.
However, Fujii teaches that a primer composition (the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]) for inkjet printing (ink jet recording [0195]) on a plastic polymer film (impermeable medium include a base material formed of a thermoplastic resin [0167]) contains: a) at least one resin having affinity with the plastic polymer of said film (contains a resin, in this manner, the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]); b) at least one organic carboxylic acid ([0060], di- … valent organic acid, functional group is carboxy group [0062]); and c) an organic solvent which is ethanol [0254]), for the purpose of providing the desired adjustment to the viscosity ([0254]) in addition to the desired combination of prevention of premature drying (anti-drying [00251]), and good wetting of the surface of the substrate ([0249]) which is the plastic polymer film (base material formed of a thermoplastic resin [0167]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided ethanol in the organic solvent c) of the primer composition for inkjet printing on the plastic polymer film of Wakabayashi, in order to obtain the desired adjustment to the viscosity, in addition to the desired combination of prevention of premature drying, and good wetting of the surface of the plastic polymer film, as taught by Fujii.
In addition, Wakabayashi teaches that the resin a) is contained in a range of 40% w/total w of the primer composition as prepared (maleic anhydride resin derivative … 20% by mass … with respect to the total mass (100% by mass) of the pretreatment liquid, last para of page 2 and 1st para of page 3; together with poly(meth)acrylic acids, 20% by mass … based on the total mass of the pretreatment liquid, 4th last para of page 4) which is within the claimed range of 35-50%. It follows that the organic solvent c), makes up what remains to 100% by weight on the total weight of the composition as prepared.
Although Wakabayashi, as modified by Fujii, fails to specify that the primer composition for inkjet printing on the plastic polymer film, is a primer composition for digital inkjet printing on the plastic polymer film, this is a recitation of intended use. An intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Wakabayashi, as modified by Fujii and Loccufier, teaches the presently claimed primer composition for inkjet printing on the plastic polymer film, as described above.
Response to Arguments
Applicant’s arguments that are directed to the newly amended claims have been considered but are moot because of the new primary reference of Wakabayashi in the new grounds of rejections. Applicant’s arguments regarding the references that continue to be used as secondary reference in the new grounds of rejections are addressed below to advance prosecution.
Applicant argues that Koichi refers to the functional inorganic coating and the possibility of including a solvent in it, and not to the organic primer layer, which is introduced only in para [00079]).
Applicant is respectfully apprised that Wakabayashi, as modified by Fujii, is the primary combination of references that teaches the primer composition in which the solvent includes at least one aliphatic alcohol (alkyl alcohols having 1 to 4 carbon atoms [0140], Fujii), but fails to teach that the solvent is ethyl acetate.
Koichi is the secondary reference which teaches that in a primer composition ([0079]) which is a base coating composition (primer layer may be sufficient as the said film which the said coating base material has on the surface [0080]), an aliphatic alcohol (lower aliphatic alcohol such as methanol, ethanol, isopropanol, n-butanol, and isobutanol [0068] which are alkyl alcohols having 1 to 4 carbon atoms) can be replaced by ethyl acetate, as the organic solvent carrier, for the purpose of providing the desired ease of handling ([0068]).
Therefore, in the absence of a clear showing to the contrary, it would indeed have been obvious to one of ordinary skill in the art at the time, to have replaced the aliphatic alcohol, in the primer composition for digital inkjet printing on a plastic film, of Wakabayashi, as modified by Fujii, with ethyl acetate as the solvent carrier, in order to obtain the desired ease of handling, as taught by Koichi.
Applicant argues that Koichi does not provide any useful teaching regarding increasing adhesiveness of a primer composition of plastic film.
Applicant is respectfully apprised that Koichi does address increasing adhesiveness of a primer composition ([adhesion [0080, 0127]) of plastic film (base material of such a film include PET resin [0085]).
Applicant argues that Koichi does not provide any useful teaching regarding excluding water in favor of low SP solvents.
Applicant is respectfully apprised that the feature upon which Applicant relies (i.e., excluding water in favor of low SP solvents) is not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Loccufier relates to water-based liquids comprising isocyanates, and lacks any indication for using an organic solvent having low SP for increasing adhesiveness on plastic film substrates.
Applicant is respectfully apprised that the feature upon which Applicant relies (i.e., using an organic solvent having low SP for increasing adhesiveness on plastic film substrates) is not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, Applicant is respectfully apprised that Wakabayashi, as modified by Fujii, is the primary combination of references that teaches the primer composition of the newly amended claim 1. Wakabayashi, as modified by Fujii, fails to teach that the primer composition further consists of d) substances imparting white coloration.
Loccufier is the secondary reference which teaches that a primer composition comprises substances that impart white coloration (substrate … polymeric surface … may also be primed, e.g. by a white ink [0109]) in concentrations of about 15 to about 80% by weight of the total weight of the composition prepared, for the purpose of providing sufficient coverage in printing on a dark substrate (plastic substrate [0110]), thus providing the motivation to combine with Wakabayashi, as modified by Fujii.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. WO-0015695-A1 teaches a primer composition for digital inkjet printing on a plastic polymer film, consisting essentially of at least one aliphatic or aromatic C2-C8 organic mono- or bi-carboxylic acid b); and a solvent is selected from the group consisting of: ethyl acetate, ethyl propionate, methyl ethyl ketone, ethanol, and mixtures thereof c) (lines 15-30 of page 4).
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782
Prosecution Insights