DETAILED ACTION
Response to Amendments
In response to the amendment received on 10/09/2025:
• Claims 1-10 and 12-15 are currently pending. Claim 11 is canceled. Claims 14-15 are withdrawn for being directed to a non-elected invention(s). The objection to claim 1 is withdrawn in light of the amendments to the claims.
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 Interpretation
For the purposes of examination, the Examiner is interpreting the phrase in claim 1 “a nonzero amount of less than 20 wt.%” to refer to a range of greater than 0 wt.% to less than 20 wt.%.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-10 and 12-13 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.
Claim 1 was amended to recite the polyethylene glycol as “having a number (average molecular weight) of at least 600”, which is not supported by the original disclosure. There is no discussion in the original disclosure of a number average weight of the polyethylene glycol. Accordingly, a new matter issue arises. Claims 2-10 and 12-13 are also rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 112(b)
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 1-10 and 12-13 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 1, the phrase “(number average molecular weight)” is in parentheses, leading to confusion as to whether such a limitation is optional or not. Furthermore, without this clarification, the claimed term “number” is unclear (what does “number of at least 600” refer to?). For the purposes of examination, the Examiner is interpreting the “number” to refer to the number average molecular weight. Claims 2-10 and 13-14 are also rejected by virtue of their dependency on claim 1.
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 1-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (JP-2009215506-A), with reference to the previously included machine translation (hereinafter referred to as “Ogawa”), in view of Mukai et al. (US-20080152877-A1) (hereinafter referred to as “Mukai”), with evidence from Neutronco (“Polyethylene Glycol 600(PEG 600).” Neutronco, neutronco.com/en/product/polyethylene-glycol-600peg-600/) (hereinafter referred to as “Neutronco”) as to the rejection of claims 1-10 and 12-13 only, with evidence from Namba et al. (US-20150174920-A1) (hereinafter referred to as “Namba”) as to the rejection of claims 1-10 and 12-13 only, and with evidence from Iraqi et al. (US-20190382606-A1) (hereinafter referred to as “Iraqi”) as to the rejection of claims 12-13 only.
Regarding claims 1-2, and 7, Ogawa teaches a digital ink composition formulated for inkjet printing on fabrics (see Ogawa at para. 0009, teaching an ink for textile printing; also see Ogawa at para. 0033, teaching the ink may be discharged by an inkjet method), comprising:
• a dispersed pigment; a binder/adhesion promoting agent; a crosslinking agent; an aqueous carrier (see Ogawa at para. 0012, teaching the ink as containing a pigment, a binder, a crosslinking agent, and water; also see Ogawa at para. 0025, teaching the ink may further include a dispersant to disperse the pigment);
• 0.4-10 wt.% of non-volatile organic compound (VOC substitute) being a thickener, a rheology modifier and/or a humectant, having a boiling point higher than 250 °C; wherein said VOC substitute is a polymeric compound that functions to provide viscosity adjustment and/or moisture retention in the composition and is a polyethylene glycol having a number (average molecular weight) of at least 600 (see Ogawa at para. 0030 and 0031, teaching the ink may contain a water-soluble organic solvent from the viewpoint of viscosity adjustment and moisturizing effect; also see Ogawa at para. 0030, teaching polyethylene glycol having an average molecular weight of 600, i.e., polyethylene glycol 600, as a suitable solvent; polyethylene glycol 600 has a boiling point of ~270 °C, as evidenced by Neutron at pg. 3; also see Ogawa at para. 0031, teaching the water-soluble organic solvent may be used alone; accordingly, Ogawa necessarily teaches embodiments in which polyethylene glycol 600 is used alone as the solvent; also see Ogawa at para. 0031, teaching the content of the organic solvent to range from 1 – 80 wt% in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
While Ogawa teaches the ink according to claim 1 outlined above, Ogawa fails to explicitly teach the ink as containing a nonzero amount of less than 20 wt% of a volatile organic compound having a boiling point of less than 250 °C (less than 15 wt%, regarding claim 2) (essentially devoid, regarding claim 7).
However, Mukai teaches a water-based ink composition (see Mukai at para. 0013). Mukai further teaches the ink may contain a wetting agent, such as a polyhydric alcohol like hexylene glycol (see Mukai at para. 0082-0084). Moreover, Mukai teaches the content of the wetting agent to range from 0 to 20.0 wt% in the ink, and that by setting the content to such a range, the clogging of the nozzle can be prevented, and ejection stability can be ensured (see Mukai at para. 0085).
Ogawa teaches that in addition to their previously mentioned components, their ink can contain a wetting agent, such as a polyhydric alcohol (see Ogawa at para. 0032).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hexylene glycol polyhydric alcohol of Mukai as a wetting agent in the ink of Ogawa in an amount ranging from 0 to 20 wt%. One of ordinary skill in the art would have been motivated to do so in order to prevent clogging of the nozzles and ensure ejection stability (see Mukai at para. 0085). Moreover, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
This range of 0 to 20 wt% overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05. Further, hexylene glycol has a boiling point of 197 °C, as evidenced by Namba at para. 0061.
Regarding claim 3, see Ogawa at para. 0031, teaching the water-soluble organic solvent may be used alone; accordingly, Ogawa necessarily teaches embodiments in which polyethylene glycol 600 is used alone as the solvent; thus, the content of the other solvents, e.g., the glycols listed in claim 3, would be 0 wt% in such an embodiment.
Regarding claim 4, Ogawa does not teach the presence of toluene in their ink, and thus, the ink reads on the claim (note the claim indicates “any one of”)).
Regarding claim 5, see Ogawa at para. 0042, teaching the printing as being performed by an inkjet recording method; thus, it necessarily follows that the ink of Ogawa meets the claimed limitations, as the ink is taught as suitable for use in an inkjet printing process.
Regarding claim 6, see Ogawa at para. 0040, teaching the surface tension of the ink to range from 30 to 50 mN/m; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 8, with respect to the oscillation test values, such is notably a property of the resulting composition. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, burden of proof is shifted to Applicants to show the ink of modified Ogawa as not meeting the oscillation test value properties as claimed.
Regarding claim 9, see Example 8 of Ogawa at Table 1 at para. 0050; Example 8 contains 4.5 wt% of pigment, 6.75 wt% of resin, and 2.25 wt% of crosslinking agent, for a total solids content of 13.5 wt%; this value falls completely within the claimed range; thus, Ogawa reasonably suggest to select values that fall within the claimed range, as exemplified in the example embodiments.
Regarding claim 10, see Ogawa at para. 0039, teaching the viscosity to range from 1 to 30 mPa; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 12-13, see Example 8 of Ogawa at Table 1 at para. 0050, teaching the presence of water-dispersible resin (4); water-dispersible resin (4) is a commercially available product, Takelac WS-6021, see Ogawa at Table 3 at para. 0053; Takelac WS-6021 is a “high acid number” agent, which are known to suitably be used as alkali-soluble agents, as evidenced by Iraqi at para. 0187-0188 and Table 2 at para. 0231; accordingly, it necessarily follows that the Takelac WS-6021 in Example 8 of Ogawa is alkali-soluble; thus, Ogawa reasonably suggests to use an alkali-soluble binder/adhesive agent in their ink, as exemplified in their example embodiments via the use of Takelac WS-6021.
Claims 1-5, 7, 8, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Loccufier et al. (US-20220049116-A1) (hereinafter referred to as “Loccufier”), with evidence from Iraqi as to the rejection of claims 12-13 only.
Regarding claims 1, 2, and 7, Loccufier teaches a digital ink composition formulated for inkjet printing on fabrics (see Loccufier at para. 0017 and 0118), comprising:
• a dispersed pigment; a binder/adhesion promoting agent; a crosslinking agent; an aqueous carrier (see Loccufier at para. 0077 and 0086, teaching the ink may include a pigment and a polymeric dispersant; also see Loccufier at para. 0097, teaching the ink may include a resin to improve adhesion of the pigment to the substrate; also see Loccufier at para. 0066, teaching the presence of a crosslinking agent; also see Loccufier at para. 0075, teaching the ink as including an aqueous medium);
• 0.4-10 wt.% of non-volatile organic compound (VOC substitute) being a thickener, a rheology modifier and/or a humectant, having a boiling point higher than 250 °C, wherein said VOC substitute is a polymeric compound that functions to provide viscosity adjustment and/or moisture retention in the composition and is pullulan (see Loccufier at para. 0109, teaching the ink may include a thickener for viscosity regulation; also see Loccufier at para. 0110, teaching pullulan as a suitable thickener; since pullulan is claimed as a suitable VOC substitute, it necessarily follows it meets the claimed boiling point range; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); further, a thickener necessarily imparts a viscosity adjustment function; also see Loccufier at para. 0111, teaching the thickener as being added in an amount ranging from preferably 0.1 to 10 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• a nonzero amount of less than 20 wt% of a volatile organic compound having a boiling point of less than 250 °C (less than 15 wt%, regarding claim 2) (essentially devoid, regarding claim 7) (see Loccufier at para. 0104, teaching the ink may contain a humectant, such as diethylene glycol, in an amount ranging from 0.1 to 20 wt%; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05; diethylene glycol has a boiling point of less than 250 °C, as disclosed by Applicant’s specification at pg. 12, 2nd to last paragraph).
Regarding claim 3, Loccufier does not necessitate the presence of any of these solvents in their ink; accordingly, Loccufier necessarily reads on the claims.
Regarding claim 4, Loccufier does not necessitate the presence of toluene in their ink; accordingly, Loccufier necessarily reads on the claims.
Regarding claim 5, see Loccufier at para. 0113, teaching the ink may be used as an inkjet ink in an inkjet printing process; accordingly, it necessarily follows that the ink meets at least one of the limitations as claimed.
Regarding claim 8, with respect to the oscillation test values, such is notably a property of the resulting composition. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, burden of proof is shifted to Applicants to show the ink of Loccufier as not meeting the oscillation test value properties as claimed.
Regarding claims 12 and 13, see Loccufier at para. 0097 and 0100, teaching the resin (i.e., the binder/adhesion promoting agent) may be an acrylic resin, such as Joncryl 538; Joncryl 538 is an alkali-soluble agent, as evidenced by Iraqi at para. 0217.
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Loccufier, as applied to claim 1 above, and further in view of Blease et al. (US-20220153047-A1) (hereinafter referred to as “Blease”).
Regarding claims 6 and 10, while Loccufier teaches the ink according to claim 1 outlined above, Loccufier fails to explicitly teach the ink as being characterized by having a Brookfield viscosity of less than 25 centipoises at printing temperature (regarding claim 6), and having a viscosity ranging from 10-15 cP (regarding claim 10).
However, Blease teaches an ink having pigment, a water dispersible anionic polymeric resin, a water soluble zero volatile organic compound solvent with a boiling point of 250 °C or greater, a crosslinking agent, and water (see Blease at para. 0053 and Abstract). Blease further teaches their ink may include an adhesion promoter (see Blease at para. 0115). Moreover, Blease teaches that most inkjet printers require inks with viscosities in the range of 2-20 cps (see Blease at para. 0014). Additionally, Blease teaches their viscosity may be measured via Brookfield at a temperature of 25 °C (see Blease at para. 0119).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the viscosity (including the Brookfield viscosity) of the inkjet ink of modified Loccufier to range from 2-20 cps. One of ordinary skill in the art would have been motivated to do so in order for the ink to suitably be used in an inkjet printer (see Blease at para. 0058).
This range of 2-20 cps falls within or overlaps the claimed ranges, 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 Loccufier, as applied to claim 1 above, and further in view of Taguchi et al. (US-20070266890-A1) (hereinafter referred to as “Taguchi”).
Regarding claim 9, while Loccufier teaches the ink according to claim 1 outlined above, Loccufier fails to explicitly teach a total amount of solids to range from 10-30 wt.% of the total weight of the composition.
However, Taguchi teaches an ink set containing aqueous inks (see Taguchi at para. 0012 and 0015). Taguchi further teaches the non-volatile content (i.e., the solids content) of the ink to range from preferably 20 to 60% by weight for ensuring the jet-out stability of the ink and ensuring the good print quality thereof especially in point of the image blurring resistance of the printed matter (see Taguchi at para. 0460).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the non-volatile content (i.e., solids content) of the ink of Loccufier to range from 20 to 60 wt%. One of ordinary skill in the art would have been motivated to do so in order to ensure the jet-out stability of the ink and ensure the good print quality thereof especially in point of the image blurring resistance of the printed matter (see Taguchi at para. 0460).
This range of 20 to 60 wt% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 10/09/2025 have been fully considered. The Examiner agrees that the amendments to the claims overcome the previous grounds of rejection; however, new grounds of rejection are presented above. To the extent that Applicant’s arguments apply to the new grounds of rejection, they are addressed below:
First, Applicants argue Ogawa’s VOC-heavy solvent system contradicts the low-VOC objective described in the present invention (see Applicant’s Remarks at pg. 6).
However, the concentrations taught by modified Ogawa overlap the claimed ranges, establishing a prima facie case of obviousness. Accordingly, modified Ogawa necessarily teaches embodiments where the ink is a “low-VOC” ink. Further, nothing in Ogawa necessitates their ink to contain a large amount of VOCs. Consequently, modified Ogawa reads on the claims.
Next, Applicants argue there is no teaching to use pullulan in Loccufier as a humectant or rheology modifier, where the pullulan provides moisture retention or viscosity stabilization (see Applicant’s Remarks at pg. 6).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The pullulan in Loccufier is taught to be used as a thickener (see Loccufier at para. 0109-0110). A thickener is necessarily a rheology modifier and provides a function as a viscosity adjuster. Further, pullulan is the same compound as claimed by Applicants, and thus necessarily is capable of meeting the claimed function. See MPEP § 2114. Consequently, the pullulan of Loccufier reads on the claims.
Lastly, Applicants argue Taguchi relates to a different ink compared to the claimed ink, and that an ink’s solid content must be adjusted to balance viscosity, jetting behavior, drying performance, and textile adhesion, which are goals distinct from Taguchi (see Applicant’s Remarks at pg. 7). Moreover, Applicant’s argue the selection of 10 to 30 wt% solids is not rendered obvious by Taguchi’s broader 20 to 60 wt% range (see Applicant’s Remarks at pg. 7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Taguchi explicitly teaches the solid content range to improve jetting stability (i.e., jetting behavior) and to ensure good print quality (see Taguchi at para. 0460). Applicants point to no concrete evidence or specific teaching in Taguchi indicating why one of ordinary skill would not have a reasonable expectation of success of incorporating the solid content teachings of Taguchi in Loccufier. Applicants merely broadly refer to Taguchi as having a “different system architecture,” which is insufficient. Further, Applicants have provided no evidence of criticality related to the claimed solid content range.
Conclusion
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). Applicant is 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 extension fee 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 date of this final action.
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.
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/J.E.B./
Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731