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 I, claims 1-10, without traverse in the reply filed on 06/09/2026 is acknowledged.
Claims 11-14 are canceled. Election was made without traverse in the reply filed on 06/09/2026.
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 5-8 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 5, the term “corrosive” is a relative term which renders the claim indefinite. The term “corrosive” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what constitutes when a material is “corrosive” or not. For the purposes of examination, the Examiner is interpreting any water-soluble anion or an organic compound having an anionic group to be corrosive, e.g., an acid dye (see Applicant’s specification at pg. 3, lines 26-29). To correct, the Examiner suggests deleting the claim. Claim 6 is also rejected by virtue of its dependency on claim 5.
In claim 7, the phrase “wherein the ink vehicle comprises 5 to 50 wt.% of one or more co-solvents” is confusing. The phrase is written to suggest the concentration is with respect to the ink vehicle, and not with respect to the entire ink. However, Applicant’s specification appears to intend this concentration to be with respect to the entire ink, and not simply the ink vehicle (see Applicant’s specification at pg. 10, lines 13-14). Accordingly, confusion arises as to whether the claimed concentration is with respect to the entire ink or simply the ink vehicle. For the purposes of examination, the Examiner is interpreting the claimed concentration to be with respect to the entire ink. To correct, the Examiner suggests amending the claim as follows: “…wherein the ink vehicle comprises, wherein the one or more co-solvents are present in the ink in a range of 5 wt.% to 50 wt.%.”
Similarly, in claim 8, the phrase “wherein the ink vehicle comprises 0.05 to 2 wt.% of at least one surfactant” is confusing. The phrase is written to suggest the concentration is with respect to the ink vehicle, and not with respect to the entire ink. However, Applicant’s specification appears to intend this concentration to be with respect to the entire ink, and not simply the ink vehicle (see Applicant’s specification at pg. 11, lines 11-12). Accordingly, confusion arises as to whether the claimed concentration is with respect to the entire ink or simply the ink vehicle. For the purposes of examination, the Examiner is interpreting the claimed concentration to be with respect to the entire ink. To correct, the Examiner suggests amending the claim as follows: “…wherein the ink vehicle comprises, wherein the at least one surfactant is present in the ink in a range of 0.05 wt.% to 2 wt.%.”
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 1, 2, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ootsuka et al. (US-20150299486-A1) (hereinafter referred to as “Ootsuka”).
Regarding claims 1 and 2, Ootsuka teaches an inkjet ink comprising: an aqueous-based ink vehicle; and 5 to 250 ppm of a polyvinyl alcohol (10 to 200 ppm, regarding claim 2) (see Ootsuka at para. 0019 and 0081, teaching an ink which may be used in an ink jet system; also see example Ink 39 of Ootsuka at Table 3 at pg. 11-12, teaching an example ink containing 0.01 mass% of poly(vinyl alcohol), and 73.99 mass% of water; 0.01 mass% is equivalent to 100 ppm; accordingly, example Ink 39 of Ootsuka reads on the claim).
Regarding claims 7-8, see example Ink 39 of Ootsuka at Table 3 at pg. 11-12, which contains 20 mass% of glycerin (co-solvent) and 1 mass% of surfactant.
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 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami et al. (US-20100092673-A1) (hereinafter referred to as “Kawakami”).
Regarding claims 1-2, Kawakami teaches an inkjet ink comprising: an aqueous-based ink vehicle; and 5 to 250 ppm of a polyvinyl alcohol (10 to 200 ppm, regarding claim 2) (see Kawakami at para. 0029, teaching an inkjet ink containing water and a water-soluble polymer thickening agent; also see Kawakami at para. 0039, teaching the water-soluble polymer thickening agent to preferably be polyvinyl alcohol; also see Kawakami at para. 0050, teaching the content of the water-soluble polymer thickening agent to range from preferably 0.01% by weight to 5% by weight; this range of 0.01% by weight to 5% by weight is equivalent to a range of 100 ppm to 50,000 ppm; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 3, see Kawakami at para. 0039, teaching the molecular weight of the water-soluble polymer thickening agent (i.e., polyvinyl alcohol) to range from preferably 3,000 to 50,000; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 4, see Kawakami at para. 0038, teaching the degree of saponification (i.e., the degree of hydrolysis) of the polyvinyl alcohol to range from preferably 50% or higher; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 5-6, see Kawakami at para. 0069-0070 and 0073, teaching the ink may contain an acid dye, such as Acid Red 88.
Regarding claim 7, see Kawakami at para. 0062, teaching the ink may contain a water-soluble organic solvent in an amount ranging from preferably 5 to 50% by weight, which is equal to the claimed range.
Regarding claims 9-10, see Kawakami at para. 0029; Kawakami does not necessitate the presence of an additional resin or polymer in their ink; accordingly, Kawakami necessarily teaches their ink may be absent the claimed polymers; moreover, Kawakami teaches an example ink, magenta liquid (M-101), which does not contain additional polymers (see Kawakami at para. 0266), reasonably suggesting their ink to be absent such additional polymers.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kawakami, as applied to claim 1 above, and further in view of Taguchi et al. (JP-2004331871-A), with reference to the included machine translation (hereinafter referred to as “Taguchi”).
Regarding claim 8, Kawakami teaches their ink may contain a surfactant as an additive (see Kawakami at para. 0118). However, Kawakami fails to explicitly teach a content of the surfactant to range from 0.05 to 2 wt%.
However, Kawakami does teach that the content of their additives, which includes the surfactant, is as described in JP-A No. 2004-331871, aka, Taguchi (see Kawakami at para. 0118). Taguchi teaches an inkjet ink (see Taguchi at para. 0001). Taguchi further teaches the ink may contain a surfactant, and that the content of the surfactant may range from preferably 0.01 to 5% by mass (see Taguchi at para. 0342 and 0379).
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 a surfactant in an amount ranging from 0.01 to 5% by mass in the ink of Kawakami, because Taguchi teaches a surfactant content of 0.01 to 5% by mass, and Kawakami teaches their additive concentrations (including for the surfactant) may be like those taught by Taguchi (see Kawakami at para. 0118).
This range of 0.01 to 5% by mass overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Saito et al. (US-20120212536-A1) teach an ink composition (see Saito 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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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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