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 .
Claim Objections
Claim 2 is objected to because of the following informality:
• Claim 2 should be amended as follows: “The ink jet ink composition according to claim 1…”
Appropriate correction is required.
Claim Interpretation
For the purposes of examination, the Examiner is interpreting the organic solvent in claim 9 to require three components: first, at least one selected from the group consisting of 1-(2-hydroxyethyl)-2-pyrrolidone and 2-pyrrolidone; second, the compound represented by formula (1); and third, at least one selected from the group consisting of alkanediols with three or more and six or fewer carbons and glycol ethers represented by formula (2).
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 1-8 and 10 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 “the ink jet ink composition contains, as the organic solvent, at least one selected from the group consisting of 1-(2-hydroxyethyl)-2-pyrrolidone and 2-pyrrolidone and a compound represented by formula (1) below” is confusingly worded. It is unclear whether the “compound represented by formula (1)” is part of the Markush grouping or not; the claims are written to suggest it is, while the specification seems to suggest the ink necessitates the presence of the compound of formula (1) (see Applicant’s specification at para. 0042). To correct, the Examiner suggests amending the claim as follows: “the ink jet ink composition contains, as the organic solvent, a compound represented by formula (1) below, and at least one selected from the group consisting of 1-(2-hydroxyethyl)-2-pyrrolidone and 2-pyrrolidone
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, 2, 5-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Oki et al. (US-20210301155-A1) (hereinafter referred to as “Oki”) in view of Musa et al. (US-20160271254-A1) (hereinafter referred to as “Musa”).
Regarding claims 1, 6, and 7, Oki teaches an ink jet ink composition comprising at least one dye, an organic solvent, and water, wherein: the ink jet ink composition contains, as the organic solvent, at least one selected from the group consisting of 1-(2-hydroxyethyl)-2-pyrrolidone and 2-pyrrolidone (wherein the dye is at least one water-soluble dye, regarding claim 6) (wherein the water-soluble dye is an acid dye, regarding claim 7) (see Oki at para. 0010 and 0012, teaching an ink jet ink containing a water-soluble dye, such as an acid dye, an organic solvent, water, and N-hydroxyethylpyrrolidone (i.e., 1-(2-hydroxyethyl)-2-pyrrolidone)).
While Oki teaches the ink outlined above, Oki fails to explicitly teach the ink as containing a compound represented by formula (1).
However, Musa teaches asymmetrical N-alkyl lactam ethers suitable for use as solvents (see Musa at Abstract and para. 0002). Musa further teaches the lactam ethers may be used as solvents in ink jet ink compositions, including with dye co-ingredients (see Musa at para. 0093-0094 and 0156). Moreover, Musa teaches the following lactam as a suitable lactam ether (see Musa at para. 0063):
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Oki teaches their ink composition may contain an organic solvent other than the N-hydroxyethylpyrrolidone, and that such suitable other solvents include cyclic amides (see Oki at para. 0051 and 0061-0062).
In this case, the use of the above lactam (i.e., cyclic amide) compound as a solvent for an ink jet ink composition is known in the art (as exemplified by Musa at para. 0063, 0093-0094, and 0156) and thus its use in the ink of Oki as a cyclic amide solvent would yield a reasonable expectation of success.
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 compound of Musa as a cyclic amide solvent in the ink of Oki, 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.
The above compound reads on the claimed compound represented by formula (1).
Regarding claim 2, see Oki at para. 0043, teaching the content of the N-hydroxyethylpyrrolidone to range from 0.5 to 30 mass%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 5, see Oki at para. 0056.
Regarding claim 8, see Oki at para. 019, teaching the content of the dye to range from preferably 5 to 15 mass%, which falls within the claimed range.
Regarding claim 10, see Oki at para. 0101.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Oki in view of Musa, as applied to claim 1 above, and further in view of Aoki et al. (US-20080028980-A1) (hereinafter referred to as “Aoki”).
Regarding claim 3, while Oki as modified by Musa teaches the ink according to claim 1 outlined above, modified Oki fails to explicitly teach an amount of the compound represented by the formula (1) in the ink to range from 0.01% by mass to 3.0% by mass.
However, Aoki teaches an ink composition containing a cyclic amide solvent (see Aoki at para. 0016). Aoki further teaches the cyclic amide solvent functions as a humectant to maintain ejection stability (see Aoki at para. 0059). Moreover, Aoki teaches the content of the cyclic amide to range from 0.1 to 40 wt% in the ink, and that this content is effective in preventing clogging or ensuring ejection stability, and further that an excessive increase in the content thereof may cause drying defects (see Aoki at para. 0060).
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 content of the cyclic amide solvent in the ink of Oki to range from 0.1 to 40 wt%. One of ordinary skill in the art would have been motivated to do so in order to prevent clogging, ensure ejection stability, and prevent drying defects (see Aoki at para. 0059-006).
This range of 0.1 to 40 wt% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Allowable Subject Matter
Claim 9 is allowed.
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 9, the prior art fails to teach or suggest an ink jet ink composition comprising at least one dye, an organic solvent, and water, wherein: the ink jet ink composition contains, as the organic solvent, at least one selected from the group consisting of 1-(2-hydroxyethyl)-2-pyrrolidone and 2-pyrrolidone, a compound represented by formula (1) below, and at least one selected from the group consisting of alkanediols with three or more and six or fewer carbons and glycol ethers represented by formula (2) below; a sum of amounts of the 1-(2-hydroxyethyl)-2-pyrrolidone and the 2-pyrrolidone in the ink jet ink composition is 0.5% by mass or more and 15.0% by mass or less; an amount of the compound represented by formula (1) below in the ink jet ink composition is 0.01% by mass or more and 3.0% by mass or less; 0.001 ≤ X2/X1 ≤ 0.80, where X1 is the sum of amounts of the 1-(2-hydroxyethyl)-2-pyrrolidone and the 2-pyrrolidone in the ink jet ink composition in % by mass, and X2 is the amount of the compound represented by formula (1) below in the ink jet ink composition in % by mass; the dye is at least one water-soluble dye selected from the group consisting of acid dyes, direct dyes, and reactive dyes; and an amount of the water-soluble dye in the ink jet ink composition is 5.0% by mass or more and 20.0% by mass or less:
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where R1 is H or an alkyl group with one or more and four or fewer carbons, R2 is an alkyl group with one or more and four or fewer carbons, and n is 2 or 3.
The closest prior art includes Oki et al. (US-20210301155-A1) and Musa et al. (US-20160271254-A1).
While Oki as modified by Musa teaches most of the claimed limitations (see the claim 1 rejection above), both Oki and Musa fail to teach 0.001 ≤ X2/X1 ≤ 0.80, where X1 is a sum of amounts of the 1-(2-hydroxyethyl)-2-pyrrolidone and the 2-pyrrolidone in the ink jet ink composition in % by mass, and X2 is an amount of the compound represented by formula (1) above in the ink jet ink composition in % by mass. There is no teaching or suggestion in the prior art to set the ratio of the two solvents to fall within the claimed range. Further, there is no teaching in the art as to how the concentration ratio between the solvents impacts specific qualities of the ink composition, precluding a result-effective variable finding. In general, the compound of formula (1) is rarely present in the prior art, with its specific ratio relative to other pyrrolidone compounds failing to be defined or disclosed in the art. Thus, claim 9 is allowed. Claim 4 would be allowed if re-written to overcome the 112(b) rejection above and if re-written to include all of the limitations of the base claim and any intervening claims, for the same reasons as above.
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.
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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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