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 Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katayama et al. (# WO/2013008691 A1).
Katayama et al. discloses:
18. An ink jet ink (aqueous white ink; see Abstract) comprising:
Water (see Abstract);
a white pigment (see Abstract; page: 2, para [0006]); and
at least two kinds of resins (binder Acrylic resin; page 5-6 & styrene based copolymer; page: 4; see Examples),
wherein the ink jet ink has an acid value of 8.0 mgKOH/g or less (see Preparation Example | at paragraph 132 and Example | at paragraph 151): the ink contains 30% white pigment paste, water, 13.3% of R-3 resin, wherein the R-3 resin has an acid value of 18 mgKOH/g... the dispersion resin Disper byk-190 in the preparation of the white pigment paste and 25 parts of the dispersion resin in the total of 200 parts. It is well known in the art that the acid value of the dispersion resin Disper byk-190 is 10 mgKOH/g and the acid value of the ink is calculated from the composition of Example 1, i.e. The acid value of the ink is 10 mgKOH/g x (25/200) x (0/100) + 10 mgKOH/g x (13.3/200) = 2.77 mgKOH/g (i.e. Acid value is 1.5 mgKOH/g to 8.0 mgKOH/g), and the inkjet ink contains particles of acrylic acid (page: 6; see Examples).
The Examiner draws particular attention to the Applicant that "Katayama et al. does address a pigment, water, resin, dispersant resin and surfactant, it teaches a laundry list of possible pigment, water, resin, dispersant resin and surfactant. The format in which Katayama et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Katayama et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the pigment, water, resin, dispersant resin and surfactant from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377
19. An ink set comprising: a first ink which is the ink jet ink according to claim 18; and a second ink which is an ink jet ink comprising water, a pigment other than a white pigment, and a resin (see Page 12; Examples).
Allowable Subject Matter
Claims 1-17 are allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricardo Magallanes can be reached at 571-272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/ Primary Examiner, Art Unit 2853