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) 1-5 & 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmer et al. (# US 2004/0123772).
Zimmer et al. discloses:
1. An ink jet printing penetrant (see Abstract) comprising:
a lactam compound having a hydroxy group (1-(2-hydroxyethyl)-2-pyrrolidone ([0074]);
a glycol ([0070]; [0077]-[0079]) having a vapor pressure of 1.0 to 20.0 Pa at 20° C. and,
a solid component (Acid Red 52, from 0.0% to 1.5%; [0017]), wherein a content of solid component is 0.01% by mass or less (Acid Red 52 is from 0.0% to 1.5%; [0017]),
a content of the lactam compound with respect to a total mass of the ink jet printing penetrant is 15 to 25 percent by mass (1 to 20%; [0075]), and a
content of the glycol with respect to a total mass of the lactam compound is 0.8 to 3.0 on a mass ratio basis (0.5 to 5%; [0078]).
Given that the Zimmer et al. reference discloses a range of lactam, solid component; and glycol that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught ranges, including those presently claimed, to obtain a suitable composition. It is also noted that according to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276,205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclose by the prior art", see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990)
Zimmer et al. explicitly did not discloses:
A glycol having a vapor pressure of 1.0 to 20.0 Pa at 20° C.,
However, Zimmer et al. discloses exactly same glycol (propylene glycol) as applicant discloses in their own specification and claim . The vapor pressure is property of the material, which constant to the material. Therefore, the propylene glycol discloses by the Zimmer et al. obviously have vapor pressure of 1.0 to 20.0 Pa at 20° C.
2. The ink jet printing penetrant according to claim 1, wherein a content of the glycol with respect to the total mass of the ink jet printing penetrant is 20 to 50 percent by mass ([0080]).
3. The ink jet printing penetrant according to claim 1, wherein the lactam compound includes at least one selected from the group consisting of 1-(2-hydroxyethyl)-2-pyrrolidone ([0074]), 1-(2-hydroxyethyl)-3-methyl-2-pyrrolidone, 4-hydroxy-2-pyrrolidone, and 6-hydroxymethyl-2-piperidone.
4. The ink jet printing penetrant according to claim 1, wherein the glycol includes propylene glycol ([0070]-[0077]).
5. The ink jet printing penetrant according to claim 1, further comprising a colorant, wherein a content of the colorant is 0.1 percent by mass or less (0.05% to 20%; [0065]).
7. An ink jet recording method ([0087]) comprising:
an ink adhesion step of adhering an aqueous dye ink containing a reactive dye, an acidic dye (Acid Red 289; see claim 6-7), or a disperse dye to a cloth by an ink jet method; and
a penetrant adhesion step of adhering the ink jet printing penetrant according to claim 1 to the cloth by an ink jet method (textile; [0087]).
8. The ink jet recording method according to claim 7, wherein the ink adhesion step comprises: a reactive/acidic ink adhesion step of adhering a first aqueous dye ink containing a reactive dye or an acidic dye to the cloth by an ink jet method; and a disperse ink adhesion step of adhering a second aqueous dye ink containing a disperse dye to the cloth by an ink jet method ([0087]-[0088]).
9. The ink jet recording method according to claim 7, wherein the cloth includes a blended cloth (textile; [0087]).
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant maintains “ More particularly, as discussed in paragraph [0043] of the application, it should be understood that the penetrant is not an ink composition and preferably contains no solid component. The alleged "penetrant" of Zimmer, in contrast, is an ink jet ink that includes a solid component such as a colorant. See, e.g., the examples of Zimmer that all include a solid component such as a dye in amounts greater than the 0.01 by mass or less recited by claim 1. Inasmuch as the combined prior art fails to teach or suggest all the elements of the claim, the combination of prior art cannot render claim 1 unpatentable. Therefore, Applicant respectfully requests reconsideration and withdrawal of this rejection.”
Examiner respectfully disagrees. Zimmer et al. discloses in [0017] In another embodiment, the xanthene dye comprises at least one of Acid Red 52, Acid Red 289, or mixtures thereof. In a preferred embodiment, the amount of Acid Red 289 is from about 0.0% to about 2% by weight, the amount of Acid Red 52 is from about 0.0% to about 1.5% by weight. The format in which Zimmer et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Zimmer et al. to present its teaching in an example format citing it in a range is sufficient. Therefore argument is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853