DETAILED ACTION
Response to Amendments
In response to the amendment received on 03/03/2026:
• Claims 1, 3-6, 8, 9, 11, 12, and 14-20 are currently pending. Claims 2, 7, 10, and 13 are canceled. Claims 14-20 are withdrawn for being directed to a non-elected invention(s). The objections to claims 1, 7, 8, and 13 are withdrawn in light of the amendments to the claims. The rejection of claims 3, 12, and 13 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
• The previous grounds of rejection over Nakano (US-20200070545-A1), Lenaerts (US-20220288931-A1), and Torfs (US-20160214395-A1) have been withdrawn in light of the claim amendments.
• New grounds of rejection are presented herein.
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 § 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, 3-6, 8, 9, 11, and 12 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 first red ink including different pigments than the second red ink” is a bit unclear. The plural term “pigments” seems to suggest the first red ink must contain more than one pigment; however, it appears this does not have to be the case (i.e., the first red ink may contain one pigment, see claim 3). To correct, the Examiner suggests amending the claim as follows: “…the first red ink including a different pigment
In claim 1, the phrase “lower color intensity” is a relative term that is undefined. What defines a lower color intensity? Color intensity can be defined by various metrics, including saturation, brightness, and hue. It is unclear what exactly the term encompasses. Further, “color intensity” may sometimes be a subjective metric that is undefined. Accordingly, the scope of the limitation is unclear. To correct, the Examiner suggests replacing the “lower color intensity” language in claim 1 with the limitation claimed in claim 11. Claims 3-6, 8, 9, 11, and 12 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, 3-6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki et al. (US-20190284427-A1) (hereinafter referred to as “Matsuzaki”) in view of Ishimoto (US-20030226473-A1) (hereinafter referred to as “Ishimoto”).
Regarding claims 1, 3, 6, and 11, Matsuzaki teaches a set of inks, the inks being water-based pigmented inks (see Matsuzaki at para. 0055, teaching a set of colored ink compositions; also see Matsuzaki at para. 0059 and 0060, teaching the inks may be water-based inks and may contain a pigment), the set of inks comprising:
• a cyan ink (see Matsuzaki at para. 0055, teaching the ink set includes a cyan ink);
• a yellow ink that includes C.I. pigment yellow 93 (see Matsuzaki at para. 0055, teaching the ink set as including a yellow ink; also see Matsuzaki at para. 0063, teaching the yellow pigment may include pigment yellow 93);
• a first red ink and a second red ink, the first red ink including different pigments than the second red ink (the first red ink comprising C.I. pigment red 254 and the second red ink comprising C.I. pigment red 122, regarding claims 3 and 6) (see Matsuzaki at para. 0055, teaching the ink set as including a special color ink; also see Matsuzaki at para. 0057 and 0066, teaching the special ink may include a red ink having a red pigment, such as Pigment Red 254; the red ink of Matsuzaki corresponds to the claimed “first red ink;” also see Matsuzaki at para. 0055, teaching the ink set as containing a magenta ink; also see Matsuzaki at para. 0056, teaching the magenta ink as having a hue angle of 330° to 360°, which overlaps the hue angle values of 312° to 350° for the “second red ink” disclosed by Applicants, see Applicant’s specification at para. 0018; also see Matsuzaki at para. 0062, teaching the magenta ink may contain Pigment Red 122, which is the same pigment claimed in instant claim 3 for the second red ink; since the magenta ink of Matsuzaki has the same hue angle and the same pigment as that for the claimed “second red ink,” it necessarily follows the magenta ink of Matsuzaki is a “red” ink like claimed; accordingly, Matsuzaki necessarily teaches a “first red ink” (corresponds to the red ink of Matsuzaki) and a “second red ink” (corresponds to the magenta ink of Matsuzaki));
• a first black ink (see Matsuzaki at para. 0058, teaching the ink set may include a black ink).
While Matsuzaki teaches the ink set outlined above, Matsuzaki fails to explicitly teach the ink set as including a second black ink, the second black ink having a lower color intensity than the first black ink (lower pigment load, regarding claim 11).
However, Ishimoto teaches an ink set containing a black ink, a magenta ink, a cyan ink, a yellow ink, and a light black ink (see Ishimoto at para. 0014, 0019, 0024, and 0029). Ishimoto further teaches that by including the light black ink composition, color differences of a recorded image due to differences in light source can be made to be slight, the color reproduction range in dark parts of an image can be broadened, and high image quality can be maintained with no worsening of the graininess in the dark parts (see Ishimoto at para. 0007-0008 and 0015). Moreover, Ishimoto necessarily teaches the light black ink composition to have a lower pigment concentration than the black ink composition by virtue of the taught ratio of 2 to 4.5 (see Ishimoto at para. 0014).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include a light black ink composition, like that taught by Ishimoto, in the ink set of Matsuzaki, where the pigment concentration of the light black ink composition is lower than that of the black ink composition. One of ordinary skill in the art would have been motivated to do so that color differences of a recorded image due to differences in light source can be made to be slight, the color reproduction range in dark parts of an image can be broadened, and high image quality can be maintained with no worsening of the graininess in the dark parts (see Ishimoto at para. 0007-0008 and 0015).
Following the above modification, the ink set of Matsuzaki contains a second black ink having a lower color intensity than the first black ink (i.e., a light black ink composition).
It is noted that the limitation of claim 1 claiming the inks to be used “for inkjet printing on a paper sheet for being used in a laminated panel” is a recitation of intended use. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation, see MPEP § 2111.
Regarding claims 4-5, Pigment Red 254 has a hue angle between 350° and 42°, as disclosed by Applicant’s specification at para. 0049; additionally, Pigment Red 122 has a hue angle between 312° and 350°, as disclosed by Applicant’s specification at para. 0050; accordingly, the red and magenta inks of modified Matsuzaki read on the claims.
Regarding claims 8-9, see Matsuzaki at para. 0061, teaching the cyan pigment may include C.I. Pigment Blue 15:3, which is a phthalocyanine pigment; also see Matsuzaki at para. 0064 and/or Ishimoto at para. 0016, teaching the black ink composition (and thus, necessarily, also the light black ink composition) may contain carbon black.
Regarding claim 12, while Matsuzaki as modified by Ishimoto teaches the ink set according to claim 1 outlined above, modified Matsuzaki fails to explicitly teach the second black ink as comprising a pigment load between 0.1 and 2% based on the total weight of the second black ink.
However, Ishimoto teaches the ratio of the pigment concentration of the black ink to that of the light black ink composition to be set in a range of 2 to 4.5, and that by doing so, the color reproduction range in dark parts of a recorded image formed by printing can be broadened, there is no worsening of the graininess in the dark parts of the image, and an image having high image quality can be obtained (see Ishimoto at para. 0015).
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 ratio of the pigment concentration of the black ink to that of the light black ink to range from 2 to 4.5 in the ink set of modified Matsuzaki. One of ordinary skill in the art would have been motivated to do so so that the color reproduction range in dark parts of a recorded image formed by printing can be broadened, so that there is no worsening of the graininess in the dark parts of the image, and so that an image having high image quality can be obtained (see Ishimoto at para. 0015).
Matsuzaki teaches the concentration of the colorant in each ink composition, including the black ink composition, to range from 0.1 to 10% by mass (see Matsuzaki at para. 0071). Accordingly, following the above modification, the concentration of the pigment in the light black ink necessarily ranges from 0.02% to 5% by mass (0.1/4.5 = 0.02%; 10/2 = 5%); this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05. Alternatively, Matsuzaki further teaches an example black ink (Ink 9) containing 2% by mass of black pigment (see Matsuzaki at Table 2 at pg. 14); thus, based on this example, when the light black ink is included, the concentration of the light black pigment would range from 0.44% to 1% by mass (2/4.5 = 0.44%; 2/2 = 1%), which falls completely within the claimed range.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-6, 8, 9, 11, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8, and 9-13 of U.S. Patent Application No. 18/700,961 (see claim set dated 03/26/2026) (hereinafter referred to as ‘961).
With respect to instant claims 1, 3-6, 8, 9, 11, and 12, although the claims at issue are not identical, they are not patentably distinct because instant claim 1 is met by claims 1, 7, 11, and 13 of ‘961; instant claim 3 is met by claim 1 of ‘961; instant claim 4 is met by claim 4 of ‘961; instant claim 5 is met by claim 5 of ‘961; instant claim 6 is met by claim 1 of ‘961; instant claim 8 is met by claim 8 of ‘961; instant claim 9 is met by claims 9-10 of ‘961; instant claim 11 is met by claim 11 of ‘961; and instant claim 12 is met by claim 12 of ‘961.
Response to Arguments
Applicant’s arguments filed 03/03/2026 with respect to claims 1, 3-6, 8, 9, 11, and 12 have been considered. The Examiner agrees with Applicants that the amended claims overcome the previous prior art grounds of rejection (see Applicant’s Remarks at pg. 6-7). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yoda (US-20220073772-A1) teaches an ink set (see Yoda at para. 0050).
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
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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