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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/347668 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter except:
1. wherein a dry solid film formed from the primer has a breaking energy of 20 mJ or more and 1,000 mJ or less and a breaking elongation of 500% or more and 2,500% or less, which are measured by a tensile tester having a tensile speed of 150 mm/min.
9. The primer according to claim 1, wherein surface free energy γ of the primer under conditions of 25° C. is 45 mJ/m2 or less.
However, Co-pending application discloses exactly same primer composition liquid as applicant discloses in their own specification. The breaking energy, breaking elongation and surface free energy is property of the composition, which constant to the material. Therefore, the primer composition discloses by the co-pending application obviously have a breaking energy of 20 mJ or more and 1,000 mJ or less and a breaking elongation of 500% or more and 2,500% or less, which are measured by a tensile tester having a tensile speed of 150 mm/min, and the surface free energy γ of the primer under conditions of 25° C. is 45 mJ/m2 or less.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asakawa et al. (# US 2021/0170779).
Asakawa et al. discloses:
1. A primer (treatment liquid; [0010]) comprising
Water ([0082]-[0083]),
a cationic resin ([0062]; [0071]-[0072]),
a polyvalent metal salt ([0063]-[0068]), and
a diethylene glycol alkyl ether compound ([0087]; [0094]; [0272]; [0314]),
2. The primer according to claim 1, wherein a content of the diethylene glycol alkyl ether compound in the primer is 5 wt % or more and 30 wt % or less (10 to 40%; [0315]).
3. The primer according to claim 1, wherein the diethylene glycol alkyl ether compound is diethylene glycol diethyl ether ([0094]; [0272]; [0314]).
4. The primer according to claim 1, wherein the polyvalent metal salt comprises magnesium acetate ([0064]-[0067]).
5. The primer according to claim 1, wherein a content of the polyvalent metal salt in the primer is 0.25 wt % or more and 10 wt % or less (flocculant; [0079]).
6. The primer according to claim 1, wherein the cationic resin is a cationic urethane resin ([0071]).
7. The primer according to claim 1, wherein a content of the cationic resin in the primer is 2 wt % or more and 15 wt % or less ([0326]).
8. The primer according to claim 1, further comprising a surfactant, wherein a mass ratio of the surfactant (0.3 to 3%; [0333]) to the cationic resin (1 to 20%; [0326]) (surfactant : cationic resin) is from 1:4 to 1:20 ([0326]-[0333]).
10. A printing set comprising the primer according to claim 1 and an ink comprising a colorant ([0126]-[0133]) and an organic solvent ([0141]; [0158]).
11. A printing method ([0010]), comprising:
a primer applying step to provide the primer according to claim 1 on a recording medium ([0010]); and
an ink applying step to apply an ink containing a colorant ([0126]-[0133]) and an organic solvent ([0141]; [0158]) on the recording medium on which the primer is applied.
12. The printing method according to claim 11, wherein the recording medium is a non-permeable recording medium ([0236]-[0246]; [0252]-[0256]).
13. A printing device Inkjet recording apparatus; [0207]-[0215]), comprising
a primer applier to provide the primer according to claim 1 on a recording medium (element 220; figure: 4; [0233]); and
an ink applier (element: 230, figure: 4; [0233]) to apply an ink containing a colorant and an organic solvent on the recording medium on which the primer is applied.
14. The printing device according to claim 13, wherein the recording medium is a non-permeable recording medium ([0236]-[0246]; [0252]-[0256]).
Asakawa et al. explicitly did not discloses:
1. Wherein a dry solid film formed from the primer has a breaking energy of 20 mJ or more and 1,000 mJ or less and a breaking elongation of 500% or more and 2,500% or less, which are measured by a tensile tester having a tensile speed of 150 mm/min.
9. The primer according to claim 1, wherein surface free energy γ of the primer under conditions of 25° C. is 45 mJ/m2 or less.
However, Asakawa et al. discloses exactly same primer composition liquid as applicant discloses in their own specification. The breaking energy, breaking elongation and surface free energy is property of the composition, which constant to the material. Therefore, the primer composition discloses by the Asakawa et al. obviously have a breaking energy of 20 mJ or more and 1,000 mJ or less and a breaking elongation of 500% or more and 2,500% or less, which are measured by a tensile tester having a tensile speed of 150 mm/min, and the surface free energy γ of the primer under conditions of 25° C. is 45 mJ/m2 or less.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Sugihara et al. (# US 2021/0130639) discloses a pretreatment liquid that is used together with an aqueous inkjet ink containing a pigment and water, wherein the pretreatment liquid contains resin microparticles (A), a surfactant (B), a coagulant (C) and water, the surfactant (B) contains a polyoxyalkylene alkyl ether (b-1), and the coagulant (C) contains a polyvalent metal salt and/or a cationic polymer compound and has a water absorptivity at a temperature of 40° C. and a relative humidity of 80% of 75% by mass or less (see Abstract).
(2) Sato et al. (# US 2023/0193068) discloses a primer composition including a resin emulsion, an aggregation accelerator, a surfactant, and water, the surfactant containing one or more of acetylene-based surfactants and silicone-based surfactants, and a nonionic surfactant other than the surfactant, the nonionic surfactant having an HLB value of 10 or above and below 15.5 and having multiple polyoxyalkylene groups, and the proportion of the nonionic surfactant in the primer composition is 3 mass % or below. The primer composition has excellent storage stability and makes it possible to form a primer layer that has excellent transparency and that produces excellent bleeding resistance and printability when a solid image is printed by an aqueous inkjet ink composition (see Abstract).
(3) Sato et al. (# US 2011/0102497) discloses a treatment solution for inkjet textile printing that causes few remaining marks even when applied to a fabric. The present invention relates to a treatment solution for inkjet textile printing, the treatment solution comprising at least: 1) a water-soluble polyvalent metal salt; 2) at least one resin component selected from the group consisting of a nonionic resin emulsion, an anionic resin emulsion, and a carboxymethyl cellulose; 3) at least one surfactant component selected from the group consisting of a nonionic surfactant, an anionic surfactant, and an amphoteric surfactant; and 4) an aqueous medium, the treatment solution being applied to a fabric before printing of an ink composition for inkjet textile printing (see Abstract).
(4) Yamashita et al. (# US 2017/0088739) discloses a coating liquid includes a polymer particle, an aggregating agent for a coloring material, a nonionic surfactant having an HLB value within the range of 15.5 to 20, and water (see Abstract).
(5) Katsuragi (# US 2015/0258833) discloses a treatment liquid, which contains a water-soluble organic solvent, at least two cationic resins, and water, wherein the cationic resins have a cationization degree of 4 meq/g or greater at pH of 4.0 (see Abstract).
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.
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, Stephen Meier can be reached at 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853