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 § 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 4 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.
Regarding claim 4, there is a lack of antecedent basis for the recitation of ‘a resin particle’ in claim 4, or claim 1 from which it depends. It is not clear if the claim is intending to positively recite an amount of a particle; and it is not clear if ‘resin particle’ is referring to the water-soluble resin of claim 1 or a different resin.
Regarding claim 10, the plural recitation of ‘polyols’ is indefinite as it is not clear if the claim is in fact requiring more than one polyol to be present or intended to recite ‘at least one polyol’ or ‘a polyol’.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito (EP 3378909 B1).
Regarding claims 1-2 and 7, Ito teaches water-based ink jet ink compositions comprising 1.1) a water-soluble resin ([0028]), 1.2) water-soluble organic solvent ([0038]), 1.3) water ([0044]), and 1.4) coloring material ([0046]), and may further contain 1.5) a moisturizing agent ([0054]), 1.6) surface tension adjusting agent ([0058]), 1.7) pH adjusting agent ([0063]), 1.8) fixing resin ([0066]), and/or 1.9) other optional components ([0070]-[0072]).
Ito teaches the 1.4) coloring material is dispersed or self-dispersing ([0049]) and is present from 0.10 mass% or more and 20.0 mass% or less, preferably 1.0 mass% or more and 10.0 mass% or less, of the composition ([0053]).
Ito teaches the 1.1) water-soluble resin is a resin comprising from 10 to 50 mass% of a first vinyl monomer with a remainder (~90 to 50 mass%) of a second water-soluble vinyl monomer ([0028]), and teaches the water-soluble resin is present in the ink composition such that the first monomer of the resin is present in 0.005 mass% or more and 1.0 mass% or less ([0037]) of the ink. Ito exemplifies amounts of water-soluble resin of 0.75g and coloring material of 20g (Example 2) reading on the instant mass ratio pigment/resin in a range of 2.8 to 30 (instant claim 1) and reading on 0.3 mass% or more and 2 mass% or less water-soluble resin (instant claim 2).
Ito teaches the 1.5) moisturizing agent is present from 5.0 mass% or more and 30 mass% or less ([0057]) and can be selected from betaines of trimethylglycine ([0055])(instant claim 1 ‘betaine’; instant claim 7 ‘trialkylglycine’).
The compositions as taught by Ito includes ink jet inks suitable for being contained in an ink cartridge of an ink jet recording apparatus ([0078]; [0100])(the presence of the ink in the cartridge implying a filling hole means by which the ink is introduced to the cartridge). The recitation that the basic formulation is to be used in an ink jet recording device that includes an ink storage container having an ink filling hole does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions. This includes claims 2-10 as they incorporate all of the limitations of claim 1, from which they depend (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claim 3, Ito teaches the ink composition as set forth above and further teaches the ink jet ink compositions are suitable for being contained in an ink cartridge of an ink jet recording apparatus ([0078]; [0100])(the presence of the ink in the cartridge implying a filling hole means by which the ink is introduced to the cartridge). The recitation of claim 3 is directed to further limiting an intended use recitation which does not serve to confer patentability to the claimed composition (see above).
Regarding claim 4, Ito teaches the ink composition as set forth above and further does not teach the inclusion or presence of resin particles which meets the instant recitation of ‘less than 0.1 mass%’ (a value range that includes zero).
Regarding claims 5-6, Ito teaches the ink composition as set forth above and further teaches the 1.1) water-soluble resin comprises, as noted above, 10 to 50 mass% of a first vinyl monomer with a remainder (~90 to 50 mass%) of a second water-soluble vinyl monomer ([0028]). Ito teaches the first vinyl monomer is a vinyl monomer having a phenol skeleton selected from various monomers including 4-hyroxyphenyl acrylate, 4-hydroxyphenyl methacrylate, etc. ([0031]-[0032]) (instant ‘acrylic’). Ito teaches the second water-soluble vinyl monomer is selected from acrylic acid, methacrylic acid, maleic anhydride, etc. ([0034]) (instant ‘acrylic’; instant ‘maleic’ based).
Regarding claim 8, Ito teaches the ink composition as set forth above and teaches the above noted water-soluble resin. Ito further teaches the water-soluble resin contains hydroxyl groups that are not neutralized ([0029])(readable over the instant recitation that the water-soluble resin “has an acid value” wherein no specific value is recited or required beyond merely existing)(see also MPEP 2112.01).
Regarding claim 9, Ito teaches the ink composition as set forth above and further teaches application to various recording medium including absorbing, low- absorbing and non-absorbing ([0078]-[0085]). Again it is noted that recitations of intended use do not serve to confer patentability to the claimed composition (see above).
Regarding claim 10, Ito teaches the ink composition as set forth above and further teaches the noted inclusion of 1.2) water-soluble organic solvents ([0038]-[0043]) including preferably trimethylolpropane, 3-(hexyloxy)-1,2-propanediol, etc. ([0042]) (instant polyols having a standard boiling point of higher than 280 °C).
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this section can be found in an above section.
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.
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 11-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ito (EP 3378909 B1) or, in the alternative, under 35 U.S.C. 103 as obvious over Ito (EP 3378909 B1) in view of Nakano et al. (US PGPub 2015/0049147).
Ito teaches the ink jet ink composition as set forth in claim 1 above and further teaches the ink jet ink compositions are suitable for being contained in an ink cartridge of an ink jet recording apparatus ([0078]; [0100])(the presence of the ink in the cartridge implying a filling hole means by which the ink is introduced to the cartridge), and ink droplets are discharged via known methods ([0079])(instant jetting) and adhere to a recording medium, wherein the recording medium including absorbing, low- absorbing and non-absorbing ([0078]-[0085]) media.
In the alternative, Ito teaches the above but is silent as to the ink storage container having an ink filling hole. However, Nakano teaches inkjet apparatuses comprising an ink cartridge container and teaches such containers have an ink chamber and an ink pouring port through which the ink composition is poured into the ink chamber sealable with a plug (abstract; Fig 4; [0072]-[0073]). Nakano further teaches such allows air in the chamber to expand and induce a negative pressure when in a use state ([0073]). Nakano and Ito are analogous art and are combinable because they are concerned with the same field of endeavor, namely ink jet inks and suitable ink cartridges. At the time of filing a person having ordinary skill in the art would have found it obvious to employ a cartridge as taught by Nakano as the ink cartridge of Ito and arrive at the instant invention with a reasonable expectation of success. Motivation stemming from the express teaching of Ito to introduce the ink composition to an ink cartridge and further from Nakano who teaches cartridges with a sealable ink pouring port allows for air in the chamber to induce negative pressure when in use.
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.
A) Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/613,316 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar aqueous ink jet ink compositions comprising a self-dispersing pigment, a water-soluble resin, and a betaine, in substantially the same amounts/ratios and having substantially similar intended uses and methods.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 1-2, 4, 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/476,532 (reference application; a notice of allowance has been issued). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar aqueous ink jet ink compositions comprising a coloring material selected from self-dispersing pigment, a water-soluble resin, and a betaine, in substantially the same amounts/ratios and having substantially similar intended uses and methods.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767
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