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 .
Election/Restrictions
Applicant's election with traverse of Group I drawn to an ink and the Species of Example 2 including claims 1, 4-9 and 12 in the reply filed on 01/09/2026 is acknowledged. The traversal is on the grounds that there is no serious search burden. This is not found persuasive because the inclusion of the inkjet recording method and device would require alternate and/or additional search terms and CPC’s to fully search these elements. Furthermore, the various species would require alternate search queries to find each specific polysaccharide.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 3, 10, 11 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inkjet recording device, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/09/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 1, 4, 6-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shields et al. (US 5531817 A).
Regarding claim 1, Shields et al. teaches an ink comprising a polysaccharide (Col. 3, lines 43-49 wherein inulin is a polysaccharide) a coloring agent (Col. 2, lines 59-67), and water (Col. 2, line 25), wherein the polysaccharide includes at least one of a polysaccharide having a glucose skeleton in a structure, and a derivative thereof (Col. 3, lines 43-49 in that inulin has a glucose skeleton in the structure and a derivative thereof). But Shields et al. fails to specifically teach a viscosity of a 30 wt% aqueous solution of the polysaccharide measured at 25°C is 10.0 mPas or less. However, Shields et al. discloses exactly the same polysaccharide as applicant discloses in their own specification. Viscosity is a property of the material, which is a constant of the material at given conditions. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention that the polysaccharide provided by Shields et al., if measured at 25°C as a 30 wt% aqueous solution, would have a viscosity of 10 mPas or less since it is the exact same substance as the claimed polysaccharide.
Regarding claim 4, Shields et al. teaches all the elements of claim 1 as stated above and wherein water is a main solvent (Col. 2, lines 20-30).
Regarding claim 6, Shields et al. teaches all the elements of claim 1 as stated above and wherein a solid content of the polysaccharide falls within the range of 2.0 wt% to 15.0 wt% based on a total weight of the aqueous ink (Col. 3, lines 6-8).
Regarding claim 7, Shields et al. teaches all the elements of claim 1 as stated above and wherein a solid content of the polysaccharide falls within the range of 2.0 wt% to 8.0 wt% based on a total weight of the aqueous ink (Col. 3, lines 6-8).
Regarding claim 8, Shields et al. teaches all the elements of claim 1 as stated above and wherein the polysaccharide further includes a fructose skeleton in the structure (Col. 3, lines 43-49 in that inulin has a fructose skeleton in the structure).
Regarding claim 9, Shields et al. teaches all the elements of claim 8 as stated above and wherein the polysaccharide is inulin (Col. 3, lines 43-49).
Regarding claim 12, Shields et al. teaches all the elements of claim 1 as stated above and since the recording medium containing a polyvalent metal salt is not a positively recited element of the claims, the limitation that the ink is for performing recording on a recording medium containing a polyvalent metal salt is intended use and has been given no patentable weight. Since Shields et al. teaches all the structural elements of the ink and is capable of being printed on a medium containing a polyvalent metal salt, it thereby meets the claim language.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shields et al. (US 5531817 A) in view of Gotou (US 20220017764 A1).
Regarding claim 5, Shields et al. teaches all the elements of claim 1 as stated above but it fails to teach wherein the coloring agent is a resin dispersion pigment. Gotou does teach an ink containing a polysaccharide (paragraph [0078]) and the coloring agent is a resin dispersion pigment (paragraph [0105]). Gotou also recites that using such a pigment would provide “excellent storage stability over time and an increase in viscosity during moisture vaporing is reduced” (paragraph [0108]). It would be obvious to one of ordinary skill in the art prior to the effective filing date of the invention to provide the coloring agent of the ink of Shields et al. to be the resin dispersion pigment of Gotou as a simple substitution of one coloring material for another to provide an ink with better storage stability and less increase in viscosity during moisture vaporing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hofstra et al. (US 20160090493 A1) and Sekiguchi et al. (US 20130010040 A1) are recited as having a similar structure to the disclosed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL F BOELITZ whose telephone number is (571)272-3391. The examiner can normally be reached Mon-Fri 8am-5pm.
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.
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/SAMUEL FREDERICK BOELITZ/Examiner, Art Unit 2853
/Leslie J Thompson/Primary Examiner, Art Unit 2853