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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (# US 2016/0046816) in view of Yamamoto et al. (# US 2016/0215152).
Takahashi et al. discloses:
1. An ink jet ink ( see Abstract; [0021]) comprising:
Water (see Abstract; [0021]);
an organic solvent A having a surface tension of 20.0 mN/m to 29.0 mN/m (20 to 30 mN/m; [0032]), and a boiling point of 80° C. to 140° C. (Solvent A; boiling point 100° C to 180° C; [0032]) , and
an organic solvent B having a boiling point of 150° C. to 250° C. (solvent B, boiling point 200 ° C to 280 ° C; [0032]),
wherein a content of the organic solvent A is in a range of 1% by mass to 20% by mass with respect to a total amount of the inkjet ink ([0033]),
the proportion of the total content of the organic solvent A and the organic solvent B in the total content of all the organic solvents comprised in the ink jet ink is 80% by mass or greater (see Examples; [0033]-[0037]; i.e. A+B+Water = 20+20+ 40= 80%; see Example: 10).
Given that the Takahashi et al. reference discloses a range of surface tension, boiling point, and amount of solvent 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)
2. The ink jet ink according to claim 1, wherein a content of the organic solvent B is in a range of 10% by mass to 35% by mass with respect to the total amount of the ink jet ink (5 to 25%; [0033]).
3. The ink jet ink according to claim 2, wherein a proportion of the content of the organic solvent A in a total content of the organic solvent A and the organic solvent B is in a range of 5% by mass to 50% by mass (5 to 25%; [0033]-[0034]).
4. The ink jet ink according to claim 1, wherein a proportion of the content of the organic solvent A in a total content of the organic solvent A and the organic solvent B is in a range of 15% by mass to 30% by mass (5 to 25%; [0033]-[0034]).
7. The ink jet ink according to claim 1, further comprising: a silicone-based surfactant (polysiloxane type surfactant; [0048]).
8. An image recording method comprising: applying the ink jet ink according to claim 1 onto a base material using an ink jet recording method, to record an image ([0078]-[0081]).
9. The ink jet ink according to claim 1, wherein the proportion of the total content of the organic solvent A and the organic solvent B in the total content of all the organic solvents comprised in the ink jet ink is 90% by mass or greater (see Examples; [0033]-[0037]).
Takahashi et al. explicitly did not discloses:
1. Solvent A has a Clog P value of 0.10 to 1.60; and a dynamic surface tension of the ink jet ink at 10 ms is in a range of 28.0 mN/m to 38.0 mN/m.
5. The ink jet ink according to claim 1, wherein the organic solvent A is a monoalcohol having 4 or 5 carbon atoms.
6. The ink jet ink according to claim 1, wherein the organic solvent A is a linear monoalcohol.
Yamamoto et al. teaches that to have the high quality uniform glossy printed image ([0019]-[0021]; [0079]),
a dynamic surface tension of the ink jet ink at 10 ms is in a range of 28.0 mN/m to 38.0 mN/m (40 mN/m or less; [0019]; [0056]; [0078]-[0079]).
5. The ink jet ink according to claim 1, wherein the organic solvent A is a monoalcohol having 4 or 5 carbon atoms ([0069]).
6. The ink jet ink according to claim 1, wherein the organic solvent A is a linear monoalcohol ([0069]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of Takahashi et al. by the aforementioned teaching of Yamamoto et al. in order to have the high quality uniform glossy printed image.
With respect solvents Clog P value, However, Takahashi et al. discloses list of solvents which are similar as applicant discloses in their own specification. The Clog P is property of the material, which constant to the material. Therefore, the list of solvents discloses by the Takahashi et al. obviously have Clog P value 0.10 to 1.60.
Response to Arguments
Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive.
Applicant maintains “Takahashi et al discloses an ink containing: (A) a water-soluble organic solvent having a boiling point of 100°C or higher and 180°C or lower; and (B) an organic solvent having a boiling point of 200°C or higher and 280°C or lower and a surface tension of 20 mN/m or higher and 30 mN/m or lower. Paragraph [0032] of Takahashi et al exemplifies Takahashi et al.'s organic solvents (A); however, none of these solvents corresponds to the "organic solvent A" of the present application. In the working Examples of Takahashi et al, the following solvents are described: MEDG: diethylene glycol monomethyl ether (boiling point: 193°C; corresponds to "organic solvent B" of the present application). MP: propylene glycol monomethyl ether (boiling point: 121°C; ClogP value: -0.30; does not correspond to either "organic solvent A" or "organic solvent B" of the present application). MMB: 3-methyl-3-methoxybutanol (boiling point: 173°C; corresponds to "organic solvent B" of the present application). PNP: propylene glycol monopropyl ether (boiling point: 150°C; corresponds to "organic solvent B" of the present application). HexD: 1,2-hexanediol (boiling point: 223°C; corresponds to "organic solvent B" of the present application). BDG: diethylene glycol monobutyl ether (boiling point: 230°C; corresponds to "organic solvent B" of the present application). DPNP: dipropylene glycol monopropyl ether (boiling point: 210°C; corresponds to "organic solvent B" of the present application). Accordingly, Takahashi et al contains no disclosure relating to the "organic solvent A" of the present application.”
Examiner respectfully disagrees, Given that the Takahashi et al. reference discloses a range of amount of solvent 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).
The Examiner draws particular attention to the Applicant’s argument that "Takahashi et al. does teaches a laundry list of possible solvents. In [0037] the organic solvent in the ink may further include, in addition to the two solvents A and B, another solvent for adjusting the viscosity, or improving ejection properties. Examples of the another solvent include glycerol, both terminal diol, 2-pyrrolidone, N-methyl pyrrolidone, N-ethyl pyrrolidone, N-methyl oxazolidinone, N-ethyl oxazolidinone, γ-butyrolactone, ε-caprolactone, and N,N-dimethyl-β-methoxypropionamide.. The format in which Takahashi et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Takahashi et al. to present its teaching in an example format; citing it in a list is sufficient. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377. Therefore, Applicant’s argument is not convincing.
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
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