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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 11 May 2023. It is noted, however, that applicant has not filed a certified copy of the JP 2023-078477 application as required by 37 CFR 1.55.
Response to Amendment
The amendment filed June 26, 2026 has been entered. Claims 1-7 and 9-12 remain pending in the application. Claims 10-12 remain withdrawn. Applicant’s amendments to the Specification have overcome the objections previously set forth in the Non-Final Office Action mailed on April 13, 2026.
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered but they are not fully persuasive. The applicant’s argument regarding the double patenting rejection have been considered and appear to overcome the rejection previously set forth based on the amendments to claim 1.
However, the arguments regarding there being no motivation to the combine the primary reference, Mielke (US 6770331 B1), with the secondary reference, Teranishi (JP 2019090014 A), is not persuasive. Specifically, the applicant argues: (1) the references are directed to different technical fields making it so a person of ordinary skill would not have a reason to combine them, and (2) neither reference addresses the fume-generation problem solved by using a permeable moisturizer, such as a (poly)glyceryl ether, when used in combination with the other components.
Regarding the first point, the examiner notes that the guidelines for using references for an obviousness rejection under 35 U.S.C. 103 require the references to be analogous to the claimed invention, not necessarily analogous to each other ("When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other”; MPEP 2141.01(a) I). The two references are considered in the same field of endeavor as each other and as in the same field of endeavor as the claimed invention: an ink composition to be used by an ink jet recording method, wherein a sublimation dye is used and/or a sublimation transfer step may occur (Mielke: starting at col. 4, ll. 15; Teranishi: pp. 7, ll. 41-44). Therefore, combining the two references by use of addition or substitution would not be unreasonable from the standpoint of them being in the same field of endeavor.
Regarding the second point, the examiner notes that the guidelines for using references for an rejection require the references to be analogous to the claimed invention regardless if they are solving the same problem or a different problem from the invention (“the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem)”; MPEP 2141.01(a) I) and the provided motivation for combining them does not have to be the same motivation as that of the inventor(s) of the claimed invention ("In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls”; MPEP 2141 III). Therefore, the motivation for combining being viscosity modification (Teranishi: pp. 5, ll. 25) rather than specifically fume mitigation is sufficient as a reason to combine the references. Further, the examiner notes that (poly)glyceryl ether has a lower fuming property, and being a property, it may be considered inherent.
Therefore, the rejections of the claims under 35 U.S.C. 103 will be maintained, with changes as appropriate to reflect the amendments to the claims.
Claim Rejections - 35 USC § 103
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) 1-3, 5, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mielke et al. (US 6770331 B1), hereinafter referred to as Mielke, and further in view of Teranishi et al. (JP 2019090014 A), hereinafter referred to as Teranishi.
Regarding claim 1, Mielke teaches an ink jet ink composition (“colorant preparations as inks in the ink-jet process”; col. , ll. 12-13) comprising:
a sublimation dye (dispersed colorant; col. 1, ll. 5; C.I. Disperse dyes; starting at col. 4, ll. 15);
a sugar alcohol having at least four OH groups (examples include xylitol, sorbitol, mannitol; col. 14, ll. 30-32);
a diol having two or three carbon atoms (examples include ethylene glycol and propylene glycol; col. 14, ll. 11-12, 26-29);
at least one permeable moisturizer (high-boiling water-soluble or -miscible organic solvents (C2); col. 14, ll. 33-54; amides; col. 14, ll. 50-54);
and glycerin (glycerol; col. 14, ll. 29).
Mielke does not explicitly teach the content of glycerin as zero percent by mass or more and one percent by mass or less with respect to a total mass of the ink jet ink composition. However, Mielke does teach with respect to the total weight of the ink jet ink composition, “1 to 10% by weight of glycerol, sorbitol and/or propylene glycol” is used in the solvent (col. 15, ll. 9-10). Therefore, there exists where only glycerin is used (up to 10% by mass), some glycerin is used (less than 10% by mass), and no glycerin is used (0% by mass).
MPEP 2144.05 I states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The claimed range of 0 to 1% by mass of glycerin lies inside the range of 0 to 10% by mass of glycerin as taught by Mielke.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a content of glycerin of 0 to 1% by mass with respect to the total mass of the ink jet ink composition. As taught by Mielke, this could have been done for the purpose of including glycerin as a useful solvent (col. 14, ll. 26-29), and a zero percent by mass of glycerin (Table 1c, Prep No. 80; col. 27) may result in improved start-of-print behavior (Table 3, Prep No. 79 vs 80 for “Start of print rating”; col. 33; rating explained; col. 31, ll. 49-56).
Further, Mielke does not teach the ink jet ink composition wherein the permeable moisturizer comprises a (poly)glyceryl ether, wherein the (poly)glyceryl ether comprises a polyglyceryl ether or a glyceryl ether.
Teranishi teaches an ink for ink jet printing (pp. 6, ll. 41-42) wherein a permeable moisturizer similar to those taught by Mielke is used (water-soluble organic solvent; starting at pp. 6, ll. 58), and the permeable moisturizer may comprise a (poly)glyceryl ether (polyoxypropylene diglyceryl ether, pp. 5, ll. 28; polyoxyethylene diglyceryl ether; pp. 5, ll. 30).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the permeable moisturizer as taught by Mielke to include a (poly)glyceryl ether as taught by Teranishi. This would have been done for the purpose of including a viscosity modifier as taught by Teranishi (pp. 5, ll. 25).
Regarding claim 2, neither Mielke or Teranishi specifically address wherein the permeable moisturizer in the form of an aqueous solution at a concentration of 10 percent by mass has a surface tension of 45 to 67 mN/m. However as it is understood by the examiner, this limitation is reciting a property of the permeable moisturizer. Because the permeable moisturizer used by Teranishi (such as SC-P7500; pp. 5, ll. 31-32) is made by the same manufacturer as the permeable moisturizer used in the claimed invention (manufacturer being Sakamoto Yakuhin Kogyo Co., Ltd.), it is understood that Teranishi does teach the permeable moisturizer wherein the permeable moisturizer in the form of an aqueous solution at a concentration of 10 percent by mass has a surface tension of 45 to 67 mN/m.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the permeable moisturizer as taught by Mielke to include a polyglycerol ether as taught by Teranishi. This would have been done for the purpose of including a viscosity modifier as taught by Teranishi (pp. 5, ll. 25).
Regarding claim 3, Mielke does not explicitly teach wherein the permeable moisturizer is present at a content of zero percent by mass or more and five percent by mass or less with respect to the total mass of the ink jet ink composition. However, Mielke does teach a preferable combination wherein the permeable moisturizer includes a diol having at least four carbon atoms (polyethylene glycol) and a glycol monoether (di- and/or triethylene glycol monobutyl ether) with each the diol and glycol monoether being 1 to 10% by weight with respect to the total ink composition (col. 15, ll. 11-13). Therefore a total content of permeable moisturizer would be in the range of 2 to 20% by weight.
MPEP 2144.05 I states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The claimed range of 0 to 5% by mass of permeable moisturizer overlaps with the ranges of 1 to 10% by mass and 2 to 20% by mass of permeable moisturizer taught by Mielke.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a content of permeable moisturizer of 0 to 5% by mass with respect to the total mass of the ink jet ink composition. As taught by Mielke, this would have been done for the purpose of including a permeable moisturizer as a useful solvent (col. 14, ll. 33-54) wherein some are particularly preferred solvents (col. 14, ll. 55, 57-59).
Regarding claim 5, Mielke does not explicitly teach wherein the diol having two or three carbon atoms is present at a content of 5 to 15 percent by mass with respect to the total mass of the ink jet ink composition. However, Mielke does teach with respect to the total weight of the ink jet ink composition, “1 to 10% by weight of glycerol, sorbitol and/or propylene glycol” is used in the solvent (col. 15, ll. 9-10). Therefore, there exists where only propylene glycol is used (up to 10% by mass), some propylene glycol is used (less than 10% by mass), and no propylene glycol is used (0% by mass).
MPEP 2144.05 I states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The claimed range of 5 to 15% by mass of diol having two or three carbon atoms lies inside the range of 0 to 10% by mass of diol having two or three carbon atoms as taught by Mielke.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a content of diol with two or three carbon atoms of 5 to 15% by mass with respect to the total mass of the ink jet ink composition. As taught by Mielke, this would have been done for the purpose of including a diol with two or three carbon atoms as a useful solvent (col. 14, ll. 26-29) wherein some are particularly preferred solvents (col. 14, ll. 55-56).
Regarding claim 7, Mielke does not explicitly teach wherein the sugar alcohol is present at a content of 3 to 15 percent by mass with respect to the total mass of the ink jet ink composition. However, Mielke does teach with respect to the total weight of the ink jet ink composition, “1 to 10% by weight of glycerol, sorbitol and/or propylene glycol” is used in the solvent (col. 15, ll. 9-10). Therefore, there exists where only sorbitol is used (up to 10% by mass), some sorbitol is used (less than 10% by mass), and no sorbitol is used (0% by mass).
MPEP 2144.05 I states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The claimed range of 3 to 15% by mass of sugar alcohol lies inside the range of 0 to 10% by mass of sugar alcohol as taught by Mielke.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a content of sugar alcohol of 3 to 15% by mass with respect to the total mass of the ink jet ink composition. As taught by Mielke, this would have been done for the purpose of including sugar alcohol as a useful solvent (col. 14, ll. 26, 30-32) wherein some are particularly preferred solvents (col. 14, ll. 55-56).
Regarding claim 9, Mielke teaches wherein the permeable moisturizer may have an average molecular weight of 300 to 800 (300 to 500; col. 14, ll. 40), and Teranishi further teaches wherein the permeable moisturizer of (poly)glyceryl ether may have a weight average molecular weight of 300 to 800 (SC-P400, SC-P750, SC-E450, SC-E750; pp. 5, ll. 31-32).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the permeable moisturizer as taught by Mielke to include a polyglycerol ether with a molecular weight of 300 to 800 as taught by Teranishi. This would have been done for the purpose of including a viscosity modifier as taught by Teranishi (pp. 5, ll. 25).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mielke as applied to claim 1 above, and further in view of Kagata et al. (US 20190092953 A1), hereinafter referred to as Kagata.
Regarding claim 4, Mielke does not teach the ink jet ink composition as further comprising at least one selected from the group consisting of a polyglycerin and a betaine.
Kagata teaches an ink jet ink composition (ink set for sublimation transfer; at para. [0088]; by an ink jet method; at para. [0028]) further comprising a betaine (at para. [0068]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ink jet ink composition taught by Mielke to further comprise a betaine as taught by Kagata. This would have been done for the purpose of controlling the wettability and penetration rate of the composition when combined with the permeable moisturizer as taught by Kagata (at para. [0068]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mielke as modified by Teranishi as applied to claim 1 above, and further in view of the Handbook of Pharmaceutical Excipients, specifically on “Xylitol” by Shur, for support.
Regarding claim 6, Mielke teaches examples of sugar alcohols having at least four OH groups, such as sorbitol, however Mielke does not explicitly teach the property wherein the sugar alcohol in the form of an aqueous solution at a concentration of 60 percent by mass has a viscosity of 35 mPa∙s or less.
Shur explicitly teaches the property of sorbitol in the form of an aqueous solution at a concentration of 60 percent by mass has a viscosity of 35 mPa∙s or less (26.0 mPa∙s; Table V, pp. 681).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a sugar alcohol as taught by Mielke wherein the specific property of the sugar alcohol in the form of an aqueous solution at a concentration of 60 percent by mass has a viscosity of 35 mPa∙s or less as taught by Shur. As taught by Mielke, this would have been done for the purpose of including a permeable moisturizer that is a particularly preferred solvent (col. 14, ll. 55, 57-59).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Maekawa et al. (US 20050093947 A1, from IDS) discloses an ink jet ink composition (at para. [0010]) comprising: a sublimation dye (at para. [0017]); a sugar alcohol having at least four OH groups (at para. [0019]); a diol having two or three carbon atoms (ethylene glycol, propylene glycol; at para. [0024]); at least one permeable moisturizer (various examples listed at para. [0024]); and glycerin at a content of zero percent by mass or more and one percent by mass or less with respect to a total mass of the ink jet ink composition (“the substantial amount of the water-soluble organic solvent is 0 wt %”; at para. [0021]; glycerin is a preferred water organic solvent if used; at para. [0024]-[0025]).
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 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 KYRA M VAN KREUNINGEN whose telephone number is (571)272-9423. The examiner can normally be reached Mon-Thur 9:00am-6:00pm and Fri 9:00am-1:00pm.
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, DOUGLAS X RODRIGUEZ can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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24 July 2026
/KYRA MELOR VAN KREUNINGEN/ Examiner, Art Unit 2853
/SHELBY L FIDLER/ Primary Examiner, Art Unit 2853
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