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.
Election/Restrictions
Claims 10-12 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12 March 2026.
Specification
The disclosure is objected to because of the following informalities:
in paragraph [00111], page 60, line 1, “recoding” is understood to be “recording”.
Appropriate correction is required.
Additional suggestions for amendments to the specifications include improving consistency, such as in instances of “recording medium” in paragraphs [00111] to [00117] to be “recording medium M” as they are being used to describe parts in relation to element “M” in figure 2.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 6 of U.S. Patent No. US 6770331 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claimed invention is obvious over US 6770331 B2 as follows:
An ink jet ink composition comprising (“Ink-jet inks comprising”; claim 1):
a sublimation dye (“at least one dispersed (A1) or dissolved (A2) colorant”; claim 1);
a sugar alcohol having at least four OH groups (sorbitol; claim 6/1);
a diol having two or three carbon atoms (polyhydric alcohols; claim 5/1; propylene glycol; claim 6/1);
at least one permeable moisturizer selected from the group consisting of a glycol monoether, a diol having at least four carbon atoms, an amide, and a (poly)glyceryl ether (“polyethylene glycols, polypropylene glycols, polyethylene glycol monoalkyl ethers, polypropylene glycol monoalkyl ethers, pyrrollidone and N-alkylpyrrolidones”; claim 5/1; “1 to 10% by weight of polyethylene glycol having an average molecular weight Mi of from 300 to 500 g/mol and from 1 to 10% by weight of di- and/or triethylene glycol mono-C-C-alkyl ether”; claim 6/1);
and glycerin (glycerol; claim 6/1) 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 (“1 to 10% by weight of glycerol, Sorbitol and/or propylene glycol”; claim 6/1).
US 6770331 B2 does not explicitly claim 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, the content of glycerin in claim 6 of US 6770331 B2, “1 to 10% by weight of glycerol, sorbitol and/or propylene glycol”, provides three finite scenarios for the use of glycerin: only glycerin is used (1 to 10% by mass), some glycerin is used (more than 0% and less than 10% by mass), and glycerin is hardly/not used (0% by mass). Therefore a range of 0 to 1% of glycerin may be obvious to try and claim.
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, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mielke et al. (US 6770331 B1), hereinafter referred to as Mielke.
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. 26-29);
at least one permeable moisturizer selected from the group consisting of a glycol monoether, a diol having at least four carbon atoms, an amide, and a (poly)glyceryl ether (examples of diols and glycol monoethers; 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).
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).
Claim(s) 2 and 6 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 the Handbook of Pharmaceutical Excipients, specifically on “Polyethylene Glycol” by Wallick and “Xylitol” by Shur.
Regarding claim 2, Mielke teaches examples of permeable moisturizers, such as polyethylene glycol as a diol with more than 4 carbon atoms, however Mielke does not teach 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.
Wallick explicitly teaches the property of polyethylene glycol 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 (55nM/m; pp. 519, right col, “Surface Tension”).
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 permeable moisturizer as taught by Mielke wherein the specific property of the permeable moisturizer in the form of an aqueous solution at a concentration of 10% by mass has a surface tension of 45 to 67 mN/m as taught by Wallick. 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).
Regarding claim 6, Mielke teaches examples of sugar alcohols having at least four OH groups, such as sorbitol, however Mielke does not teach 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).
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 2, 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) 8-9 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 Teranishi et al. (JP 2019090014 A), hereinafter referred to as Teranishi.
Regarding claim 8, Mielke does not teach the ink jet ink composition wherein the permeable moisturizer includes a (poly)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 include 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 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 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).
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 selected from the group consisting of a glycol monoether, a diol having at least four carbon atoms, an amide, and a (poly)glyceryl ether (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]).
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.
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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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2 April 2026
/KYRA MELOR VAN KREUNINGEN/ Examiner, Art Unit 2853 /SHELBY L FIDLER/Primary Examiner, Art Unit 2853
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