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 .
Examiner’s Comments
Applicants’ response filed on 11/20/2025 has been fully considered. Claims 2-5 are cancelled and claims 1 and 6-10 are pending. Support for amendment to claim 1 is provided by claims 4-5 and 9
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.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Araki (US 2016/0090504 A1) in view of Yoneyama et al (US 2016/0023456 A1) in further view of Asano et al (US 2005/0233098 A1).
Regarding claim 1, Araki discloses a printing sheet (printed material; paragraph [0008]) comprising a substrate comprising a polyolefin-based resin (recording medium comprises a polyolefin resin; paragraphs [0162] and [0166]), and a coated layer including an acrylic polymer on one surface or both surfaces of the substrate (undercoat layer is coated on the recording medium and undercoat layer is formed from an undercoat composition comprising component B comprising b1 of a polyfunctional (meth)acrylate compound, b2 of a polyfunctional (meth)acrylate compound, b3 of a monofunctional (meth)acrylate compound and b4 of a monofunctional (meth)acrylate compound; paragraphs [0044]-[0045], [0053]-[0055], [0066]-[0069] and [0075]-[0077] and [0174]) and wherein a silicone-based surfactant is blended in a ratio of 0.10% by mass or more and 1.00% by mass or less relative to 100% by mass of the acrylic polymer in a continuous phase made of the acrylic polymer (the surfactant comprising a polyether-modified siloxane and content of the surfactant is 0.001 to 2 mass% relative to entire mass of undercoat composition; paragraphs [0141] and [0143])
The content of surfactant based on the content of Component B is 0.0014% [(0.001/72) x 100%] to 3.33% [(2/60) x 100%] by mass based on the total mass of Component B. This range overlaps the claimed range for the ratio of silicone-based surfactant blended in 100% by mass of acrylic polymer in a continuous phase made by the acrylic polymer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have stable discharge properties for a long time and improving inkjet discharge stability (paragraphs [0139] and [0141] of Araki). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Araki does not disclose the printing sheet comprising the polyether modified silicone having a structure represented by formula 1.
However, Yoneyama discloses a recording method comprising coating an undercoat composition onto a recording medium (paragraph [0180]), wherein the undercoat composition comprises a silicone surfactant (paragraphs [0180] and [0183]), wherein the silicone surfactant is a polyether-modified silicone for use in the specific ink (paragraph [0183]) and wherein the silicone surfactant is Silface SAG005 (polyether-modified silicone having a structure represented by General Formula 1; paragraph [0091]).
Silface SAG005 is considered to be a polyether-modified silicone having a structure represented by general formula 1 as paragraph [0102] of Applicant’s Specification discloses that SAG005 is a silicone-based surfactant of General Formula 1. Silface SAG005 is a surfactant having a low solvent SP value as disclosed in paragraph [0102] of Applicant’s Specification. A polyether-modified silicone having a low solvent SP value would have a b/a ratio of (1 to 5)/(10 to 23).
It would have been obvious to one of ordinary skill in the art to modify the printed material of Araki to substitute the polyether modified polysiloxane surfactant of Araki for the silicone surfactant Silface SAG005 of Yoneyama for the because having the required surfactant, such as Silface SAG005, in the undercoat layer provides a reduced coefficient of friction for the surface of the undercoat layer and makes it possible to form images having improved abrasion resistance (paragraph [0181] of Yoneyama).
Araki does not disclose the printing sheet comprising the acrylic polymer being an emulsion polymerization product of radical polymerization monomers and a main monomer of the radical polymerization monomers being selected from methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, ethyl methacrylate and n-butyl (meth)acrylate.
However, Asano discloses a printing sheet (ink-jet recording paper; paragraph [0001]) comprising the acrylic polymer being an emulsion polymerization product of radical polymerization monomers (monomer composition polymerized with a radical polymerization initiator to form an emulsion polymerization product; paragraph [0055]) and a main monomer of the radical polymerization monomers being selected from methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, ethyl methacrylate and n-butyl (meth)acrylate (outermost part of coating layer comprises a copolymer comprising a monomer selected from methyl (meth)acrylate, ethyl (meth)acrylate, butyl (meth)acrylate and 2-ethylhexyl (meth)acrylate; paragraphs [0034]-[0042]).
It would have been obvious to one of ordinary skill in the art to modify the printed material of Araki to substitute the Component B of Araki for the radical polymerization monomers selected from methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, ethyl methacrylate and n-butyl (meth)acrylate of Asano because having the required (meth)acrylic acid ester provides a printing paper with balance feedability and image resolution (paragraph [0036] of Asano).
Regarding claim 9, Araki discloses a method for producing a printing sheet (inkjet recording method; paragraph [0174]), the method comprising applying an aqueous acrylic polymer emulsion made by blending a silicone-based surfactant in a ratio of 0.10% by mass or more and 1.00% by mass or less relative to 100% by mass of an acrylic polymer (the surfactant comprising a polyether-modified siloxane and content of the surfactant is 0.001 to 2 mass% relative to entire mass of undercoat composition; paragraphs [0141] and [0143]) to one surface or both surfaces of a substrate comprising a polyolefin-based resin to form a coated layer (undercoat layer is coated on the recording medium and undercoat layer is formed from an undercoat composition comprising component B comprising b1 of a polyfunctional (meth)acrylate compound, b2 of a polyfunctional (meth)acrylate compound, b3 of a monofunctional (meth)acrylate compound and b4 of a monofunctional (meth)acrylate compound; paragraphs [0044]-[0045], [0053]-[0055], [0066]-[0069] and [0075]-[0077] and [0174]), the acrylic polymer forming a continuous phase of the coated layer (undercoat layer is coated on the recording medium and undercoat layer is formed from an undercoat composition comprising component B comprising b1 of a polyfunctional (meth)acrylate compound, b2 of a polyfunctional (meth)acrylate compound, b3 of a monofunctional (meth)acrylate compound and b4 of a monofunctional (meth)acrylate compound; paragraphs [0044]-[0045], [0053]-[0055], [0066]-[0069] and [0075]-[0077] and [0174]), wherein the silicone-based surfactant is a polyether-modified silicone (the surfactant comprising a polyether-modified siloxane; paragraphs [0141] and [0143]).
The content of surfactant based on the content of Component B is 0.0014% [(0.001/72) x 100%] to 3.33% [(2/60) x 100%] by mass based on the total mass of Component B. This range overlaps the claimed range for the ratio of silicone-based surfactant blended in 100% by mass of acrylic polymer in a continuous phase made by the acrylic polymer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have stable discharge properties for a long time and improving inkjet discharge stability (paragraphs [0139] and [0141]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Araki does not disclose the method comprising the polyether modified silicone having a structure represented by formula 1.
However, Yoneyama discloses a recording method comprising coating an undercoat composition onto a recording medium (paragraph [0180]), wherein the undercoat composition comprises a silicone surfactant (paragraphs [0180] and [0183]), wherein the silicone surfactant is a polyether-modified silicone for use in the specific ink (paragraph [0183]) and wherein the silicone surfactant is Silface SAG005 (polyether-modified silicone having a structure represented by General Formula 1; paragraph [0091]).
Silface SAG005 is considered to be a polyether-modified silicone having a structure represented by General Formula 1 as paragraph [0102] of Applicant’s Specification discloses that SAG005 is a silicone-based surfactant of General Formula 1. Silface SAG005 is a surfactant having a low solvent SP value as disclosed in paragraph [0102] of Applicant’s Specification. A polyether-modified silicone having a low solvent SP value would have a b/a ratio of (1 to 5)/(10 to 23).
It would have been obvious to one of ordinary skill in the art to modify the inkjet recording method of Araki to substitute the polyether modified polysiloxane surfactant of Araki for the silicone surfactant Silface SAG005 of Yoneyama for because having the required surfactant, such as Silface SAG005, in the undercoat layer provides a reduced coefficient of friction for the surface of the undercoat layer and makes it possible to form images having improved abrasion resistance (paragraph [0181] of Yoneyama).
Araki does not disclose the method comprising the acrylic polymer being an emulsion polymerization product of radical polymerization monomers and a main monomer of the radical polymerization monomers being selected from methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, ethyl methacrylate and n-butyl (meth)acrylate.
However, Asano discloses a method (paragraph [0113]) comprising the acrylic polymer being an emulsion polymerization product of radical polymerization monomers (monomer composition polymerized with a radical polymerization initiator to form an emulsion polymerization product; paragraph [0055]) and a main monomer of the radical polymerization monomers being selected from methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, ethyl methacrylate and n-butyl (meth)acrylate (outermost part of coating layer comprises a copolymer comprising a monomer selected from methyl (meth)acrylate, ethyl (meth)acrylate, butyl (meth)acrylate and 2-ethylhexyl (meth)acrylate; paragraphs [0034]-[0042]).
It would have been obvious to one of ordinary skill in the art to modify the method of Araki to substitute the Component B of Araki for the radical polymerization monomers selected from methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, ethyl methacrylate and n-butyl (meth)acrylate of Asano because having the required (meth)acrylic acid ester provides a printing paper with balance feedability and image resolution (paragraph [0036] of Asano).
Claims 6-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Araki (US 20165/0090504 A1) in view of Yoneyama et al (US 2016/0023456 A1) in further view of Asano et al (US 2005/0233098 A1) in further view of Idei et al (JP 6894654 B1).
A machine translation is being used as the English translation of Idei et al (JP 6894654 B1).
Regarding claim 6, Araki, Yoneyama and Asano disclose the printing sheet of claim 1 as noted above are relied upon as described above.
Araki, Yoneyama and Asano do not disclose the printing sheet comprising the substrate comprising a polyolefin-based resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio.
However, Idei discloses a printing sheet comprising a base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 (pgs. 2-3 of translation) and wherein the inorganic powder comprises heavy calcium carbonate (pg. 4 of translation).
It would have been obvious to one of ordinary skill in the art to modify the printed material of Araki, Yoneyama and Asano to include the base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 of Idei for the recording medium of Araki because having the required substrate provides environmental protection and improving characteristics such as mechanical strength and heat resistance (pg. 3 of translation of Idei).
Regarding claim 7, Araki, Yoneyama and Asano do not disclose the printing sheet comprising the inorganic substance powder comprising calcium carbonate.
However, Idei discloses a printing sheet comprising a base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 (pgs. 2-3 of translation) and wherein the inorganic powder comprises heavy calcium carbonate (pg. 4 of translation).
It would have been obvious to one of ordinary skill in the art to modify the printed material of Araki, Yoneyama and Asano to include the base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 of Idei for the recording medium of Araki because having the required substrate provides environmental protection and improving characteristics such as mechanical strength and heat resistance (pg. 3 of translation of Idei).
Regarding claim 8, Araki, Yoneyama and Asano do not disclose the printing sheet comprising the inorganic substance powder comprising heavy calcium carbonate.
However, Idei discloses a printing sheet comprising a base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 (pgs. 2-3 of translation) and wherein the inorganic powder comprises heavy calcium carbonate (pg. 4 of translation).
It would have been obvious to one of ordinary skill in the art to modify the printed material of Araki, Yoneyama and Asano to include the base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 of Idei for the recording medium of Araki because having the required substrate provides environmental protection and improving characteristics such as mechanical strength and heat resistance (pg. 3 of translation of Idei).
Regarding claim 10, Araki, Yoneyama and Asano disclose the method of claim 9 as noted above and Araki discloses the method comprising the aqueous acrylic polymer emulsion applied to one or both surfaces of the substrate sheet (applying an undercoat composition on the recording medium where the undercoat composition comprises component B comprising b1 of a polyfunctional (meth)acrylate compound, b2 of a polyfunctional (meth)acrylate compound, b3 of a monofunctional (meth)acrylate compound and b4 of a monofunctional (meth)acrylate compound; paragraphs [0044]-[0045], [0053]-[0055], [0066]-[0069] and [0075]-[0077] and [0174])
Araki, Yoneyama and Asano do not disclose the method comprising the substrate comprising a polyolefin-based resin and an inorganic substance powder in a ratio of 50:50 to 10:90 in a mass ratio and wherein the substrate is molded into a sheet by extrusion.
However, Idei discloses a printing sheet comprising a base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 (pgs. 2-3 of translation), wherein the inorganic powder comprises heavy calcium carbonate (pg. 4 of translation) and wherein the base material is formed by extrusion molding (pg. 5 of translation).
It would have been obvious to one of ordinary skill in the art to modify the inkjet recording method of Araki, Yoneyama and Asano to include the base material comprising a sheet made of a polyolefin resin and an inorganic substance powder in a mass ratio of 50:50 to 10:90 of Idei for the recording medium of Araki because having the required substrate provides environmental protection and improving characteristics such as mechanical strength and heat resistance (pg. 3 of translation of Idei).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants argue that Araki fails to disclose the or suggest the features of amended claim 1 and amended claim 9.
This argument is moot as the previous combination of references do not disclose or suggest the features of amended claim 1 and amended claim 9. Therefore, the previous rejections have been withdrawn. However, new grounds of rejection have been noted above.
Applicants argue that Totani does not disclose any acrylic polymers having radical polymerizable groups.
This argument is moot as the amendments to claims 1 and 9 overcome the reference of Totani. Therefore, the previous rejections have been withdrawn. However, new grounds of rejection have been noted above.
Conclusion
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 SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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, Mark Ruthkosky can be reached at (571)-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SATHAVARAM I REDDY/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785