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 of Invention I and sub-invention IC in the reply filed on 2/4/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2-3, 7-8, and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention and sub-invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/4/26.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1, 4, 6, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/740032 in view of Katsuragi et al. (JP 2019123841 A). Claim 11 of 18/740032 discloses all the limitations of claims 1, 4, 6, and 9-10, except for “wherein the ink contains titanium oxide and a wax particle,” found in claim 1. However, Katsuragi discloses “wherein the ink contains titanium oxide and a wax particle.” See highlighting on 7 and 9 of translation of Katsuragi’s. It would have been obvious to one of ordinary skill to adopt the use of an ink containing titanium oxide and a wax particle for the purpose of printing white ink and “imparting slipperiness to the image area.” See highlighting on pg. 5 of translation of Katsuragi’s.
This is a provisional nonstatutory double patenting rejection.
Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/740032, as modified by Katsuragi et al. (JP 2019123841 A), and further in view of Yamada et al. (US 2021/0394525 A1).
Regarding claim 11, claim 11 of 18/740032, as modified by Katsuragi, discloses all the limitations introduced in parent claims 1, 4, 6, and 8-10.
Claim 11 of 18/740032, as modified by Katsuragi, does not appear to disclose The ink-jet recording method according to Claim 10, wherein part of a surface of the first pressure control chamber is constituted by a first flexible member configured to be displaceable, and the first pressure control chamber includes a first pressure plate configured to be displaceable together with the first flexible member, and a first urging member that urges the first pressure plate in a direction in which a volume of the first pressure control chamber increases, the first pressure control chamber being configured such that the first valve is openable and closable according to a displacement of the first pressure plate and the first flexible member.
However, claim 11 of 18/740032, as modified by Katsuragi, and further modified by Yamada, discloses The ink-jet recording method according to Claim 10, wherein part of a surface of the first pressure control chamber (Yamada’s 2026, fig. 2, para 34-35) is constituted by a first flexible member (Yamada’s 2023, fig. 2, para 34-35) configured to be displaceable (see Yamada’s fig. 2, para 34-35), and the first pressure control chamber includes a first pressure plate (Yamada’s 2022, fig. 2, para 34-35) configured to be displaceable together with the first flexible member (Yamada’s fig. 2, para 34-35), and a first urging member (Yamada’s 2021, fig. 2, para 34-35) that urges the first pressure plate in a direction in which a volume of the first pressure control chamber increases (Yamada’s fig. 2, para 34-35), the first pressure control chamber being configured such that the first valve (Yamada’s 2027, fig. 2, para 34-35) is openable and closable according to a displacement of the first pressure plate and the first flexible member (Yamada’s fig. 2, para 34-35).
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 claim 11 of 18/740032, as modified by Katsuragi, with the teachings of Yamada, for the purpose of sufficiently circulating the ink.
Regarding claim 12, claim 11 of 18/740032, as modified by Katsuragi, and further modified by Yamada, further discloses The ink-jet recording method according to Claim 11, wherein the ink-jet recording head further includes a second pressure adjusting unit (Yamada’s 204, fig. 2, para 37) configured to adjust a pressure of the ink in the individual collecting channel (Yamada’s fig. 2, para 37).
This is a provisional nonstatutory double patenting rejection.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/740032 in view of Katsuragi et al. (JP 2019123841 A), and further in view of case law In re Rose, 105 USPQ 237 (CCPA 1955). Regarding claim 5, claim 11 of copending Application No. 18/740032 in view of Katsuragi et al. (JP 2019123841 A) teaches all claimed limitations except for “has a volume of 30 mL or less.” It would have been an obvious matter of design choice for the volume to be 30 mL or less for the purpose of providing a printer with commercially viable dimensions, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
This is a provisional nonstatutory double patenting rejection.
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.
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(s) 1, 4, 6, and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (US 2021/0394525 A1) in view of Katsuragi et al. (JP 2019123841 A).
Regarding claim 1, Yamada discloses An ink-jet recording method comprising ejecting an ink from an ink-jet recording head (1, fig. 1,2, para 31),
wherein the ink contains titanium oxide and a wax particle (Yamada does not appear to teach this, but this is taught in Katsuragi. See below.), and
the ink-jet recording head includes
an ejection port through which the ink is ejected (103, fig. 2, para 38),
a pressure chamber (106, fig. 2, para 38) having therein an energy-generating element that generates energy for ejecting the ink (inherent in fig. 2 and para 38),
an ejection port portion configured to communicate between the ejection port and the pressure chamber (region between 106 and bottom of 103, fig. 2),
an individual supply channel communicating with the pressure chamber and configured to supply the ink to the pressure chamber (105a, fig. 2, para 38-39), and
an individual collecting channel communicating with the pressure chamber and configured to collect the ink from the pressure chamber (105b, fig. 2, para 38-39).
Yamada does not appear to disclose wherein the ink contains titanium oxide and a wax particle.
However, Yamada, as modified by Katsuragi, discloses wherein the ink contains titanium oxide and a wax particle (Katsuragi’s teaches white ink comprising titanium oxide and wax. See highlighting on 7 and 9 of translation of Katsuragi’s.).
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 Yamada with the teachings of Katsuragi, for the purpose of printing white ink and “imparting slipperiness to the image area.” See highlighting on pg. 5 of translation of Katsuragi’s.
Regarding claim 4, Yamada, as modified by Katsuragi, further discloses The ink-jet recording method according to Claim 1, wherein the ink-jet recording head further includes a pump configured to cause the ink in the individual collecting channel to flow into the individual supply channel (Yamada’s 203, fig. 2, para 34-35).
Regarding claim 6, Yamada, as modified by Katsuragi, further discloses The ink-jet recording method according to Claim 4, wherein the ink-jet recording head is configured to eject the ink while scanning in a scanning direction (inherent in Yamada’s fig. 1).
Regarding claim 9, Yamada, as modified by Katsuragi, further discloses The ink-jet recording method according to Claim 6, wherein the ink-jet recording head further includes a first pressure adjusting unit configured to adjust a pressure of the ink in the individual supply channel (see Yamada’s 202, fig. 2, para 34-35).
Regarding claim 10, Yamada, as modified by Katsuragi, further discloses The ink-jet recording method according to Claim 9, wherein the first pressure adjusting unit includes a first valve chamber (see Yamada’s 2025, fig. 2, para 34-35), a first pressure control chamber (see Yamada’s 2026, fig. 2, para 34-35), a first opening that communicates between the first valve chamber and the first pressure control chamber (see Yamada’s opening in which valve 2027 rests, fig. 2), and a first valve configured to be capable of opening and closing the first opening (see Yamada’s 2027, fig. 2, para 34-35).
Regarding claim 11, Yamada, as modified by Katsuragi, further discloses The ink-jet recording method according to Claim 10, wherein part of a surface of the first pressure control chamber (Yamada’s 2026, fig. 2, para 34-35) is constituted by a first flexible member (Yamada’s 2023, fig. 2, para 34-35) configured to be displaceable (see Yamada’s fig. 2, para 34-35), and the first pressure control chamber includes a first pressure plate (Yamada’s 2022, fig. 2, para 34-35) configured to be displaceable together with the first flexible member (Yamada’s fig. 2, para 34-35), and a first urging member (Yamada’s 2021, fig. 2, para 34-35) that urges the first pressure plate in a direction in which a volume of the first pressure control chamber increases (Yamada’s fig. 2, para 34-35), the first pressure control chamber being configured such that the first valve (Yamada’s 2027, fig. 2, para 34-35) is openable and closable according to a displacement of the first pressure plate and the first flexible member (Yamada’s fig. 2, para 34-35).
Regarding claim 12, Yamada, as modified by Katsuragi, further discloses The ink-jet recording method according to Claim 11, wherein the ink-jet recording head further includes a second pressure adjusting unit (Yamada’s 204, fig. 2, para 37) configured to adjust a pressure of the ink in the individual collecting channel (Yamada’s fig. 2, para 37).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (US 2021/0394525 A1) in view of Katsuragi et al. (JP 2019123841 A).
Regarding claim 5, Yamada, as modified by Katsuragi, teaches all claimed limitations except for “has a volume of 30 mL or less.” It would have been an obvious matter of design choice for the volume to be 30 mL or less for the purpose of providing a printer with commercially viable dimensions, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
The following reference(s) is/are considered pertinent to applicant's disclosure and is/are cited for disclosing related limitations to the applicant’s claimed and disclosed invention.
CN 107160861 A
The invention claims a liquid jetting device, comprising a liquid jet part, which has a nozzle capable of ejecting a liquid onto a medium of the wiping part, capable of the liquid jetting part for wiping the waste liquid receiving part; it and the liquid spraying part of opposite position, to receive the waste liquid due to the maintenance operation of maintenance of the liquid ejection part and is discharged, the waste liquor recycling part, which contacts with the waste liquid receiving part and received by the waste liquid receiving part is recovered. the wiping part contacted with the recovering part, the waste liquid and recycling by the recycling part by wiping.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN SEO whose telephone number is (571)270-1327. The examiner can normally be reached M-F 9am-5pm.
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/JUSTIN SEO/Primary Examiner, Art Unit 2853
March 28, 2026