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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of the method of claims 1-12 in the reply filed on 05/15/2026 is acknowledged. The traversal is on the grounds that examination of the claims could occur without undue burden. This is not found persuasive because the apparatus and method would require different fields of search due to their different classifications, and differing features that would require differing search strategies and search queries like the various properties of the ink, the step of warming the inkjet head, the flow speed of the ink, the distance between the heads and the separation of the flow unit.
The requirement is still deemed proper and is therefore made FINAL.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/15/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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, 3, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) in view of Nakano et al. (US 20130021399 A1).
Regarding claim 1, Chikuma et al. teaches an ink jet recording method comprising recording an image by ejecting an ink from a recording head including (Fig. 1 element 1 and paragraph [108]); a plurality of ejection orifices each configured to eject the ink (Fig. 2 element 22 and paragraph [0114]); an ejection element configured to generate energy for ejecting the ink (Fig. 2 element 25 and [0114]); and a first flow path (Fig. 2 element 23) and a second flow path (Fig. 2 element 24) which communicate to each other between each of the plurality of ejection orifices and the ejection element and inside which the ink flows (paragraph [0114]), the ink jet recording method comprising: an ejection step of ejecting the ink from the plurality of ejection orifices (paragraph [0114]); and a flow step, which is separate from the ejection step, of flowing the ink in the first flow path into the second flow path (paragraphs [0114] and [0119]), wherein the recording head is a recording head of a serial type (Fig. 1) which includes an ejection element substrate including a plurality of ejection orifice arrays each having the plurality of ejection orifices arranged in a predetermined direction (Fig. 4) and which is scanned in a direction intersecting with an arrangement direction of the ejection orifice arrays (Fig. 4), wherein the first flow path and the second flow path are arranged in parallel to a scanning direction of the recording head and have the same flow direction of the ink (Fig. 2 and Fig. 4), wherein the plurality of ejection orifice arrays includes a first ejection orifice array configured to eject a first ink and a second ejection orifice array configured to eject a second ink (Fig. 4 elements 1001 and 1002 and paragraphs [0105], [0122]-[0124] and [0131]-[0142]), and the first ejection orifice array and the second ejection orifice array are arranged on an upstream side and on a downstream side, respectively, with respect to the flow direction of the ink (Fig. 4 and paragraph [0148]).
Chikuma et al. fails to teach wherein the first ink and the second ink are each an aqueous ink comprising a pigment, and wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2.
Nakano et al. does teach an ink set wherein the first ink and the second ink are each an aqueous ink comprising a pigment (paragraph [0004] and [0040]), and wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2 (paragraph wherein the first ink is yellow and the second ink is magenta)
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of Chikuma et al. with the inks of Nakano et al. as a combination of 2 elements known in the art of printers to yield a method capable of printing inks with differing molar fractions of water.
Regarding claim 3, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above and wherein a lightness of the first ink is higher than a lightness of the second ink (paragraph [0050] of Nakano et al. wherein yellow is lighter than magenta).
Regarding claim 8, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above and Nakano et al. teaches a step of warming the ink in the recording head (paragraph [0037]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the heating step of Nakano et al. with the method of Chikuma et al. to allow for the ejection of ink from the print head (paragraph [0037] of Nakano et al.).
Regarding claim 9, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above and neither specifically teaches the ink jet recording method is free of a step of heating a recording medium to which the ink has been applied.
However, Chikuma et al. and Nakano et al. do not teach a step of heating the recording medium.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to not heat the recording medium since neither Chikuma et al. or Nakano et al. teach such a step.
Regarding claim 10, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above and both fail to teach a flow speed of the ink during the flowing is 1.0 mm/s or more to 100.0 mm/s or less.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to achieve the claimed flow speed of the ink as routine optimization to achieve a printing method that would print ink at a fast rate to enable a speedy delivery of a desired end product but not so fast as to hinder the quality of the end product.
Regarding claim 11, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above and both fail to teach a wherein a moving speed of the recording head during the scanning is 70 inches/sec or less.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to achieve the claimed flow speed of the ink as routine optimization to achieve a printing method with a fast rate of movement for the print head to enable a speedy delivery of a desired end product without moving so fast as to hinder the quality of the final product.
Regarding claim 12, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above and both fail to teach wherein a distance between the first ejection orifice array and the second ejection orifice array is 1.8 mm or less.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to achieve the claimed flow speed of the ink as routine optimization to achieve a printing method that is capable of achieving good detail in the final product.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) and Nakano et al. (US 20130021399 A1). as applied to claim 1 above, and further in view of Iwata et al. (US 20080136875 A1).
Regarding claim 4, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above but they fail to teach wherein a viscosity n1 of the first ink and a viscosity n2 of the second ink satisfy a relationship of n1≥n2.
Iwata et al. teaches 2 inks wherein a viscosity n1 of the first ink and a viscosity n2 of the second ink satisfy a relationship of n1≥n2 (paragraph [0063] wherein the first ink is the ink with the large specific gravity and the second ink is the ink with the small specific gravity)
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of Chikuma et al. and Nakano et al. with the viscosities of Iwata et al. to have a proper flow channel resistance for each ink to allow for easy cleaning of the print heads (paragraphs [0060] and [0061]).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) and Nakano et al. (US 20130021399 A1). as applied to claim 1 above, and further in view of Aikawa et al. (US 20190111701 A1).
Regarding claim 5, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above but they fail to teach wherein the first ink and the second ink each comprise a water-soluble resin, and wherein a content A1 (% by mass) of the water-soluble resin in the first ink and a content A2 (% by mass) of the water-soluble resin in the second ink satisfy a relationship of A1≥A2.
Aikawa et al. does teach 2 inks wherein the first ink and the second ink each comprise a water-soluble resin (paragraph [0062]), and wherein a content A1 (% by mass) of the water-soluble resin in the first ink and a content A2 (% by mass) of the water-soluble resin in the second ink satisfy a relationship of A1≥A2 ([0005] wherein the first ink of Aikawa et al is the second ink and the second ink of Aikawa et al. is the first ink).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of Chikuma et al. and Nakano et al. with the resins of Aikawa et al. to allow for a printing method where color mixing in the image is suppressed (paragraph [0030] of Aikawa et al.).
Regarding claim 6, Chikuma et al. and Nakano et al. teach all the elements of claim 1 as stated above but they fail to teach wherein the first ink and the second ink each comprise a resin particle, and wherein a content B1 (% by mass) of the resin particle in the first ink and a content B2 (% by mass) of the resin particle in the second ink satisfy a relationship of B1≤B2.
Aikawa et al does teach two inks wherein the first ink and the second ink each comprise a resin particle (paragraph [0060], and wherein a content B1 (% by mass) of the resin particle in the first ink and a content B2 (% by mass) of the resin particle in the second ink satisfy a relationship of B1≤B2 (paragraph [0005] wherein the first ink of Aikawa et al. is the first ink and the second ink of Aikawa et al. is the second ink).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of Chikuma et al. and Nakano et al. with the resins of Aikawa et al. to allow for a printing method where color mixing in the image is suppressed (paragraph [0030] of Aikawa et al.).
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US 12636884 B2 (Aiko et al.) Although the claims at issue are not identical, they are not patentably distinct from each other because Aiko et al. teaches a highly similar printing method.
Regarding claim 1, Aiko et al. teaches most of the elements of claim 1 with its substantially similar claim 1, however Aiko et al. fails to teach wherein the first ink and the second ink wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2.
However, it does teach wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship R1 < R2.
Therefore, it would have been obvious to one of ordinary skill in the art prior the effective filing date of the invention to swap the molar fraction of water relationship, as taught by Aiko, as an obvious reversal of parts as stated by In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 2, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 2 with its substantially similar claim 2.
Regarding claim 3, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 3 with its substantially similar claim 3.
Regarding claim 4, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 4 with its substantially similar claim 4.
Regarding claim 5, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 5 with its substantially similar claim 5.
Regarding claim 6, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 6 with its substantially similar claim 6.
Regarding claim 7, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 7 with its substantially similar claim 7.
Regarding claim 8, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 8 with its substantially similar claim 8.
Regarding claim 9, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 9 with its substantially similar claim 9.
Regarding claim 10, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 10 with its substantially similar claim 10.
Regarding claim 11, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 11 with its substantially similar claim 11.
Regarding claim 12, Aiko et al. teaches all the elements of claim 1 as stated above and teaches all the elements of claim 12 with its substantially similar claim 12.
Claim 1, 3, 4, 8, and 10-12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 6-9 of copending Application No. 18/739,809 in view of Nakao et al. (US 20130021399 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, 18/739,809 teaches most of the elements of claim 1 with its substantially similar claim 1, however Aiko et al. fails to teach wherein the first ink and the second ink wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2.
Nakano et al. does teach an ink set wherein the first ink and the second ink are each an aqueous ink comprising a pigment (paragraph [0004] and [0040]), and wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2 (paragraph wherein the first ink is yellow and the second ink is magenta)
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of 18/739,809 with the inks of Nakano et al. as a combination of 2 elements known in the art of printers to yield a method capable of printing inks with differing molar fractions of water.
Regarding claim 3, 18/739,809 and Nakano et al. teach all the elements of claim 1 as stated above and wherein a lightness of the first ink is higher than a lightness of the second ink (paragraph [0050] of Nakano et al. wherein yellow is lighter than magenta).
Regarding claim 4, 18/739,809 teaches all the elements of claim 1 as stated above and but 18/739,809 fails to exactly teach wherein a viscosity n1 of the first ink and a viscosity n2 of the second ink satisfy a relationship of n1≥n2.
However, 18/739,809 does teach a viscosity n1 of the first ink and a viscosity n2 of the second ink satisfy a relationship of n1<n2.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to swap the relationship of the viscosities as taught by 18/739,809 as an obvious reversal of parts as stated by In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 8, 18/739,809 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 8 with its substantially similar claim 6.
Regarding claim 10, 18/739,809 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 10 with its substantially similar claim 8.
Regarding claim 11, 18/739,809 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 11 with its substantially similar claim 7.
Regarding claim 12, 18/739,809 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 12 with its substantially similar claim 9.
Claim 1, 3, and 10-12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 7-9 of copending Application No. 18/740,083 in view of Nakao et al. (US 20130021399 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, 18/740,083 teaches most of the elements of claim 1 with its substantially similar claim 1, however 18/740,083 fails to teach wherein the first ink and the second ink wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2.
Nakano et al. does teach an ink set wherein the first ink and the second ink are each an aqueous ink comprising a pigment (paragraph [0004] and [0040]), and wherein a molar fraction R1 of water in the first ink and a molar fraction R2 of water in the second ink satisfy a relationship of R1≥R2 (paragraph wherein the first ink is yellow and the second ink is magenta)
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of 18/740,083 with the inks of Nakano et al. as a combination of 2 elements known in the art of printers to yield a method capable of printing inks with differing molar fractions of water.
Regarding claim 3, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 3 with its substantially similar claim 4.
Regarding claim 10, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 10 with its substantially similar claim 8.
Regarding claim 11, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 11 with its substantially similar claim 7.
Regarding claim 12, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 12 with its substantially similar claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Okushima et al. (US 20170197419 A1) and Sanada et al. (US 20170361611 A1) are cited as having methods similar to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL F BOELITZ whose telephone number is (571)272-3391. The examiner can normally be reached Mon-Fri 8am-5pm.
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, Stephen Meier can be reached at 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL FREDERICK BOELITZ/Examiner, Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853
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