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 with traverse of the apparatus of claims 1-9 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 a proper search of all the claimed subject matter would require different fields of search due to the differing classifications and differing features 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Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected apparatus, there being no allowable generic or linking claim.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).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) in view of Nakagawa et al. (US 20160222236 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 a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2.
Nakagawa et al. does teach 2 inks where in a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2 (paragraph [0076] wherein the first ink of Nakagawa et al. is the second ink and the second ink of Nakagawa 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. with the inks of Nakagawa et al. to improve the color developability and the bronzing resistance (paragraph [0074] of Nakagawa et al.).
Regarding claim 7, Chikuma et al. and Nakaagawa 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 8, Chikuma et al. and Nakagawa 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 9, Chikuma et al. and Nakagawa 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) and Nakagawa et al. (US 20160222236 A1) as applied to claim 1 above, and further in view of Tsuji et al. (US 20200108613 A1).
Regarding claim 2, Chikuma et al. and Nakagawa et al. teach all the elements of claim 1 as stated above but they fail to teach wherein a dynamic surface tension of the first ink at 10 milliseconds is 36mN/m or more.
Tsuji et al. teaches a pairs of inks wherein dynamic surface tension of the first ink at 10 milliseconds is 36mN/m or more (paragraph [0062]).
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 Nakagawa et al. with the surface tension of Tsuji et al. to stop the first ink from being drawn unintentionally out of the ejection orifice (paragraphs [0061] and [0062] of Tsuji et al.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) and Nakagawa et al. (US 20160222236 A1) as applied to claim 1 above, and further in view of Iwata et al. (US 20080136875 A1).
Regarding claim 3, Chikuma et al. and Nakagawa 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 small specific gravity and the second ink is the ink with the large 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 Nakagawa et al. with the viscosities of Iwata et al. to have the proper flow channel resistance for each ink to allow for easy cleaning of the print heads (paragraphs [0060] and [0061]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chikuma et al. (US 20040165033 A1) and Nakagawa et al. (US 20160222236 A1) as applied to claim 1 above, and further in view of Alvarez et al. (WO 2017067614 A1).
Regarding claim 6, Chikuma et al. and Nakagawa et al. teach all the elements of claim 1 as stated above but they fail to teach a step of warming the ink in the recording head.
Alvarez et al. teaches a printing method with a step of warming the ink in the recording head (paragraph [0029]).
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 Alvarez et al. with the method of Chikuma et al. and Nakagawa et al. to minimize the effect of temperature variance during printing (paragraph [0029] of Alvarez 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, 4, 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7-9 of copending Application No. 18/740,083 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 18/740,083 claims a highly similar invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2.
However, it does teach wherein a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1≥ys2.
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 static surface tension relationship, as taught by 18/740,083, as an obvious reversal of parts as stated by In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 4, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 4 with its substantially similar claim 2.
Regarding claim 6, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 6 with its substantially similar claim 1.
Regarding claim 7, 18/740,083 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, 18/740,083 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, 18/740,083 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 9 with its substantially similar claim 9.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Application No. 18/740,083 in view of Iwata et al. (US 20080136875 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 3, 18/740,083 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 small specific gravity and the second ink is the ink with the large 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 18/740,083 with the viscosities taught of Iwata et al. to have the proper flow channel resistance for each ink to allow for easy cleaning of the print heads (paragraphs [0060] and [0061]).
Claims 1, 3, and 6-9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4, 8 and 10-12 of copending Application No. 18/739,808 in view of Nakagawa et al. (US 20160222236 A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, 18/739,808 teaches most of the elements of claim 1 with its substantially similar claim 1, however 18/739,808 fails to teach wherein a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2.
Nakagawa et al. does teach 2 inks where in a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2 (paragraph [0076] wherein the first ink of Nakagawa et al. is the second ink and the second ink of Nakagawa 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 18/739,808 with the inks of Nakagawa et al. to improve the color developability and the bronzing resistance (paragraph [0074] of Nakagawa et al.).
Regarding claim 3, 18/739,808 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, 18/739,808 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 18/739,808 as an obvious reversal of parts as stated by In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 6, 18/740,808 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 6 with its substantially similar claim 8.
Regarding claim 7, 18/740,808 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 7 with its substantially similar claim 11.
Regarding claim 8, 18/740,808 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 8 with its substantially similar claim 10.
Regarding claim 9, 18/740,808 teaches all the elements of claim 1 as stated above and teaches all the elements of claim 9 with its substantially similar claim 12.
Claim 1, 3, 4 and 6-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8, and 10-12 of U.S. Patent No. US 12636884 B2 (Aiko et al.) in view of Nakagawa et al. (US 20160222236 A1).
Regarding claim 1, Aiko et al. teaches most of the elements of claim 1 with its substantially similar claim 1, 4, 8, 10-12 however Aiko et al. fails to teach wherein a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2.
Nakagawa et al. does teach 2 inks where in a static surface tension ys1 of the first ink and a static surface tension ys2 of the second ink satisfy a relationship of ys1<ys2 (paragraph [0076] wherein the first ink of Nakagawa et al. is the second ink and the second ink of Nakagawa 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 Aiko et al. with the inks of Nakagawa et al. to improve the color developability and the bronzing resistance (paragraph [0074] of Nakagawa et al.).
Regarding claim 4, Aiko et al. teaches all the elements of claim 1 as stated above and but Aiko et al. 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, Aiko et al. does teach a viscosity n1 of the first ink and a viscosity n2 of the second ink satisfy a relationship of n1≥n2 in claim 4.
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 Aiko et al. as an obvious reversal of parts as stated by In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
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 8.
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 11.
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 10.
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 12.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, the prior art of record fails to teach or fairly suggest a printing method with all the steps as recited in combination with and particularly including wherein the ink comprises a first water-soluble organic solvent having a relative dielectric constant at a temperature of 25C of 15.0 or less and wherein a ratio S1 of a content (% by mass) of the first water-soluble organic solvent in the first ink to a total content (% by mass) of water-soluble organic solvents therein and a ratio S2 of a content (% by mass) of the first water-soluble organic solvent in the second ink to a total content (% by mass) of water-soluble organic solvents therein satisfy a relationship of S1>S2. Specifically, while these features are individually taught by the prior art (for example US 20190016130 A1 teaches the correct dielectric constant but not the ratio of solvents), there does not exist, at this time, one source or a combination of sources that teach both the features of claim 2 and those of claim 1 in a manner that would be obvious to one of ordinary skill in the art to combine.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nakagawa et al. (US 20190009544 A1), Kawabe et al. (US 20190016130 A1) and Watanabe et al. (US 20190275805 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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