DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to Applicant's arguments dated 07/01/2026. Claim(s) 1-9 is/are pending in the application. Claim(s) 1 has/have been amended.
Examiner's Note
Examiner has cited particular columns and line numbers or figures in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants' definition which is not specifically set forth in the claims. In re Tanaka et aI., 193 USPQ 139, (CCPA) 1977.
Claim Rejections - 35 U.S.C. § 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1. Claim(s) 1-9 is/are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Publication No. 20130258015 to Mizutaki et al. (hereinafter “Mizutaki”).
With respect to claim 1, Mizutaki discloses an ink jet clear ink composition (clear ink composition Summary) comprising: a photoinitiator (photopolymerization initiator [0031], [0074]-[0082]); a fluorescent whitening agent ([0083]-[0086]); and a polymerizable monomer ([0059]-[0066], [0083]-[0086] of Mitzutaki), wherein the photoinitiator includes ethyl phenyl(2,4,6-trimethylbenzoyl)phosphinate ([0074]-[0082]), the polymerizable monomer includes an aromatic ring-containing monomer and a hydroxy group-containing monomer ([0059]-[0066] of Mitzutaki), and the fluorescent whitening agent is present at a content of 0.2 percent by mass or more with respect to a total mass of the ink jet clear ink composition ([0083]-[0086] of Mitzutaki).
However, Mizutaki fails to specifically state that:
the ink jet clear ink composition does not contain a colorant,
Mizutaki does discloses:
the ink jet clear ink composition does not contain a colorant ( “the ink composition does not substantially contain a colorant such as a pigment or a dye.” [0088],
At the time of the invention, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to leave out the colorant as disclosed by Mizutaki. The motivation for doing so would have been to maintain a clear ink composition and not impair the clear ink. ([0088] of Mizutaki).
With respect to claim 2, Mizutaki discloses wherein the photoinitiator is present at a content of 0 to 12.0 percent by mass or less with respect to the total mass of the ink jet clear ink composition ([0081] of Mitzutaki).
With respect to claim 3, Mizutaki discloses wherein the ethyl phenyl(2,4,6-trimethylbenzoyl)phosphinate is present at a content of 2.0 to 8.0 percent by mass with respect to the total mass of the ink jet clear ink composition ([0074]-[0082] of Mitzutaki).
With respect to claim 4, Mizutaki discloses wherein the hydroxy group-containing monomer includes at least one selected from the group consisting of 2-hydroxy-3-phenoxypropyl acrylate, 4-hydroxybutyl acrylate, and 1,4-cyclohexane dimethanol monoacrylate ([0059]-[0065] of Mitzutaki).
With respect to claim 5, Mizutaki discloses wherein the polymerizable monomer includes a monomer having both an aromatic ring and a hydroxy group ([0059]-[0065] of Mitzutaki).
With respect to claim 6, Mizutaki discloses wherein the monomer having both an aromatic ring and a hydroxy group includes 2-hydroxy-3-phenoxypropyl acrylate ([0059]-[0065] of Mitzutaki).
With respect to claim 7, Mizutaki discloses wherein the aromatic ring-containing monomer is present at a content of 31.5 percent by mass or more with respect to the total mass of the ink jet clear ink composition ([0071] of Mizutaki).
With respect to claim 8, Mizutaki discloses further comprising: an urethane acrylate oligomer ([0046] of Mizutaki).
With respect to claim 9, Mizutaki discloses a recording method comprising: an ejection step of ejecting the ink jet clear ink composition according to claim 1 so as to be adhered to a recording medium; and an irradiation step of irradiating the ink jet clear ink composition with radioactive rays ([0020]-[0021] of Mizutaki).
RESPONSE TO ARGUMENTS
1. Applicant's arguments filed 07/01/2026 have been fully considered but they are moot in light of the amendment and the above rejection.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 Bradley W Thies whose telephone number is (571)270-5667. The examiner can normally be reached M-F 9:30 am -6:00 pm.
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, Ricardo Magallanes can be reached at (571) 272-5960. 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.
/BRADLEY W THIES/Primary Examiner, Art Unit 2853
Prosecution Insights