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 .
Information Disclosure Statement
The Information Disclosure Statements (IDS’s) submitted on 03 September 2024, 27 December 2024, and 18 November 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the Information Disclosure Statements have been considered by the Examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 & 11-14 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Ma et al. (US 2007/0097193 A1).
As related to independent claim 1, Ma et al. teaches a compact color desktop inkjet printer with ink cartridge(s) or tank(s) (Ma et al. – Page 1, Paragraph 1 and Figure 1, shown below), wherein one or more of the common CMY or CMYK process color (s) is replaced with one or more alternative fluid (s) that fall outside the color specifications of CMY or CMYK inks and provide special functionality that enhance to desired attributes of the printed material (Ma et al. – Page 1, Paragraphs 6-12; Page 4, Paragraphs 44-45 and Figure 6, shown below).
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As related to independent claim 11, Ma et al. teaches a compact color desktop inkjet printer which comprises one or two printheads, which may be multi-color printheads with up to six separate ink tanks, or one or two cartridges where the printhead is integrated with the ink tanks, one or two of which may be multi-color printheads (Ma et al. – Page 1, Paragraphs 1-6 and Figures 1 & 6, shown above), and which include alternative fluids including special functional fluids in addition to the traditional CMY or CMYK inks to provide special functionality that enhance to desired attributes of the printed image (Ma et al. – Page 1, Paragraphs 6-12; Page 4, Paragraphs 44-45 and Figure 6, shown above).
As related to dependent claims 2 & 12, Ma et al. teaches one or more of the alternative fluids is an alternative process color (Ma et al. – Page 1, Paragraphs 6 & 10; Page 4, Paragraphs 43-46; and Figure 2, shown below).
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As related to dependent claims 3 & 13, Ma et al. teaches one or more of the alternative fluids is the same ink as one of the remaining colors (Ma et al. – Page 1, Paragraphs 6 & 10; Page 4, Paragraphs 43-46; and Figure 2, shown above).
As related to dependent claims 4 & 14, Ma et al. teaches one or more of the alternative fluids is a clear material (Ma et al. – Page 4, Paragraph 44 and Figure 6, shown above).
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.
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 5-10 & 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2007/0097193 A1) in view of Ribi (US 2010/0247223 A1) and Coyle (US 2013/0027723 A1).
As related to dependent claims 5 & 15, Ma et al. teaches a vast number of fluids used as the alternative fluid, including a “gloss optimizer” which is free from visible colorants thereby including IR colorants and UV colorants, but does not specifically teach a “fluorescent” color ink (Ma et al. – Page 4, Paragraph 44). However, both Ribi and Coyle teach using alternative fluids in printable inks (Ribi – Page 6, Paragraph 65 & Page 9, Paragraphs 89-90 and Coyle – Page 1, Paragraphs 2 & 6-9 and Page 2, Paragraph 14) and specifically teaches one or more of the alternative fluids is a fluorescent color ink (Ribi – Page 4, Paragraph 47 and Page 7, Paragraphs 66 & 74 and Coyle – Page 1, Paragraphs 6-9 & Page 3, Paragraphs 32-36). It would have been obvious to one of ordinary skill in the art at the time of filing to modify one or more of the alternative fluids of Ma et al. with one or more of the alternative fluids of Ribi and Coyle to include a variety of alternative fluids including a fluorescent color ink in an effort to provide new product opportunities and industry applications which can include providing cost-effective solutions for printed materials including those requiring security printed images (Ribi – Page 1, Paragraph 3 & Page 8, Paragraph 80 and Coyle – Page 1, Paragraphs 1-3).
As related to dependent claims 6 & 16, the combination of Ma et al., Ribi, and Coyle remains for the reasons indicated above and also teaches one or more of the alternative fluids is a taggant (Coyle – Page 10, Paragraph 90 & Page 11, Paragraph 102).
As related to dependent claims 7 & 17, the combination of Ma et al., Ribi, and Coyle remains for the reasons indicated above and also teaches one or more of the alternative fluids is a thermochromic material (Ribi – Page 6, Paragraphs 62-65).
As related to dependent claims 8 & 18, the combination of Ma et al., Ribi, and Coyle remains for the reasons indicated above and also teaches one or more of the alternative fluids is an electrically conductive material (Ribi – Page 3, Paragraph 31 and Page 7, Paragraph 74).
As related to dependent claims 9 & 19, the combination of Ma et al., Ribi, and Coyle remains for the reasons indicated above and also teaches one or more of the alternative fluids is a reactive material (Ribi – Page 4, Paragraph 45).
As related to dependent claims 10 & 20, the combination of Ma et al., Ribi, and Coyle remains for the reasons indicated above and also teaches one or more of the alternative fluids is a material which is not in the visible spectrum but may be detected by ultraviolet or infra-red radiation (Ma et al. – Page 4, Paragraph 44 & Coyle – Page 1, Paragraphs 6-9 and Page 11, Paragraph 102).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shchegolikhin et al. (US 2002/0025490 A1) teaches inks with fluorescent dyes, taggants, and “invisible” inks. Auslander et al. (US 2007/0119951 A1) teaches printing inks with fluorescent colors and taggants for use in inkjet printers with cartridges.
Examiner's Note: Examiner has cited particular Figures & Reference Numbers, Columns, Paragraphs and Line Numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of 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 responses, to fully consider the references in their 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN P ZIMMERMANN whose telephone number is (571)270-3049. The Examiner can normally be reached Monday-Thursday 0700-1730 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, 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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/John P Zimmermann/Primary Examiner, Art Unit 2853