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 .
Examiner’s Comments
Applicants’ response filed on 6/10/2026 has been fully considered. Claims 1-9 are pending.
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.
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 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki (US 2019/0283464 A1) in view of Fukugawa et al (WO 2019/131532 A1).
Fukugawa et al (US 2020/0317944 A1) is being used as the English translation for Fukugawa et al (WO 2019/131532 A1).
Regarding claim 1, Matsuzaki discloses a method for producing an image recorded material (recording method; paragraph [0097]) comprising:
preparing a pretreatment liquid containing at least one aggregating agent selected from the group consisting of an organic acid, an organic acid salt and a polyvalent metal compound and water (preparing a treatment liquid comprising a coagulant and water where the coagulant is selected from polyvalent metal salt, an organic acid or a salt thereof and a cationic compound; paragraphs [0086]-[0087] and [0097]);
preparing a first ink containing a first pigment, a first resin and water (preparing a non-white ink composition comprising a non-white coloring material, resin and water; paragraphs [0058], [0062], [0071] and [0097]);
preparing a second ink containing a second pigment, a second resin and water (preparing a white ink composition comprising a white ink composition comprising a white coloring material, resin and water; paragraphs [0056], [0062], [0071] and [0097]); and
an image recording of sequentially applying the pretreatment liquid, the first ink and the second ink onto an impermeable base material to record an image (applying the pretreatment liquid, applying a non-white ink composition onto the recording medium and applying a white ink composition onto the recording medium; paragraph [0097]).
Matsuzaki does not disclose the method comprising the surface tension of the second ink being less than the surface tension of the first ink.
However, it would have been obvious to one of ordinary skill in the art to adjust the surface tension of the non-white ink and white ink such that the surface tension of the white ink is less than the surface tension of the non-white ink because doing so would provide the desired adhesion between the white ink and the non-white ink.
Matsuzaki does not disclose the method comprising the ratio of total applied mass of the first resin and the second resin per unit area to an applied mass of the aggregating agent per unit area in the overlapping region being 16.0 of greater and 30.0 or less.
However, it would have been obvious to one of ordinary skill in the art to adjust the ratio of total applied mass of the first resin and the second resin per unit area to an applied mass of the aggregating agent per unit area in the overlapping region to be 16.0 of greater and 30.0 or less because doing so would provide the adhesion between the treatment liquid, the non-white ink and the white ink in the overlapping region.
Matsuzaki does not disclose the method comprising the resin that is contained in the pretreatment liquid is at least one selected from the group consisting of a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin.
However, Fukugawa discloses a method of producing a base material for printing comprising a resin that is contained in the pretreatment liquid being at least one selected from the group consisting of a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin (specific polymer in the printing pretreatment liquid including polyester resin, polyolefin resin, polyurethane resin, polyamide resin or polycarbonate resin; paragraph [0056]).
It would have been obvious to one of ordinary skill in the art to modify the method of Matsuzaki to include the specific polymer in the printing pretreatment liquid including polyester resin, polyolefin resin, polyurethane resin, polyamide resin or polycarbonate resin of Fukugawa in the treatment liquid of Matsuzaki because doing so provides enhanced adhesiveness between the polyester base material and the image (paragraph [0052] of Fukugawa).
Regarding claim 2, Matsuzaki and Fukugawa disclose the method of producing an image recorded material of claim 1 as noted above.
Matsuzaki does not disclose the method comprising the ratio of total applied mass of the first resin and the second resin per unit area to an applied mass of the aggregating agent per unit area in the overlapping region being 16.0 of greater and 25.0 or less.
However, it would have been obvious to one of ordinary skill in the art to adjust the ratio of total applied mass of the first resin and the second resin per unit area to an applied mass of the aggregating agent per unit area in the overlapping region to be 16.0 of greater and 25.0 or less because doing so would provide the adhesion between the treatment liquid, the non-white ink and the white ink in the overlapping region.
Regarding claim 3, Matsuzaki and Fukugawa disclose the method of producing an image recorded material of claim 1 as noted above and Matsuzaki discloses the method comprising the first ink and the second each comprising a content of organic solvent having a boiling point of 220 °C of higher in the first ink and in the second ink the content of the organic solvent being 5 to 40% by mass (content of organic solvent having a boiling point of 220 °C of higher in the non-white ink and in the white ink; paragraph [0063]) and the organic solvent comprising dipropylene glycol (paragraph [0064]).
Dipropylene glycol has a boiling point of 230.5 °C.
Regarding claim 4, Matsuzaki and Fukugawa disclose the method of producing an image recorded material of claim 1 as noted above and Matsuzaki disclose the method comprising the first resin contains resin particles (resin for the non-white ink being in the form of fine particles; paragraph [0071]).
Matsuzaki does not disclose the method comprising the resin contained in the pretreatment liquid having a glass transition temperature lower than the glass transition temperature of the resin in the non-white ink.
However, Fukugawa discloses a method of producing a base material for printing comprising a resin that is contained in the pretreatment liquid being at least one selected from the group consisting of a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin (specific polymer in the printing pretreatment liquid including polyester resin, polyolefin resin, polyurethane resin, polyamide resin or polycarbonate resin; paragraph [0056]).
Matsuzaki and Fukugawa does not disclose the method comprising the resin contained in the pretreatment liquid having a glass transition temperature lower than the glass transition temperature of the resin in the non-white ink.
However, it would have been obvious to one of ordinary skill in the art to adjust the glass transition temperature of the specific polymer in Fukugawa to be lower than the glass transition temperature of the resin in the non-white ink of Matsuzaki because doing so would provide the desired adhesion between the treatment liquid and the non-white ink.
Regarding claim 5, Matsuzaki and Fukugawa disclose the method of producing an image recorded material of claim 1 as noted above and Matsuzaki disclose the method comprising the first resin contains resin particles (resin for the non-white ink being in the form of fine particles; paragraph [0071]) and the second resin containing resin particles (resin for the white ink being in the form of fine particles; paragraph [0071]).
Matsuzaki does not disclose the recording method comprising the glass transition temperature of the resin particles with a greater mass applied and the glass transition temperature of the smaller mass applied satisfying the relationship of 0 °C ≤ Ta – Tb ≤ 30 °C.
However, it would have been obvious to one of ordinary skill in the art to adjust the glass transition temperature of the resin particles of the non-white ink and the white ink such that the relationship of 0 °C ≤ Ta – Tb ≤ 30 °C is satisfied because doing so would provide the desired adhesion between the non-white ink and the white ink.
Regarding claim 6, Matsuzaki and Fukugawa disclose the method of producing an image recorded material of claim 1 as noted above.
Matsuzaki does not disclose the method comprising the viscosities of the treatment liquid, non-white ink and white ink being such that the relationship of A1- A2 > 0 mPa-s.
However, it would have been obvious to one of ordinary skill in the art to adjust the viscosities of the treatment liquid, non-white ink and white ink being such that the relationship of A1- A2 > 0 mPa-s is satisfied because doing so would provide the desired adhesion between the treatment liquid, the non-white ink and the white ink.
Regarding claim 8, Matsuzaki discloses an image recorded material comprising:
an impermeable base material (a non-absorptive recording medium; paragraph [0167]) and;
an image recorded on the impermeable base material (paragraph [0097]),
image includes a pretreatment layer that is in contact with the impermeable base material and contains an aggregating agent (a treatment liquid applied on the recording medium and wherein the treatment liquid comprises a coagulant and water; paragraphs [0086] and [0097]), a first layer that is in contact with the pretreatment layer and contains a first pigment and a first resin (a non-white ink applied on the recording medium; paragraph [0097]), and a second layer that is in contact with the first layer and contains a second pigment and a second resin (a white ink applied on the recording medium; paragraph [0097]);
at least one aggregating agent selected from an organic acid, an organic acid salt and a polyvalent metal compound (the coagulant is selected from polyvalent metal salt, an organic acid or a salt thereof and a cationic compound; paragraph [0087]),
The applying of the treatment liquid onto a recording medium, the applying a non-white ink composition onto the recording medium and the applying a white ink composition onto the recording medium would result in an overlapped region of the treatment liquid, non-white ink and white ink and is considered to be claimed image of the pretreatment liquid, first ink and second ink recorded on the impermeable base material.
Matsuzaki does not disclose the image recording material comprising the ratio of total applied mass of the first resin and the second resin per unit area to an applied mass of the aggregating agent per unit area in the overlapping region being 16.0 of greater and 30.0 or less.
However, it would have been obvious to one of ordinary skill in the art to adjust the ratio of total applied mass of the first resin and the second resin per unit area to an applied mass of the aggregating agent per unit area in the overlapping region to be 16.0 of greater and 30.0 or less because doing so would provide the adhesion between the treatment liquid, the non-white ink and the white ink in the overlapping region.
Matsuzaki does not disclose the image recorded material comprising the resin that is contained in the pretreatment liquid is at least one selected from the group consisting of a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin.
However, Fukugawa discloses a base material for printing comprising a resin that is contained in the pretreatment liquid being at least one selected from the group consisting of a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin (specific polymer in the printing pretreatment liquid including polyester resin, polyolefin resin, polyurethane resin, polyamide resin or polycarbonate resin; paragraph [0056]).
It would have been obvious to one of ordinary skill in the art to modify the image recording material of Matsuzaki to include the specific polymer in the printing pretreatment liquid including polyester resin, polyolefin resin, polyurethane resin, polyamide resin or polycarbonate resin of Fukugawa in the treatment liquid of Matsuzaki because doing so provides enhanced adhesiveness between the polyester base material and the image (paragraph [0052] of Fukugawa).
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki (US 2019/0283464 A1) in view of Fukugawa et al (WO 2019/131532 A1) in further view of Metla (WO 2009/065502 A1).
Fukugawa et al (US 2020/0317944 A1) is being used as the English translation for Fukugawa et al (WO 2019/131532 A1).
Regarding claim 7, Matsuzaki and Fukugawa disclose an image recording material obtained by the method of producing an image recorded material according to claim 1 as noted above.
Matsuzaki and Fukugawa do not disclose the method comprising laminating a base material to a side where the image has been formed.
However, Metla discloses a method comprising laminating a base material to a side where the image has been formed (laminating a second substrate to a dried ink image; pg. 14).
It would have been obvious to one of ordinary skill to modify the method of Matsuzaki and Fukugawa to include the second substrate of Metla onto the image of Matsuzaki and Fukugawa because having the required second substrate provides an image recorded material to be suitable for use in packaging.
Regarding claim 9, Matsuzaki and Fukugawa disclose an image recorded material of claim 8 as noted above.
Matsuzaki and Fukugawa do not disclose a laminate comprising a base material laminated to a side where the image has been formed.
However, Metla discloses a laminate comprising a base material laminated to a side where the image has been formed (a second substrate laminated to a dried ink image; pg. 14).
It would have been obvious to one of ordinary skill to modify the laminate of Matsuzaki and Fukugawa to include the second substrate of Metla onto the image of Matsuzaki and Fukugawa because having the required second substrate provides an image recorded material to be suitable for use in packaging.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants argue that Koyanagi fails to disclose or teach a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin.
This argument is moot as Koyanagi fails to disclose or teach a polyester resin, a polyolefin resin, a polyurethane resin, a polyurea resin, a polyamide resin and a polycarbonate resin. Therefore, the previous rejections have been withdrawn.
Applicants argue thar Metla does not cure the deficiencies of Matsuzaki and Koyanagi.
This argument is not persuasive as Metla is a teaching reference used to teach laminating a base material to a side where the image has been formed.
However, note that while Metla does not disclose all the features of the present claimed invention, Metla is a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches certain concepts, namely laminating a base material to a side where the image has been formed, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
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 SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM 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, Mark Ruthkosky can be reached at (571)-272-1291. 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.
/SATHAVARAM I REDDY/Primary Examiner, Art Unit 1785
Prosecution Insights