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 statement (IDS) submitted on 9/9/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 7 recites the limitation "the protective varnish.” There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-3, 5, 7, 9, 14, 16, and 17 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 3-8, 10, and 16 of prior U.S. Patent No. 12115797 B2. In each of these claims, the claim bodies are identical. The preamble provides the only difference between the two sets of claims. Because the “manufacturing method” claims of US Patent 12115797 B2 comprise only “image printing” steps, the preamble fails to extend the claim scope outside of that provided by the “image printing” method claims. This is a statutory double patenting rejection as follows:
Instant Claim
Patent 12115797 B2 claim
1
1
2
7
3
3
5
5
7
6
9
8
14
10
16
11
17
4
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.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 in view of Hatasa et al. (US 2006/0284953 A1).
Regarding claim 4:
Patented claim 7 comprises all the limitations of instant claim 4, but does not expressly disclose that the inkjet printing is performed according to a single pass printing process.
However, Hatasa et al. disclose an image printing method in which the inkjet printing is performed according to a single pass printing method, so as to obtain clear image and maintain printing efficiency (paragraph 50-54 & Fig. 4).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to perform single pass printing in the invention of patented claim 7.
Claims 6 and 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 as modified by Hatasa et al., as applied to instant claim 4 above, and further in view of Gocho et al. (US 2002/0081400 A1).
Regarding claims 6 and 8:
Modified patented claim 7 comprises all the limitations of instant claim 4, but does not expressly disclose the step of applying a protective varnish layer on the inkjet printed image.
However, Gocho et al. disclose an image printing method comprising the step of applying, via flexographic printing, a protective varnish layer (protection layer 14) on an inkjet printed image (image formation layer 3) so as to protect the image from being scratched (paragraph 91).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to apply a protective varnish layer using flexographic printing, as taught by Gocho et al., in the invention of modified patented claim 7.
Claims 10 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 as modified by Hatasa et al., as applied to instant claim 4 above, and further in view of Kusukame et al. (US 2017/0073535 A1).
Regarding claims 10 and 12:
Modified patented claim 7 comprises all the limitations of instant claim 4, but does not expressly disclose the use of inks having viscosity between 3.0 and 8.0 mPa.s. at 32°C at a shear rate of 1,000 s-1. However, Kusukame et al. disclose safe aqueous inkjet inks (paragraph 13) having a viscosity between 3.0 and 8.0 mPa.s. at 32°C at a shear rate of 1,000 s-1, so as to enable stable ejection (paragraph 54), wherein the inks comprise more than 60 wt% of organic solvents having a boiling point higher than 150°C at standard atmospheric pressure (at least glycerin) based on the total weight of the organic solvents present in the aqueous inkjet inks (TABLE 1).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the safe inks taught by Kusukame et al. in invention of patented claim 7.
Claims 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 in view of Kusukame et al. (US 2017/0073535 A1).
Regarding claim 11:
Patented claim 7 comprises all the limitations of instant claim 4, but does not expressly disclose the properties of the inkjet inks.
However, Kusukame et al. disclose safe aqueous inkjet inks (paragraph 13) having a viscosity between 3.0 and 8.0 mPa.s. at 32°C at a shear rate of 1,000 s-1, so as to enable stable ejection (paragraph 54), wherein the inks comprise more than 60 wt% of organic solvents having a boiling point higher than 150°C at standard atmospheric pressure (at least glycerin) based on the total weight of the organic solvents present in the aqueous inkjet inks (TABLE 1).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the safe inks taught by Kusukame et al. in invention of patented claim 7.
Claim 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 as modified by Hatasa et al. and Gocho et al., as applied to instant claim 6 above, and further in view of Kusukame et al. (US 2017/0073535 A1).
Regarding claims 10 and 12:
Modified patented claim 7 comprises all the limitations of instant claim 6, but does not expressly disclose the properties of the inkjet inks.
However, Kusukame et al. disclose safe aqueous inkjet inks (paragraph 13) having a viscosity between 3.0 and 8.0 mPa.s. at 32°C at a shear rate of 1,000 s-1, so as to enable stable ejection (paragraph 54), wherein the inks comprise more than 60 wt% of organic solvents having a boiling point higher than 150°C at standard atmospheric pressure (at least glycerin) based on the total weight of the organic solvents present in the aqueous inkjet inks (TABLE 1).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the safe inks taught by Kusukame et al. in invention of patented claim 7.
Claims 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 as modified by Hatasa et al., as applied to instant claim 4 above, and further in view of Van Den Bergen et al. (US 2017/0297354 A1).
Regarding claim 15:
Modified patented claim 7 comprises all the limitations of instant claim 4, but does not expressly disclose the properties of the inkjet inks.
However, Van Den Bergen et al. disclose a set of pigmented aqueous inkjet inks having enhanced color gamut for decorating (paragraph 149), the inks including:
a cyan aqueous inkjet ink containing a beta-copper phthalocyanine pigment (paragraph 154);
a magenta or red aqueous inkjet ink containing CI Pigment Red 122 (paragraph 155);
a yellow aqueous inkjet ink containing a CI Pigment Yellow 151 (paragraph 156); and
a black aqueous ink containing a carbon black pigment (paragraph 157).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the inks taught by Kusukame et al. in invention of patented claim 7.
Claim 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 as modified by Hatasa et al., as applied to instant claim 4 above, and further in view of Kawakami et al. (US 2010/0091055 A1).
Regarding claim 18:
Modified patented claim 7 comprises all the limitations of instant claim 4, but does not expressly disclose specifics of the ink receiving layer.
However, Kawakami et al. disclose an ink receiving layer having a high hardness (paragraph 172) by containing a polymer or copolymer based on polyvinylalcohol (paragraphs 147-149) and a polyvalent metal salt (paragraphs 177-179).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the ink receiving layer taught by Kawakami et al. in invention of patented claim 7.
Claim 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 as modified by Hatasa et al. and Gocho et al., as applied to instant claim 6 above, and further in view of Kawakami et al. (US 2010/0091055 A1).
Regarding claim 19:
Modified patented claim 7 comprises all the limitations of instant claim 6, but does not expressly disclose specifics of the ink receiving layer.
However, Kawakami et al. disclose an ink receiving layer having a high hardness (paragraph 172) by containing a polymer or copolymer based on polyvinylalcohol (paragraphs 147-149) and a polyvalent metal salt (paragraphs 177-179).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the ink receiving layer taught by Kawakami et al. in invention of patented claim 7.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12115797 B2 in view of Kawakami et al. (US 2010/0091055 A1).
Regarding claim 20:
Patented claim 7 comprises all the limitations of instant claim 1, but does not expressly disclose specifics of the ink receiving layer.
However, Kawakami et al. disclose an ink receiving layer having a high hardness (paragraph 172) by containing an acidic compound (paragraph 173).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to utilize the ink receiving layer taught by Kawakami et al. in invention of patented claim 7.
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shelby L Fidler whose telephone number is (571)272-8455. The examiner can normally be reached Monday-Friday, 8:30am - 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHELBY L. FIDLER
Primary Examiner
Art Unit 2853
/SHELBY L FIDLER/Primary Examiner, Art Unit 2853
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