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 Group I in the reply filed on 6/1/2026 is acknowledged. The traversal is on the ground(s) that “the search results for the elected claimed subject matter of Group I will likely overlap with search results for the claimed subject matter of Group II” (page 8 of the election filed 6/1/2026). This is not found persuasive, at least because the search for the different inventive groups is conducted primarily through different classifications. Moreover, the dryer and protective varnish applicators do not overlap in scope, are not obvious variants of each other, and have different functional utilities. This reasoning was indicated on page 2 of the Restriction Requirement.
Examiner notes Applicant’s election of Species B. However, this species election is moot because the species restriction was conditional upon the election of Group II.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-16 are therefore withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6:
This claim recites the limitation "the single pass inkjet printing device". There is insufficient antecedent basis for this limitation in the claim, because this claim depends from claim 3. Please note that support for this limitation does appear in claim 5.
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.
Claim(s) 1-7, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Den Bergen et al. (US 2017/0297354 A1) in view of Crum (US 2007/0175350 A1).
Regarding claim 1:
Van Den Bergen et al. disclose a combination for manufacturing printed material including:
piezoelectric through-flow print heads (paragraphs 42-43) having nozzles with an outer nozzle surface area smaller than 500 um2 (at least the 20 micron diameter nozzles have a surface area of about 300 um2: paragraphs 49, 163); and
a pigmented aqueous inkjet ink (paragraphs 146-220),
wherein the aqueous inkjet ink contains water in an amount A wt% that satisfies the claimed Formula I (i.e. 32.6 wt% ≤ A wt% ≤ 61 wt%, where A is 53 wt% as taken from the water balance in ink formulation TABLE 5),
wherein the wt% is based on the total weight of the aqueous inkjet ink (paragraph 240),
wherein the sqrt(NS) represents the square root of the outer nozzle surface area NS (sqrt(NS) = 17.72 for 20um diameter nozzles), and
wherein A wt% >= 40 wt% (water to complete = 53.09 wt%: TABLE 5).
Van Den Bergen et al. do not expressly disclose that the combination is used in the process of manufacturing printed corrugated cardboard.
However, Crum discloses a combination for printing that is used in the process of manufacturing printed corrugated cardboard (paragraphs 54-55) so as to enable high quality graphics on the corrugated cardboard (paragraphs 21-22).
Because both Van Den Bergen et al. and Crum disclose printing images on a liner paper before laminating to a core, and because Crum teaches the usefulness of printing graphics on corrugated cardboard, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of invention, to utilize Van Den Bergen et al.’s combination to form graphics on corrugated cardboard.
Regarding claims 2 and 4:
Van Den Bergen et al.’s modified combination comprises all the limitations of claim 1/3, and Van Den Bergen et al. also disclose that the pigmented aqueous inkjet ink is from an aqueous inkjet ink set (paragraphs 149-150), the aqueous inkjet ink set comprising:
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 CI Pigment Yellow 151 (paragraph 156); and
a black aqueous inkjet ink containing a carbon black pigment (paragraph 157),
wherein the aqueous inkjet inks contain water in an amount defined by Formula (I) (i.e. 32.6 wt% ≤ A wt% ≤ 61 wt%, where A is 53 wt% as taken from the water balance in ink formulation TABLE 5),
wherein the wt% is based on the total weight of the aqueous inkjet ink (paragraph 240),
wherein the sqrt(NS) represents the square root of the outer nozzle surface area NS (sqrt(NS) = 17.72 for 20um diameter nozzles), and
wherein A wt% >= 40 wt% (water to complete = 53.09 wt%: TABLE 5).
Regarding claim 3:
Van Den Bergen et al. disclose an inkjet printing device comprising a combination for manufacturing printed material including:
piezoelectric through-flow print heads (paragraphs 42-43) having nozzles with an outer nozzle surface area smaller than 500 um2 (at least the 20 micron diameter nozzles have a surface area of about 300 um2: paragraphs 49, 163); and
a pigmented aqueous inkjet ink (paragraphs 146-220),
wherein the aqueous inkjet ink contains water in an amount A wt% that satisfies the claimed Formula I (i.e. 32.6 wt% ≤ A wt% ≤ 61 wt%, where A is 53 wt% as taken from the water balance in ink formulation TABLE 5),
wherein the wt% is based on the total weight of the aqueous inkjet ink (paragraph 240),
wherein the sqrt(NS) represents the square root of the outer nozzle surface area NS (sqrt(NS) = 17.72 for 20um diameter nozzles), and
wherein A wt% >= 40 wt% (water to complete = 53.09 wt%: TABLE 5).
Van Den Bergen et al. do not expressly disclose that the combination is used in the process of manufacturing printed corrugated cardboard.
However, Crum discloses a combination for printing that is used in the process of manufacturing printed corrugated cardboard (paragraphs 54-55) so as to enable high quality graphics on the corrugated cardboard (paragraphs 21-22).
Because both Van Den Bergen et al. and Crum disclose printing images on a liner paper before laminating to a core, and because Crum teaches the usefulness of printing graphics on corrugated cardboard, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of invention, to utilize Van Den Bergen et al.’s combination to form graphics on corrugated cardboard.
Regarding claims 5-6 (as best understood):
Van Den Bergen et al.’s modified inkjet printing device comprises all the limitations of claim 3, and Van Den Bergen et al. also disclose that the inkjet printing device is a single pass inkjet printing device that uses multiple staggered inkjet print heads (paragraph 51).
Regarding claim 7:
Van Den Bergen et al.’s modified inkjet printing device comprises all the limitations of claim 3, and Van Den Bergen et al. also disclose that A wt% ≥ 44 wt% (water to complete = 53.09 wt%: TABLE 5).
Regarding claim 9:
Van Den Bergen et al.’s modified inkjet printing device comprises all the limitations of claim 3, and Van Den Bergen et al. also disclose that the pigmented aqueous inkjet ink has a viscosity between 3 and 8 mPa-s at 32°C at a shear rate of 1,000 s-1 (TABLE 5).
Regarding claim 10:
Van Den Bergen et al.’s modified inkjet printing device comprises all the limitations of claim 3, and Van Den Bergen et al. also disclose that the printing device further comprises a NIR dryer (paragraph 52).
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Den Bergen et al. as modified by Crum, as applied to claim 3 above, and further in view of McMullen et al. (US 2020/0009866 A1).
Regarding claim 8:
Van Den Bergen et al.’s modified inkjet printing device comprises all the limitations of claim 3, but does not expressly disclose that the outer nozzle surface area NS is smaller than 300 um2.
However, McMullen et al. disclose a piezoelectric through-flow print head (1) having nozzles (18) with an outer surface area NS smaller than 300 um2 (nozzles having an outlet diameter of 15 microns comprise NS = 176.6: paragraph 69).
Because both Van Den Bergen et al. and McMullen et al. disclose piezoelectric through-flow print heads, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of invention, to utilize the particular piezoelectric through-flow printhead taught by McMullen et al. for the print head in Van Den Bergen et al.’s inkjet printing device, so as to produce the expected result of ejecting aqueous pigment inkjet ink.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Den Bergen et al. as modified by Crum, as applied to claim 3 above, and further in view of Kusukame et al. (US 2017/0073535 A1).
Regarding claims 17-18:
Van Den Bergen et al.’s modified inkjet printing device comprises all the limitations of claims 3/4, but does not expressly comprise an ink that comprises more than 60 wt% of organic solvents having a boiling point higher than 150C at standard atmospheric pressure based on the total weight of the organic solvents present in the aqueous inkjet ink.
However, Kusukame et al. disclose safe aqueous inkjet inks (paragraph 13) that comprise more than 60 wt% or organic solvents having a boiling point higher than 150C at standard atmospheric pressure (at least glycerin) based on the total weight of the organic solvents present in the aqueous inkjet ink (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 the Van Den Bergen et al’.s inkjet printing device.
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 1-3 and 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-6, 7-8, and 10 of U.S. Patent No. 12115797. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the instant claims.
Conclusion
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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