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 .
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.
Claims 24-43 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 claims 24 & 40, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim 24-32 & 35-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 17/590235 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter,
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-21 of copending Application No. 17/590235 in view of Metla (# US 2011/0027543).
Copending Application (235) discloses all the limitation of inkjet ink composition except:
33. The continuous inkjet ink composition of claim 24, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 50,000 Daltons.
34. The continuous inkjet ink composition of claim 33, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 20,000 Daltons.
Metla teaches that to have an ink with excellent extrusion bond strengths, block resistance, printability, resolubility, sterilization resistance, and superior adhesion property ([0022]):
33. The continuous inkjet ink composition of claim 24, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 50,000 Daltons (10,000 to 100,000; [[0023]).
34. The continuous inkjet ink composition of claim 33, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 20,000 Daltons (10,000 to 100,000; [[0023]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the inkjet ink composition of Copending application by the aforementioned teaching of Metla in order to have the ink with excellent extrusion bond strengths, block resistance, printability, resolubility, sterilization resistance, and superior adhesion property ([0022]).
This is a provisional nonstatutory double patenting rejection.
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) 24-32 & 35-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (# US 2020/0079967).
Xiao et al. discloses:
24. A continuous inkjet ink (see Abstract; [0021]) composition comprising:
(a) a primary ketone solvent which contains at least 5 carbon atoms (see Abstract; [0008]-[0013]);
(b) at least one secondary solvent (see Abstract; [0030]-[0032]; [0042]);
(c) a first cellulose resin comprising a cellulose ester resin ([0014]; [0045]);
(d) a second polyurethane resin ([0044]);
(e) optionally, a third resin (acrylic resin; [0046]); and
(f) a colorant (see Abstract; [0015]; [0051]-[0052]).
Xiao et al. discloses that any suitable binder resin may be used, that more than one binder resin can be used, and that polyurethanes are a suitable binder resin ([0044]). As such it would have been prima facie obvious to use both the cellulose ester binder resin and a polyurethane binder resin, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
25. The continuous inkjet ink composition of claim 24, wherein the ink composition, when printed onto a wet or condensing non-porous substrate ([0017]; [0021]; [0061]), exhibits condensation-resistant adhesion.
26. The continuous inkjet ink composition of claim 24, wherein secondary solvent comprises ethanol, propanol ([0010]), acetone, or a combination thereof (see Abstract; [0023]; [0058]).
27. The continuous inkjet ink composition of claim 24, wherein the third resin comprises an acrylic resin ([0046]) , a silicone resin, a rosin ester ([0014]; [0045]), a terpene phenolic resin, a tosylamide resin, or a combination thereof.
28. The continuous inkjet ink composition of claim 24, wherein the third resin comprises about 1% to about 7% by weight of the ink composition (5 to 13% [0014]).
29. The continuous inkjet ink composition of claim 24, wherein the primary ketone solvent comprises methyl propyl ketone (MPK), methyl isopropyl ketone (MIPK), or a combination thereof ([0029]; [0041]-[0044]).
30. The continuous inkjet ink composition of claim 24, wherein the primary ketone solvent comprises about 40% to about 80% by weight of the ink composition (greater than 60%; [0008]; [0041]).
31. The continuous inkjet ink composition of claim 30, wherein the primary ketone solvent comprises about 50% to about 70% by weight of the ink composition (greater than 60%; [0008]; [0041]).
32. The continuous inkjet ink composition of claim 24, wherein the second polyurethane resin comprises from about 2% to about 5% by weight of the ink composition ([0043]-[0044]).
35. The continuous inkjet ink composition of claim 24, wherein the ratio of polyurethane resin to other resins combined is 1:4 or greater (see Examples).
36. The continuous inkjet ink composition of claim 24, wherein the ratio of polyurethane resin to other resins combined is about 1:4 to about 1:1 (see Examples).
37. The continuous inkjet ink composition of claim 24, wherein the secondary solvent comprises about 20% or less by weight of the ink composition (an amount up to 30%, or up to 15%, or up to 5%; [0010]; [0031]).
38. The continuous inkjet ink composition of claim 24, comprising:
(a) about 40% to about 80% by weight of a primary ketone solvent methyl propyl ketone (MPK), methyl isopropyl ketone (MIPK), or a combination thereof (greater than 60%; [0008]; [0029]; [0041]-[0044]),
(b) about 20% or less by weight of secondary solvent comprising ethanol, propanol, acetone, or a combination thereof (see Abstract; an amount up to 30%, or up to 15%, or up to 5% [0010]; [0031]);
(c) a first cellulose resin comprising a cellulose ester resin ([0014]; [0045]);
(d) a second polyurethane resin ([0044]);
(e) a third resin comprising an acrylic resin ([0046]), a silicone resin, a rosin ester ([0014]; [0045]), a terpene phenolic resin, a tosylamide resin, or a combination thereof; and
(f) a colorant (see Abstract; [0015]; [0051]-[0052]),
wherein the ratio of polyurethane resin to other resins combined is about 1:4 to about 1:1 (see Examples).
Xiao et al. discloses that any suitable binder resin may be used, that more than one binder resin can be used, and that polyurethanes are a suitable binder resin ([0044]). As such it would have been prima facie obvious to use both the cellulose ester binder resin and a polyurethane binder resin, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
39. The continuous inkjet ink composition of claim 38, wherein the ink
composition, when printed onto a wet or condensing non-porous substrate ([0017]; [0021]; [0061]), exhibits condensation-resistant adhesion.
40. A continuous inkjet ink composition comprising:
(a) about 40% to about 80% by weight of a primary ketone solvent methyl propyl ketone (MPK), methyl isopropyl ketone (MIPK), or a combination thereof (greater than 60%; [0008]; [0029]; [0041]-[0044]),
(b) about 20% or less by weight of secondary solvent comprising ethanol, propanol, acetone, or a combination thereof (an amount up to 30%, or up to 15%, or up to 5% ; [0010]; [0031);
(c) a first cellulose resin comprising a cellulose ester resin ([0014]; [0045]);
(d) a second polyurethane resin ([0044]);
(e) optionally, about 1% to about 7% by weight (5 to 13% [0014]; [0043]) of a third resin comprising an acrylic resin ([0046]), a silicone resin, a rosin ester ([0014]; [0045]), a terpene phenolic resin, a tosylamide resin, or a combination thereof; and
(f) a colorant (see Abstract; [0015]; [0051]-[0052]),
wherein the ratio of polyurethane resin to other resins combined is about 1:4 to about 1:1 (see Examples).
Xiao et al. discloses that any suitable binder resin may be used, that more than one binder resin can be used, and that polyurethanes are a suitable binder resin ([0044]). As such it would have been prima facie obvious to use both the cellulose ester binder resin and a polyurethane binder resin, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
41. The continuous inkjet ink composition of claim 40, wherein the ink composition, when printed onto a wet or condensing non-porous substrate ([0017]; [0021]; [0061]), exhibits condensation-resistant adhesion.
42. The continuous inkjet ink composition of claim 40, wherein the third resin is present in the continuous inkjet ink composition ([0043]-[0048]).
43. The continuous inkjet ink composition of claim 42, wherein the ink
composition, when printed onto a wet or condensing non-porous substrate ([0017]; [0021]; [0061]), exhibits condensation-resistant adhesion.
Claim(s) 33-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (# US 2020/0079967) in view of Metla (# US 2011/0027543).
Xiao et al. discloses all the limitation of inkjet ink composition except:
33. The continuous inkjet ink composition of claim 24, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 50,000 Daltons.
34. The continuous inkjet ink composition of claim 33, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 20,000 Daltons.
Metla teaches that to have an ink with excellent extrusion bond strengths, block resistance, printability, resolubility, sterilization resistance, and superior adhesion property ([0022]):
33. The continuous inkjet ink composition of claim 24, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 50,000 Daltons (10,000 to 100,000; [[0023]).
34. The continuous inkjet ink composition of claim 33, wherein the second polyurethane resin has a molecular weight of from 3,000 to about 20,000 Daltons (10,000 to 100,000; [[0023]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the inkjet ink composition of Xiao et al. by the aforementioned teaching of Metla in order to have the ink with excellent extrusion bond strengths, block resistance, printability, resolubility, sterilization resistance, and superior adhesion property ([0022]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Goustiaux et al. (# US 2010/0028632) discloses a continuous inkjet ink (see Abstract; [0004]) composition (ink; see Abstract) comprising: (a) a solvent comprising one or more volatile C5 ketone solvents (solvent is methyl isopropyl ketone; 3 to 10 carbon atom; [0127]) which are present at greater than 60% by weight of the ink composition (solvent is 50-90 % by weight of composition; [0122]); (b) one or more binder resins (binder; see Abstract; [0016]); and (c) one or more colorants (dyes and/or pigment; see Abstract; [0149]-[0152]); and optionally further contains ethanol, n-propanol, or a combination thereof in an amount of up to 30% ([0034]; [0126]), wherein the ink composition substantially free of hydroxyaromatic resins (see Table: 1), and wherein the ink composition is suitable for continuous inkjet application ([0004]-[0006]).
(2) Gruner et al. (# US 2012/0125229) discloses a continuous inkjet ink composition (see Abstract; [0239]) comprising: (a) a solvent ([0195]) comprising one or more volatile C5 ketone solvents (methyl propyl ketone; [0199]) which are present at greater than 60% by weight of the ink composition (50 to 93%; [0195]); (b) one or more binder resins comprising a polyvinyl butyral resin ([0215]); and (c) one or more colorants ([0228]).
(3) Fraser et al. (# US 2005/0252411) discloses ink vehicles which are in general any known binders include for example long-oil-, medium-oil- or short oil-alkyd resins, phenol-modified alkyd resins, phenolic resins, rosin-modified phenolic resins, metal resinates, such as copper, zinc or magnesium resinate, petroleum resins, (cyclic) hydrocarbon resins, such as terpene or terpene-phenolic resins, resins based on acrylics, styrenes and vinyl polymers, melamine and epoxy resins, distillate and vegetable oils, and further nitrocellulose, cellulose acetate propionate, polyamide, polyvinylbutyral, polyvinylalcohol, polyvinylacetate, acrylic, propionated acrylic, polyvinylchloride, polyvinyldichloride, chlorinated polyolefin, dimerised and polymerized rosins, rosin esters, rosin modified maleic, fumaric and phenolic resins, epoxide and maleic resins ([0069]).
(4) Xu (# US 2009/0021568) discloses Aqueous ink formulations contain water as the majority ink carrier. Therefore, binders used in aqueous ink formulations should be water soluble, dispersible or emulsifiable polymers and copolymers. Examples of such binders include phenolics; acrylics such as poly(meth)acrylic acid and salts, polyacrylamide, polystyrene-acrylates; vinyl resins such as polyvinyl alcohol, polyvinyl acetate, and polyvinyl butyral; polyalkyleneoxides such as polyethylene oxide and polyethylene glycol; polyamides; polyamines such as polyvinylpyridine, polyvinylpyrrolidone, polyvinylamine, and polyethyleneimine; cellulose derivatives such as nitrocellulose, ethyl cellulose, ethyl hydroxyethyl cellulose, cellulose acetate butyrate, cellulose acetate propionate, and sodium carboxymethyl cellulose ([0034]).
(5) Duncan et al. (# US 2010/0010144) discloses the adhesion promoter of the present invention may be useful in various coating compositions, e.g. for metal etc. but it is of particular use in flexographic and gravure inks containing a polymeric binder which is cross-linkable and which is dissolved in an appropriate organic solvent. The printing inks of the invention are also typically of this type. Typical binders used in such inks are those based on nitrocellulose or ester type modified cellulose, e.g. cellulose acetate propionate ([0030]).
(6) Oyanagi et al. (# US 2010/0167023) discloses first ink composition containing the organic solvents can further contain a resin serving as a binder. Examples of the resin include cellulose ester resins such as cellulose acetate (CA), cellulose acetate propionate (CAP), cellulose acetate butyrate (CAB), cellulose propionate (CP), and cellulose triacetate (CAT) ([0090]).
(7) Zhu et al. (# US 2004/0154495) discloses jet ink compositions suitable for printing on substrates such as plastics and oil contaminated metals messages having excellent adhesion, for example, scratch resistance. The jet ink composition comprises one or more organic solvents, a rosin resin, and a colorant, and optionally a co -binder resin, e.g., a vinyl resin. Preferably, the jet ink composition is free or substantially free of a cellulose nitrate resin and/or a slow evaporating solvent. The present invention further provides a method for printing scratch resistant messages on a low surface energy substrate comprising projecting a stream of droplets of the jet ink composition to the substrate, controlling the direction of the stream so that the droplets are caused to form the desired printed messages, and allowing the messages to dry (see Abstract).
(8) Zhu et al. (# US 2010/0233368) discloses an ink jet ink composition includes ethanol, a binder, a conductive agent, and a colorant. The ethanol is present in an amount at least 70% by weight of the ink composition. The binder is not a polyamide resin, a hydroxyaromatic resin, or a phenolic resin. The binder is present in an amount between 2% and 15% by weight of the ink composition. Water, if present, is in an amount less than 5% by weight of the ink composition (see Abstract).
(9) Robertson et al. (# US 2012/0026257) discloses a thermal ink jet ink composition includes one or more volatile organic solvents, wherein the one or more volatile organic solvents are selected from C1-C4 alcohols, C3-C6 ketones, C3-C6 esters, C4-C8 ethers, and mixtures thereof; one or more humectants, wherein the humectants are present in an amount not more than 30% by weight of the ink composition; one or more binder resins; and one or more dyes. The ink composition is suitable for use in a thermal ink jet printer and the ink composition has a slow rate of kogation such that it is capable of being printed at least 10 million drops per nozzle from the thermal ink jet printer before drop weight of the ink composition is reduced by more than 10% (see Abstract).
(10) Zhu et al. (# US 2008/0066239) discloses a cellulosic resin can be employed, for example, a cellulose ester or an alkylcellulose. Cellulose ester is cellulose some or all of whose hydroxyl groups have been modified to have an ester function or mixed ester functions, e.g., by one or more ester groups wherein the ester group has 2-8 carbon atoms, preferably 2-5 carbon atoms. Examples of cellulose ester include cellulose mixed esters such as acetate butyrate and cellulose acetate propionate. An example of a suitable cellulose ester is cellulose acetate butyrate available commercially as CAB 551-0.01 from Eastman Chemical, Kingsport, Tenn. The alkylcellulose is cellulose some or all of whose hydroxyl groups have been modified to contain an alkyl group of 1-8 carbon atoms, preferably 2-4 carbon atoms, e.g., ethylcellulose. Nitrocellulose can also be employed as a cellulosic resin ([0020]; see claim 11).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
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.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853