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 .
Summary
The Applicant’s arguments and claim amendments received on April 30, 2026 are entered into the file. Currently, claims 1-8 are amended; claim 9 is canceled; claims 11 and 12 are new; resulting in claims 1-8 and 10-12 pending for examination.
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.
Claims 1-8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tajiri et al. (WO 2021/241489, cited on IDS and ISR; citing US 2023/0158823 as the English equivalent).
Regarding claims 1, 6, and 11, Tajiri et al. teaches a laminate (1; recording sheet) comprising a substrate layer (A), a porous layer (B), and a coating layer layered in this order, wherein the porous layer includes a first porous sub-layer (B1; print receiving layer) and a second porous sub-layer (B2; liquid-absorptive layer) ([0041]-[0042], [0151], Fig. 1). The first porous sub-layer (B1) and the second porous sub-layer (B2) each have a porous structure and contain a thermoplastic resin ([0072]-[0073], [0089]-[0090]).
Tajiri et al. teaches that the coating layer includes a cationic polymer (aqueous binder, resin component), such as a polymer including a quaternary ammonium salt, to exhibit high affinity to a color component of an ink, such that the laminate can be used as ink-jet printable paper ([0151]-[0152]). The coating layer may contain additives, wherein the amount of additives in the coating layer is preferably 0.01 mass% or more and 3 mass% or less ([0154]), such that a content of an inorganic filler in the coating layer is within the claimed range of 9 parts by mass or less per 100 parts by mass of the aqueous binder.
Tajiri et al. further teaches that a liquid-absorptive capacity of the porous layer (B) is within the range of 10 to 40 cc/m2 so that the drying property of an ink can be ensured, and the strength required of the laminate can be easily obtained [0023]. Tajiri et al. therefore teaches that the laminate has a liquid-absorptive capacity which overlaps the ranges of claims 1 and 11. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
With respect to the liquid absorption rate at a surface on the print receiving layer side recited in claim 1 and the average pore size of the print receiving layer recited in claim 6, while it is acknowledged that all of the claimed physical properties are not explicitly recited by Tajiri et al., the reference teaches all of the claimed features/materials/layers, such that the claimed physical properties would be inherently achieved by a laminate having all the claimed features/materials/layers.
As evidence that the claimed liquid absorption rate and average pore size of the print receiving layer are inherent to the laminate taught by Tajiri et al., it is noted that Tajiri et al. teaches all of the features recognized by the instant specification as essential to achieving these claimed properties. In looking to paragraphs [0050]-[0051] of the as-filed specification, the content and average particle size of the filler contained in the print receiving layer is set within the ranges of 45 to 75 mass% and 0.1 to 5 µm, respectively, from the viewpoint of suppressing the formation of coarse pores and controlling the liquid absorption rate property. In paragraph [0054], the use of a filler having a hydrophobized surface in the print receiving layer is said to suppress formation of coarse pores and pores with excessive porosity in order to inhibit the liquid absorption rate from becoming excessively high. In paragraph [0058], the porosity of the print receiving layer is said to be 32 to 50% in order to secure the desired liquid absorption rate. In paragraph [0059], the grammage of the print receiving layer is said to be 1 to 15 g/m2 in order to adjust the liquid absorption rate to an intended level. In paragraph [0082], the stretching temperature of a stretched layer is said to be lower than the melting point of the thermoplastic resin by 2°C or more in order to make the porosity or pore size larger and to make the liquid absorption rate large.
Tajiri et al. similarly teaches that the filler contained in the porous layer has an average particle size of 0.1 to 5 µm in view of pore formability, where a porous layer having many pores can easily enhance the penetrability of an aqueous pigmented ink, while too large of a filler particle size causes formation of too large pores [0035]. Tajiri et al. teaches that the content of filler in the first porous sub-layer (B1; print receiving layer) is within the range of 50 to 75 mass% [0080]. The porosity of the first porous sub-layer is within the range of 20 to 75%, preferably 35 to 55%, in view of the medium transportability and mechanical strength of the porous layer [0086]. The grammage of the first porous sub-layer is within the range of 0.5 to 10 g/m2 in view of medium transportability and ink bleed [0084]. Tajiri et al. further teaches that the porous structure of the first porous sub-layer is formed by stretching a sheet containing thermoplastic resin and a filler, wherein the stretching temperature is preferably lower than the melting point of the thermoplastic resin by 2 to 60°C ([0072], [0117]). Given that the laminate taught by Tajiri et al. has a substantially identical structure and is made of substantially identical materials as are used in the present invention, the laminate taught by Tajiri et al. is presumed to inherently possess the claimed liquid absorption rate and average pore size properties recited in claims 1 and 6.
The instant specification has not provided adequate teachings that the claimed properties are obtainable only with the claimed features/layers/materials. Should the Applicant disagree, it is requested that evidence is provided to support their position. See also MPEP 2112, 2112.01 and analogous burden of proof in MPEP 2113.
With respect to the claimed grammage of the liquid-absorptive layer, Tajiri et al. further teaches that the second porous sub-layer (B2; liquid-absorptive layer) preferably has a grammage of 4 g/m2 or more in view of the amount of the medium received and drying property, wherein the grammage is preferably 20 g/m2 or less in view of the production cost of the laminate [0102]. The range disclosed by Tajiri et al. does not overlap the claimed range but is so close that one skilled in the art would have expected them to have the same properties, thus establishing a prima facie case of obviousness over the claimed range. See MPEP 2144.05(I). Moreover, it would have been obvious to one of ordinary skill in the art to form the second porous sub-layer at an appropriate grammage, such as within the claimed range of 21 g/m2 or more, in order to achieve the desired balance of drying properties and production cost of the laminate.
Regarding claim 2, Tajiri et al. teaches all of the limitations of claim 1 above and further teaches that the first porous sub-layer (B1; print receiving layer) has a porosity of 20 to 75%, preferably 35 to 55%, while the second porous sub-layer (B2; liquid-absorptive layer) has a porosity of 30 to 75%, preferably 50 to 65% ([0086], [0104]), which overlap the claimed ranges of 30 to 50% and 40 to 60%, respectively. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 3, Tajiri et al. teaches all of the limitations of claim 1 above and further teaches that each of the first and second porous sub-layers has a porous structure formed by stretching and contains a filler ([0072], [0089], [0094]-[0097]).
Regarding claim 4, Tajiri et al. teaches all of the limitations of claim 3 above and further teaches that the content of the filler in the first porous sub-layer may be within the range of 50 to 75 mass% ([0080]), which falls squarely within the claimed range of 45 to 75 mass%.
Regarding claim 5, Tajiri et al. teaches all of the limitations of claim 3 above and further teaches that the first porous sub-layer may include a filler having a hydrophobized surface ([0036], [0078]).
Regarding claim 7, Tajiri et al. teaches all of the limitations of claim 1 above. As noted above, Tajiri et al. teaches that the coating layer can include a cationic polymer (resin component) and may further contain additives at an amount of 0.01 to 3 mass% ([0151]-[0154]). A content of the cationic polymer in the coating layer therefore falls squarely within the claimed range of more than 80 mass%.
Regarding claim 8, Tajiri et al. teaches all of the limitations of claim 1 above and further teaches that the coating liquid may be applied to the porous layer and dried to form a coating layer having a coating mass of 0.13 g/m2 ([0171]), which falls squarely within the claimed range of 0.05 to 5 g/m2.
Regarding claim 12, Tajiri et al. teaches all of the limitations of claim 1 above but does not expressly teach that the grammage of the second porous sub-layer (B2; liquid-absorptive layer) is within the range of 30 to 50 g/m2.
However, as explained above with respect to claim 1, Tajiri et al. teaches that the grammage of the second porous sub-layer is preferably 4 g/m2 or more in view of the amount of the medium received and drying property, and is preferably 20 g/m2 or less in view of the production cost of the laminate [0102]. Tajiri et al. therefore indicates that a higher grammage of the second porous sub-layer corresponds to an improved drying property, and that the grammage need only be limited for the purpose of controlling the cost of the product. It would, therefore, have been obvious to one of ordinary skill in the art to form the second porous sub-layer to have a grammage within the claimed range of 30 to 50 g/m2, for example, in order to produce a recording medium in which the drying performance is particularly high and the cost of the product need not be limited.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tajiri et al. (WO 2021/241489, cited on IDS and ISR; citing US 2023/0158823 as the English equivalent) as applied to claim 1 above, and further in view of Maeda et al. (US 2024/0158659, previously cited).
Regarding claim 10, Tajiri et al. teaches all of the limitations of claim 1 above. Although Tajiri et al. teaches that the coating layer exhibits high affinity to a color component of an ink so that the color component can be fixed on the surface of the porous layer to prevent spreading and to suppress ink bleed, wherein the coating layer can include a polymer having a quaternary ammonium salt as a fixing agent ([0151]-[0152]), the reference does not expressly teach that the coating layer contains a water-dispersible resin.
However, in the analogous art of inkjet printable recording sheets, Maeda et al. teaches a laminate comprising a substrate, a precoat layer (coating layer) formed from a pre-coating agent, an ink layer formed from an inkjet ink composition, and an overcoat layer containing a resin ([0119], [0122]). Maeda et al. teaches that the pre-coating agent comprises inorganic particles, an amine salt of an organic acid, a resin emulsion (water-dispersible resin), and water, and that by omitting a polyvalent metal salt from the pre-coating agent, the print image quality can be improved by preventing or reducing mottling and bleeding ([0020]-[0021]). Maeda et al. further teaches that the resin emulsion in the pre-coating agent serves to prevent or reduce fall of the inorganic particles and the amine salt of an organic acid from the substrate, and to impart durability to the precoat layer ([0021], [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the laminate taught by Tajiri et al. by using a pre-coating agent composition containing a water-dispersible resin emulsion to form the coating layer, as taught by Maeda et al., in order to achieve good print image quality by preventing mottling and bleeding and to impart durability to the coating layer.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejection of claims 1-10 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is overcome by the Applicant’s amendment to claim 1 replacing the phrase “recording paper” with “recording sheet”.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments, see pages 4-5 of the remarks filed April 30, 2026, have been fully considered but they are not persuasive.
The Applicant argues that amended claim 1 is not anticipated by or obvious over Tajiri because the reference does not contemplate an embodiment in which the grammage of the second porous sub-layer exceeds 20 g/m2 nor suggest the effect on dryness achieved by setting the grammage to 21 g/m2 or more. In particular, the Applicant submits that Examples 3 and 4 of the present invention demonstrate that when the grammage of the liquid-absorptive layer is 21 g/m2 or more (i.e., 30.0 g/m2 in Example 3), the recording sheet exhibits superior dryness as compared to when the grammage of the liquid-absorptive layer is 20.0 g/m2 (in Example 4).
These arguments are not persuasive. In light of the amendments to claim 1 incorporating the limitations from previous dependent claim 9, the rejections under 35 U.S.C. 102 based on Tajiri et al. have been withdrawn, and Tajiri et al. is relied upon under 35 U.S.C. 103. As explained in the prior art rejections above, Tajiri et al. teaches that the grammage of the second porous sub-layer (B2; liquid-absorptive layer) is preferably 4 g/m2 or more in view of the amount of the medium received and drying property, and is preferably 20 g/m2 or less in view of the production cost of the laminate [0102]. The teachings of Tajiri et al. therefore clearly indicate that a higher grammage of the second porous sub-layer corresponds to an improved drying property, and that the grammage is only limited for the purpose of controlling the cost of the product. One of ordinary skill in the art would recognize that the grammage of the second porous sub-layer may desirably be greater than 20 g/m2, for example with in the claimed range of 30 to 50 g/m2, in a case where the recording medium is required to meet design objectives such as having an exceptional drying property at any cost. Moreover, it is noted that Applicant’s argument that the dryness of Example 3 is unexpectedly improved as compared to Example 4 is not persuasive, given that Tajiri et al. indicates that a higher grammage for the porous sub-layer is expected to enhance the drying property.
Furthermore, it is noted that the data shown in Tables 3 and 4 of the instant specification with respect to the dryness of Examples 3 and 4 is insufficient to establish criticality of the claimed range of 21 g/m2 or more recited in claim 1. Notably, the liquid-absorptive layer in Example 3 has a grammage of 30 g/m2, while the liquid-absorptive layer in Example 4 has a grammage of 20 g/m2. The Applicant has not provided any evidence that a liquid-absorptive layer with a grammage of 21 g/m2 would exhibit substantially improved properties (e.g., dryness) as compared to a liquid-absorptive layer with a grammage of 20 g/m2. Absent such evidence, the upper endpoint of the range taught by Tajiri et al. is so close to the claimed range that one skilled in the art would have expected them to have the same properties, thus establishing a prima facie case of obviousness over the claimed range. See MPEP 2144.05(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Iwasa et al. (US 2002/0028320) teaches a porous resin film comprising a thermoplastic resin and an inorganic and/or organic fine powder, and having a liquid absorbing capacity of 0.5 mL/m2 or more (Abstract). An ink receptive layer having high water absorptivity may be formed on the porous resin film at a coating weight of 0.05 to 100 g/m2 according to the desired ink absorptivity and gloss ([0070], [0077]).
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.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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