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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/14/2025 and 02/06/2026 have been considered by the examiner.
Claim Interpretation
Regarding claim 1, in the limitation reciting “a liquid absorption rate at a surface on the print receiving layer side”, it is noted that the phrase “a surface on the print receiving layer side” is interpreted in light of the definition provided in paragraph [0018] of the as-filed specification to refer to a surface on the print receiving layer side when viewed from the liquid-absorptive layer of the recording paper.
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 1-10 are 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 1, the limitation reciting “A recording paper comprising a coating layer, a print receiving layer and a liquid-absorptive layer” is indefinite because it is not clear what structure is required by the preamble limitation reciting “A recording paper”. Given that the body of the claim sets forth that each of the coating layer, print receiving layer, and liquid-absorptive layer are made of resin, it is not clear whether the claimed recording paper is required to include a paper material.
The common definition of the term “paper” is a material made of cellulose pulp, used chiefly for writing, printing, drawing, wrapping, or covering walls (see https://www.thefreedictionary.com/paper). Given that claim 1 requires that the coating layer comprises an aqueous binder as a resin component, and that the print receiving layer and the liquid-absorptive layer are each porous layers containing a thermoplastic resin, the claim does not set forth any components within the recording paper which are made of paper, i.e., material formed from cellulosic pulp.
In looking to the instant specification, there does not appear to be any mention of any paper layers included within the recording paper of the present invention, or any mention of any paper or cellulosic material included within any of the resin layers. Paragraph [0018] of the as-filed specification, in reference to the Figure, discloses that the recording paper (1) comprises a coating layer (13), a print receiving layer (12), a liquid-absorptive layer (11), a support layer (10) on a side of the liquid-absorptive layer opposite the print receiving layer, and a back surface layer (9) on a surface of the recording paper. Paragraph [0069] discloses that the material of the support layer is preferably a thermoplastic resin layer, and paragraph [0071] states that the same material as that of the print receiving layer can be used for the back surface layer. Paragraphs [0079]-[0080] further describe a method for producing the recording paper, in which the print receiving layer, liquid-absorptive layer, support layer, and back surface layer can all be co-extruded to form a laminated resin film.
The present invention therefore appears to be directed to a coated laminated resin film comprising a resin-containing coating layer applied to two or more laminated or coextruded resin films. The preamble limitation reciting “A recording paper” thus does not align with the limitations in the body of the claim or with the disclosure in the instant specification. For the purpose of applying prior art, the preamble limitation will be interpreted to be satisfied by a recording sheet, consistent with the title of the present application.
Regarding claims 2-10, the claims are rejected based on their dependency on claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3-8 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Tajiri et al. (WO 2021/241489, cited on IDS and ISR; citing US 2023/0158823 as the English equivalent).
Regarding claims 1 and 6, Tajiri et al. teaches a laminate (1; recording paper) 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].
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.
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.
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 2 and 9 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) as applied to claim 1 above.
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 9, Tajiri et al. teaches all of the limitations of claim 1 above and 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.
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).
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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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.
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/Rebecca L Grusby/Examiner, Art Unit 1785