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 .
Response to Arguments
Applicant's arguments filed on 06/30/2026 have been fully considered but they are not persuasive. First and foremost, the amendments to add the surface tension range and range of post treatment application amount per unit area to claim 1 warrant a rejection under 35 U.S.C. 112(b) for indefiniteness (see below for further explanation). The applicant argues that these amendments and others to add a nonionic surfactant and a HLB value range overcome the prior art of record. While the limitations of the amount per unit area and HLB value are not taught by the prior art or record the examiner rejected these limitations previously, in the nonfinal office action filed on 04/02/2026) as routine optimization. The applicant failed to argue this rejection therefore these features will continue to be rejected under routine optimization as stated by MPEP 2144.05.
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 1-9 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 phrase “wherein the post-treatment liquid has a surface tension of 25.0mN/m to 32.3 mN/m” is unclear because later in claim 3 the applicant recites “the post treatment liquid has a surface tension of 22.5 to 40mN/m). These ranges contradict each other specifically between 22.5mN/m and 25.0mN/m and 32.3mN/m and 40mN/m such that it is unclear what exact ranges the applicant is claiming. As such the claim is indefinite.
Regarding claim 1, the phrase “an application amount per unit area is in a range of 15g/m2 to 70g/m2” is unclear because later in claim 4 the applicant recites “an application amount per unit area is in a range of 10g/m2 to 55g/m2”. These ranges contradict each other specifically between 15g/m2 and 10g/m2m such that it is unclear what exact ranges the applicant is claiming. As such the claim is indefinite.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Oshima et al. (JP 2016190900 A) in view of Lin (US 5764263 A) and Brungardt (US 20140374043 A1).
Regarding claim 1, to the extent the claim is clear in scope, Oshima teaches an ink jet recording method comprising in the following order, applying an ink comprising a colorant (paragraph [0040]) and water (paragraph [0040]) onto an A surface which is one surface of a paper substrate by an ink jet recording system (paragraph [0140]), then irradiating the A surface to which the ink has been applied with infrared rays having a maximal wavelength in a range of 800 nm to 3,000 nm (paragraph [0140]) and wherein the paper substrate includes a pulp layer (paragraph [0147]) and a coating layer which is disposed on at least one surface of the pulp layer (paragraph [0147]), the coating layer comprises at least one white pigment selected from the group consisting of calcium carbonate and kaolin (paragraph [0147]).
But Oshima et al. fails to teach wherein the post-treatment liquid has a surface tension of 25.0 mN/m to 32.3mN/m, wherein the surfactant includes a nonionic surfactant, wherein the surfactant has an HLB value of 8.0 to 14.0, the coating comprising a binder, and the coating layer is disposed on an A surface side and a dry coating amount of the coating layer disposed on the A surface side is 15 g/m2 to 50 g/m2, and the coating layer is not disposed on a B surface side, or in a case where the coating layer is disposed on the B surface side, a dry coating amount of the coating layer disposed on the B surface side is 10 g/m2 or less and a step of applying a post-treatment liquid comprising water and a surfactant onto a B surface which is the other surface of the paper substrate and in the applying the post-treatment liquid, the post-treatment liquid is applied such that an application amount per unit area is in a range of 15 g/m2 to 70 g/m2.
Lin does teach an ink jet method wherein the post-treatment liquid has a surface tension of 25.0 mN/m to 32.3mN/m (Col. 21 lines 15-21 wherein 1 dynes/cm is equal to 1 mN/m) and wherein the surfactant includes a nonionic surfactant (Col. 8, lines 44-46) including applying an ink (Col. 6 lines 39-41) and heat (Col. 7, lines 35-48) and applying a post-treatment liquid comprising water (Col. 8, lines 18-19) and a surfactant (Col. 8, lines 18-20) onto a B surface which is the other surface of the paper substrate (Col. 7, lines 17-24).
Brungardt teaches an inkjet recording medium with a coating layer comprises at least one white pigment selected from the group consisting of calcium carbonate and kaolin (paragraph [0016]), and a binder (paragraph [0023]), and the coating layer is disposed on an A surface side and a dry coating amount of the coating layer disposed on the A surface side is 15 g/m2 to 50 g/m2 (paragraph [0015]) and the coating layer is not disposed on a B surface side, or in a case where the coating layer is disposed on the B surface side, a dry coating amount of the coating layer disposed on the B surface side is 10 g/m2 or less (paragraph [0015]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to achieve the claimed ranges of application amount per unit area of post treatment liquid and HLB as routine optimization to achieve as routine optimization to achieve the desired anti-curling effect for the specific paper used (Lin Col. 7, lines 11-16) and the proper wettability without excess spreading to properly coat the printing medium respectively.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to combine the method of Oshima et al. with the post-treatment liquid of Lin, as a known technique in the art, to reduce the curling of the printed product (Lin Col. 6, lines 7-10).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to use the method, as taught by Oshima et al. and Lin, on a medium possessing the coating, as taught by Brungardt, as simple substitution of a generic kaolin coated medium for the specific one taught by Brungardt.
Regarding claim 2, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above and Oshima et al. teaches wherein the infrared rays are near-infrared rays having a maximal wavelength in a range of 800 nm to 1,400 nm (paragraph [0140]).
Regarding claim 3, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above and Lin teaches wherein the post-treatment liquid has a surface tension of 22.5 mN/m to 40.0 mN/m (Col. 21 lines 15-21 wherein 1 dynes/cm is equal to 1 mN/m).
Regarding claim 4, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above but they fail to teach wherein in the applying the post-treatment liquid, the post-treatment liquid is applied such that an application amount per unit area is in a range of 10 g/m2 to 55 g/m2.
However, to the extent the claim is clear in scope, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to arrive at the claimed amount per unit area of the post-treatment composition as routine optimization to achieve the desired anti-curling effect for the specific paper used (Lin Col. 7, lines 11-16).
Regarding claim 5, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above and Lin teaches wherein the surfactant includes a nonionic surfactant (Col. 8, lines 44-46).
Regarding claim 6, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above but they fail to teach wherein the surfactant has an HLB value of 8.0 to 14.0.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to choose a surfactant with an HLB within the claimed range as routine optimization to achieve a post- treatment fluid with the proper wettability without excess spreading to properly coat the printing medium.
Regarding claim 7, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above and Brungardt teaches wherein the paper substrate has a basis weight of 180 g/m2 to 600 g/m2 (paragraph [0038]).
Regarding claim 8, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 1 as stated above and Oshima et al. teaches applying a pre-treatment liquid onto the A surface (paragraph [0163]) and wherein in the applying of the ink, the ink is applied onto the A surface to which the pre-treatment liquid has been applied (paragraph [0163])
Regarding claim 9, to the extent the claim is clear in scope, Oshima et al., Lin and Brungardt teach all the elements of claim 8 as stated above and Oshima et al. teaches wherein the pre-treatment liquid comprises an organic acid (paragraph [0171]).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL F BOELITZ whose telephone number is (571)272-3391. The examiner can normally be reached Mon-Fri 8am-5pm.
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, Stephen Meier can be reached at 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL FREDERICK BOELITZ/Examiner, Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853
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