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.
Election/Restrictions
Applicant’s election without traverse of claims 1-7 in the reply filed on 7/23/2026 is acknowledged. Claims 8-12 have been withdrawn.
Specification
The disclosure is objected to because of the following informalities: Within Table 3, Applicant fails to define the acronym “EPDM”. In an effort to advance prosecution of the application, the Examiner is assuming this is the common chemical acronym for ethylene propylene diene monomer.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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, 2, 3, & 7 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The terms at issue are discussed below:
The terms “hydrogen bonding component of a surface energy of the ink film” and “hydrogen bonding component of a surface energy of the transport member T” in claims 1-2 are insufficiently defined in the disclosure, primarily noting a range of values when in relation to each other have units of force per area (i.e., “mN/m”) which is a standard unit of surface energy. The accepted meaning of “surface energy” is the energy associated with the intermolecular forces at the interface between two media. Applicant has insufficiently defined the relevant conditions/standards involved when obtaining the measurements of the surface energy of each of the claimed material (i.e., ink film and transport member). Moreover, Applicant has failed to sufficiently define the “hydrogen bonding component” of these surface areas nor the conditions under which these values are measured. Therefore, the terms are indefinite because the specification does not clearly redefine the terms.
In an effort to advance prosecution of the application, the Examiner is interpreting the “hydrogen bonding component of a surface energy of the ink film” and of the “hydrogen bonding component of a surface energy of the transport member”, both specified in claims 1-2, with respect to the 103 prior art rejection, as follows: “surface energy of the ink film”, a property of the ink film, and “surface energy of the transport member T”, a property of the transport member.
The terms “dispersion component of the surface energy” of various materials in claims 3 (i.e., “of the ink film” and “of the transport member T”) and claim 7 (i.e., “of the pretreatment liquid film” and “of the transport member P”) are insufficiently defined in the disclosure, primarily noting a range of values when in relation to each other have units of force per area (i.e., “mN/m”) which is a standard unit of surface energy. The accepted meaning of “surface energy” is the energy associated with the intermolecular forces at the interface between two media. Applicant has insufficiently defined the relevant conditions/standards involved when obtaining the measurements of the surface energy of each of the claimed material (i.e., ink film and transport member). Moreover, Applicant has failed to sufficiently define the “dispersion component” of these surface areas nor the conditions under which these values are measured. Therefore, the terms are indefinite because the specification does not clearly redefine the terms.
In an effort to advance prosecution of the application, the examiner is interpreting the “dispersion component of a surface energy” of the various, with respect to the 103 prior art rejection, as follows: “surface energy of the ink film”, a property of the ink film, “surface energy of the transport member T”, a property of the transport member T, “surface energy of the pretreatment liquid”, a property of the pretreatment liquid, and “transport member P”, a property of the transport member P.
In an additional effort to advance prosecution of the application, Applicant is invited to request a telephonic interview with Examiner prior to submitting amended claims, to discuss if these proposed amendments appear to resolve the 112(b) rejections discussed above.
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.
Claims 1-3 & 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Asakawa et al. (US 20210017414 A1; herein referred to as “Asakawa”) in view of Kobayashi (US 20130162714 A1).
With respect to claim 1, an image recording method (Asakawa: ¶0005) comprising:
applying an ink containing water (Asakawa: ¶0050), a pigment (Asakawa: ¶0052), and a resin (Asakawa: ¶0083) onto a non-permeable substrate (i.e., “ink-non-absorbent printing medium” aka “printing medium F”; Asakawa: ¶0120 & 0032) by an ink jet method (Asakawa: ¶0006, ¶0032 & Fig. 1, element “printing unit 30”);
drying the ink applied onto the non-permeable substrate to obtain an ink film (Asakawa: ¶0043 & Fig. 1); and
transporting, by a transport member T (i.e., “feed rollers”, including “71”, “72”, and “74”), the non-permeable substrate provided with the ink film in a disposition in which the transport member T and the ink film are in contact with each other (Asakawa: Fig. 1),
Asakawa is silent on
wherein an absolute value of a difference between a hydrogen bonding component of a surface energy of the ink film and a hydrogen bonding component of a surface energy of the transport member T is 2.0 mN/m or more.
Kobayashi teaches
wherein an absolute value of a difference between a hydrogen bonding component of a surface energy of the ink film and a hydrogen bonding component of a surface energy of the transport member T is 2.0 mN/m or more (i.e., ink composition taught by Asakawa and Kobayashi roller composition of “EPDM”; Asakawa: ¶0050, 0052, 0083 & Kobayashi: ¶0104). As discussed in the 112 rejection section, the terms “hydrogen bonding component of a surface energy” of “the ink film” and “of the transport member T” are insufficiently defined and will be understood to be the property of “surface energy” associated with each of these materials. Note that the ink film methodology (including the ink composition) taught by Asakawa meets the limitations claimed in claim 1. Moreover, Kobayashi teaches that Asakawa’s transport member T (i.e., rollers) can be composed of EPDM, a transport member material Applicant highlights as viable in Table 3 of their disclosure. Therefore, it would be obvious to one of ordinary skill in the art that the absolute value of a difference between a surface energy of the ink film and the surface energy of the transport member T could meet Applicant’s limitation in claim 1 (i.e., the absolute value being 2.0 nM/m or more), given the elements involved are comparable and, subsequently, could have comparable properties.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Asakawa’s method of utilizing a transport member T (i.e., rollers) with Kobayashi’s teaching of EPDM rollers, because rollers made of EPDM are suitable for use in inkjet printing methods and the apparatuses used therein (Kobayashi: ¶0104). This roller material modification, in combination with the ink film, prepared with the method taught by Asakawa could result in the absolute value of a difference between a surface energy of the ink film and a surface energy of the transport member T being 2.0 mN/m or more.
With respect to claim 2, the image recording method (Asakawa: ¶0005) according to claim 1.
Asakawa is silent on wherein the absolute value of the difference between the hydrogen bonding component of the surface energy of the ink film and the hydrogen bonding component of the surface energy of the transport member T is 10.0 mN/m or more and 30.0 mN/m or less.
Kobayashi teaches wherein the absolute value of the difference between the hydrogen bonding component of the surface energy of the ink film and the hydrogen bonding component of the surface energy of the transport member T is 10.0 mN/m or more and 30.0 mN/m or less (i.e., ink composition taught by Asakawa and Kobayashi roller composition of “EPDM”; Asakawa: ¶0050, 0052, 0083 & Kobayashi: ¶0104). As discussed in the 112 rejection section, the terms “hydrogen bonding component of a surface energy” of “the ink film” and “of the transport member T” are insufficiently defined and will be understood to be the property of “surface energy” associated with each of these materials. Note that the ink film methodology (including the ink composition) taught by Asakawa meets the limitations claimed in claim 1. Moreover, Kobayashi teaches that Asakawa’s transport member T (i.e., rollers) can be composed of EPDM, a transport member material Applicant highlights as viable in Table 3 of their disclosure. Therefore, it would be obvious to one of ordinary skill in the art that the absolute value of a difference between a surface energy of the ink film and the surface energy of the transport member T could met Applicant’s limitation in claim 1 (i.e., the absolute value being 10.0 mN/m or more and 30.0 mN/m or less), given the elements involved are comparable and, subsequently, could have comparable properties.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Asakawa’s method of utilizing a transport member T (i.e., rollers) with Kobayashi’s teaching of EPDM rollers, because rollers made of EPDM are suitable for use in inkjet printing methods and the apparatuses used therein (Kobayashi: ¶0104). This roller material modification, in combination with the ink film, prepared with the method taught by Asakawa could result in the absolute value of a difference between a surface energy of the ink film and a surface energy of the transport member T being 10.0 mN/m or more and 30.0 mN/m or less
With respect to claim 3, the image recording method (Asakawa: ¶0005) according to claim 1.
Asakawa is silent on wherein an absolute value of a difference between a dispersion component of the surface energy of the ink film and a dispersion component of the surface energy of the transport member T is 5.0 mN/m or more and 30.0 mN/m or less.
Kobayashi teaches wherein an absolute value of a difference between a dispersion component of the surface energy of the ink film and a dispersion component of the surface energy of the transport member T is 5.0 mN/m or more and 30.0 mN/m or less (i.e., ink composition taught by Asakawa and Kobayashi roller composition of “EPDM”; Asakawa: ¶0050, 0052, 0083 & Kobayashi: ¶0104). As discussed in the 112 rejection section, the terms “dispersion component of the surface energy” of “the ink film” and “of the transport member T” are insufficiently defined and will be understood to be the property of “surface energy” associated with each of these materials. Note that the ink film methodology (including the ink composition) taught by Asakawa meets the limitations claimed in claim 1. Moreover, Kobayashi teaches that Asakawa’s transport member T (i.e., rollers) can be composed of EPDM, a transport member material Applicant highlights as viable in Table 3 of their disclosure. Therefore, it would be obvious to one of ordinary skill in the art that the absolute value of a difference between a surface energy of the ink film and the surface energy of the transport member T could met Applicant’s limitation in claim 1 (i.e., the absolute value being 5.0 mN/m or more and 30.0 mN/m or less), given the elements involved are comparable and, subsequently, could have comparable properties.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Asakawa’s method of utilizing a transport member T (i.e., rollers) with Kobayashi’s teaching of EPDM rollers, because rollers made of EPDM are suitable for use in inkjet printing methods and the apparatuses used therein (Kobayashi: ¶0104). This roller material modification, in combination with the ink film, prepared with the method taught by Asakawa could result in the absolute value of a difference between a surface energy of the ink film and a surface energy of the transport member T being 5.0 mN/m or more and 30.0 mN/m or less
With respect to claim 5. The image recording method (Asakawa: ¶0005) according to claim 1, wherein
the ink is a white ink (i.e., “white ink application step”; Asakawa: ¶0033, 0138, & Fig. 1) containing water (Asakawa: ¶0050), a white pigment (Asakawa: ¶0052 & 0055), and a resin (Asakawa: ¶0083).
With respect to claim 6, the image recording method (Asakawa: ¶0005) according to claim 1, wherein
the applying is applying (i.e., “non-white ink application step and white ink application step”; Asakawa: ¶0033, 0138-01466, & Fig. 1), onto the non-permeable substrate (i.e., “ink-non-absorbent printing medium” aka “printing medium F”; Asakawa: ¶0120 & 0032), a first ink (i.e., non-white ink; Asakawa: ¶0138 & Fig. 1) containing water (Asakawa: ¶0050), a pigment (Asakawa: ¶0052), and a resin (Asakawa: ¶0083) and a second ink (i.e., white ink; Asakawa: ¶0138 & Fig. 1) containing water (Asakawa: ¶0050), a pigment (Asakawa: ¶0052 & 0055), and a resin (Asakawa: ¶0083) by an ink jet method in a superimposed manner in this order (i.e., “non-white ink application step and white ink application step”; Asakawa: ¶0033, 0139-0140, & Fig. 1),
the drying is drying the first ink and the second ink applied onto the non-permeable substrate to obtain an ink film (Asakawa: ¶0043 & Fig. 1),
the first ink is a colored ink (i.e., non-white ink; Asakawa: ¶0138 & Fig. 1) containing water (Asakawa: ¶0050), a coloring pigment (Asakawa: ¶0052, 0054, & 0056-0059), and a resin (Asakawa: ¶0083)
the second ink is a white ink (i.e., white ink; Asakawa: ¶0138 & Fig. 1) containing water (Asakawa: ¶0050), a white pigment (Asakawa: ¶0052 & 0055), and a resin (Asakawa: ¶0083).
With respect to claim 7, the image recording method (Asakawa: ¶0005) according to claim 1, further comprising, before applying (Asakawa: ¶0006, ¶0032 & Fig. 1, element “printing unit 30”) the ink containing water, the pigment, and the resin (Asakawa: ¶0050, ¶0052, & ¶0083):
applying a pretreatment liquid (Asakawa: ¶0032, 0103, & Fig. 1) containing water (Asakawa: ¶0111), a coagulating agent (i.e., “flocculant”; Asakawa: ¶0105), and a resin (i.e., “a cationic resin” in combination with another flocculant; Asakawa: ¶0106) onto the non-permeable substrate (i.e., “treatment liquid” applied to “printing medium F”; Asakawa: ¶0137 & Fig. 1, element “31”);
Asakawa is silent on
drying the pretreatment liquid applied onto the non-permeable substrate to obtain a pretreatment liquid film; and
transporting, by a transport member P, the non-permeable substrate provided with the pretreatment liquid film in a disposition in which the transport member P and the pretreatment liquid film are in contact with each other,
wherein an absolute value of a difference between a dispersion component of a surface energy of the pretreatment liquid film and a dispersion component of a surface energy of the transport member P is 5.0 mN/m or more.
Kobayashi teaches (see annotated Fig. 3 below)
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drying the pretreatment liquid applied onto the non-permeable substrate to obtain a pretreatment liquid film (Kobayashi: ¶0171 & Fig. 3). Note that the pretreatment portion taught by Kobayashi modifies the pretreatment portion taught by Asakawa (Asakawa: Fig. 1, element “31”).
transporting, by a transport member P (Kobayashi: ¶ & Fig. 3), the non-permeable substrate provided with the pretreatment liquid film in a disposition in which the transport member P and the pretreatment liquid film are in contact with each other (Kobayashi: see annotated Fig. 3 above),
wherein an absolute value of a difference between a dispersion component of a surface energy of the pretreatment liquid film and a dispersion component of a surface energy of the transport member P is 5.0 mN/m or more (i.e., ink composition taught by Asakawa and Kobayashi roller composition of “EPDM”; Asakawa: ¶0050, 0052, 0083 & Kobayashi: ¶0104). As discussed in the 112 rejection section, the terms “dispersion component of the surface energy” of “the ink film” and “of the transport member T” are insufficiently defined and will be understood to be the property of “surface energy” associated with each of these materials. Note that the ink film methodology (including the ink composition) taught by Asakawa meets the limitations claimed in claim 1. Moreover, Kobayashi teaches that Asakawa’s transport member T (i.e., rollers) can be composed of EPDM, a transport member material Applicant highlights as viable in Table 3 of their disclosure. Therefore, it would be obvious to one of ordinary skill in the art that the absolute value of a difference between a surface energy of the ink film and the surface energy of the transport member T could met Applicant’s limitation in claim 1 (i.e., the absolute value being 5.0 mN/m or more), given the elements involved are comparable and, subsequently, could have comparable properties.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Asakawa’s method of utilizing a transport member T (i.e., rollers) with Kobayashi’s teaching of EPDM rollers, because rollers made of EPDM are suitable for use in inkjet printing methods and the apparatuses used therein (Kobayashi: ¶0104). This roller material modification, in combination with the ink film, prepared with the method taught by Asakawa could result in the absolute value of a difference between a surface energy of the ink film and a surface energy of the transport member T being 5.0 mN/m or more.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Asakawa in view of Kobayashi, further in view of Iwasaki et al. (US 20060279618 A1; herein referred to as “Iwasaki”).
With respect to claim 4, the image recording method (Asakawa: ¶0005) according to claim 1.
Asakawa is silent on wherein an absolute value of a difference between a surface roughness of the ink film and a surface roughness of the transport member T is 10.0 μm or less.
Iwasaki teaches wherein an absolute value of a difference between a surface roughness of the ink film and a surface roughness of the transport member T is 10.0 μm or less (i.e., “EPDM” printer roller with average surface roughness “Ra” of 1.6 μm and aluminum counter roller with “mirror-like” surface; ¶0056). Applicant has broadly defined the composition of the ink film, therefore the range in surface roughness of this ink film remains broad. Iwasaki teaches EPDM or aluminum printer rollers (both roller materials Applicant has noted in Table 3 of their disclosure) with defined surface roughness, such as EPDM rollers with a surface roughness of 1.6 μm. Therefore, taking the absolute value of the difference between this surface roughness (1.6 μm) and the surface roughness of the ink film could meet the limitations claimed. Moreover, it would have been obvious to one of ordinary skill in the art to optimize the absolute value of the differences of surface roughness between the printer roller and the ink film, since it has been held that where the general conditions of a claim are disclosed in the prior art (i.e., an ink film prepared in the claimed method and a transport member T composed of a material disclosed in Applicant’s disclosure), discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Furthermore, it would have been obvious to one of ordinary skill in the art to optimize the absolute value of the differences of surface roughness between the printer roller and the ink film, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice: In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the range of the absolute value of a difference between a surface roughness of the ink film and a surface roughness of the transport member T to be 10.0 μm or less, given this variable (i.e., the absolute difference in surface roughness between the ink film and the transport member T) may impact the quality of the printed image by damaging the ink film upon contact with the transport member T’s rollers. Therefore, optimizing these rollers to be made of EPDM, which Iwasaki teaches is a common roller material for printing apparatuses, can safeguard the quality of the final product.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Fujikura (US 20100225695 A1) teaches: Blocking members are respectively provided at a conveyance direction upstream side and downstream side of a head unit of an inkjet recording device. The two blocking members are provided radially extending from an area near an outer peripheral surface of an image formation drum, and extend across a width direction of a paper, and respectively cover both conveyance direction sides of the head unit. An end of each blocking member near to the image formation drum is separated from the outer peripheral surface of the drum by a predetermined distance. Between an inkjet line head and a blocking member is provided a fan that blows air along a droplet ejection direction towards a vicinity of the outer peripheral surface of the image formation drum, thereby preventing heat from the image formation drum from being transmitted to an ejection direction distal end of the inkjet line head (Fujikura: Abstract). Also see Fujikura Fig. 1 and the pretreatment liquid applicator, ink applicator, and transport members therein.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHLOMIT CHELST whose telephone number is (571)272-0832. The examiner can normally be reached on M-F from 8:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricardo Magallanes, can be reached at telephone number 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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/SHLOMIT CHELST/ Examiner, Art Unit 2853
/RICARDO I MAGALLANES/ Supervisor Patent Examiner, Art Unit 2853
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