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 statement (IDS) submitted on 12/13/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-12 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-11 of prior U.S. Patent No. 12209193. This is a statutory double patenting rejection.
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.
Claims 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12209193 in view of Kishi et al. (US 11492483 B2).
Regarding claim 13:
Patented claim 1 comprises all the limitations of instant claim 13, except that the proportion of the cyano group-containing unit constituting the first resin particle is 60% by mass or less.
However, Kishi et al. disclose a water-based ink having a first resin particle comprising a cyano group-containing unit (col. 4, lines 45-53), wherein the proportion of a cyano group-containing unit constituting the first resin particle is 60.0% by pass or less so as to improve abrasion resistance (col. 7, line 58 – col. 8, line 12).
Therefore, before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to modify the patented claim so as to utilize the cyano group-containing unit proportions taught by Nishijima et al.
Regarding claims 14-16:
Patented claim 1 comprises all the limitations of instant claims 14-16, except that the glass transition temperature of the resin particles is 90°C or more and 110°C or less.
However, Kishi et al. disclose a water-based ink having a first resin particle that has a glass transition temperature of 90°C or more and 110°C or less, so as to maintain ejection properties and gloss clarity of the image (col. 9, lines 5-15).
Therefore, before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to modify the patented claim so as to utilize a resin particles having a glass transition temperature in the range taught by Kishi et al.
Claims 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12209193 in view of Vincent et al. (US 2004/0157958 A1).
Regarding claim 18:
Patented claim 1 comprises all the limitations of instant claim 18, except that the specific gravity of the second resin particle is 1.00 g/cm3 or more to 1.20 g/cm3 or less.
However, Vincent et al. teaches that water-based inks having second resin particles with specific gravity on the order of 1.15 g/cm3 allows the particles to be easily shaken or stirred back into dispersion without agglomeration (paragraph 3).
Therefore, before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to modify the patented claim so as to utilize second resin particles having specific gravity between 1 and 1.2 g/cm3, as suggested by Vincent et al.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12209193. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the instant claims.
Claims 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12209193 in view of Ohnishi (US 2017/0266993 A1).
Regarding claims 19-20:
Patented claim 1 comprises all the limitations of instant claims 19-20, except that the specific gravity of the second resin particle is 1.00 g/cm3 or more to 1.20 g/cm3 or less.
However, Ohnishi discloses a printing method comprising a heating step of heating a recording medium applied with aqueous ink to a temperature between 70°C and 120°C, so as to temporarily liquify the deposited resin particles (paragraph 144).
Therefore, before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to modify the patented claim so as heat the ink to a temperature between 70°C and 120°C, as suggested by Ohnishi.
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shelby L Fidler whose telephone number is (571)272-8455. The examiner can normally be reached Monday-Friday, 8:30am - 5pm EST.
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, Douglas Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SHELBY L. FIDLER
Primary Examiner
Art Unit 2853
/SHELBY L FIDLER/Primary Examiner, Art Unit 2853
Prosecution Insights