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 .
Election/Restrictions
Applicant’s election without traverse of Group I Claims 1, 2, 5-9, 16-19 and 23 in the reply filed on 08/12/2026 is acknowledged.
Claim Rejections - 35 USC § 103
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.
Claims 1, 5, 7-9, 16, 17, 19 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Beverly et al. (WO 2021/010948 A1) in view of Courtenay et al. (US 2008/0182045 A1).
Claim 1: Beverly teaches a print media comprising a base paper substrate and an ink receiving layer on the base paper substrate (abstract and [0011]), wherein the ink receiving layer comprises inorganic particulates and a binder (abstract, [0023] and [0026]). The print media meets the claimed printing paper, the ink receiving layer meets the claimed ink receiving topcoat, the inorganic particulates meet the claimed pigment composition, and the binder meets the claimed binder composition. Beverly teaches the binder comprises a mixture of at least a starch and a polyvinyl alcohol (PVA) [0026]. Beverly teaches the content of the inorganic particulates is 60-95 wt% [0023] which overlaps with the claimed 60-90 wt%, and the content of the binder is 0.05-10 wt% [0030] which overlaps with the claimed 2.5-25 wt%.
Beverly does not teach partially hydrolyzed PVA; however, Courtenay teaches a coating comprising a partially hydrolyzed PVA hydrolyzed between 82-98% ink an ink jet recording media (abstract and [0040]). It is well established that partially hydrolyzed PVA dissolves well in cold water; and at 20̊ temperature water is considered cold. Beverly and Courtenay are analogous art because they are from the same field of endeavor, that is the printing medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the partially hydrolyzed PVA of Courteney with the invention of Beverly, and the motivation would be to control coatability and particle binding.
Claim 5: Beverly teaches the binder may further comprise soy protein [0026]. Beverly does not teach the contents of the starch, polyvinyl alcohol and soy protein; however, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the contents of the starch, polyvinyl alcohol and soy protein, and the motivation would be to control particles holding property, control bond strength between the substrate and the ink receiving layer and ink absorption property. A prima facie case of obviousness may be rebutted,however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Clam 7: Beverly teaches polyvinyl alcohol (PVA) as one of the examples of the binder [0026].
Claim 8: Beverly teaches the content of the inorganic particulates is 60-95 wt% [0023], and the content of the binder is 0.05-10 wt% [0030].
Claim 9: Beverly teaches polyvinyl alcohol (PVA) as one of the examples of the binder [0026].
Claims 16 and 17: Beverly teaches soy protein {instant claim 17} and casein as examples of the binder [0026].
Claim 19: Beverly does not teach the content of the protein; however, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the content of the protein, and the motivation would be to bind the inorganic particles and securely adhere them to the substrate. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 23: Beverly does not teach partially hydrolyzed PVA; however, Courtenay teaches a coating comprising a partially hydrolyzed PVA hydrolyzed between 82-98% ink an ink jet recording media (abstract and [0040]). It is well established that partially hydrolyzed PVA dissolves well in cold water; and at 20̊ temperature water is considered cold. Beverly and Courtenay are analogous art because they are from the same field of endeavor, that is the printing medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the partially hydrolyzed PVA of Courteney with the invention of Beverly, and the motivation would be to control coatability and particle binding.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Beverly et al. (WO 2021/010948 A1) and Courtenay et al. (US 2008/0182045 A1) as applied to claim 1 above, and as evidenced by Higuchi (US 2002/0045121 A1).
Beverly and Courtenay teach the claimed invention as set forth above.
Claim 2: Beverly teaches the binder is a mixture of water-soluble binder and water-dispersible binder [0026]. However, not all water-dispersible binders are water-insoluble synthetic polymers. For example, Beverly teaches an acrylic latex as one of the suitable examples of water-dispersible binders [0026]; and evidence shows that acrylic latex is water-soluble (claim 6 of Higuchi). Therefore, the binder of Beverly is free of water-insoluble synthetic polymer.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Beverly et al. (WO 2021/010948 A1) and Courtenay et al. (US 2008/0182045 A1) as applied to claim 1 above, and further in view of Zhou et al. (US 2018/0230338 A1).
Beverly and Courtenay teach the claimed invention as set forth above.
Claim 6: Beverly does not teach the starch is dextrin, hydroxypropylated starch or oxidized starch. However, Zhou teaches a printable film comprising an image receiving layer containing a water soluble binder of dextrin, hydroxypropylated starch or oxidized starch ([0031] and [0032]). Beverly and Zhou are analogous art because they are from the same field of endeavor that is the printable film art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the dextrin, hydroxypropylated starch or oxidized starch of Zhou with the invention Beverly, and the motivation for combining would be, as Zhou suggested, to provide high binding power [0031].
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Beverly et al. (WO 2021/010948 A1) and Courtenay et al. (US 2008/0182045 A1) as applied to claims 1, 16 and 17 above, and further in view of Dannhauser et al. (US 2009/0074995 A1).
Beverly and Courtenay teach the claimed invention as set forth above.
Claim 18: Beverly does not teach whey protein as the binder. However, Dannhauser teaches a binder in an ink receiving layer, wherein the binder can be casein, whey protein or soy protein [0043]. Dannhauser shows that whey protein is an equivalent binder known in the printing medium art. Therefore, because these three protein binders were art-recognized equivalents before the effective filing date of the invention, one of ordinary skill in the art would have found it obvious to substitute soy protein or casein for whey protein.
Pertinent Prior Arts
Biry (US 2004/0074417 A1), Fruge et al. (US 2003/0180478 A1) and Schiller et al. (US 2001/0023272 A1).
Correspondence
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BS
September 18, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights