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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on January 26, 2026 is acknowledged.
Claims 10-15 and 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 26, 2026.
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 01/09/2025 has been considered by the examiner.
Specification
The substitute specification filed 01/09/2025 complies with the requirements set forth in 37 CFR 1.125(b) and (c) and has been entered.
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 5 and 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.
Regarding claim 5, the limitation reciting “wherein the ink receiver coating is substantially free from water absorbing particles” is indefinite in light of the limitation of claim 1 reciting “wherein the ink receiver coating includes at least a binder and a flocculant” and in view of the disclosure of the instant specification.
In particular, it is noted that all of the materials disclosed as suitable for use as the flocculant in the ink receiver coating are water absorbing particles (see, e.g., paragraph [0015] of the as-filed specification), such that it is not clear how the ink receiver coating can be “substantially free from water absorbing particles” as required by claim 5 if the coating contains a flocculant as required by claim 1.
In looking to paragraph [0021] of the as-filed specification, the term “water absorbing particle or substance” is said to refer to a substance, in particular in the form of a particle, that is able to absorb liquid, in particular the vehicle of the ink, where the water absorbing substance can comprise pigments, in particular minerals, like silicate or aluminum silicates, for example talc, clays, calcined clays, kaolin, silica. By reducing the quantity of water absorbing substance, and preferably omitting it, the porosity and surface roughness of the ink receiver coating is said to be dramatically reduced so that lacquering can be improved. On the other hand, the printing quality can be maintained thanks to the presence of the flocculant [0021]. The instant specification further discloses embodiments in which the ink receiver coating comprises a water absorbing substance (5), preferably silica particles, kaolin, or other aluminosilicate material ([0036], [0052], Fig. 2b).
Based on this disclosure, it is understood that the limitation requiring that the ink receiver coating is substantially free from water absorbing particles is intended to require that the coating does contain a flocculant but does not contain any other water absorbing particles, especially pigments or minerals such as talc, clays, calcined clays, kaolin, silica. Absent further clarification from the Applicant, for the purpose of applying prior art, the limitation in claim 5 will be interpreted to mean that the ink receiver coating is substantially free from talc, clays, calcined clays, kaolin, and silica.
Regarding claim 7, the limitation reciting “wherein the binder of the ink receiver coating comprises polyvinyl alcohol, acrylic base resin, polyurethane-based resin, or a combination thereof” is indefinite because it is not clear what is meant by the term “acrylic base resin”. It is not clear whether this limitation is intended to recite --acrylic-based resin--, similar to the term “polyurethane-based resin”, which would encompass polymers derived from acrylic monomers.
In looking to paragraph [0018] of the as-filed specification, the ink receiver coating is said to include, as a binder, a polymer selected from the group consisting of hydroxyethyl cellulose; hydroxypropyl cellulose; hydroxyethylmethyl cellulose; … polyacrylamide; acrylamide/acrylic acid copolymer; polystyrene, styrene copolymers; acrylic or methacrylic polymers; styrene/acrylic copolymers; … polyvinyl ether (PVE); polyurethane; melamine resins; gelatin; carrageenan; dextran; gum arabic; casein; pectin; albumin; chitins; chitosans; starch; collagen derivatives; collodion and agar-agar. Based on the disclosure that the binder can be selected from acrylic or methacrylic polymers, the limitation in claim 7 reciting “acrylic base resin” is interpreted to mean “acrylic-based resin” for the purpose of applying prior art.
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 1-5, 7, and 8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by David et al. (US 2024/0262121).
Regarding claim 1, David et al. teaches a printable paper (1) comprising a paper sheet (2; base paper layer) provided with an ink receiver coating (3) ([0083], Figs. 1-2). The paper sheet is impregnated with melamine resin (polymeric binder), and the ink receiver coating comprises a binder, a flocculant, and can also comprise pigments ([0014], [0018], [0023], [0032]). David et al. teaches that the printable paper is printable with an inkjet printer for use as a décor paper in a laminate panel (Abstract).
Regarding claims 2 and 3, David et al. teaches all of the limitations of claim 1 above and further teaches that the flocculant is preferably a cationic metal salt selected from CaCl2, MgCl2, CaBr2, MgBr2, CMA (Calcium Magnesium Acetate), NH4Cl, Calcium Acetate, ZrCl4, calcium nitrate, and Magnesium Acetate, wherein the positive ion of the dissolved metal salt serves to neutralize the electrosteric stabilization function of the pigment [0023]. The content of flocculating agent is 20 to 70% based on the dry coating weight of the ink receiver coating ([0024]), which falls squarely within the claimed range of at least 20% by weight.
Regarding claim 4, David et al. teaches all of the limitations of claim 1 above. As shown in Figs. 1-2, the ink receiver coating (3) is in the form of a single layer.
Regarding claim 5, David et al. teaches all of the limitations of claim 1 above. As noted above, David et al. teaches that the ink receiver coating can comprise pigments, wherein pigments can include calcium carbonate, alumina, metal organic frameworks, and porous polar polymers [0015]. The ink receiver coating may therefore be substantially free from talc, clays, calcined clays, kaolin, and silica.
Regarding claim 7, David et al. teaches all of the limitations of claim 1 above and further teaches that the binder of the ink receiver coating may include a polyvinyl alcohol (PVA), acrylic or methacrylic polymers, styrene/acrylic copolymers, polyurethane, or the like [0018]
Regarding claim 8, David et al. teaches all of the limitations of claim 1 above and further teaches that the paper is preferably provided with between 0.5 and 5 g/m2 dry weight of the ink receiver coating ([0030]), which falls squarely within the range of 0.2 to 5 g/m2.
Claims 1, 2, 4, 6, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Nito et al. (US 2018/0074434, cited on IDS and ISR).
Regarding claims 1, 2, and 9, Nito et al. teaches an ink jet recording medium (printable paper) comprising a paper substrate (base paper layer) with at least one or more ink receiving layers on the substrate (Abstract, [0015], [0025]). The paper substrate may be impregnated with an aqueous starch solution (polymeric binder) and then dried [0075].
The ink receiving layer may include a first ink receiving layer (ink receiver coating) applied to a surface of the substrate, wherein the first ink receiving layer contains a binder and a polyvalent metal salt (flocculant) to improve the bleeding resistance of the pigment ink ([0025], [0038], [0054], [0077]). Examples of the polyvalent metal salt (cationic metal salt) include calcium acetate and calcium chloride (CaCl2) [0060].
Regarding claim 4, Nito et al. teaches all of the limitations of claim 1 above. As noted above, Nito et al. teaches that the ink receiving layer may include a first ink receiving layer ([0025]), wherein the first ink receiving layer is taken to correspond to the claimed ink receiver coating which is in the form of a single layer.
Regarding claim 6, Nito et al. teaches all of the limitations of claim 1 above and further teaches that first ink receiving layer contains anionic inorganic particles (water absorbing particles) such as wet silica, wherein the content of the binder based on the content of the anionic inorganic particles in the first ink receiving layer is suitably 50 mass% or more and 100 mass% or less ([0032]-[0033], [0040]). A particle to binder ratio of the anionic inorganic particles to the binder in the first ink receiving layer is therefore in the range of 1/1 (i.e., 100 mass% binder relative to particles) to 2/1 (i.e., 50 mass% binder relative to particles), which falls squarely within the range of above 1/20.
Regarding claim 7, Nito et al. teaches all of the limitations of claim 1 above and further teaches that examples of the binder include polyvinyl alcohol, acrylic polymer latex and polymers and copolymers of acrylic acid esters (acrylic-based resin), and polyurethane resin [0042].
Claims 1, 2, 4, 5, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Schulz et al. (US 2004/0241349).
Regarding claims 1 and 4, Schulz et al. teaches an ink receiving medium (printable paper) comprising a macroporous substrate comprising a pigment management system in contact with surfaces of the macropores of the substrate, wherein the ink receiving medium can be employed for inkjet printing (Abstract, [0047]). The macroporous substrate (base paper layer) may include paper materials, and the pigment management system comprises a multivalent metal salt (flocculant) that has coated or impregnated the substrate ([0020], [0028], [0036]). Schulz et al. further teaches that organic binders can be present in the coating solution, wherein the organic binders are soluble or dispersible in water so that they may easily be incorporated into the compositions used to coat the macroporous substrate [0046].
One of ordinary skill in the art would recognize that when the pigment management solution is coated onto the macroporous substrate, a portion of the solution impregnates the paper substrate, while a portion of the solution forms a coating in the form of a single layer on a surface of the substrate. The organic binder therefore corresponds to the claimed polymeric binder which impregnates the base paper layer and to the binder of the ink receiver coating, and the dried pigment management system comprising the multivalent salt and the organic binder corresponds to the claimed ink receiver coating.
Regarding claim 2, Schulz et al. teaches all of the limitations of claim 1 above and further teaches that examples of multivalent salts include calcium chloride (CaCl2), calcium bromide (CaBr2), magnesium chloride (MgCl2), and the like ([0037]-[0038]).
Regarding claim 5, Schulz et al. teaches all of the limitations of claim 1 above and further teaches that opacifying pigments can be present in the coating solution and can include titanium dioxide pigments, barium sulfate pigments, and the like ([0045]), which are not water absorbing particles. Schulz et al. is silent to the coating solution containing talc, clays, calcined clays, kaolin, or silica, thus satisfying the limitation requiring that the ink receiver coating is substantially free from water absorbing particles.
Regarding claims 7 and 9, Schulz et al. teaches all of the limitations of claim 1 above and further teaches that examples of the organic binder include acrylic emulsions, styrene-acrylic emulsions, polyvinyl alcohol, and the like [0046].
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nito et al. (US 2018/0074434, cited on IDS and ISR) as applied to claim 1 above.
Regarding claim 8, Nito et al. teaches all of the limitations of claim 1 above and further teaches that the coating amount of the first ink receiving layer is suitably 2 g/m2 or more and 10 g/m2 or less ([0028]), which overlaps the claimed range of 0.2 to 5 g/m2. 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).
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Schulz et al. (US 2004/0241349) as applied to claims 1 and 2 above.
Regarding claim 3, Schulz et al. teaches all of the limitations of claim 2 above and further teaches that the amount of salts that can be used in the coating solution for imbibing in the porous substrate can range from about 0.1 weight percent to about 50 weight percent ([0039]), which overlaps the claimed range of at least 20%. 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 8, Schulz et al. teaches all of the limitations of claim 1 above. Although Schulz et al. is silent to a dry amount of the ink receiver coating, the reference does further teach that the coating weight of the pigment management system (ink receiver coating) depends on the porosity, thickness, and chemical nature of the substrate, but may be determined readily by routine optimization, wherein typical wet coating weights are from about 1 to 500 g/m2, preferably from about 15 to 30 g/m2 [0052]. Schulz et al. further teaches that the pigment management system serves to fix (i.e., immobilize) pigment onto the substrate, while excessive amounts of solids in the coating solution could plug the pores in the substrate and in turn cause smearing and slow dry times during printing ([0013], [0052]).
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum value of a result-effective variable such as the dry amount of the ink receiver coating through routine experimentation, especially given the teachings in Schulz et al. regarding the desire to use the pigment management system to effectively immobilize pigment while ensuring the pores in the substrate are not excessively blocked. See MPEP 2144.05(II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kutsuwa et al. (US 2020/0282756) teaches an inkjet recording medium comprising an ink-receiving layer containing an inorganic pigment, a binder, an inkjet ink-fixing agent, and organic particles disposed on a surface of the base paper, wherein the base paper may be impregnated with sizing liquid containing starch and polyvinyl alcohol, and the ink-receiving layer may further contain a water-soluble metal salt such as magnesium chloride (Abstract, [0044]-[0045], [0052])
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