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 .
Summary
The Applicant’s arguments and claim amendments received on May 26, 2026 are entered into the file. Currently, claims 1 and 7 are amended; claims 5, 6, and 16 are canceled; claims 10-15 and 17-21 are withdrawn; resulting in claims 1-4 and 7-9 pending for examination.
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 1-4 and 7-9 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 limitation reciting “wherein the ink receiver coating is free from water absorbing particles; wherein the water absorbing particles are mineral pigments including silicate and aluminum silicates” is indefinite because the scope of the claimed invention is not clearly defined. In particular, it is not clear exactly what materials are included vs. excluded from the above limitation.
As explained in paragraphs 9-12 of the previous office action with respect to original claim 5, it is not clear what materials are encompassed by the limitation requiring that the ink receiver coating is free from water absorbing particles, given that claim 1 also requires that the ink receiver coating includes a flocculant, where several examples of materials suitable for use as the flocculant are water absorbing particles.
Although claim 1 was amended to additionally recite that the water absorbing particles are mineral pigments including silicate and aluminum silicates, the phrase “including silicate and aluminum silicates” renders this limitation unclear. It is not clear whether the claim is intended to require that the ink receiver coating is free from water absorbing particles in the form of silicate or aluminum silicate mineral pigments, or if this limitation is intended to require that the ink receiver coating is free from water absorbing particles in the form of any mineral pigments, where silicate and aluminum silicates are merely exemplary forms of such mineral pigments. In other words, it is not clear whether the claim encompasses embodiments in which the ink receiver coating contains water absorbing particles which are mineral pigments other than silicate or aluminum silicates.
In looking to the paragraph [0021] of the substitute specification, the ink receiver coating is said to be preferably free from water-absorbing substances, where the water absorbing substances can comprise pigments, in particular minerals, like silicate or aluminum silicates, for example talc, clays, calcined clays, kaolin, silica. Paragraph [0052], in reference to Fig. 2b, describes an embodiment in which the inkjet receiver coating (4) comprises a water absorbing substance (5), preferably silica particles or kaolin or other aluminosilicate material. Based on this disclosure, the instant invention is understood to encompass embodiments in which the ink receiver coating contains water absorbing particles and in which the ink receiver coating is free from water absorbing particles. The water absorbing particles are defined generally as pigments, such as mineral pigments, and are defined more specifically as silicate or aluminum silicates, with examples including talc, clays, calcined clays, kaolin, and silica.
The current language of the claim, however, is unclear as to whether the claim (1) expressly excludes the presence of all water-absorbing mineral pigments, or (2) if only the exemplary silicate and aluminum silicate water-absorbing particles are excluded. For the purpose of applying prior art, the claim will be interpreted broadly in light of the specification as excluding silicate and aluminum silicates as water-absorbing mineral pigment particles from being present in the ink receiver coating.
Regarding claim 2, the limitation reciting “wherein the flocculant comprises a cationic metal salt chosen from the list consisting of CaCl2, MgCl2, CaBr2, MgBr2, CMA (Calcium Magnesium Acetate), NH4Cl, Calcium Acetate, ZrCl4, calcium nitrate, and Magnesium Acetate, or a mixture thereof” is indefinite in view of the limitation of claim 1 reciting “wherein the ink receiver coating is free from water absorbing particles; wherein the water absorbing particles are mineral pigments including silicate and aluminum silicates.”
As explained above with respect to claim 1, the current language of the independent claim is unclear as to whether the claim (1) expressly excludes the presence of all water-absorbing mineral pigments, or (2) if only the exemplary silicate and aluminum silicate water-absorbing particles are excluded. In the case of the first interpretation, it is not clear how the ink receiver coating can satisfy the limitation of claim 2 in which the ink receiver coating includes a flocculant selected from the claimed compounds, while simultaneously being free from all water-absorbing mineral pigment particles. Specifically, given that several of the cationic metal salt compounds listed in claim 2 fall within the scope of the term “mineral pigments”, it is not clear how the limitations in claims 1 and 2 can be simultaneously satisfied when any of the compounds recited in claim 2 are present.
As noted above, for the purpose of applying prior art, the aforementioned limitation in claim 1 will be interpreted to mean that the ink receiver coating is free from silicate and aluminum silicate compounds. Under this interpretation, the limitation in claim 2 is not considered to be indefinite because the flocculant compounds listed in claim 2 fall outside of the scope of the water absorbing particles which are expressly excluded by claim 1.
Regarding claims 3, 4, and 7-9, the claims are rejected based on their dependency on claims 1 and 2.
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, 2, 4, 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 prior to application of the ink receiving layers ([0075]-[0076]).
The ink receiving layer may include a first ink receiving layer (ink receiver coating) applied to a surface of the substrate and forming an outermost surface layer of the recording medium, 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].
With respect to the limitation requiring that the ink receiver coating is free from water absorbing particles which are mineral pigments including silicate and aluminum silicates, Nito et al. teaches that the first ink receiver layer may contain anionic inorganic particles such as wet silica particles ([0032]-[0033]). The wet silica particles, however, do not fall within the scope of the claimed silicate or aluminum silicate mineral pigments and are therefore not expressly excluded by the claim. Given that the first ink receiver taught by Nito et al. is free from silicate and aluminum silicate water absorbing particles, the reference satisfies the aforementioned limitation of the claimed invention as interpreted in light of the indefiniteness issues described above.
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 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].
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 3 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 2 above, and further in view of Schulz et al. (US 2004/0241349, previously cited).
Regarding claim 3, Nito et al. teaches all of the limitations of claim 2 above. Although Nito et al. teaches that the content of the polyvalent metal salt is set within a desired range relative to the content of the anionic inorganic particles and relative to the cationic polymer present in the first ink receiving layer in order to achieve an effect of improving the bleeding resistance and color development properties ([0054]-[0056]), the reference does not expressly teach a content of the polyvalent metal salt relative to the total dry weight of the first ink receiving layer.
However, in the analogous art of printable paper, Schulz et al. teaches an ink receiving medium 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 may include paper materials, and the pigment management system comprises a multivalent metal salt (cationic metal salt) that has coated or impregnated the substrate ([0020], [0028], [0036]). Schulz et al. teaches that the multivalent metal salt is believed to serve as a reagent to rapidly destabilize dispersants surrounding the pigment particles, such that the pigment particles coagulate or flocculate, wherein the salts coat the surfaces of the substrate and are resistant to physical removal once dried [0036]. Schulz et al. 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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the recording medium of Nito et al. by setting an amount of the cationic metal salt relative to the total dry weight of the ink receiver coating within the claimed range, as taught by Schulz et al., in order to ensure that the amount is sufficient to serve as a flocculant for immobilizing pigment particles on the substrate, thus improving the bleeding resistance and color development properties of the recording medium.
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).
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 5 and 7 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are overcome by the Applicant’s cancellation of claim 5 and by the amendment to claim 7.
However, in light of the amendments to claim 1, new issues under 35 U.S.C. 112(b) are presented above with respect to claims 1 and 2.
Response-Claim Rejections - 35 USC § 102
In light of the amendments to claim 1, the previous rejections under 35 U.S.C. 102 based on David et al. and Schulz et al. are withdrawn. However, the Applicant's arguments with respect to Nito et al. have been fully considered but they are not persuasive.
The Applicant argues on page 7 of the remarks filed May 26, 2026 that Nito teaches that ink receiving layers include wet silica, which is in contrast to claim 1 reciting that the ink receiver coating is “free from…mineral pigments.”
This argument is not persuasive, as the Applicant’s arguments are not commensurate in scope with the claim. In particular, claim 1 recites that the ink receiver coating is “free from water absorbing particles; wherein the water absorbing particles are mineral pigments including silicate and aluminum silicates”. As explained in the indefiniteness rejections above, the metes and bounds of this new limitation are unclear, in particular due to the phrase “including silicate and aluminum silicates”. Based on the interpretation set forth above, the first ink receiver layer taught by Nito et al. which includes anionic inorganic particles such as wet silica particles is interpreted as falling within the scope of the claimed invention, given that the claim is interpreted as excluding the presence of only silicate and aluminum silicate mineral pigments from the ink receiver coating.
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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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, 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
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