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 .
Double Patenting
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.
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Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 19/015476 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoda et al. (# US 2022/0073772).
Yoda et al. discloses:
1. An inkjet ink (see Abstract) comprising:
a colorant (pigment: [0058]-[0073]);
a binder resin ([0080]-[0081]; [0126]-[0129]);
water ([0144]); and
an organic solvent S ([0088]-[0097]),
wherein the amount of the water is in a range from 3.0% by mass to 10.0% by mass, relative to the total amount of the ink (see Examples),
the organic solvent S includes an organic solvent A with a boiling point of 150° C. or higher and lower than 200° C., in an amount of 90.0% by mass or more, relative to the total amount of the organic solvent S ([0088]-[0095]), and
the organic solvent A includes a water-soluble organic solvent B with a boiling point of 150° C. or higher and lower than 200° C., in an amount of 50.0% by mass or more, relative to the total amount of the organic solvent S ([0092]).
2. The inkjet ink according to claim 1, wherein the water-soluble organic solvent B includes a water-soluble organic solvent Bx having a boiling point of 150° C. or higher and lower than 200° C ([0092]).
3. The inkjet ink according to claim 2, wherein the amount of the water-soluble organic solvent Bx is 75.0% by mass or more, relative to the total amount of the water-soluble organic solvent B (see Examples).
4. The inkjet ink according to claim 1, wherein the binder resin includes a (meth)acrylic resin ([0126]-[0128]).
5. An inkjet ink (see Abstract) comprising:
a colorant (pigment: [0058]-[0073]);
a binder resin ([0080]-[0081]; [0126]-[0129]);
water ([0144]); and
an organic solvent S ([0088]-[0097]),
wherein the amount of the water is in a range from 3.0% by mass to 10.0% by mass, relative to the total amount of the ink (see Examples),
the organic solvent S includes an organic solvent A with a boiling point of 150° C. or higher and lower than 200° C., in an amount of 90.0% by mass or more, relative to the total amount of the organic solvent S ([0088]-[0095]), and
assuming that the amount of the water, relative to the total amount of the ink, is W % by mass, that a viscosity a (mPa.Math.s) is a viscosity at 23° C. of a mixture Ma of the organic solvent S and water in which a mass ratio between the organic solvent S and the water (organic solvent S:water) is 99:1, and that a viscosity b (mPa.Math.s) is a viscosity at 23° C. of a mixture Mb of the organic solvent S and water in which a mass ratio between the organic solvent S and the water (organic solvent S:water) is 100-W:W; then a ratio a/b between the viscosity a and the viscosity b is 0.95 or less (see Examples).
6. The inkjet ink according to claim 5, wherein the organic solvent A includes an organic solvent Ax having a boiling point of 150° C. or higher and lower than 200° C ([0088]-[0095]).
7. The inkjet ink according to claim 5, wherein the binder resin includes a (meth)acrylic resin ([0126]-[0128]).
The Examiner draws particular attention to the Applicant that "Yoda et al. does address a colorant, binder resin, solvents and water, it teaches a laundry list of possible colorant, binder resin, solvents and water. The format in which Yoda et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Yoda et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the colorant, binder resin, solvents and water from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377
Given that the Yoda et al. reference discloses a range of boiling point that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught ranges, including those presently claimed, to obtain a suitable composition. It is also noted that according to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276,205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclose by the prior art", see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990)
Yoda et al. explicitly did not discloses:
2. The inkjet ink according to claim 1, wherein the water-soluble organic solvent B includes a water-soluble organic solvent Bx having a Hansen solubility parameter (an HSP value) of 25.0 MPa1/2 or less.
6. The inkjet ink according to claim 5, wherein the organic solvent A includes an organic solvent Ax having a Hansen solubility parameter (an HSP value) of 25.0 MPa1/2 or less.
However, Yoda et al. discloses exactly same organic solvent and A and organic solvent B as applicant discloses in their own specification. The solubility parameter is property of the material, which constant to the material. Therefore, the solvent discloses by the Yoda et al. obviously have the water-soluble organic solvent B includes a water-soluble organic solvent Bx having a Hansen solubility parameter (an HSP value) of 25.0 MPa1/2 or less & the organic solvent A includes an organic solvent Ax having a Hansen solubility parameter (an HSP value) of 25.0 MPa1/2 or less.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoda et al. (# US 2022/0073772) in view of Urano et al. (# US 2020/0276850).
Yoda et al. discloses;
8. An inkjet ink set comprising the inkjet ink according to claim 1 (see Examples).
10. An inkjet ink set comprising the inkjet ink according to claim 5 (see Examples).
Yoda et al. explicitly did not discloses:
8. An inkjet ink set comprising a pretreatment liquid including an aggregating agent, and water in an amount of more than 10.0% by mass, relative to the total amount of the pretreatment liquid.
9. The inkjet ink set according to claim 8, wherein the aggregating agent includes at least one selected from the group consisting of a polyvalent metal salt and a cationic water-soluble resin.
10. An inkjet ink set comprising a pretreatment liquid including an aggregating agent, and water in an amount of more than 10.0% by mass, relative to the total amount of the pretreatment liquid.
11. The inkjet ink set according to claim 10, wherein the aggregating agent includes at least one selected from the group consisting of a polyvalent metal salt and a cationic water-soluble resin.
Urano et al. teaches the to have a high quality bleed free printed image,
8. An inkjet ink set comprising a pretreatment liquid including an aggregating agent, and water in an amount of more than 10.0% by mass, relative to the total amount of the pretreatment liquid ([0044]-[0051]; see Examples).
9. The inkjet ink set according to claim 8, wherein the aggregating agent includes at least one selected from the group consisting of a polyvalent metal salt ([0044]-[0048]) and a cationic water-soluble resin ([0049]-[0051]).
10. An inkjet ink set comprising a pretreatment liquid including an aggregating agent, and water in an amount of more than 10.0% by mass, relative to the total amount of the pretreatment liquid ([0044]-[0051]; see Examples).
11. The inkjet ink set according to claim 10, wherein the aggregating agent includes at least one selected from the group consisting of a polyvalent metal salt ([0044]-[0048]) and a cationic water-soluble resin ([0049]-[0051]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the pretreatment liquid of Urano et al. to the ink composition and printing method of Yoda et al. in order to have the bleed free high quality printed image.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Tsuru et al. (# US 2006/0030640) discloses a water dispersion for ink-jet printing comprising colorant-containing water-insoluble graft polymer particles in which the water-insoluble graft polymer contains a main chain which is a polymer chain containing a constitutional unit derived from a salt-forming group-containing monomer (a) and a constitutional unit derived from an aromatic ring-containing (meth)acrylate monomer (b), and a side chain which is a polymer chain containing a constitutional unit derived from a hydrophobic monomer (c); a water-based ink for ink-jet printing using the water dispersion; and an ink-jet printing method using the water-based ink. In accordance with the present invention, printed images or characters formed on a coated paper are excellent in gloss, image clarity and image clarity property including both of the image clarity and the gloss, and printed images or characters formed on an ordinary paper exhibit a high print density (see Abstract).
(2) Moudry et al. (# US 2005/0160938) discloses a liquid ink for developing electrophotography images comprises: a) a carrier liquid having a Kauri-Butanol number less than 30; b) a pigment having at least one acid group or at least one acid group; c) optionally a grafted co-polymer comprising a (co)polymeric steric stabilizer covalently bonded to a thermoplastic (co)polymeric core that is insoluble in the carrier liquid, wherein the grafted co-polymer is derived from at least a polymerizable organic compound; d) a dispersant having, respectively, at least an amine group or at least one acid group to form an acid-base pigment-dispersant system or a base-acid pigment-dispersant system, wherein the mole ratio of the amine group to the acid group is between 0.3 and 1.5 in the base-acid pigment-dispersant system and the mole ratio of the acid group to the base group in the acid-base pigment dispersant system is between 0.3 and 1.5; and d) a positive charge director with the acid-base pigment-charge dispersant system and a negative charge director with the base-acid pigment charge-dispersant system (see Abstract).
(3) Yamazaki et al. (# US 2018/0030298) discloses an aqueous ink jet-use ink composition which includes a binder resin, a surfactant, a pigment, a solvent and, if necessary, a pigment-dispersing resin. The binder resin has a glass transition temperature of 40-90° C. and is dispersed as resin emulsion particles. The value of A, which is defined as the sum of the product of the acid value and the content in terms of parts by mass of the binder resin and pigment-dispersing resin, is 0-200 mg KOH/g. The surfactant is a non-ionic compound represented by formula (1), and the content of solvents having boiling points of 250° C. or higher is less than 5 parts by mass relative to 100 parts by mass of the ink composition (see Abstract).
(4) Kono et al. (# US 2023/0365811) discloses a pigment composition having outstanding dispersion characteristics, weather resistance, and heat resistance, has favorable storage stability, minimizes fading over time in a basic atmosphere, and contains isoindoline compounds (see Abstract).
(5) Furukawa et al. (# US 2019/0276692) discloses an image forming method comprises applying a white ink containing a metal oxide having a number average particle diameter of from 200 to 700 nm and a polymer to a recording medium and applying a glittery ink containing a glittery pigment to an area on the recording medium where the white ink has been applied (see Abstract).
(6) Murata et al. (# US 2017/0235225) discloses A coloring composition including: (A) a colorant; (C) a binder resin; (D) a polymerizable compound; and (F) a solvent, wherein the colorant (A) comprises (A1) a pigment having a structure represented by the following Formula (X), and (A2) an isoindoline pigment, and wherein the solvent (F) comprises (G) at least one member selected from the group consisting of an alcohol, a ketone, and an alkyl lactate (see Abstract).
(7) Kawakami et al. (# US 2010/0091055) discloses An inkjet recording method recording on an inkjet recording medium having an ink receiving layer containing at least inorganic microparticles, a water-soluble resin and a crosslinking agent, by ejecting (1) an inkjet ink containing at least a dye, water and a water-soluble organic solvent, wherein 50% by weight or more of the water-soluble organic solvent is a solvent which gives a swelling ratio of 3% or less for the water-soluble resin crosslinked by the crosslinking agent, using (2) an image forming apparatus equipped with an ink circulating apparatus including: (i) a plurality of liquid droplet ejecting elements, (ii) a common flow channel, and (iii) a common circulation channel, wherein the inkjet ink is supplied from the common flow channel to the plurality of liquid droplet ejecting elements, and circulates to the common circulation channel. The inkjet recording method gives a sharp and high-density printing, and is excellent in ejection stability (see Abstract).
(8) Takahashi et al. (# US 2016/0046816) discloses an aqueous ink for inkjet which has superior printability to typical printing media, particularly media having high glossiness, such as coated paper, art paper, and vinyl chloride sheets, and which is capable of forming a high quality image by printing. An aqueous ink for inkjet, comprising a pigment, a pigment dispersing resin, an organic solvent, and water, wherein: the organic solvent contains (A) a water-soluble organic solvent having a boiling point of 100° C. or higher and 180° C. or lower, and (B) an organic solvent having a boiling point of 200° C. or higher and 280° C. or lower, and having a surface tension of 20 mN/m or more and 30 mN/m or less (see Abstract).
(9) Okazaki et al. (# US 2016/0215153) discloses an ink jet aqueous ink including a pigment; a resin dispersant; a fluorinated surfactant; and a water-soluble organic solvent. The pigment comprises quinacridone pigments comprising C.I. Pigment Violet 19, Red 122, 202 or 209; solid solution pigments of two or more thereof; diketopyrrolopyrrole pigments comprising C.I. Pigment Red 254, 255 or 272; or C.I. Pigment Violet 23. The dispersant has an acid value of 150-200 mg KOH/g. The surfactant comprise a perfluoroalkyl ethylene oxide adduct having a C6 or lower perfluoroalkyl group. The solvent contains a water-soluble organic solvent A and B having a dielectric constant of 40.0 or more and 3.0-20.0, respectively. Content p of the pigment is 5.00 mass % or less. Content a of solvent A to content p is 2.0 or more. Content b of solvent B to content a is 0.6 or less. Content b to content f of the surfactant is 10.0 or more (see Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricardo Magallanes can be reached at 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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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/ Primary Examiner, Art Unit 2853
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