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 .
2. This office action is responsive to the application Nº 19/018,190 filed on March 31st, 2025 in which claims 1-2, 23, 25-26, 30, 33 and 69-74 are pending and ready for examination.
Drawings
3. The examiner contends that the drawings submitted on 03/31/2025 are acceptable for examination proceedings.
Double Patenting
4. 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).
5. 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.
6. Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 27 of copending Application No. 19/001,500. This is a provisional statutory double patenting rejection since the claim directed to the same invention has not yet in fact been patented.
The Table below shows how the claim is anticipated:
Instant application Nº 19/018,190:
Copending application Nº 19/001,500:
1.
A method of printing comprising:
a. providing an intermediate transfer member (ITM) comprising a silicone-based release layer surface that is sufficiently hydrophilic to satisfy at least one of the following properties: (i) a receding contact angle of a drop of distilled water deposited on the silicone-based release layer surface is at most 600; and
(ii) a 10-second dynamic contact angle (DCA) of a drop of distilled water deposited on the silicone-based release layer surface is at most 108º;
b. providing an aqueous treatment formulation comprising:
i. at least 3%, by weight, of a quaternary ammonium salt having a solubility in water, at 25°C, of at least 5%;
ii. at least 1%, by weight, of at least one water soluble polymer having a solubility in water of at least 5% at 25°C; and
iii. a carrier liquid containing water, said water making up at least 65%, by weight of the aqueous treatment formulation;
the aqueous treatment formulation having the following properties:
i. a static surface tension within a range of 20 and 40 dynes/cm at 25°C;
ii. a 25°C dynamic viscosity that is at least 10 cP; and
iii. a 60°C evaporation load of at most 8:1, by weight;
c. applying the aqueous treatment formulation to the silicone-based release layer surface of the ITM to form thereon a wet treatment layer having a thickness of at most 0.8μm;
d. subjecting the wet treatment layer to a drying process to form a dried treatment film, from the wet treatment layer, on the silicone-based release layer surface;
e. depositing droplets of an aqueous ink onto the dried treatment film to form an ink image on the release layer surface of the silicone-based release layer surface;
f. drying the ink image to leave an ink-image residue on the silicone- based release layer surface; and
g. transferring the ink-image residue onto a printing substrate by pressured contact between the ITM and the printing substrate.
27.
A method of printing comprising:
a. providing an intermediate transfer member (ITM) comprising a silicone- based release layer surface that is sufficiently hydrophilic to satisfy at least one of the following properties: (i) a receding contact angle of a drop of distilled water deposited on the silicone-based release layer surface is at most 600; and
(ii) a 10- second dynamic contact angle (DCA) of a drop of distilled water deposited on the silicone-based release layer surface is at most 108 º
b. providing an aqueous treatment formulation comprising:
i. at least 3%, by weight, of a quaternary ammonium salt having a solubility in water, at 250C, of at least 5%;
ii. at least 1%, by weight, of at least one water soluble polymer having a solubility in water of at least 5% at 250C; and
iii. a carrier liquid containing water, said water making up at least 65%, by weight of the aqueous treatment formulation; the aqueous treatment formulation having the following properties:
i. a static surface tension within a range of 20 and 40 dynes/cm at 250C;
ii. a 250C dynamic viscosity that is at least 10 cP; and
iii. a 600C evaporation load of at most 8:1, by weight;
c. applying the aqueous treatment formulation to the silicone-based release layer surface of the ITM to form thereon a wet treatment layer having a thickness of at most 0.8μm;
d. subjecting the wet treatment layer to a drying process to form a dried treatment film, from the wet treatment layer, on the silicone-based release layer surface;
e. depositing droplets of an aqueous ink onto the dried treatment film to form an ink image on the release layer surface of the silicone-based release layer surface;
f. drying the ink image to leave an ink-image residue on the silicone-based release layer surface; and
g. transferring the ink-image residue onto a printing substrate by pressured contact between the ITM and the printing substrate.
7. 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).
8. A timely filed terminal disclaimer in compliance with 37 CFR 1.321© 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).
9. 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€ and 714.13.
10. 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.
11. Claims 1-2, 23, 25-26, 30, 33 and 69 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,203,199 to Landa et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are essentially directed to the same subject matter.
12. Claims 70-74 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 71, 72, and 76 of U.S. Patent No. 11,396,190 to Landa et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are essentially directed to the same subject matter.
The Table below shows how the claim is anticipated:
U.S. Patent Nº 11,396,190:
Instant application Nº 19/018,190:
71.
A printing system comprising:
a. an intermediate transfer member (ITM) comprising a flexible endless belt mounted over a plurality of guide rollers;
b. an image forming station configured to form ink images upon a surface of the ITM, first and second of the guide rollers being arranged upstream and downstream of the image forming station to define an upper run passing through the image forming station and a lower run;
b. an impression station through which the lower run of the ITM passes, the impression station being disposed downstream of the image forming station and configured to transfer the ink images from the ITM surface to substrate; and
d. a treatment station disposed downstream of the impression station and upstream of the image forming station for forming a uniform thin layer of a liquid treatment formulation onto the ITM surface at the lower run thereof, the treatment station comprising:
i. a coater for coating the ITM with the liquid treatment formulation; and
ii. a coating thickness-regulation assembly for removing excess liquid so as to leave only the desired uniform thin layer of treatment formulation, the coating thickness-regulation assembly comprising a rounded tip, wherein:
A. the rounded tip faces, and is disposed below, the ITM surface at the lower run; and
B. the ITM surface, at a location facing
the rounded tip, is downwardly urged towards the rounded tip.
B. the ITM surface, at a location facing the rounded tip, is downwardly urged towards the rounded tip.
70.
A printing system comprising:
a. an intermediate transfer member (ITM) comprising a flexible endless belt mounted over a plurality of guide rollers;
b. an image forming station configured to form ink images upon a surface of the ITM, first and second of the guide rollers being arranged upstream and downstream of the image forming station to define an upper run passing through the image forming station and a lower run;
c. an impression station through which the lower run of the ITM passes, the impression station being disposed downstream of the image forming station and configured to transfer the ink images from the ITM surface to substrate; and
d. a treatment station disposed downstream of the impression station and upstream of the image forming station for forming a uniform thin layer of a liquid treatment formulation onto the ITM surface at the lower run thereof, the treatment station comprising:
i. a coater for coating the ITM with the liquid treatment formulation; and
ii. a coating thickness-regulation assembly for removing excess liquid so as to leave only the desired uniform thin layer of treatment formulation, the coating thickness-regulation assembly comprising a rounded tip facing the ITM surface at the lower run.
73.
The system of claim 70, wherein the rounded tip is urged towards the ITM and/or vice versa.
74.
The system of claim 73, wherein the
rounded tip is urged towards the ITM surface
and/or vice versa by a backing roller having a soft outer surface.
72.
The system of claim 71, wherein the rounded tip is a tip of a doctor blade.
71.
The system of claim 70, wherein the rounded tip is a tip of a doctor blade.
76.
The system of claim 71 wherein a central axis of the rounded tip is oriented vertically and faces the ITM surface at a horizontally-oriented location thereof.
72.
The system of claim 71, wherein the doctor blade is oriented normal to the ITM surface.
Claim Rejections - 35 USC § 103
13. 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 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.
14. 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 of this title, 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.
15. Claims 70-72 are rejected under 35 U.S.C. 103 as being unpatentable over Asano et al. (US Pat. Nº 6,318,853), in view of Hori (US Pub. Nº 2009/0317555) and Kato (US Pat. Nº 5,683,841).
16. Regarding independent claim 70: Asano et al. disclosed a printing system (Col. 2, line 27; also see Fig. 1, reference 80) comprising:
a. an intermediate transfer member (ITM) comprising a flexible endless belt (Col. 2, line 26; also see Fig. 1, reference 13) mounted over a plurality of guide rollers (Fig. 1, references 11 and 12);
b. an image forming station configured to form ink images upon a surface of the ITM (Col. 2, lines 21-26; also see Fig. 1, reference 20), first and second of the guide rollers being arranged upstream and downstream of the image forming station to define an upper run passing through the image forming station and a lower run (Fig. 1, references 11 and 12 respectively, defining an upper run and a lower run of the ITM);
c. an impression station through which the lower run of the ITM passes, the impression station being disposed downstream of the image forming station and configured to transfer the ink images from the ITM surface to substrate (Col. 2, lines 36-41; also see Fig. 1, the transfer roller 16 for transferring the image to the substrate P in the lower run of the ITM); and
d. a treatment station disposed downstream of the impression station and upstream of the image forming station for forming a uniform thin layer of a liquid treatment formulation onto the ITM surface (Col. 2, lines 45-48; also see Fig. 1, references (30, 40) disposed downstream of the impression station 16 and upstream of the image forming station 20), the treatment station comprising:
i. a coater for coating the ITM with the liquid treatment formulation (Col. 3, lines 27-28; also see Fig. 1, reference 30); and
ii. a coating thickness-regulation assembly for removing excess liquid so as to leave only the desired uniform thin layer of treatment formulation (Col. 5, lines 18-24; also see Fig. 1, reference 40).
Asano et al. are silent about the treatment station being disposed at the lower run of the ITM and the coating thickness-regulation assembly comprising a rounded tip facing the ITM surface at the lower run.
Hori disclosed a similar invention with a printing system (Fig. 1), comprising an ITM (Fig. 1, reference 12), a printing station (Fig. 1, reference 10), a transfer station (Fig. 1, reference 26), wherein a treatment station for applying a treatment liquid is disposed at the lower run of the ITM ([0091], line 7; also see Fig. 1, reference 16); furthermore, Kato disclosed a coating thickness-regulation assembly comprising a vertically-oriented blade comprising a rounded tip facing a lower run of an ITM (Col. 23, lines 64-65 and Col. 4, line 6; also see Fig. 3, reference 13b).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hori and Kato with those of Asano et al. by providing the treatment station and a coating thickness-regulation assembly at a lower run of the ITM in order to pack the components of the printing system more compactly and reduce the size of the apparatus while achieving a uniform coating of the treatment liquid on the ITM.
17. Regarding claim 71: The combination of Asano et al., Hori and Kato disclosed the system of claim 70, wherein the rounded tip is a tip of a doctor blade (Kato, Fig. 3, reference 13b is a doctor blade).
18. Regarding claim 72: The combination of Asano et al., Hori and Kato disclosed the system of claim 71, wherein the doctor blade is oriented normal to the ITM surface (Kato, Fig. 3, reference 13b is oriented normal to the ITM 11).
Allowable Subject Matter
19. Claims 1-2, 23, 25-26, 30, 33 and 69 would be allowed, provided that the double patenting rejections are overcome.
20. Claims 73 and 74 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, provided that the double patenting rejection is overcome.
Conclusion
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAOVI M. AMEH whose telephone number is (571)272-4578. The examiner can normally be reached M-F: 9:00 AM - 6:00 PM.
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23. 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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/YAOVI M AMEH/Primary Examiner, Art Unit 2853
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