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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: transport mechanism, heating portion, bonding portion, recording portion, peeling portion and cleaning portion in claims 1 and 10. The Specification discloses that the transport mechanism may be a belt member provided around transport rollers, the heating portion is a heater, bonding portion is a first transport roller, recording portion is an ink jet head, peeling portion is a second transport roller and the cleaning portion comprises a pump, a water spray port and a water spray pipe.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto (Japanese Patent 2020-200120).
With regards to claim 10, Matsumoto discloses an ink jet textile printing apparatus (paragraph 1). While Matsumoto does not explicitly disclose the type of adhesive used, since the claims are directed to an apparatus and the adhesive is the material worked upon by the apparatus, the type of adhesive does not impart patentability to the claims as per MPEP 2115. Apparatus claims are examined in view of its structural limitations, not its functional limitations, as per MPEP 2114. Matsumoto discloses that the printing apparatus comprises:
A transport mechanism that bonds a fabric to an adhesive layer formed at a surface of a fabric transport member to transport the fabric (Figure 1 item 4)
A heating portion that heats the adhesive layer (Figure 1 item 14)
A bonding portion that bonds the fabric to the heated adhesive layer (Figure 1 item 8)
A recording portion that attached an ink composition to the fabric bonded to the adhesive layer using an ink jet head (Figure 1 item 2)
A peeling portion that peels off the recorded fabric from the adhesive layer (paragraph 29)
A cleaning portion that cleans the adhesive layer from which the fabric is peeled off with a cleaning solution containing water (Figure 1 item 10, paragraph 33)
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.
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(s) 1, 4 - 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2024/0042783) in view of Shimizu et al (Japanese Patent 2021169594).
With regards to claim 1, Watanabe teaches a method for producing a transfer sheet comprising jetting and aqueous adhesive liquid by an inkjet method where the aqueous adhesive liquid contains a resin A and a resin B (Abstract), where the resins are (meth)acrylic resin (paragraph 38). While Watanabe discloses that the adhesive is used in an inkjet method it does not disclose explicitly the ink jet textile printing apparatus as disclosed in the claim preamble. Yet, since the claim is directed to an adhesive composition and not to the printing apparatus, the limitations in the preamble only recite purpose or intended use of the composition, which is not considered a limitation and is of no significance to claim construction as per MPEP 2111.02.
Watanabe fails to explicitly disclose the adhesive force of the adhesive layer bonded to a fabric.
Shimizu discloses an aqueous adhesive (paragraph 1) comprising of acrylic copolymers (paragraph 26), in the same field of endeavor as Watanabe, where Shimizu states that the adhesive force A at a room temperature of 23°C is considered to be good between 8 N/ 25 mm up to 10 N/ 25 mm (paragraphs 96 and 106) while the adhesive force B at -10°C is considered to be good between 4 N/ 25 mm up to 5 N/ 25 mm (paragraph 99 and 106), where the change rate of adhesive force per unit temperature represented by (A – B) / (23°C – (-10°C)) is between 0.12 N/°C·25 mm and 0.15 N/°C·25 mm. While Shimizu discloses the adhesive force at 23°C and -10°C, the change rate of adhesive force per unit temperature is considered inclusive for all temperatures, i.e. 23°C and 33°C.
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have the aqueous adhesive composition of Watanabe have an adhesive force such that the change rate of adhesive force per unit temperature is 0.05 N/°C·50 mm or more, as suggested by Shimizu. The rationale being that, as stated by Shimizu, these ranges are considered to be good adhesion as per standards JIS Z-0237 (paragraphs 96 and 99).
With regards to claim 4, the teachings of Watanabe and Shimizu are presented above. Additionally, Watanabe teaches that the (meth)acrylic resin includes a first (meth)acrylic resin including, as a constituent unit, a (meth)acrylic monomer where a glass transition temperature of a homopolymer is 40°C or higher (paragraphs 50, 51, 58 and 61).
With regards to claim 5, the teachings of Watanabe and Shimizu are presented above. Additionally, Watanabe teaches that the (meth)acrylic resin includes a second (meth)acrylic resin having a higher glass transition temperature than a glass transition temperature of a first (meth)acrylic resin (paragraph 33).
With regards to claim 6, the teachings of Watanabe and Shimizu are presented above. Additionally, Watanabe teaches that the mass ratio between a resin A and a resin B in an aqueous adhesive liquid is within a range from 50:50 to 90:10 (paragraph 67), indicating that the resin A or first resin has 50% to 90% by mass with respect to a total amount of the first resin and the second resin.
With regards to claim 7, the teachings of Watanabe and Shimizu are presented above. Additionally, Shimizu teaches that the adhesive composition comprises a tackifying resin selected from a group consisting of a rosin-based resin, terpene-based resin or other hydrocarbon resins (paragraph 51) that comprises 5.0% by mass or less with respect to a total amount of the adhesive composition (paragraph 25).
With regards to claim 8, the teachings of Watanabe and Shimizu are presented above. Additionally, Watanabe teaches that the aqueous adhesive comprises a content of an organic solvent ranges from 1 to 80% by mass with respect to a total amount of the aqueous adhesive composition (paragraph 73). While Watanabe does not explicitly state that the content is 5.0% by mass or less, since the claimed range overlaps the range as disclosed by Watanabe, a case of prima facie obviousness exists as per MPEP 2144.05 that states: “[I]n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).”
With regards to claim 9, the teachings of Watanabe and Shimizu are presented above. Additionally, Watanabe teaches an adhesion imparting method comprising attaching the aqueous adhesive composition as disclosed above to a fabric transport member of an ink jet textile printing apparatus to form an adhesive layer (paragraphs 6 – 8) as disclosed by Watanabe in view of Shimizu.
With regards to claim 11, the teachings of Watanabe and Shimizu are presented above. Additionally, Watanabe teaches fabric transport member of an ink jet textile printing apparatus comprising an adhesive layer of the aqueous adhesive composition (paragraphs 6 – 8) as disclosed by Watanabe in view of Shimizu.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (Japanese Patent 2020-200120) in view of Watanabe (US 2024/0042783) and Shimizu et al (Japanese Patent 2021169594).
With regards to claim 12, Matsumoto discloses an ink jet textile printing method (paragraph 1) comprising:
Bonding a fabric to an adhesive layer formed at a surface of a fabric transport member of an ink jet textile printing apparatus to transport the fabric (Abstract, paragraphs 1 and 12)
Heating the adhesive layer (Figure 1 item 14)
Bonding fabric to the heated adhesive layer (Figure 1 item 8)
Attaching an ink composition to the fabric bonded to the adhesive layer using an ink jet head (Figure 1 item 2)
Peeling off the recorded fabric from the adhesive layer (paragraph 29)
Cleaning the adhesive layer from which the fabric is peeled off with a cleaning solution containing water (Figure 1 item 10, paragraph 33)
Matsumoto fails to explicitly disclose that the adhesive used is an aqueous adhesive composition as disclosed in claim 1.
Watanabe teaches a method for producing a transfer sheet comprising jetting and aqueous adhesive liquid by an inkjet method (Abstract), in the same field of endeavor as Matsumoto, where the aqueous adhesive liquid contains a resin A and a resin B (Abstract) and the resins are (meth)acrylic resin (paragraph 38).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have used an aqueous adhesive comprising (meth)acrylic resin, as suggested by Watanabe, in Matsumoto’s method. The rationale being that, as stated by Watanabe, it provides an adhesive that has an appropriate balance between the adhesion to a transfer target object and the strength of the adhesive layer in the transferred product to reduce the stickiness on the transfer target object (paragraphs 4 and 21).
Matsumoto and Watanabe fail to explicitly disclose the adhesive force of the adhesive layer bonded to a fabric.
Shimizu discloses an aqueous adhesive (paragraph 1) comprising of acrylic copolymers (paragraph 26), in the same field of endeavor as Watanabe, where Shimizu states that the adhesive force A at a room temperature of 23°C is considered to be good between 8 N/ 25 mm up to 10 N/ 25 mm (paragraphs 96 and 106) while the adhesive force B at -10°C is considered to be good between 4 N/ 25 mm up to 5 N/ 25 mm (paragraph 99 and 106), where the change rate of adhesive force per unit temperature represented by (A – B) / (23°C – (-10°C)) is between 0.12 N/°C·25 mm and 0.15 N/°C·25 mm. While Shimizu discloses the adhesive force at 23°C and -10°C, the change rate of adhesive force per unit temperature is considered inclusive for all temperatures, i.e. 23°C and 33°C.
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have the aqueous adhesive composition of Watanabe to be used in Matsumoto’s method to have an adhesive force such that the change rate of adhesive force per unit temperature is 0.05 N/°C·50 mm or more, as suggested by Shimizu. The rationale being that, as stated by Shimizu, these ranges are considered to be good adhesion as per standards JIS Z-0237 (paragraphs 96 and 99).
Claim Objections
Claims 2 and 3 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art made of record does not teach or suggest an aqueous adhesive composition where the adhesive force of an adhesive layer at 23°C is 0.5 to 2.0 N/50 mm and a difference between a loss elastic modulus G'23 at 23°C and a loss elastic modulus G'33 at 33°C is 3000 Pa to 10,000 Pa.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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