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 April 2, 2026 are entered into the file. Currently, claims 1, 3-5, and 10 are amended; claims 11-20 are withdrawn; resulting in claims 1-10 pending for examination.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 1-10 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 “the pretreatment composition comprising…a digital primer and filler including a crosslinker and a binder” is indefinite because the scope of the claimed “digital primer and filler” remains unclear.
As explained in the previous office action, it is not clear based on the language of the claim whether the phrase “a digital primer and filler” refers to a single component that is both a primer and a filler, or if this limitation is intended to require that the composition includes both a digital primer and a filler as two separate components. Although the claim was amended to recite that the digital primer and filler include a crosslinker and a binder, it remains unclear exactly what materials are encompassed by the phrase “a digital primer and filler”.
On page 7 of the remarks filed April 2, 2026, the Applicant submits that a person of ordinary skill in the art would understand the terms “digital primer” and “filler” to refer to substances generally designed to enhance ink absorption, coagulation, and/or vividness, citing paragraph [0066] of the instant specification. Applicant further submits that the instant specification provides a sufficient number of examples of constituents of the digital primer and filler such that it would be clear to a person of ordinary skill in the art what types of substances would and would not be defined as the digital primer and filler. This argument is not persuasive, as it is noted that paragraphs [0040] and [0074]-[0106] of the instant specification also indicate that the digital primer and filler is designed for use as a color base or as a white base. In particular, the digital primer may comprise calcium chloride to provide a white base or calcium nitrate to provide a color base [0040].
Paragraph [0067] of the specification discloses that the digital primer and filler may comprise, consist essentially of, or consist of a calcium compound, a binder, and a crosslinker. Based on this disclosure, the claimed “digital primer and filler” appears to necessarily include three components. While it is understood that the binder and crosslinker may serve the purpose of helping the ink coagulate when the ink is applied to the textile, as discussed in paragraph [0066], it is noted that the instant specification appears to indicate that the calcium compound is an essential component of the digital primer and filler which is required for the purpose of providing a white or color base. Moreover, it is not clear how the pretreatment composition is designed to improve a vibrancy of an ink-based graphic printed on the fabric if the pretreatment composition does not include a calcium compound as described in the present invention. In other words, the calcium compound (e.g., calcium chloride or calcium nitrate) is considered to be an essential component of the pretreatment composition which is necessary to adequately describe and to make and use the claimed invention. See MPEP 2172.01.
Absent further clarification from the Applicant, for the purpose of applying prior art, the claim limitations directed to the “digital primer and filler” will be interpreted as referring to a component of the pretreatment composition which includes a calcium compound, a binder, and a crosslinker, consistent with the disclosure in paragraph [0067] of the instant specification. Due to the indefiniteness of the current claim language, a scope of enablement rejection will not be made at this time but may be appropriate later in prosecution as the indefiniteness issues are addressed.
Regarding claims 2-10, the claims are rejected based on their dependency on claim 1.
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, and 10 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Zhou ‘764 (US 2018/0015764, previously cited).
Regarding claim 1, Zhou ’764 teaches a printable recording medium (100) comprising a base substrate (110; fabric) and a coating layer (120) that results from the application of a pre-treatment composition to at least one side, i.e., the image side (101; first surface), of the substrate ([0014], Fig. 1). The substrate may include any materials which can support the coating composition, such as natural materials (e.g., including cellulose fibers), synthetic materials, or non-fabric materials [0058].
The pre-treatment composition comprises aggregated nano-sized inorganic pigment particles, polymeric organic particles, an ink absorber, a polymeric binder, and a liquid carrier ([0006], [0053]). The pre-treatment composition may also contain other components or additives as necessary, such as cross-linking agents [0052]. The polymeric organic particles may be formed of linear polyethylene [0034]. The inorganic pigment particles may be metal oxide or complex metal oxide particles ([0021]-[0023]). The ink absorber may be a water-soluble divalent or multi-valent metal salt such as calcium chloride, calcium nitrate, or the like [0044]. The polymeric binder, crosslinking agent, ink absorber, and inorganic pigment particles are therefore taken together to correspond to the claimed digital primer and filler which includes a crosslinker, a binder, and a calcium compound.
Zhou ‘764 further teaches that a polysiloxane layer (hydrophobic silicon) may be formed at the particle surface of the inorganic pigment particles [0027]. The liquid carrier used to disperse or solubilize the coating composition components can include water [0053]. Although Zhou ‘764 does not specifically disclose that the water is filtered water, one of ordinary skill in the art would at once envisage the use of filtered water in the liquid carrier based on the disclosure that the liquid carrier includes water.
While it is acknowledged that all of the claimed physical properties are not explicitly recited by Zhou ‘764, the reference teaches a pre-treatment composition having a substantially identical formulation to that of the claimed invention. Therefore, the claimed physical properties, i.e., that the pretreatment composition is designed to improve a vibrancy of the ink-based graphic printed on the first surface of the fabric, would be inherently achieved by a pretreatment composition including all the claimed features/materials, in particular, a digital primer and filler including a calcium compound such as calcium carbonate or calcium nitrate.
Zhou ‘764 additionally teaches that the pre-treatment composition is formulated to interact with components of certain ink compositions, such that the pretreatment composition, when applied to a printable recording medium, will provide printed images (ink-based graphic) and articles that demonstrate excellent image quality, i.e., vivid color, high gamut, high degree of gloss, and high color density, as well as good bleed and coalescence performance ([0011]-[0012]), indicating that the vibrancy of ink-based graphics printed on the fabric substrate is improved by application of the pre-treatment composition.
Regarding claim 2, Zhou ‘764 teaches all of the limitations of claim 1 above and further teaches that the pre-treatment composition may be applied to both opposing sides (first surface and second surface) of the substrate ([0014], Fig. 2).
Regarding claim 4, Zhou ‘764 teaches all of the limitations of claim 1 above. As noted above, the polymeric binder, crosslinking agent, ink absorber, and inorganic pigment particles are together taken to correspond to the claimed digital primer and filler. Zhou ‘764 teaches that the pre-treatment composition contains from about 10 wt% to about 95 wt% of the inorganic pigment particles, preferably from about 40 wt% to about 85 wt% [0020]. The total amount of additives, such as cross-linking agents can be from about 0.1 wt% to about 10 wt% [0052]. The ink absorber can be present in an amount of from about 0.05 to about 5 dry parts based on 100 parts of the inorganic pigment particles [0040]. The polymeric binder can be present in an amount of from about 2 to about 25 dry parts based on 100 parts of the inorganic pigment particles [0046]. The concentration of the digital primer and filler composed of the polymeric binder, crosslinking agent, inorganic pigment particles, and ink absorber therefore falls within the scope of the broadly claimed range of “at least about 50% by volume relative to the pre-treatment composition as a whole”.
Regarding claim 10, Zhou ‘764 teaches all of the limitations of claim 1 above. As explained above, while it is acknowledged that all of the claimed physical properties are not explicitly recited by Zhou ‘764, the reference teaches a pre-treatment composition having a substantially identical formulation to that of the claimed invention. Therefore, the claimed physical properties, i.e., that application of the pretreatment composition increases a vibrancy of the graphic by at least about 50%, would be inherently achieved by a pretreatment composition including all the claimed features/materials.
Zhou ‘764 additionally teaches that the pre-treatment composition is formulated to interact with components of certain ink compositions, such that the pretreatment composition, when applied to a printable recording medium, will provide printed images (ink-based graphic) and articles that demonstrate excellent image quality, i.e., vivid color, high gamut, high degree of gloss, and high color density, as well as good bleed and coalescence performance ([0011]-[0012]), indicating that the vibrancy of ink-based graphics printed on the fabric substrate is improved by application of the pre-treatment composition.
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.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou ‘764 (US 2018/0015764, previously cited) as applied to claim 1 above.
Regarding claim 5, Zhou ‘764 teaches all of the limitations of claim 1 above. Although Zhou ‘764 teaches that a polysiloxane layer (hydrophobic silicon) may be formed at the particle surface of the inorganic pigment particles ([0027]), the reference does not expressly teach a concentration of the polysiloxane relative to the pretreatment composition as a whole.
Zhou ‘764 does, however, further teach that by modifying the surface of the inorganic nanoparticles with the organic polysiloxane compound, the stability of the inorganic particles can be improved [0027]. It would, therefore, have been obvious to one of ordinary skill in the art to modify the pre-treatment composition of Zhou ‘764 by forming the polysiloxane layer at a thickness sufficient to stabilize the inorganic particles, such that the concentration of polysiloxane falls within the claimed range, in order to form a stable dispersion of inorganic particles in the pretreatment composition.
Regarding claim 6, Zhou ‘764 teaches all of the limitations of claim 1 above. Although Zhou ‘764 teaches that the liquid carrier of the pre-treatment composition includes water ([0053]), the reference does not expressly teach that the water is substantially devoid of chlorine. It would, however, have been obvious to one of ordinary skill in the art to use water which is substantially devoid of chlorine as the liquid carrier in the pre-treatment composition, given that such purified or deionized water is commonly used in such fabric treatment compositions. Furthermore, since chlorine is known to degrade many natural and synthetic fibers, it would be obvious to one of ordinary skill in the art to minimize the amount of chlorine in the pretreatment composition so as not to ruin the fabric during treatment.
Regarding claim 7, Zhou ‘764 teaches all of the limitations of claim 1 above but does not expressly teach that the fabric is provided in the form of a garment as claimed. Zhou ‘764 does, however, teach that the substrate of the printable media may be any substrate which can support the pretreatment composition, such as natural materials including cellulose fibers, synthetic materials including synthetic polymeric fibers, or non-fabric materials ([0056], [0058]).
It would, therefore, have been obvious to one of ordinary skill in the art to use the fabric recording medium taught by Zhou ‘764 to form a garment such as a shirt, shorts, or the like, given that the reference teaches the printable medium being in the form of a printable fabric. One of ordinary skill in the art would be motivated to use the printable medium to form a garment as claimed in order to produce a printed garment with excellent image quality due to the use of the pretreatment composition.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou ‘764 (US 2018/0015764, previously cited) as applied to claim 1 above, and further in view of Iraqi et al. (US 2018/0320016, previously cited).
Regarding claim 3, Zhou ‘764 teaches all of the limitations of claim 1 above and further teaches that the polymeric organic particles (polyethylene) are present in the pre-treatment composition in an amount of from about 5 to about 20 parts based on 100 parts of the inorganic pigment particles, wherein the pre-treatment contains from about 10 wt% to about 95 wt%, preferably from about 40 wt% to about 85 wt% of inorganic particles by total weight of the pre-treatment composition ([0020], [0036]). The concentration of the polymeric organic particles therefore ranges from about 0.05 wt% to about 8.5 wt%, which overlaps or falls within the broadly claimed range of “at least about 0.5% by volume relative to the pretreatment composition as a whole”. 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).
Although Zhou ‘764 teaches that the polymeric organic particles may be formed of linear polyethylene, where the organic particles can be in any polymeric bond chain structure such as poly-wax, or the like ([0034], [0039]), the reference does not specifically teach that the polyethylene is provided in the form of a high-density polyethylene.
However, in the analogous art of fabric pretreatment compositions, Iraqi et al. teaches an immobilizing composition that is capable of causing immobilization of an ink composition upon contact on the surface of a substrate in order to improve the wash-fastness, rub-resistance and general mechanical permanence of printed substrates, such as textiles ([0018], [0093]). Iraqi et al. teaches that polyethylene wax is commonly used in the textile industry to improve the hand-feel and to impart higher rub-resistance to fabrics [0007]. In particular, the wax may be selected from a low density polyethylene (LDPE), a high density polyethylene (HDPE), an ethylene copolymer wax, or the like [0048].
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 pretreatment composition of Zhou ‘764 by selecting a high density polyethylene as the polyethylene organic particles, as suggested by Iraqi et al., given the art-recognized suitability of HDPE for use as such, in particular, for the purpose of improving the rub-resistance of the printed fabric.
Regarding claim 8, Zhou ‘764 teaches all of the limitations of claim 1 above. As noted above, Zhou ‘764 teaches that the pre-treatment composition comprises aggregated nano-sized inorganic pigment particles, polymeric organic particles, an ink absorber, a polymeric binder, and a liquid carrier, and may contain additives such as cross-linking agents ([0006], [0052]-[0053]). A polysiloxane layer (hydrophobic silicon) may be formed at the particle surface of the inorganic pigment particles [0027]. The polymeric binder, crosslinking agent, ink absorber, and inorganic pigment particles together fall within the scope of the claimed digital primer and filler which includes a crosslinker, a binder, and a calcium compound. Therefore, the pretreatment composition taught by Zhou ‘764 consists of the polymeric organic particles (polyethylene), the inorganic pigment particles, ink absorber, polymeric binder, and crosslinking agent (digital primer and filler), the polysiloxane (hydrophobic silicon), and the liquid carrier (filtered water).
Although Zhou ‘764 teaches that the polymeric organic particles may be formed of linear polyethylene, where the organic particles can be in any polymeric bond chain structure such as poly-wax, or the like ([0034], [0039]), the reference does not specifically teach that the polyethylene is provided in the form of a high-density polyethylene.
However, in the analogous art of fabric pretreatment compositions, Iraqi et al. teaches an immobilizing composition that is capable of causing immobilization of an ink composition upon contact on the surface of a substrate in order to improve the wash-fastness, rub-resistance and general mechanical permanence of printed substrates, such as textiles ([0018], [0093]). Iraqi et al. teaches that polyethylene wax is commonly used in the textile industry to improve the hand-feel and to impart higher rub-resistance to fabrics [0007]. In particular, the wax may be selected from a low density polyethylene (LDPE), a high density polyethylene (HDPE), an ethylene copolymer wax, or the like [0048].
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 pretreatment composition of Zhou ‘764 by selecting a high density polyethylene as the polyethylene organic particles, as suggested by Iraqi et al., given the art-recognized suitability of HDPE for use as such, in particular, for the purpose of improving the rub-resistance of the printed fabric.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou ‘764 (US 2018/0015764, previously cited) as applied to claim 1 above, and further in view of Liu et al. (US 6,126,698, previously cited).
Regarding claim 9, Zhou ‘764 et al. teaches all of the limitations of claim 1 above. Although Zhou ‘764 et al. further teaches that the substrate may include natural materials (e.g., cellulose fibers) ([0058]), the reference does not teach that the textile is treated with a biopolishing composition as claimed.
Liu et al. teaches methods for treating cellulose-containing fabrics to achieve better fabric handle, appearance, and pilling resistance, using continuous or semi-continuous biopolishing processes (col 1, Ln 10-15). The biopolishing process involves contacting the fabric with an aqueous bulk solution (biopolishing composition) comprising a cellulase (col 2, Ln 12-20). The bulk solution may further comprise other components, such as surfactants, bleaching agents, antifoaming agents (dye auxiliary), builder systems, and the like, that enhance the biopolishing process and/or provide superior effects related to dyeability and/or wettability, where exemplary builder systems include fatty acids or chelating agents such as ethylenediamine tetramethylene phosphonic acid (col 5, Ln 10-17; col 7, Ln 9-16). The aqueous bulk solution may also contain other components, such as dyes and dye auxiliaries, that enable the biopolishing process to be carried out simultaneously with scouring and/or dyeing (col 8, Ln 33-44).
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 fabric substrate of Zhou ‘764 et al. by applying a biopolishing composition containing a dyeing auxiliary, an acid, and a cellulase thereto, as taught by Liu et al., in order to improve the fabric handle, appearance, and pilling resistance, as well as the dyeability and/or wettability of the textile.
Response to Arguments
Response-Claim Objections
The previous objections to claims 3-5 are overcome by the Applicant’s amendments to the claims in the response filed April 2, 2026.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claim 10 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 amendments to claim 10 in the response filed April 2, 2026. However, the previous rejection of claim 1 is maintained and modified in the office action above in light of the amendments to claim 1, as the limitation directed to the digital primer and filler remains indefinite.
Response-Claim Rejections - 35 USC § 102
The Applicant’s arguments, see pages 8-11 of the remarks filed April 2, 2026, have been considered but are moot. In light of the amendments to claim 1, the previous rejections under 35 U.S.C. 102 based on Zhou ‘786 and Iraqi et al. are withdrawn for failing to teach the new combination of limitations set forth in claim 1.
However, the Applicant’s arguments on page 12 of the remarks directed to Zhou ‘764 have been fully considered but they are not persuasive. In particular, the Applicant argues that Zhou ‘764 is silent as to the presence of a digital primer or a crosslinker, and that Zhou ‘764 fails to teach a pretreatment composition that is designed to improve a vibrancy of an ink-based graphic printed on the first surface of the fabric.
These arguments are not persuasive. In light of the amendments to claim 1, the prior art rejections based on Zhou ‘764 have been modified in the office action above to address the new limitations directed to the digital primer and filler including a crosslinker and a binder and requiring that the pretreatment composition is designed to improve a vibrancy of an ink-based graphic printed on the first surface of the fabric. As explained in the indefiniteness rejections above, the limitations directed to the claimed digital primer and filler appear to be omitting an essential element of the claim – namely, that the digital primer and filler includes a calcium compound in addition to including a binder and a crosslinker (see paragraph [0067] of the as-filed specification).
Nevertheless, Zhou ‘764 teaches all of these features. In particular, Zhou ‘764 teaches that the pre-treatment composition can contain a cross-linking agent, a polymeric binder, and an ink absorber compound such as calcium chloride, calcium nitrate, or the like ([0044], [0046], [0052]). As explained above, Zhou ‘764 teaches a pretreatment composition having a substantially identical formulation to that of the claimed invention, and thus is considered to inherently achieve the claimed property of improving a vibrancy of an ink-based graphic printed on a treated surface of a fabric.
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.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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