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 June 5, 2026 are entered into the file. Currently, claims 1-3 are amended; claim 4 is canceled; claims 5-16 are new; resulting in claims 1-3 and 5-16 pending for examination.
Claim Objections
Claims 3, 10, and 15 are objected to because of the following informalities: It is suggested to amend the limitation reciting “the binder comprises at least either of a polysaccharide and a disaccharide” to --the binder comprises at least one of a polysaccharide or a disaccharide-- in order to clarify the language of the claims. The suggested language more clearly sets forth that the binder comprises a polysaccharide, a disaccharide, or a combination thereof.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 5-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 8, and 13, the limitations reciting “a mass content of the sucrose fatty acid ester is at least 1.2 times greater than a mass content of the plant charcoal pigment” are considered new matter that is not adequately supported by the instant specification. In particular, although the instant specification provides support for the lower bound of the claimed range of “at least 1.2 times greater”, the phrase “at least” has no upper limit and thus encompasses embodiments that are not disclosed by the specification. See MPEP 2163.05(III).
On page 6 of the remarks filed June 5, 2026, the Applicant cites paragraphs [0054], [0056], [0058], and [0060], corresponding to Tables 1-4 in the as-filed specification, as providing support for claims 1, 8, and 13. In looking to the data provided in Tables 1-4, the inventive examples show embodiments in which the sucrose fatty acid ester is present in an amount of 3 mass% while the vegetable (plant) charcoal pigment is present in an amount of 2.5 mass%, resulting in a relative mass content of 1.2 (Ex. 1-6, 28-33). Examples 7-10 include the vegetable charcoal pigment at amounts of 2.5 mass%, 1.9 mass%, 3.1 mass%, and 4 mass%, respectively, thus resulting in relative mass contents between the sucrose fatty acid ester and the plant charcoal pigment of 2.5, about 1.58, about 0.97, and 0.75.
The instant specification therefore does not provide adequate support for an unbounded range with no upper limit, but does support a limitation to a relative mass content between the sucrose fatty acid ester and the plant charcoal pigment being within the range of 1.2 or more and 2.5 or less based on the data shown in Tables 1-4.
Regarding claims 6, 11, and 13, the limitations reciting “wherein the ink contains 27.3 mass % or more of water” (claims 6 and 11) and “An edible ink for inkjet printing, comprising: 27.3 mass% or more of water” (claim 13) are considered new matter that is not adequately supported by the instant specification. In particular, although the instant specification provides support for the lower bound of the claimed range of “27.3 mass% or more”, the phrase “at least” has no upper limit and thus encompasses embodiments that are not disclosed by the specification. See MPEP 2163.05(III).
On page 6 of the remarks filed June 5, 2026, the Applicant cites paragraphs [0054], [0056], [0058], and [0060], corresponding to Tables 1-4 in the as-filed specification, as providing support for claims 6, 11, and 13. In looking to the data provided in Tables 1-4, the inventive examples show embodiments in which the amount of water in the inkjet ink ranges from 4.6 mass% (Ex. 31) to 68.2 mass% (Ex. 1, 11, 27), where Ex. 30 also provides an example in which the ink contains 27.3 mass% water. Although the comparative examples include amounts of water greater than 68.2 mass%, these examples are not commensurate in scope with the claimed invention as they do not contain 1-propanol, 1-butanol, or 2-butanol at an amount within the claimed range. The instant specification therefore does not provide adequate support for an unbounded range with no upper limit, but does support a limitation to an amount of water being within the range of 27.3 mass% or more and 68.2 mass% or less based on the data shown in Tables 1-4.
Regarding claims 2-5, 7, 9, 10, 12, and 14-16, the claims are rejected based on their dependency on claims 1, 8, and 13.
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.
Claims 1, 3, 5-8, 10-13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP 2021-127395, machine translation via EPO provided).
Regarding claims 1, 5-8, 11-13, and 16, Takahashi et al. teaches an ink (edible ink) suitable for inkjet printing, particularly for marking the surface of oral products such as tablets, capsules, and foods, wherein the ink comprises titanium dioxide or iron(III) oxide (iron sesquioxide) as an edible pigment, a dispersion medium, and a surface tension modifier such as a sucrose fatty acid ester ([0001], [0013], [0024], [0027]-[0028]). The dispersion medium may be composed primarily of water, such that 40.0 parts by weight or more, or 50.0 parts by weight or more, of the liquid components of the ink is water [0024]. The dispersion medium may also include a water-soluble organic solvent, such as n-propanol (1-propanol) or iso-butanol (2-butanol), in an amount of 5.0 to 30.0 parts by weight of the ink solution so as to achieve a suitable viscosity for nozzle discharge ([0025]-[0026]). Takahashi et al. therefore teaches ranges for the content of water and organic solvent which overlap the claimed ranges. 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).
As noted above, Takahashi et al. teaches the edible pigment being titanium dioxide or iron(III) oxide (iron sesquioxide) ([0013]), where the ink is not said to include a pigment other than the above edible pigments and does not contain a plant charcoal pigment. The mass content of the sucrose fatty acid ester is therefore at least 1.2 times greater than a mass content of plant charcoal pigment in the ink (which is zero). The exemplary water-soluble organic solvents taught by Takahashi et al. include n-propanol (1-propanol) and iso-butanol (2-butanol), such that when these solvents are used, the ink does not contain ethanol or 1-butanol.
Regarding claims 3, 10, and 15, Takahashi et al. teaches all of the limitations of claims 1, 8, and 13 above and further teaches that the ink contains sodium alginate ([0016]), which corresponds to the claimed binder that comprises a polysaccharide. The sodium alginate is preferably included in an amount of 0.1 to 6.0 parts by weight, preferably 0.3 to 3.0 parts by weight, relative to 100 parts by weight of the inkjet ink in order to stably disperse the edible pigment [0021]. The sucrose fatty acid ester as a surface tension modifier can be included in an amount of 0.05 to 20.0 parts by weight in the ink, preferably 0.1 to 10.0 parts by weight, depending upon the required surface tension [0028].
The combined mass content of the sucrose fatty acid ester and the binder is therefore about 0.15 to 26.0 parts by weight, preferably 0.4 to 13.0 parts by weight, relative to the total mass of the inkjet ink, which overlaps or falls within the claimed ranges of 0.1 to 15 mass%. 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).
Claims 2, 9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP 2021-127395, machine translation via EPO provided) as applied to claims 1, 8, and 13 above, and further in view of Morikawa et al. (JP 2020-019906, machine translation via EPO provided).
Regarding claims 2, 9, and 14, Takahashi et al. teaches all of the limitations of claims 1, 8, and 13 above but does not expressly teach that the inkjet ink further comprises polypropylene glycol or glycerin as a humectant in an amount within the claimed range.
However, Morikawa et al. teaches an edible water-based inkjet ink comprising water as the main solvent and at least one colorant ([0027]-[0028]). The colorant may be an edible pigment such as iron(III) oxide, lake pigments, or the like [0030]. The solvent may include water and a water-soluble organic solvent such as isobutyl alcohol (2-butanol), n-propyl alcohol (1-propanol), or the like [0062]. The water-based ink may also contain other additives such as surface tension modifiers, wetting agents, and the like, wherein the wetting agent (humectant) may be propylene glycol or glycerin and may be added at an amount of 1% to 50% by mass in order to prevent clogging of the nozzles of the inkjet head and to control the viscosity of the ink composition ([0063], [0066]-[0067]).
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 inkjet ink taught by Takahashi et al. by including a humectant such as propylene glycol or glycerin at an amount within the claimed range, as taught by Morikawa et al., in order to appropriately control the viscosity of the ink composition and to prevent clogging of the nozzles of the inkjet head during printing. Moreover, it is noted that Morikawa et al. teaches a range for the amount of humectant which overlaps the claimed range. 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 Objections
The previous objections to claims 2 and 3 are overcome by the Applicant’s amendments to the claims in the response filed June 5, 2026.
Response-Claim Rejections - 35 USC § 102
Applicant’s arguments, see pages 7-10 of the remarks filed June 5, 2026, have been considered but are moot because they do not address the new combination of references being used in the rejections above. In light of the amendments to claim 1, the previous rejections based on Fukushiro et al., Huang et al., and Collins et al. are withdrawn, and Takahashi et al. is used to address the new combination of limitations.
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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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/Primary Examiner, Art Unit 1785
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