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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/24/2025 has been entered.
Response to Amendments
In response to the amendment received on 10/24/2025:
• Claims 1-2 are currently pending.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Kaeriyama et al. (US-20130050331-A1) (hereinafter referred to as “Kaeriyama”).
Regarding claim 1, Kaeriyama teaches an electron beam curable water-based ink-jet ink composition (see Kaeriyama at para. 0020 and 0204, teaching an ink which can be printed by an inkjet method; also see Kaeriyama at para. 0064 and 0240, teaching the ink may be cured by an electron-beam) comprising:
• a colorant, a resin emulsion, a water-soluble photopolymerizable monomer, and water, wherein the water-soluble photopolymerizable monomer comprises an acrylamide derivative (see Kaeriyama at para. 0020, 0078, 0117-0118, and 0122, teaching the ink as including a pigment, a compound A which preferably includes diethylacrylamide, water, and polymer particles, which may be in the form of an emulsion/latex);
• wherein the resin emulsion contains a polyurethane-based resin emulsion (see Kaeriyama at para. 0120, 0123, and 0128, teaching the polymer particles may be a water-insoluble polymer, and that the main chain backbone of the water-insoluble polymer may be polyurethane; thus, it necessarily follows that Kaeriyama teaches their resin emulsion may be “polyurethane-based” as claimed);
• wherein a content of the acrylamide derivative is 30 to 55% by mass in the electron beam curable water-based ink-jet ink composition (see Kaeriyama at para. 0079, teaching the content of the compound A (i.e., diethylacrylamide) to range from 0.5 to 40% by mass in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• wherein a content of the resin emulsion is 5.1 to 11% by mass in terms of a solid content in the electron beam curable water-based ink-jet ink composition (see Kaeriyama at para. 0173, teaching the solid content of the polymer particles in the ink to preferably range from 5 to 15% by mass; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 2, Kaeriyama teaches the electron beam curable water-based ink-jet ink composition according to claim 1 outlined above, wherein the water content is 40 to 75% by mass in the electron beam curable water-based ink-jet ink composition (see Kaeriyama at para. 0115, teaching the content of the water to range from 50 to 70% by mass).
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Ikoshi et al. (US-20150091973-A1) (hereinafter referred to as “Ikoshi”).
Regarding claim 1, Ikoshi teaches an electron beam curable water-based ink-jet ink composition (see Ikoshi at para. 0022, teaching an ink for inkjet recording containing water, a coated carbon black pigment, resin particles, and a water-soluble organic solvent; also see Ikoshi at para. 0175, teaching the ink may be cured by electron beam) comprising:
• a colorant, a resin emulsion, a water-soluble photopolymerizable monomer, and water, wherein the water-soluble photopolymerizable monomer comprises an acrylamide derivative (see Ikoshi at para. 0030, teaching the ink as including a carbon black pigment; also see Ikoshi at para. 0090, 0096, and 0098, teaching the ink as including resin particles, and that the resin particles may be in the form of an emulsion; also see Ikoshi at para. 0174, 0176, and 0178, teaching the ink to preferably include a water-soluble polymerizable compound, and that the polymerizable compound preferably includes a (meth)acrylamide compound; also see Ikoshi at para. 0170, teaching the ink as including water; also see Ikoshi at para. 0204, teaching the polymerizable compound may be incorporated singly);
• wherein the resin emulsion contains a polyurethane-based resin emulsion (see Ikoshi at para. 0094, teaching the resin particles may include polyurethane-based resins);
• wherein a content of the acrylamide derivative is 30 to 55% by mass in the electron beam curable water-based ink-jet ink composition (see Ikoshi at para. 0205, teaching the content of the polymerizable compound (i.e., the (meth)acrylamide compound) in the ink to range from 3 to 50 mass%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• wherein a content of the resin emulsion is 5.1 to 11% by mass in terms of a solid content in the electron beam curable water-based ink-jet ink composition (see Ikoshi at para. 0104, teaching the amount of the resin particles to range from 0.1 to 20% by mass, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 2, Ikoshi teaches the electron beam curable water-based ink-jet ink composition according to claim 1 outlined above, wherein the water content is 40 to 75% by mass in the electron beam curable water-based ink-jet ink composition (see Ikoshi at para. 0172, teaching the content of the water to range from preferably 50 to 70% by mass, which falls completely within the claimed range).
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue the Declaration submitted 10/24/2025 demonstrates the claimed invention as providing improving ejection stability, enhanced appearance, and superior resistance characteristics in printed matter (see Applicant’s Remarks at pg. 3 and 6 and the Declaration filed 10/24/2025 at pg. 2-3). Applicants argue examples 2a, 13a, and 13b in their declaration address the Examiner’s previous concerns regarding commensurate in scope issues and comparative difficulties between examples (see Applicant’s Remarks at pg. 4 and the Declaration filed 10/24/2025 at pg. 2-3).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
First, newly added examples 2a, 13a, and 13b do not address the Examiner’s previous concern regarding example 4. Example 4 has a urethane content of 1.7% (5.0 • 0.34 = 1.7%), which falls outside the claimed content range of 5.1 to 11% (see Table 1 of Applicant’s specification at para. 0063). However, example 4 still demonstrates superior results equivalent to examples 1, 2a, and 3, and even better results than examples 13a and 13b. Thus, doubt is raised as to the criticality of the claimed range of 5.1 to 11%, given that one example still demonstrates superior results despite not meeting the claimed urethane content.
Furthermore, newly added example 2a does not overcome the commensurate in scope issues presented previously. Many broad categories of polyurethanes exist, including: polyether polyurethanes, polycarbonate polyurethanes, polyester polyurethanes, and more. Applicants’ examples only use a single polyurethane, commercial product R-972 (see Applicant’s specification at para. 0061), and a “different” polyurethane in example 2a. Thus, at a minimum, Applicant’s alleged unexpected results only have support for those specific compounds, and not the broad category of polyurethanes the claim encompasses.
Moreover, to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II). Applicants only provide a single comparative example, comparative example 4, with a urethane content above the claimed range, e.g., 13.6% (40 • 0.34 = 13.6%) (see Applicant’s specification at pg. 19). However, as previously mentioned, comparative example 4 (as well as the other comparative examples) alter two variables relative to the inventive examples - the dimethylacrylamide content and the urethane content. Thus, the observed poorer results in the comparative examples may be a result of the differences in concentration of the acrylamide compound, rather than the differences in concentration of the polyurethane. Newly added examples 13a and 13b do not correct these comparative difficulties (examples 13a and 13b have dimethylacrylamide contents of 30%, which do not match any of the dimethylacrylamide contents in comparative examples 1-5). Thus, examples 13a and 13b do not address the issue previously mentioned by the Examiner, and as a result, doubt is still raised as to the criticality of the claimed urethane content range, particularly the upper limit of the range.
Next, Applicants argue neither Kaeriyama nor Ikoshi teach the alleged beneficial effects, and further argue Ikoshi teaches acrylic monomers with carboxyl groups are preferable and that none of the examples of Ikoshi use polyurethane-based particles (see the Declaration filed 10/24/2025 at pg. 3-4).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Applicants have not sufficiently demonstrated unexpected results, as previously outlined above. Accordingly, Kaeriyama and Ikoshi teach the claimed composition, regardless of whether they explicitly mention the claimed benefits purported by Applicants.
Moreover, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123(I). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). As such, one of ordinary skill in the art would have recognized polyurethane as a suitable resin in Ikoshi, as Ikoshi teaches as such for their composition in their disclosure (see Ikoshi at para. 0094).
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a potential amendment to overcome the current grounds of rejection. It is noted that this amendment is suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendment won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if such amendment is added (i.e., allowability is NOT guaranteed following the incorporation of such amendment). Lastly, Applicants may use all or none of the following suggestion – it is merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendment further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion (support found at para. 0020 and 0025 of Applicant’s specification):
“wherein the water-soluble photopolymerizable monomer comprises an acrylamide derivative,
wherein the acrylamide derivate is selected from the group consisting of (meth)acrylamide, N-hydroxyethyl acrylamide, and acryloyl morpholine,
wherein a glass transition temperature of the resin in the resin emulsion ranges from -30 °C to 30 °C,
wherein the resin emulsion consists of a polyurethane-based emulsion,
wherein a content of the acrylamide…”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731