DETAILED ACTION
Response to Amendments
In response to the amendment received on 06/09/2026:
• Claims 1-20 are currently pending.
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
It is noted that all explicit definitions mentioned in the Non-Final mailed 02/09/2026 are incorporated herein and treated as set forth previously.
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 1-20 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.
In claim 1, the term “the acid dye” and “the basic dye” lack antecedent basis. There is no previous mention of an acid dye or a basic dye in the claims. To correct, the Examiner suggests amending the claim as follows: “…colored by a salt-forming dye, which is a salt-forming body of an acid dye and a basic dye, wherein the acrylic resin particle is formed…” For the purposes of examination, the Examiner is interpreting the claim as if it was written like in the above suggestion.
Moreover, in claim 20, the term “the salt-forming body” lacks antecedent basis. There is no previous mention of a salt-forming body in the claims. To correct, the Examiner suggests making the same amendment as suggested for claim 1 above. For the purposes of examination, the Examiner is interpreting claim 1 as if it was written like in the above suggestion.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
With respect to independent claim 1, the prior art fails to teach or suggest an aqueous ink composition, comprising: a colored resin particle comprising an acrylic resin particle colored by a salt-forming dye, wherein the acrylic resin particle is formed from a polymer of at least a carboxyl group-containing vinyl monomer having a solubility in water of 10 mass% or less, and an ester monomer of acrylic acid or methacrylic acid and a linear alcohol or a cyclic alcohol having 2 to 18 carbons, and wherein the colored resin particle comprises a reaction product of the carboxyl group-containing vinyl monomer, the ester monomer, the acid dye, and the basic dye. The closest prior art includes Haga (JP-2017002121-a) in view of Shimizu (JP-2016125052-A) and Ogura (JP-2018002860-A).
While modified Haga teaches most of the claimed limitations (see Non-Final Rejection dated 02/09/2026 at pg. 3-5), modified Haga fails to explicitly teach the colored resin particle as comprising a reaction product of the carboxyl group-containing vinyl monomer, the ester monomer, the acid dye, and the basic dye. Haga teaches their dye to be mixed with the pre-formed polymer, rather than being polymerized together with the monomer components (see Haga at pg. 3, para. 7-8 and pg. 7, para. 1-4). In other words, there is no teaching or suggestion in Haga to form a reaction product of the claimed components. Moreover, there is no teaching or suggestion to include an acid and a basic dye together during the monomer synthesis, nor a reasonable expectation of success that such a reaction product would suitably function with the claimed monomers in the ink of Haga. Therefore, the claims overcome Haga.
Furthermore, Applicant’s Affidavit dated 06/09/2026 demonstrates evidence that a reaction product between the claimed monomers, an acid dye, and a basic dye has distinct structural characteristics relative to a pre-formed salt-forming dye that is mixed with a pre-formed resin emulsion. In other words, in the case that the newly amended claimed limitation regarding the “reaction product” is categorized as a “product-by-process” limitation, Applicant’s Affidavit provides convincing support that the claimed limitation generates a distinct structural difference relative to Haga.
To elaborate, in the Affidavit, inventive Example 14 is composed of Acid Yellow 42 and Basic Violet 1, which are polymerized with the claimed monomers to form a reaction product (see Affidavit dated 06/09/2026 at pg. 2-3). By contrast, Comparative Example 16, which is analogous to the ink in Haga, is composed of a pre-formed salt-forming dye (VALIFAST VIOLET 1701, which is a salt-forming dye of Acid Yellow 42 and Basic Violet 1) that is mixed with a pre-formed acrylic resin (see Affidavit dated 06/09/2026 at pg. 3). Inventive Example 14 shows good dispersion and a homogenous ink composition relative to Comparative Example 16, which failed to produce a homogenous ink. Examples 14 and 16 are nearly identical - including the same monomer components and the same concentrations - with the only differences being the differences in the type of dye and its order of addition. Consequently, Applicant’s Affidavit provides evidence that the claimed colored resin particle generates distinct structural features relative to a colored resin particle like that produced by Haga.
Additionally, in general, one of ordinary skill in the art would expect a “reaction product” of four separate components to produce a structurally distinct compound relative to a simple mixing of the pre-formed components together. In fact, Haga themselves distinguishes between the two in their background (see Haga at pg. 2, para. 1). Moreover, there is no reasonable expectation of success that salt-forming dyes, when formed as reaction products, would suitably function with the specifically claimed monomers. Consequently, the claims are allowed.
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 extension fee 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 date of this final action.
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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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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