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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/29/2025 has been entered.
Claim Interpretation
For the purposes of examination, the Examiner is interpreting the phrase “relative to a total monomer mass” in claim 20 to refer to the monomers used to form the polymer component comprised in the acrylic resin particles. For example, an ink composition containing 10% of salt-forming dye, 15% of monomer A and 20% of monomer B, which is then formed into an acrylic resin particle, contains 28.6% of the salt-forming dye relative to the total monomers (10% dye/(15% monomer A + 20% monomer B) • 100 = 28.6%).
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 1-3, 5-7, 9-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Haga (JP-2017002121-A), with reference to the previously included machine translation (hereinafter referred to as “Haga”) and with reference to the Certified Translation of Para. 0013 of Haga (hereinafter referred to as “Certified Translation of Para. 0013 of Haga”), in view of Shimizu et al. (JP-2016125052-A), with reference to the previously included machine translation (hereinafter referred to as “Shimizu”), and Ogura (JP-2018002860-A), with reference to the previously included machine translation (hereinafter referred to as “Ogura”).
Regarding claim 1, Haga teaches an aqueous ink composition (see Haga at pg. 2, para. 3) comprising: a colored resin particle comprising an acrylic resin particle (see Haga at pg. 2, para. 3-6), 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 (see Haga at pg. 2, para. 6-9).
While Haga teaches the ink outlined above, Haga fails to explicitly teach the acrylic resin particle as being colored by a salt-forming dye, which is a salt-forming body produced by mixing an acid dye and a basic dye simultaneously while producing the colored resin particle.
However, Shimizu teaches an oil-based ink for a ballpoint pen (see Shimizu at Abstract). Shimizu further teaches the coloring agent in the ink to preferably be a salt-forming dye composed of an acid dye and a basic substance, e.g., a basic dye, because it is highly safe and results in excellent color developability of the ink (see Shimizu at pg. 3, para. 2-3). Moreover, Shimizu teaches VALIFAST GREEN 1501 as a suitable salt-forming dye (see Shimizu at pg. 3, para. 4). Additionally, it is well-known that salt-forming dyes, including salt-forming dyes composed of an acid dye and a basic dye, may suitably be used as dyes in acrylic-based particles/microspheres in aqueous inks for writing instruments from the viewpoint of color development (see Ogura at pg. 1, para. 1, pg. 4, para. 10-13; also see Ogura at pg. 5, para. 1, teaching Valifast Green 1501 as a suitable salt-forming dye of an acid dye and a basic dye).
Haga teaches the dye that can be used in their ink is not particularly limited (see Haga at pg. 3, para. 8).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a salt-forming dye composed of an acid dye and a basic dye, e.g., Valifast Green 1501, as the dye in the ink of Haga. One of ordinary skill in the art would have been motivated to do so in order to improve ink color development and safety (see Shimizu at pg. 3, para. 2-3 and Ogura at pg. 4, para. 12).
It is noted that the limitation “produced by mixing an acid dye and a basic dye simultaneously while producing the colored resin particle" is considered a product-by-process limitation. It is the examiner's position that the recited limitation does not impart any distinct structural characteristics to the claimed composition (see the Examiner’s arguments in the “Response to Arguments” section below at pg. 8-12 of the present Office Action for a more detailed analysis). Consequently, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). see MPEP § 2113.
Moreover, it is noted that VALIFAST GREEN 1501 is used in Production Example 6 of Applicant’s specification, and produces an “A” rating for color development, thus supporting the notion that a pre-formed salt-forming dye is not distinct from the product-by-process limitation claimed (see Applicant’s specification at pg. 21, last 4 lines and pg. 25). “Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product.” See MPEP § 2113(II).
Regarding claims 2-3, see Haga at pg. 3, para. 5.
Regarding claims 5-7, see Haga at pg. 1, para. 1.
Regarding claims 9-10, see Haga at pg. 2, para. 7, teaching 2-methacryloyloxyethyl phthalate as a suitable carboxyl group-containing vinyl monomer.
Regarding claims 11-14, see Haga at pg. 2, para. 9 and pg. 3, para. 1-2, teaching n-butyl (meth)acrylate, lauryl methacrylate or cyclohexyl methacrylate as a suitable ester monomer.
Regarding claims 15-18, while Haga as modified by Shimizu and Ogura teaches the ink according to claim 1 outlined above, modified Haga fails to explicitly teach the ester monomer as comprising n-butyl (meth)acrylate and lauryl methacrylate, or lauryl methacrylate and cyclohexyl methacrylate, or n-butyl (meth)acrylate and cyclohexyl methacrylate, or n-butyl (meth)acrylate and lauryl methacrylate and cyclohexyl methacrylate.
However, Haga does teach “at least one” of the listed ester monomers may be used in their composition, and further teaches n-butyl (meth)acrylate, lauryl methacrylate, and cyclohexyl methacrylate as particularly preferred ester monomers (see Haga at pg. 3, para. 2; also see “Certified Translation of Para. 0013” of Haga).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use any of the claimed combinations of n-butyl (meth)acrylate, lauryl methacrylate, and cyclohexyl methacrylate as the ester monomer in modified Haga, as Haga teaches “at least one” monomer may be used and further teaches all three as particularly preferred ester monomers (see Haga at pg. 3, para. 2; also see “Certified Translation of Para. 0013” of Haga). Combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Regarding claim 20, see Example 1 of Haga at pg. 7, teaching an example colored resin fine particle formed using 10 g of dye and 500 g of monomer; thus, Example 1 of Haga contains 2% of dye relative to the monomers (10/500 • 100 = 2%); as such, Haga reasonably suggests to select a concentration that falls within the claimed range (e.g., 2%), as exemplified in the example embodiments.
Claims 4, 8, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Haga in view of Shimizu and Ogura, as applied to claim 1 above, and further in view of Iwasa et al. (US-20180079920-A1) (hereinafter referred to as “Iwasa”).
Regarding claims 4 and 19, while Haga as modified by Shimizu and Ogura teaches the ink according to claim 1 outlined above, modified Haga fails to explicitly teach in the polymer component constituting the acrylic resin particles, a dicyclopenta(te)nyl (meth)acrylate monomer to be further used in a content of 1 to 25 mass% (5 to 15 mass%, regarding claim 19).
However, Iwasa teaches a nearly identical dispersion of colored fine resin particles containing a vinyl monomer (A), an ester monomer (B) and a dye (see Iwasa at para. 0016). Iwasa further teaches the particles as containing a dicyclopenta(te)nyl (meth)acrylate monomer (C), and that by containing the monomer (C), the polymer is less liable to be damaged in stability and the resulting dispersion/ink is more excellent in stability (see Iwasa at para. 0037). Moreover, Iwasa teaches the content of the component (C) to range from 1 to 25 wt% from the viewpoint of improving stability and further enhancing ink performance (see Iwasa at para. 0042).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include a dicyclopenta(te)nyl (meth)acrylate monomer in the colored resin particles of modified Haga in an amount ranging from 1 to 25 wt%. One of ordinary skill in the art would have been motivated to do so in order to improve ink stability and enhance ink performance (see Iwasa at para. 0037 and 0042). This range is equivalent to the claim 4 range and overlaps the claim 19 range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 8, see Haga at pg. 1, para. 1.
Response to Arguments
Applicant's arguments and their Affidavit filed 09/29/2025 have been fully considered but they are not persuasive.
Applicants argue that the colored resin particles of modified Haga include a pre-formed salt-forming dye, which is distinct from the claimed particles, in which the salt-forming dye is formed at the time of preparing the colored resin particles (see Applicant’s Remarks at pg. 5). Applicants further point to their Affidavit filed 09/29/2025 as evidence that the latter produces unexpected and significantly superior values in color development compared to the former. Applicants argue their claimed product-by-process limitation generates a structurally distinct product compared to the use of a pre-formed salt-forming dye, and that thus, the invention is not obvious (see Applicant’s Remarks at pg. 6).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The evidence presented by Applicants in their Affidavit, as well as the disclosure in Applicant’s specification, does not sufficiently suggest the formation of a distinct product between the two methods.
Applicant’s Affidavit filed 09/29/2025 presents two examples, Production Example 11, which produces colored particles according to the claimed product-by-process limitation, and Production Example 12, which produces colored particles using a pre-formed salt-forming dye (see Affidavit filed 09/29/2025 at pg. 2). Applicants show Production Example 12 as having a “B” rating in terms of color development, compared to Production Example 11, which has an “A” rating (see Affidavit filed 09/29/2025 at pg. 3). Applicants argue this evidence demonstrates the distinct nature of the claimed product-by-process limitation (see Applicant’s Remarks at pg. 6 and Affidavit filed 09/29/2025 at pg. 3).
However, the examples in Applicant’s specification raise doubt as to whether the superior color development in Production Example 12 is a result of the specific product-by-process limitation claimed. The colored resin particles produced in Production Example 4 of Applicant’s specification is identical to that of Production Example 12, including the same salt-forming dye, the same concentrations, and the same components (see Applicant’s specification at pg. 21, lines 10-18 and Affidavit filed 09/29/2025 at pg. 2). In fact, the only difference between Production Example 4 in Applicant’s specification and Production Example 12 in Applicant’s Affidavit is the specific concentration of components in the resulting inks (e.g., 44 mass% of water in Production Example 4 compared to 64% of water in Production Example 12; see Applicant’s specification at pg. 24, lines 1-5 and the Affidavit at pg. 3). However, Applicant’s specification teaches Production Example 4 as having an “A” rating for color development (see Applicant’s specification at pg. 25), while the Affidavit shows Production Example 12 as having a “B” rating (see Affidavit filed 09/29/2025 at pg. 3). Thus, Production Example 4 demonstrates that the use of a pre-formed salt-forming dye still produces the same beneficial color development properties as those produced by the product-by-process limitation of claim 1 (i.e., an “A” rating, like for Production Example 11 in Applicant’s Affidavit); and further suggests that the concentration of the components in the ink (e.g., water) may in fact be generating the observed effect. Consequently, doubt is raised as to as whether the specifically claimed product-by-process limitation results in a “distinct” product as purported by Applicants.
Applicant’s specification further shows many other examples of pre-formed salt-forming dyes as generating “A” ratings in color development, including VALIFAST GREEN 1501 (see Applicant’s specification at pg. 21, last 3 lines, and pg. 25). Accordingly, the color development property purported by Applicants is not sufficient to suggest a distinct difference between the two methods.
Moreover, Production Example 11 uses two completely different acid and basic dyes (Spillon Yellow C-GNH-new and Water Yellow 6C) compared to Production Example 12 (VALIFAST RED 1308, which uses Acid Yellow 23 and Basic Red I) (see Applicant’s Affidavit dated 09/29/2025 at pg. 2). In order to make sufficient comparisons, the same acid and basic dyes should be incorporated using the different methods to see if a difference in color development is present. For example, it is entirely possible that the observed difference in color development is the result of the different dyes used, rather than the specific method of incorporating the dyes.
Additionally, the Examples in Applicant’s Affidavit are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants use only three specific dyes, Spillon Yellow C-GNH-new, Water Yellow 6C, and VALIFAST RED 1308, despite the claims suggesting the use of many other suitable dyes (see Applicant’s specification at pg. 5 and the Affidavit filed 09/29/2025 at pg. 2). Moreover, Applicants use in their Affidavit concentrations for the colored resin particle dispersion, pH modifier, ethylene glycol, and water of 25 mass%, 1 mass%, 10 mass%, and 64 mass%, respectively, despite claim 1 allowing for any suitable concentration (see claim 1 and the Affidavit filed 09/29/2025 at pg. 2). As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the ink included in claim 1.
Furthermore, Applicant’s specification explicitly and broadly teaches the salt-forming body may be a pre-formed salt-forming dye (see Applicant’s specification at pg. 8, last 8 lines), raising doubt as to the distinct nature of the use of such a dye compared to the product-by-process limitation of claim 1.
Lastly, Applicants presume the enhanced coloration effect as being a result of the acidic dye and basic dye molecules intertwining with the acrylic copolymer chains (see Affidavit filed 09/29/2025 at pg. 3). However, this is not supported by any additional evidence, and is construed as an opinion. Arguments presented by the applicant cannot take the place of evidence in the record. See MPEP 716.01(c).
The Examiner wishes to note that Production Example 12 in the Affidavit uses “phthalic acid-2-methacryloyoloxyethyl” as a monomer (see Affidavit filed 09/29/2025 at pg. 2), which is a different term from the “2-methacryloyoloxyethyl phthalate” used in Production Example 4 of Applicant’s specification and Production Example 11 of the Affidavit (see Affidavit filed 09/29/2025 at pg. 2 and Applicant’s specification at pg. 20 and 21). However, the Examiner is construing these terms to refer to the same compound. In any case, even if the monomer compounds were not the same, the resulting conclusions still apply, and further, doubt would be raised as to whether the observed effect difference between Production Examples 11 and 12 was a result of the specific product-by-process limitation or a result of a change in the monomer type.
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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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731