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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/01/2025 has been entered.
Response to Amendments
In response to the amendment received on 12/16/2025:
• Claims 1-20 are currently pending. The objection to claim 17 is withdrawn in light of the amendments to the claims.
Claim Interpretation
It is noted that all explicit definitions mentioned in the non-final mailed 02/28/2025 are incorporated herein and treated as set forth previously.
Claim Objections
Claims 1, 2, 8-10, 12, 19, and 20 are objected to because of the following informalities:
• In claim 1 AND claim 10, the term “surface- treated” should be amended to “surface-treated” (i.e., the extra space should be removed). • In claim 2, the term “above-described” should be deleted.
• In claim 8, claim 10, AND claim 12, the term “…white pigment, the lightness value L difference is less than 10” should be amended as follows: “…white pigment, wherein the lightness value L difference is less than 10.”
• In claim 9, the term “…white pigment, the lightness value L difference is less than 5” should be amended as follows: “…white pigment, wherein the lightness value L difference is less than 5.”
• Claim 19 AND claim 20 should be amended as follows: “...wherein the polyethylene glycol graft chain in the polymeric…” (also see the first 112(b) rejection of claim 1 below).
Appropriate correction is required.
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, line 12 AND claim 15, line 13 AND claim 17, line 15, the term “the graft chain” lacks sufficient antecedent basis. There is no previous explicit mention of a graft chain. For the purposes of examination, the Examiner is interpreting the claimed “graft chain” to refer to the claimed polyethylene glycol chain that is grafted to the principal chain. To correct, the Examiner suggests amending claims 1, 15, and 17 as follows: “…and a polyethylene glycol graft chain as a water-soluble molecular chain grafted to the…” Claims 2-20 are also rejected by virtue of their dependency on claims 1, 15, or 17.
In claims 1, 15, and 17, the claimed phrases “the pre-centrifugation white pigment dispersion” and “the post-centrifugation supernatant liquid” lack sufficient antecedent basis. There is no previous mention of a pre-centrifugation white pigment dispersion or a post-centrifugation supernatant liquid. For the purposes of examination, the Examiner is interpreting each as previously outlined in the “Claim Interpretation” section in the Non-Final action dated 02/28/2025. To correct, the Examiner suggests amending claims 1, 15, and 17 as follows: “the difference between the lightness value L of a coating film from a pre-centrifugation white pigment dispersion, which is the white pigment dispersion prior to being centrifuged, and the lightness value L of a coating film from a post-centrifugation supernatant liquid, which is a supernatant liquid obtained following centrifugation of the pre-centrifugation white pigment dispersion, is less than 20. Claims 2-20 are also rejected by virtue of their dependency on claim 1, 15, or 17.
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, 6, 7, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US-20070032590-A1) (hereinafter referred to as “Hayashi”) in view of Il et al. (US-20180215935-A1) (hereinafter referred to as “Il”) and Lin et al. (US-20050282946-A1) (hereinafter referred to as “Lin”).
Regarding claims 1, 5, and 13-14, Hayashi teaches a white pigment dispersion (see Hayashi at para. 0067 and 0073, teaching an aqueous ink which may contain a titanium oxide pigment, i.e., a white pigment) comprising:
• at least a specified white pigment, a polymeric dispersant, and an aqueous liquid as a solvent or dispersion medium (see Hayashi at para. 0067, teaching the aqueous ink as containing a colorant, a dispersant, and an aqueous medium; also see Hayashi at para. 0073, teaching the ink may contain titanium oxide, i.e., a white pigment), wherein:
• the polymeric dispersant consists of a graft copolymer dispersant, which comprises a structure with a principal chain having a carboxy group or a salt thereof as a pigment adsorption group and a polyethylene glycol chain as a water-soluble molecular chain grafted to the principal chain (see Hayashi at para. 0020 and 0024, teaching a graft copolymer comprising, as a side chain, a polymer represented by the following formula (1), and as a main chain, a polymer comprising a hydrophobic monomer unit as the essential constituent, and if desired, other copolymerizable monomer unit as the constituent:
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Also see Hayashi at para. 0048, teaching the main chain may contain other monomer units as constituents, including ionic monomers having reverse ionicity to that of the dispersoids (i.e., the colorant); also see Hayashi at para. 0050-0051, teaching an unsaturated carboxylic acid monomer may be used as the ionic monomer; thus, Hayashi necessarily teaches their main chain may include a “pigment adsorption group” from the carboxyl group of the ionic monomer; also see Hayashi at para. 0058, teaching that when the main chain content is less than 1 mass%, the adsorption onto a dispersoid such as a colorant is insufficient, thus suggesting the main chain as acting as the adsorbing component; also see Hayashi at para. 0018 and 0022, suggesting the hydrophobic region of the main chain may also act as an “adsorbing moiety”; also see Hayashi at para. 0032 and 0035, teaching the side chain represented by formula (1) may be formed from polyethylene oxide, including polyethylene glycol mono(meth)acrylate; also see formula (1) of Hayashi above, teaching the R group may be an ionic functional group; thus, it necessarily follows that the side chain of Hayashi is “water-soluble” as claimed, because it is composed of the same water-soluble component as taught by Applicants (polyethylene glycol mono(meth)acrylate, see claim 1 of instant application and the instant specification at para. 0043), as well as an ionic component, which is necessarily water-soluble; also see Hayashi at para. 0003, 0018 and 0022, teaching the hydrophilic moiety as giving solubility into a dispersion medium/having affinity with the dispersion medium; also note that Hayashi does not necessitate the presence of an additional dispersant in their composition, and thus necessarily reads on the claimed “consisting of” language);
• the overall weight-average molecular weight of the polymeric dispersant is in the range of 15000 to 30000 (22000-23000, regarding claim 5) (see Hayashi at para. 0024, teaching the weight average molecular weight of the graft copolymer to range from 1,000 to 100,000; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• the weight-average molecular weight of the graft chain is in the range of 150 to 400 (see Hayashi at para. 0031, teaching the weight average molecular weight of the side chain to range from 300 to 1,000, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• and the difference between the lightness value L of a coating film from a pre-centrifugation white pigment dispersion and the lightness value L of a coating film from a post-centrifugation supernatant liquid is less than 20, wherein: components of the coating film from the pre-centrifugation white pigment dispersion consist of the pre-centrifugation white pigment and a liquid which becomes colorless and transparent upon solidification, and components of the coating film from the post-centrifugation supernatant liquid consist of the post-centrifugation supernatant liquid and the liquid which becomes colorless and transparent upon solidification (claim 13), and wherein: the coating film from the pre-centrifugation white pigment dispersion is obtained by drying a mixture of 0.25 mL of the pre-centrifugation white pigment dispersion and 25 mL of the liquid which becomes colorless and transparent upon solidification, and the coating film from the post-centrifugation supernatant liquid is obtained by drying a mixture of 0.5 mL of the post-centrifugation supernatant liquid and 25 mL of the liquid which becomes colorless and transparent upon solidification (claim 14) (such limitations are notably a property of the resulting composition; since the composition of modified Hayashi is the same as that claimed (see the modification below), it necessarily follows the composition demonstrates the claimed property; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); moreover, the Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary, see In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01); in other words, burden of proof shifts to Applicants to demonstrate the dispersion of modified Hayashi as not meeting the lightness property from the coating films as claimed).
While Hayashi teaches the white pigment dispersion outlined above, Hayashi fails to explicitly teach the specified white pigment as being a titanium dioxide that has been surface-treated with at least alumina.
However, Il teaches a water-based inkjet ink containing a titanium oxide (A) and a pigment dispersant (B) (see Il at para. 0030). Il further teaches the titanium oxide (A) is preferably a surface-treated titanium oxide from the viewpoint of attaining good dispersibility thereof in the water-based ink, and that from the viewpoint of avoiding adverse influence of a photocatalyst, the titanium oxide is preferably surface-treated with silica and alumina (see Il at para. 0037).
Moreover, it is known that titanium dioxide surface treated with alumina and silica, e.g., commercial product R-706, may be used together with similar graft copolymers as that taught by Hayashi (see Lin at para. 0014-0017, 0042-0043, 0059, 0067, and 0072).
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 titanium dioxide surface-treated with alumina and silica, e.g., R-706, as the titanium dioxide in the aqueous ink of Hayashi. One of ordinary skill in the art would have been motivated to do so in order to improve dispersibility as well as to inhibit the adverse influence of the TiO2 as a photocatalyst (see Il at para. 0030).
Regarding claim 3, see Hayashi at para. 0079, teaching the content of the colorant in the ink to range from 0.1 to 30 mass%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see Hayashi at para. 0080, teaching the ratio of the dispersant to the colorant to range from 1:1 to 1:30, or 3.33 to 100%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 6, see Hayashi at para. 0050-0051, teaching the ionic monomer may include an unsaturated carboxylic acid monomer, such as acrylic acid.
Regarding claim 7, see Hayashi at para. 0065, teaching the acid value of the copolymer to range from 50 to 300 mgKOH/g; this range falls completely within the claimed range.
Regarding claim 15, while modified Hayashi teaches most of the limitations of claim 15 (see claim 1 rejection above), modified Hayashi fails to explicitly teach the ink as containing a resin.
However, it is well-known that binder resins may be included in inks to improve adhesion of a pigment to a substrate, including in similar inks as that taught by Hayashi (see Lin at para. 0147 and 0152). Moreover, Hayashi teaches their ink may contain conventionally known additives.
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 binder resin in the ink of Hayashi. One of ordinary skill in the art would have been motivated to do so in order to improve adhesion of the colorant to a substrate (see Lin at para. 0152).
Regarding claims 16-17, see Hayashi at para. 0084, teaching their ink may be an inkjet ink; also see Hayashi at para. 0107, teaching their example inks as being printed with an inkjet printer; thus, Hayashi necessarily teaches an inkjet method in which the ink is made and printed via inkjet printing; with respect to the remaining limitations, see the claim 1 rejection above.
Regarding claim 18, see Hayashi at para. 0031, teaching the weight average molecular weight of the side chains to range from 300 to 1,000; this range overlaps the claimed value, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 2, 8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi in view of Il and Lin, as applied to claim 1 above, and further in view of Leightner et al. (Leightner, Bill, and Shireen Baseeth. “Cost-Saving, Renewable Dispersant Technology.” PCI , 1 Apr. 2013, www.pcimag.com/articles/97667-cost-saving-renewable-dispersant-technology) (hereinafter referred to as “Leightner”).
Regarding claim 2, while Hayashi as modified by Il and Lin teaches the white pigment dispersion according to claim 1 outlined above, modified Hayashi fails to explicitly teach the zeta potential of the pigment in the aqueous liquid as being positive.
However, it is known that optimal pigment electrostatic stabilization is obtained when a dispersant’s pigment-affinic groups can interact with the surface charges of a pigment particle, including for titanium dioxide pigments (see Leightner at pg. 2, para. 5). Furthermore, one of ordinary skill would readily recognize the carboxy “pigment-affinic” groups of the graft copolymer dispersant of Hayashi to be negatively charged (see Hayashi at para. 0050). Thus, one of ordinary skill would readily appreciate the benefits of utilizing a pigment with a positive zeta potential, namely, to use a more positively charge pigment to have a greater affinity for the negatively charged pigment-affinic groups of the dispersant, thus improving dispersibility (see Leightner at pg. 2, para. 5).
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 titanium dioxide pigment having a positive zeta potential in the dispersion of modified Hayashi. One of ordinary skill in the art would have been motivated to do so in order to more effectively attract the pigment to the negatively charged pigment-affinic groups in the graft copolymer dispersant, thus improving dispersibility (see Leightner at pg. 2, para. 5).
Alternatively, the zeta potential of a pigment is notably a property of the pigment in a dispersion. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, burden of proof is shifted to Applicants to show the R-706 pigment in the dispersion of modified Hayashi as not meeting the zeta potential property as claimed.
Regarding claims 8, 10, and 11, see claims 1 and 3-7 rejections above.
Allowable Subject Matter
Claims 4, 9, 12, and 19-20 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 4, the prior art fails to teach or suggest a white pigment dispersion comprising at least a specified white pigment, a polymeric dispersant, and an aqueous liquid as a solvent or dispersion medium, wherein: the specified white pigment is a titanium dioxide that has been surface-treated with at least alumina, the polymeric dispersant consists of a graft copolymer dispersant, which comprises a structure with a principal chain having a carboxy group or a salt thereof as a pigment adsorption group and a polyethylene glycol chain as a water-soluble molecular chain grafted to the principal chain, the overall weight-average molecular weight of the polymeric dispersant is in the range of 15000 to 30000, the weight-average molecular weight of the graft chain is in the range of 150 to 400, and the difference between the lightness value L of a coating film from the pre-centrifugation white pigment dispersion and the lightness value L of a coating film from the post-centrifugation supernatant liquid is less than 20, wherein the polyethylene glycol chain in the polymeric dispersant is derived from polyethylene glycol mono vinyl ether, polyethylene glycol mono allyl ether, polyethylene glycol mono propenyl ether, methoxy polyethylene glycol vinyl ether or methoxy polyethylene glycol allyl ether.
The closest prior art includes Shimanaka et al. (US-20150291718-A1) and Hayashi et al. (US-20070032590-A1).
With respect to Shimanaka, while Shimanaka teaches most of the limitations of claim 4, Shimanaka fails to explicitly teach the weight-average molecular weight of the graft chain to fall in the range of 150 to 400. Shimanaka teaches their side chain to have a molecular weight ranging from 500 to 5000, which falls outside the claimed range of 150 to 400 (see Shimanaka at para. 0042). Moreover, Shimanaka teaches the range of 500 to 5000 as being important for optimizing storage stability (see Shimanaka at para. 0042). Accordingly, one of ordinary skill in the art would have no reason to adjust or optimize the side chain range outside of the disclosure of Shimanaka. Consequently, the claims overcome Shimanaka.
With respect to Hayashi, while Hayashi teaches most of the limitations of claim 4, Hayashi fails to explicitly teach the polyethylene glycol chain in the polymeric dispersant to be derived from polyethylene glycol mono vinyl ether, polyethylene glycol mono allyl ether, polyethylene glycol mono propenyl ether, methoxy polyethylene glycol vinyl ether or methoxy polyethylene glycol allyl ether. Hayashi teaches their side chain to have the below formula (1) (see Hayashi at para. 0024):
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None of the claimed monomers suitably read on the above formula (1) (e.g., polyethylene glycol mono vinyl ether lacks the O-C=O group to the left of the ethylene oxide group in the formula (1)). Further, there is no teaching or suggestion in the prior art to use such monomers as a side chain in the specific composition of Hayashi. Consequently, claim 4 overcomes Hayashi.
With respect to claims 9 and 12, the claims overcome Shimanaka and Hayashi for similar reasons as outlined above. More specifically, a “methoxy polyethylene glycol chain” does not read on the claimed formula (1) taught by Hayashi, given that the formula (1) necessitates an ionic group at the end of the chain rather than a methoxy group.
With respect to claims 19-20, the claims overcome Shimanaka and Hayashi for the same reason as for claim 4 outlined above.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants’ amendments to the claims overcome the prior rejections over Shimanaka et al. (US-20150291718-A1). Accordingly, Applicants arguments over Shimanaka are moot (see Applicant’s Remarks at pg. 12-16). To the extent that Applicants arguments apply to the current grounds of rejection, they are addressed below:
Applicants argue their combination of features as providing an exceptional white pigment dispersion with significant benefits (see Applicant’s Remarks at pg. 12-13).
However, a showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). See MPEP § 2145. A mere conclusion that the combination of features provides an “exceptional” dispersion, without a pointing to specific evidence or examples, is not enough to show nonobviousness. See MPEP § 716.02.
Next, Applicants argue the references as not disclosing or suggesting a performance requirement based on the difference in lightness values before and after centrifugation, and that the references provide no reason to expect that the claimed structural combination would achieve the <20 threshold (see Applicant’s Remarks at pg. 13).
However, the claimed difference in lightness value is notably a property of the composition. Since the composition of modified Hayashi is the same as that claimed, it necessarily follows that the composition demonstrates the claimed property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Also see the claim 1 rejection above. Applicants have provided no reason as to why the composition of Hayashi would not meet the claimed lightness value difference as claimed. Accordingly, Applicants have not demonstrated their burden of proof as to why such a property would not be met.
Next, Applicants argue Lin teaches molecular weights outside the claimed range, and that nothing in the references suggests a single dispersant system would provide the required dispersion stability (see Applicant’s Remarks at pg. 13-14).
However, Lin is merely relied upon as a secondary reference to demonstrate similar compositions as Hayashi are known to include titanium dioxide pigments surface-treated with alumina and silica. Applicants provide no reason why the differing molecular weights in Lin would detract from a reasonable expectation of success in incorporating a surface-treated titanium dioxide pigment in the composition of Hayashi. In fact, Lin’s range of 1,000 to 30,000 touches an end-point of Hayashi’s taught range of 300 to 1,000 (see Hayashi at para. 0031). Surface-treated titanium dioxides are ubiquitous in the art. Further, Hayashi explicitly teaches their pigment may include titanium oxide (see Hayashi at para. 0073). Accordingly, one of ordinary skill would reasonably incorporate such a titanium oxide in the composition of Hayashi for the benefits as mentioned previously (see claim 1 rejection above). Moreover, Hayashi does not necessitate additional dispersants to be present, and thus, necessarily teaches a “single-dispersant” system. Regarding unexpected results from a single-dispersant system, see the fourth paragraph in the current section above.
Next, Applicants argue Leightner as not teaching the claimed graft copolymer (see Applicant’s Remarks at pg. 15-16).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Leightner is used as a secondary reference to demonstrate the obvious modification regarding the zeta potential. The fact that Leightner does not disclose all the specific limitations of claim 1 does not detract from Leightner’s teaching regarding the optimization of the zeta potential to improve dispersibility (see claim 2 rejection above). One of ordinary skill in the art would readily recognize the benefits of a positive zeta potential to improve dispersibility in the composition of Hayashi.
Next, Applicants argue Hayashi does not teach the claimed limitations (see Applicant’s Remarks at pg. 17). Applicants point to formula (1) and (2) of Hayashi as being different from the polyethylene glycol structure claimed (see Applicant’s Remarks at pg. 17).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Hayashi specifically teaches polyethylene glycol mono(meth)acrylate may be used for the side chain, and even teaches examples as such (see Hayashi at para. 0035 and 0089). This is the same monomer taught in Applicant’s specification at para. 0043. The only potential difference is that the formula (1) of Hayashi requires an ionic group (“R”) at the end of the chain; however, claim 1 does not preclude the “polyethylene glycol…chain” from being substituted with an ionic group. In other words, an ionic-group substituted polyethylene glycol chain still reads on the claimed “polyethylene glycol” chain. Furthermore, Hayashi teaches overlapping weight average molecular weight ranges (see claim 1 rejection above). Consequently, Hayashi reads on the claims.
Applicant’s remaining arguments (see Applicant’s Remarks at pg. 17-19) are previously addressed above.
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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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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