DETAILED ACTION
Response to Amendments
In response to the amendment received on 07/10/2025:
• Claims 1, 3, 4, and 6-10 are currently pending. Claims 2 and 5 are canceled.
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 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.
Claim 1, 3, 4, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hirasa et al. (JP-4214602-B2), with reference to the previously included machine translation (hereinafter referred to as “Hirasa”), in view of Tielemans et al. (US-20040198868-A1) (hereinafter referred to as “Tielemans”) and Omoto et al. (JP-2020002220-A1), with reference to the previously included machine translation (hereinafter referred to as “Omoto”), with evidence from PubChem (“Disperse Yellow 3.” PubChem, U.S. National Library of Medicine, pubchem.ncbi.nlm.nih.gov/compound/Disperse-yellow-3. Accessed 23 Oct. 2024) (hereinafter referred to as “PubChem”) as to the rejection of claim 9 only.
Regarding claims 1 and 10, Hirasa teaches an ink composition for ink jet recording/a coloring material dispersion liquid (see Hirasa at para. 0009 and 0070, teaching a recording liquid which may be used in ink jet recording) comprising:
• resin particles of a urethane resin colored with a disperse dye (see Hirasa at para. 0008, teaching the ink as containing an aqueous polyurethane, which functions as a dispersant; also see Hirasa at para. 0049, teaching the colorant may include a disperse dye; since the aqueous polyurethane functions as a dispersant for the colorant, it necessarily follows that the urethane resin is “colored” with the disperse dye in the form of resin particles), and
• the urethane resin contains polyester polyol and isocyanate as raw materials (see Hirasa at para. 0016, 0028-0030).
While Hirasa teaches the ink outlined above, Hirasa fails to explicitly teach (1.) the polyester polyol as containing trimesic acid as a raw materal, and (2.) the acid value of the urethane resin to range from 1 KOHmg/g or more and less than 100 KOHmg/g.
Regarding (1.), Tielemans teaches an aqueous ink composition containing a polyurethane polymer to which at least one colorant is covalently bonded (see Tielemans at para. 0009). Tielemans further teaches the polyurethane polymer may contain polyester polyols as a raw material (see Tielemans at para. 0022-0023), and further teaches the polyester polyols may be formed from tricarboxylic acids such as trimellitic acid and trimesic acid (see Tielemans at para. 0025).
Hirasa teaches their polyester polyol may be formed from tricarboxylic acids, such as trimellitic acid (see Hirasa at para. 0030).
In this case, both trimellitic acid and trimesic acid are functional equivalents, i.e., both are tricarboxylic acids suitable for use as raw materials for a polyester polyol in a polyurethane polymer bonded to a colorant in an aqueous ink composition (see Tielemans at para. 0025).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the trimellitic acid of Hirasa with a trimesic acid like that disclosed by Tielemans, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Regarding (2.), Omoto teaches an ink containing water, a colorant, and wax particles (see Omoto at Abstract). Omoto further teaches the colorant may include colored resin particles containing a Polymer (A) and a dye, the polymer (A) may include a polyurethane, and the dye may include a disperse dye (see Omoto at pg. 3, para. 4; pg. 3, last paragraph; and pg. 6, para. 1). Moreover, Omoto teaches the acid value of the polymer (A) to range from 5 to 90 mgKOH/g, and that when the acid value is 5 mgKOH/g or more, the dispersibility of the colored resin particles as a dispersion is excellent and the stability of the ink is improved, and that when the acid value is 90 mgKOH/g or less, the association of the dye by the water-soluble organic solvent is easily released, the dispersibility is improved, and the color density and continuous ejection property of the ink are preferably improved (see Omoto at pg. 5, para. 4-5).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the acid value of the polyurethane polymer of Hirasa to range from 5 to 90 mgKOH/g. One of ordinary skill in the art would have been motivated to do so in order to improve the dispersion of the resin particles, and further improve the color density, stability, and continuous ejection property of the ink (see Omoto at pg. 5, para. 4-5).
The acid value range of 5 to 90 mgKOH/g falls completely within the claimed range.
Regarding claims 3-4, Hirasa as modified by Tielemans and Omoto teaches the ink composition for ink jet recording according to claim 1 outlined above, wherein the isocyanate has two or more isocyanate groups as polymerizable functional groups, wherein the isocyanate contains hexamethylene diisocyanate (see Hirasa at para. 0017).
Regarding claim 6, while Hirasa as modified by Tielemans and Omoto teaches the ink according to claim 1 outlined above, modified Hirasa fails to explicitly teach the urethane resin as further containing a polyol as a raw material, wherein the polyol contains dimethylolpropionic acid.
However, Tielemans teaches an aqueous ink composition containing a polyurethane polymer to which at least one colorant is covalently bonded (see Tielemans at para. 0009). Tielemans further teaches the polyurethane polymer may contain polyester polyols as a raw material (see Tielemans at para. 0022-0023), and further teaches the polyester polyols may be formed from tricarboxylic acids such as trimellitic acid and trimesic acid (see Tielemans at para. 0025). Moreover, Tielemans teaches the polyurethane polymer as containing at least one compound (iv) capable of reacting with the polyol and isocyanate and which contains additional functional groups, such as a carboxylic acid group (see Tielemans at para. 0015 and 0037). Tielemans additionally teaches this carboxylic acid group functionality as rendering the polyurethane polymer self-dispersible in water (see Tielemans at para. 0039). Furthermore, Tielemans teaches the carboxylic acid group-containing compound may be 2,2-dimethylolpropionic acid (see Tielemans at para. 0040).
Hirasa teaches their polyurethane polymer may contain an additional molecule containing an anionic group (B), such as a compound containing a carboxylic acid group (see Hirasa at para. 0034). Moreover, Hirasa teaches their ink as being aqueous (see Hirasa at para. 0001).
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 2,2-dimethylolpropionic acid as an additional polyol containing an anionic group (i.e., a carboxylic acid group) in the polyurethane of modified Hirasa. One of ordinary skill in the art would have been motivated to do so in order to render the polyurethane self-dispersible in an aqueous medium (see Tielemans at para. 0039).
Regarding claim 7, Hirasa as modified by Tielemans and Omoto teaches the ink composition for ink jet recording according to claim 1 outlined above, wherein the resin particles have an average particle diameter of 30 nm or more and 500 nm or less (see Hirasa at para. 0072, teaching the average particle diameter of the water-insoluble colorant to range from 0.01 to 0.4 µm, or 10 to 400 nm; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 8, Hirasa as modified by Tielemans and Omoto teaches the ink composition for ink jet recording according to claim 1 outlined above, wherein the content of the resin particles is 10% by mass or more and 20% by mass or less relative to the total mass (see Hirasa at para. 0067-0068, teaching the amount of water-insoluble colorant to range from 1 to 10% by weight in the ink, and the amount of aqueous polyurethane to range from 3 to 100% by weight of the colorant; thus, the total content of the colorant and the polyurethane together in the ink ranges from 1.03% by weight to 20% by weight (1% colorant minimum • 0.03 polyurethane to colorant ratio minimum = 0.03 wt% polyurethane minimum in ink; 10% colorant maximum • 1 polyurethane to colorant ratio maximum = 10 wt% polyurethane maximum in ink; 1% colorant minimum + 0.03% polyurethane minimum = 1.03 wt% total minimum; 10% colorant maximum + 10% polyurethane maximum = 20% total maximum); the content of the colorant and polyurethane together correspond to the claimed content amount; this range of 1.03 to 20 wt% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 9, Hirasa as modified by Tielemans and Omoto teaches the ink composition for ink jet recording according to claim 1 outlined above, wherein the mass of the urethane resin is 4 times or more and 30 times or less the mass of the disperse dye (see Hirasa at para. 0063, teaching the aqueous polyurethane to have a weight average molecular weight of preferably 15,000 or less; also see Hirasa at para. 0052, teaching the disperse dye may include disperse yellow 3, which has a molecular weight of 269.3, as evidenced by PubChem, see arrow; thus, the mass of the polyurethane ranges from 55.7 times or less the mass of the disperse dye in the ink of Hirasa (15000/269.3 = 55.7); this range of 55.7 times or less overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Response to Arguments
Applicant’s arguments filed 07/10/2025 with respect to claims 1, 3, 4, and 6-10 have been considered. The Examiner agrees with Applicant that the amended claims overcome the previous prior art grounds of rejection (see Applicant’s Remarks at pg. 5). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections above.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a few potential amendments to overcome the current grounds of rejection. It is noted that these amendments are suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendments won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if any such amendments are added (i.e., allowability is NOT guaranteed following the incorporation of such amendments). Lastly, Applicants may use all or none of such suggestions – they are merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendments further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion 1 (support found in Table 1 at pg. 33 of Applicant’s specification):
“the urethane resin contains polyester polyol and isocyanate as raw materials, and
the polyester polyol contains trimesic acid, dimethyl terephthalate, and dimethyl adipate as [[a]] raw materials, or the polyester polyol contains trimesic acid, dimethyl terephthalate, and dimethyl isophthalate as raw materials.
Amendment Suggestion 2 (support found at para. 0034 of Applicant’s specification):
“the urethane resin contains a polyester polyol, an isocyanate, and an other polyol as raw materials,
the polyester polyol contains trimesic acid as a raw material, and
the other polyol contains polytetramethylene glycol.
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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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731