DETAILED ACTION
Response to Amendments
In response to the amendment received on 07/31/2025:
• Claims 1, 3-5, 9, 18, and 19 are currently pending. Claims 2, 6-8, and 10-17 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 Objections
Claim 19 is objected to because of the following informality:
• Claim 19 should include a period at the end of the claim.
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, 3-5, 9, 18, and 19 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 phrase “wherein the cyan pigment is C.I. Pigment Red 122” is confusing, as Pigment Red 122 is a magenta pigment (see Applicant’s specification at para. 0037). To correct, the Examiner suggests changing the claim to read “wherein the magenta pigment is C.I. Pigment Red 122”. For the purposes of examination, the Examiner is interpreting the pigment to be a magenta pigment rather than a cyan pigment. Claims 3-5, 9, 18, and 19 are also rejected by virtue of their dependency on claim 1.
In claim 18, it is unclear whether the plural term “silicone surfactants” necessitates more than one silicone surfactant to be present in the claimed ink. To correct, the Examiner suggests changing the plural term to a singular term, i.e., “silicone surfactant”. For the purposes of examination, the Examiner is interpreting only a single silicone surfactant to need to be present to read on the claim.
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, 9, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Auslander et al. (US-20100166960-A1) (hereinafter referred to as “Auslander”).
Regarding claims 1 and 9, Auslander teaches an aqueous ink composition for use in an inkjet recording method (see Auslander at para. 0008, teaching a water-based ink for inkjet recording), the aqueous ink composition comprising:
• an aqueous medium (see Auslander at para. 0008, teaching a water-based ink),
• a pigment and a dye, wherein a combination of the pigment and the dye is a combination of a cyan pigment and at least one blue dye selected from the group consisting of Acid Blue 90, Acid Blue 104, Acid Blue 317, Direct Blue 301, Acid Blue 83, Acid Blue 103, Acid Blue 113, and Acid Blue 123, wherein the cyan pigment is C.I. Pigment Blue 15:3 (see Auslander at para. 0008, teaching the water-based ink as containing a dye, C.I. Acid Blue 90; also see Auslander at para. 0027, teaching the ink may contain an additional optional pigment, such as C.I. Pigment Blue 15:3),
• an acetylene-based surfactant (see Auslander at para. 0034, teaching the ink as containing a surfactant, such as an acetylenic diol surfactant),
• an amount of the dye is 0.25 to 1.0% by mass of a total amount of the aqueous ink composition (see claim 2 of Auslander, teaching the content of the Acid Blue 90 in the ink to range from 0.1 to 5 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claim 19, see Auslander at para. 0027, teaching the content of the additional optional pigment (e.g., C.I. Pigment Blue 15:3) as being less than about 25%, based on the combined weight of the Pigment Blue 60 and the Acid Blue 90; also see claim 2 of Auslander, claiming the content of the Pigment Blue 60 to range from 0.1 to 5 wt% and the content of the Acid Blue 90 to range from 0.1 to 5 wt%; thus, Auslander necessarily teaches the total content of the Pigment Blue 60 and the Acid Blue 90 in their ink to range from 0.2 to 10 wt% (0.1 + 0.1 = 0.2; 5 + 5 = 10); accordingly, Auslander necessarily suggests the content of the additional optional pigment (e.g., C.I. Pigment Blue 15:3) to range from 2.5 wt% or less (10% total content maximum • 0.25 ratio of additional optional pigment maximum = 2.5%); this range of 2.5 wt% or less overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Auslander, as applied to claim 1 above, and further in view of Kawaguchi (JP-2019119889-A), with reference to the previously included machine translation (hereinafter referred to as “Kawaguchi”).
Regarding claim 3, while Auslander teaches the ink according to claim 1 outlined above, Auslander fails to explicitly teach the ink as further comprising an acid-modified polypropylene resin.
However, Kawaguchi teaches an aqueous pigment dispersion which may be an inkjet ink, containing a pigment and a polymer dispersant, wherein the polymer dispersant is a (meth)acrylic resin (A) and a resin (B), where the resin (B) may include an acid-modified polyolefin resin (see Kawaguchi at pg. 2, para. 6 and 8). Kawaguchi further teaches their dispersant as improving adhesion to non-water absorbing media by stably dispersing the pigment, and improves smoothness of a coating film and printing density (see Kawaguchi at pg. 3, para. 2). Moreover, Kawaguchi teaches the acid-modified polyolefin resin in the resin (B) to preferably be a polypropylene resin from the viewpoint of storage stability of the water-based pigment dispersion, adhesion, and print density (see Kawaguchi at pg. 8, para. 10). Additionally, Kawaguchi teaches the pigment in their dispersion may be a phthalocyanine pigment, and that the hue of the ink may be cyan (see Kawaguchi at pg. 3, para. 5-6).
Auslander teaches their ink to include a polymer dispersant, such as acrylic polymers, for stabilizing the dispersion (see Auslander at para. 0031-0032).
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 the dispersant of Kawaguchi, which contains a (meth)acrylic resin (A) and an acid-modified polypropylene resin (B), as the dispersant in the ink of Auslander. One of ordinary skill in the art would have been motivated to do so in order to improve storage stability, adhesion, smoothness of a coating film, and printing density of the ink (see Kawaguchi at pg. 3, para. 2 and pg. 8, para. 10).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Auslander, as applied to claim 1 above, and further in view of Matsuzaki et al. (US-20180273789-A1) (hereinafter referred to as “Matsuzaki”).
Regarding claims 4-5, while Auslander teaches the ink according to claim 1 outlined above, Auslander fails to explicitly teach the ink as further comprising an oxidized polyethylene wax, wherein the oxidized polyethylene wax has a melting point of 140°C or lower.
However, Matsuzaki teaches an aqueous ink composition including a polyolefin wax, a resin dispersion, water, and a surfactant (see Matsuzaki at para. 0007). Matsuzaki further teaches the inclusion of the polyolefin wax improves the water resistance and abrasion resistance of the obtained recorded matter (see Matsuzaki at para. 0065). Moreover, Matsuzaki teaches the polyolefin wax to preferably be a polyethylene-based wax from the viewpoint that it is possible to more effectively reduce the generation of cracks in images (see Matsuzaki at para. 0066). Additionally, Matsuzaki teaches the polyethylene wax to be oxidized (see Matsuzaki at para. 0068). Matsuzaki also teaches the melting point of the polyolefin wax to range from 80 °C to 150 °C, and that when the melting point is in this range, the water resistance, abrasion resistance, and image quality are improved (see Matsuzaki at para. 0072).
Auslander teaches water and abrasion resistance as desirable in their inks (see Auslander at para. 0008).
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 an oxidized polyethylene wax having a melting point from 80 °C to 150 °C like that taught by Matsuzaki in the ink of Auslander. One of ordinary skill in the art would have been motivated to do so in order to improve water resistance, abrasion resistance, and image quality, and to more effectively reduce the generation of cracks in images (see Matsuzaki at para. 0065, 0066, and 0072).
This melting point range of 80 to 150 °C overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Auslander, as applied to claim 1 above, and further in view of Kuroda et al. (US-20210071022-A1) (hereinafter referred to as “Kuroda”).
Regarding claim 18, while Auslander teaches the ink according to claim 1 outlined above, Auslander fails to teach the ink as further comprising a silicone surfactant.
However, Kuroda teaches a water-based ink containing a pigment, a water-soluble organic solvent, a surfactant, and water (see Kuroda at para. 0009). Moreover, Kuroda teaches the surfactant as containing a silicone-based surfactant and an acetylene glycol-based surfactant from the viewpoint of forming ink dots having a complete circular shape and improving image quality and rub fastness of the resulting printed material (see Kuroda at para. 0010 and 0113). Kuroda further teaches the silicone surfactant as suppressing an increase in the viscosity of the ink, resulting in good printed materials that are free of mottling or unevenness upon high-speed printing (see Kuroda at para. 0115).
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 silicone-based surfactant in addition to the acetylenic-based surfactant of Auslander. One of ordinary skill in the art would have been motivated to do so from the viewpoint of forming ink dots having a complete circular shape, improving image quality and rub fastness of the resulting printed material, and suppressing an increase in the viscosity of the ink which results in good printed materials that are free of mottling or unevenness upon high-speed printing (see Kuroda at para. 0113 and 0115).
Claims 1, 9, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Miyajima et al. (JP-2010065111-A), with reference to the previously included machine translation (hereinafter referred to as “Miyajima”), in view of Mizutaki et al. (US-20170369723-A1) (hereinafter referred to as “Mizutaki”).
Regarding claims 1 and 9, Miyajima teaches an aqueous ink composition for use in an inkjet recording method (see Miyajima at pg. 3, para. 15, teaching a pigment ink for inkjet recording comprising a pigment, water, and a water-soluble dye), the aqueous ink composition comprising:
• an aqueous medium (see Miyajima at pg. 4, para. 6, teaching the ink as containing water),
• a pigment and a dye, wherein a combination of the pigment and the dye is a combination of a cyan pigment and at least one blue dye selected from the group consisting of Acid Blue 90, Acid Blue 104, Acid Blue 317, Direct Blue 301, Acid Blue 83, Acid Blue 103, Acid Blue 113, and Acid Blue 123, wherein the cyan pigment is C.I. Pigment Blue 15:3 (see Miyajima at pg. 3, para. 15, teaching a pigment ink for inkjet recording comprising a pigment, water, and a water-soluble dye; also see Miyajima at pg. 4, para. 7, teaching the water-soluble dye may be C.I. Acid Blue 104; also see Miyajima at pg. 4, para. 1, teaching the pigment may be C.I. Pigment Blue 15:3), wherein
• an amount of the dye is 0.25 to 1.0% by mass of a total amount of the aqueous ink composition (see Miyajima at pg. 5, para. 3, teaching the content of the water-soluble dye in the ink may range from preferably 0.1 to 5 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
While Miyajima teaches the ink outlined above, Miyajima fails to explicitly teach the ink as containing an acetylenic glycol-based surfactant.
However, Mizutaki teaches a water-based ink composition (see Mizutaki at para. 0011). Mizutaki further teaches the ink may contain a surfactant, and that by including a nonionic surfactant, such as an acetylene glycol surfactant, the surface tension and interfacial tension of the ink may be properly maintained and discharging stability can be improved (see Mizutaki at para. 0070).
Miyajima teaches their ink may include conventional additives, such as a surfactant (see Miyajima at pg. 6, para. 2).
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 an acetylene-glycol surfactant as the surfactant in the ink of Miyajima. One of ordinary skill in the art would have been motivated to do so in order for the surface tension and interfacial tension of the ink to be properly maintained and for improved discharging stability (see Mizutaki at para. 0070).
Regarding claim 19, see Miyajima at pg. 5, para. 3, teaching the content of the pigment with respect to the entire ink to range from 1 to 10 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Miyajima in view of Mizutaki, as applied to claim 1 above, and further in view of Kawaguchi.
Regarding claim 3, while Miyajima as modified by Mizutaki teaches the ink according to claim 1 outlined above, modified Miyajima fails to explicitly teach the ink as further comprising an acid-modified polypropylene resin.
However, Kawaguchi teaches an aqueous pigment dispersion which may be an inkjet ink, containing a pigment and a polymer dispersant, wherein the polymer dispersant is a (meth)acrylic resin (A) and a resin (B), where the resin (B) may include an acid-modified polyolefin resin (see Kawaguchi at pg. 2, para. 6 and 8). Kawaguchi further teaches their dispersant as improving adhesion to non-water absorbing media by stably dispersing the pigment, and improves smoothness of a coating film and printing density (see Kawaguchi at pg. 3, para. 2). Moreover, Kawaguchi teaches the acid-modified polyolefin resin in the resin (B) to preferably be a polypropylene resin from the viewpoint of storage stability of the water-based pigment dispersion, adhesion, and print density (see Kawaguchi at pg. 8, para. 10). Additionally, Kawaguchi teaches the pigment in their dispersion may be a phthalocyanine pigment, and that the hue of the ink may be cyan (see Kawaguchi at pg. 3, para. 5-6).
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 the dispersant of Kawaguchi, which contains a (meth)acrylic resin (A) and an acid-modified polypropylene resin (B), as a dispersant for the pigment in the ink of modified Miyajima. One of ordinary skill in the art would have been motivated to do so in order to improve storage stability, adhesion, smoothness of a coating film, and printing density of the ink (see Kawaguchi at pg. 3, para. 2 and pg. 8, para. 10).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Miyajima in view of Mizutaki, as applied to claim 1 above, and further in view of Matsuzaki.
Regarding claims 4-5, while Miyajima as modified by Mizutaki teaches the ink according to claim 1 outlined above, modified Miyajima fails to explicitly teach the ink as further comprising an oxidized polyethylene wax, wherein the oxidized polyethylene wax has a melting point of 140°C or lower.
However, Matsuzaki teaches an aqueous ink composition including a polyolefin wax, a resin dispersion, water, and a surfactant (see Matsuzaki at para. 0007). Matsuzaki further teaches the inclusion of the polyolefin wax improves the water resistance and abrasion resistance of the obtained recorded matter (see Matsuzaki at para. 0065). Moreover, Matsuzaki teaches the polyolefin wax to preferably be a polyethylene-based wax from the viewpoint that it is possible to more effectively reduce the generation of cracks in images (see Matsuzaki at para. 0066). Additionally, Matsuzaki teaches the polyethylene wax to be oxidized (see Matsuzaki at para. 0068). Matsuzaki also teaches the melting point of the polyolefin wax to range from 80 °C to 150 °C, and that when the melting point is in this range, the water resistance, abrasion resistance, and image quality are improved (see Matsuzaki at para. 0072).
Miyajima teaches weather and water resistance as desirable properties in inks (see Miyajima at pg. 1, para. 2).
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 an oxidized polyethylene wax having a melting point from 80 °C to 150 °C like that taught by Matsuzaki in the ink of modified Miyajima. One of ordinary skill in the art would have been motivated to do so in order to improve water resistance, abrasion resistance, and image quality, and to more effectively reduce the generation of cracks in images (see Matsuzaki at para. 0065, 0066, and 0072).
This melting point range of 80 to 150 °C overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Miyajima in view of Mizutaki, as applied to claim 1 above, and further in view of Kuroda.
Regarding claim 18, while Miyajima as modified by Mizutaki teaches the ink according to claim 1 outlined above, modified Miyajima fails to teach the ink as further comprising a silicone surfactant.
However, Kuroda teaches a water-based ink containing a pigment, a water-soluble organic solvent, a surfactant, and water (see Kuroda at para. 0009). Moreover, Kuroda teaches the surfactant as containing a silicone-based surfactant and an acetylene glycol-based surfactant from the viewpoint of forming ink dots having a complete circular shape and improving image quality and rub fastness of the resulting printed material (see Kuroda at para. 0010 and 0113). Kuroda further teaches the silicone surfactant as suppressing an increase in the viscosity of the ink, resulting in good printed materials that are free of mottling or unevenness upon high-speed printing (see Kuroda at para. 0115).
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 silicone-based surfactant in addition to the acetylenic-based surfactant of modified Miyajima. One of ordinary skill in the art would have been motivated to do so from the viewpoint of forming ink dots having a complete circular shape, improving image quality and rub fastness of the resulting printed material, and suppressing an increase in the viscosity of the ink which results in good printed materials that are free of mottling or unevenness upon high-speed printing (see Kuroda at para. 0113 and 0115).
Response to Arguments
Applicant's arguments filed 07/31/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue Auslander as no longer anticipating or rendering obvious the claimed invention (see Applicant’s Remarks at pg. 5).
The Examiner agrees with Applicants that Auslander no longer anticipates the claimed invention. However, the Examiner disagrees with Applicants that Auslander no longer renders obvious the claimed invention, see the 103 rejection over Auslander presented above.
Next, Applicants argue the data in their specification in Tables 1 and 2 as demonstrating unexpected results (see Applicant’s Remarks at pg. 5-6).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
First, the Examples in Applicant’s specification are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants use in their Examples no concentrations between 0.5% and 1% for the dyes other than Acid Blue 90 (see pg. 57-61 of Applicant’s specification). As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the dye concentration for the claimed dyes other than Acid Blue 90. For example, it is possible a dye concentration of 1% for Acid Blue 317 would not produce the unexpected results alleged by Applicants. Similarly, Applicants only use in their examples a single acetylenic-based surfactant, Surfynol 420, despite the claims broadly claiming the possibility for a wide variety of suitable acetylenic-based surfactants. Consequently, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the acetylene-based surfactant included in claim 1.
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 do not test in their examples a comparative cyan ink with a dye concentration above 1%. While Applicants do have Comparative Example 2, which has a dye concentration of 4.3%, this comparative example 2 lacks a pigment, and thus it cannot sufficiently be compared to the inventive examples (i.e., two variables are altered rather than one). Moreover, it is unclear how the lower value of 0.25% is critical when the only comparative example outside this percentage is 0% (see Comparative Example 1). In other words, a dye concentration of 0.1%, 0.05%, or even 0.01% may still demonstrate the alleged unexpected results despite falling outside the claimed range. Without enough comparative examples, doubt is ultimately raised as to the unexpected results alleged by Applicants.
Lastly, 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 generic pointing to the examples in the specification, without a pointing to specific examples or results, is not sufficient to demonstrate nonobviousness. See MPEP § 716.02.
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:
Claim 1:
“…a combination of a cyan pigment and at least one blue dye selected from the group consisting of
Amendment Suggestion 2 (support found at para. 0121 in the Examples of Applicant’s specification):
Claim 1:
“…a combination of a cyan pigment and at least one blue dye selected from the group consisting of Acid Blue 90,
…
wherein the cyan pigment [[is]] consists of C.I. Pigment Blue 15:3,
wherein the…C.I. Pigment Red 122,
wherein an amount of the cyan pigment is 4.3% to 15.0% by mass of the total amount of the aqueous ink composition.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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