DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/31/2025 has been entered.
Claims 1, 14, 21-24 have been amended. Claim 27 has been added. Claims 2 and 17 have been cancelled.
Claims 1, 3-6, 13-16 and 18-27 are pending.
Claims 1, 3-6, 13-16 and 18-27 are 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 27 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New claim 27 claims “wherein the dye-comprising particle (ii) comprises a salt dye formed in situ in polymerization.” Applicant points to ¶¶ [0049] and [0067] of US 2022/0380612 A1 as providing basis for new claim 27. Examiner respectfully disagrees, as these paragraphs state the following:
“[0049] Examples of the direct dye include Direct Black 154 and Direct Sky Blue. Examples of the oil-soluble dye include monoazo, diazo, metal complex salt-type monoazo, anthraquinone, phthalocyanine, and triarylmethane. Also, halochromic oil-soluble dyes obtained by substituting functional groups of acid and basic dyes with hydrophobic groups can be used as well.
[0067] In other words, a preferred embodiment of the method of producing a composite colored particle of the present invention is a method including a forming composite process of mixing a resin emulsion containing a resin particle carrying a positive electric charge on a particle surface and a water-based medium, and a colored resin dispersion containing a dye-containing particle carrying a negative electric charge on a particle surface and a water-based medium, and a breaking up process of crushing an aggregate.”
The specification as originally filed does not appear to disclose salt dyes formed in situ in polymerization as currently claimed. Applicant is invited to explain where or how basis in the specification exists; otherwise, correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-6, 13-15 and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi et al, US 2011/0306708 A1 (Hiraishi) in view of Maruyama et al, JP 2001-220528A (Maruyama), and taken in view of evidence by Tozuka et al, US 2014/0291585 A1 (Tozuka).
The Examiner has provided a machine translation of Maruyama. The citation of the prior art in this rejection refers to the machine translation.
Regarding claim 1, Hiraishi teaches a water dispersion for ink-jet printing, wherein said dispersion is produced by mixing an aqueous dispersion of anionic colorant particles with an aqueous dispersion of cationic polymer particles to produce an aqueous dispersion of composite particles formed of the cationic polymer particles and anionic colorant particles adhered thereto (i.e., composite colored particles comprising a resin particle carrying a positive/cationic charge on a particle surface and a colorant-comprising particle carrying a negative/anionic electric charge on a particle surface) (Hiraishi; [0017-0018]).
The colorant may be a pigment or a dye, including water-soluble dyes and hydrophobic dyes, wherein hydrophobic dyes are preferred from the viewpoint of optical density (Hiraishi; [0048] and [0060-0061]).
Given that Hiraishi discloses anionic colorant particles that overlap the presently claimed particle carrying a positive/cationic charge on a particle surface, including those comprising a dye as the colorant, it therefore would have been obvious to one of ordinary skill in the art to select a dye as the colorant, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed dye-comprising particle carrying a negative charge on a particle surface.
An aqueous dispersion of anionic polymer particles containing a colorant and an aqueous dispersion of cationic colored particles comprising a cationic polymer are mixed such that they are electrically bonded to each other (Hiraishi; [0208] and [0212]). Adhesion of the anionic colorant polymer particles to the cationic colored particles can be confirmed through observation of the water dispersion with an electron microscope (Hiraishi; [0022-0023], [0037] and Fig. 1-2). Therefore, Hiraishi teaches composite colored particles formed through Coulombic force as claimed.
The composite particles are used in water-based inks (Hiraishi; [0017-0018] and claims 1-2). There is no particular limit imposed on the ink jet system to which the water-based ink is applied (Hiraishi; [0277]). As is evidenced by Tozuka, the term “writing instrument” encompasses inkjet printers (Tozuka; [0421]). Therefore, the inkjet systems of Hiraishi read on the “writing instrument” as claimed. Examiner notes the claimed writing instruments do not recite any structural limitations other than a water-based ink composition comprising composite colored particles.
Hiraishi teaches that the composite particles preferably have an average particle size of 40 to 1000nm (0.04-1µm), more preferably 80-300nm (0.08-0.3µm), from the viewpoint of optical density of a printed image using the water-based ink (Hiraishi; [0223]).
Hiraishi does not explicitly teach:
wherein at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm, and
wherein, in the water-based ink composition, a content of the composite colored particles having a particle size of less than 0.1 µm is less than 3%, as a frequency of the composite colored particles.
With respect to the difference, Maruyama teaches an aqueous dispersion ink comprising a polymeric dispersant with a specific acid value and an insoluble dye having a set particle size range. The resulting ink retains excellent ejection and storage stability, and high recording and good density are achieved with no bleeding (Maruyama; [0005]).
The water-insoluble dye may be a disperse dye or an oil-soluble dye (Maruyama; [0011] and [0014-0016]). The dyes include those obtained by physically bonding a dispersant thereto (i.e., composite colored particles) (Maruyama; [0020]).
The greatest feature of the recording liquid is that the average diameter of the dispersed water-insoluble dye is 0.1 to 0.3µm. By adjusting the average particle diameter to within the above range, the dispersion and ejection stability of the recording liquid are enhanced, and performance results in terms of recording density are obtained (Maruyama; [0035]). Further, the maximum particle size of the water-insoluble dye in the recording liquid is 5µm or less from the viewpoint of dispersion and ejection stability (Maruyama; [0036]).
The recording liquid can be used not only for inkjet and writing instruments, but also for other purposes (Maruyama; [0038]).
Maruyama is analogous art as it teaches aqueous inks for writing instruments comprising composite dye-containing particles with average particle sizes overlapping the claimed ranges.
Based on the teaching of Hiraishi’s preferred composite average particle size of 0.08-0.3µm, and in light of the motivation provided by Maruyama to use dye particles having an average diameter of 0.1-0.3µm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the average particle diameter of the composite colored particles in the aqueous dispersions of Hiraishi to 0.1 to 0.3µm in order to obtain aqueous inkjet recording liquids with enhanced dispersion and ejection stability, and good performance results in terms of recording and optical density.
Further, it would have been obvious to one of ordinary skill in the art to limit the amount of colored particles below the average particle size of 0.1 µm in the inks of Hiraishi in view of Maruyama in order to obtain the improved results disclosed by Maruyama, i.e., enhanced dispersion and ejection stability, and good performance results in terms of recording density.
While Hiraishi in view of Maruyama do not explicitly disclose wherein at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm, and wherein a content of the composite colored particles having a particle size of less than 0.1 µm is less than 3%, as a frequency of the composite colored particles as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the average particle size distributions of the composite colored particles in the inks of Hiraishi in view Maruyama, including over the presently claimed, in order to obtain aqueous inkjet recording liquids with enhanced dispersion and ejection stability, and good performance results in terms of recording and optical density.
Regarding claim 3, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. The cationic polymer particles are produced through emulsion polymerization of an ethylenic unsaturated monomer with a cationic monomer (i.e., a polymer modified with a cationic group) (Hiraishi; [0168-0170]).
Regarding claim 4, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 3 as discussed above. Specific examples of the polymer forming the cationic polymer particles include (meth)acrylic polymers and vinyl acetate polymers as claimed (Shirota ‘2; [0141]). Further, the cationic particles preferably comprise a monomer including (meth)acrylic acid esters having a dialkylamino group and alkyl(meth)acrylates (i.e., acrylic resins) (Hiraishi; [0144-0148] and [0160]).
Given that Hiraishi discloses cationic polymer particles that overlap the presently claimed resin particles carrying a negative charge, including wherein the polymer modified with a cationic group is a vinyl-acetate based resin or an acrylic resin, it therefore would have been obvious to one of ordinary skill in the art to use the vinyl acetate- or acrylic-based cationic resin, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. Hiraishi teaches that the anionic colorant particles preferably comprise anionic polymer particles (i.e., anionic resin particles) (Hiraishi; [0045], [0063], [0105-0107]). The anionic polymer particles include those into which the colorant (i.e., dye) has been incorporated, or anionic polymer particles in which the colorant is uniformly dispersed therein (i.e., the dye is inside the anionic resin particle) (Hiraishi; [0119]).
Regarding claim 6, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. Specific examples of the polymer forming the cationic polymer particles include (meth)acrylic polymers (i.e., acrylic resins) (Hiraishi; [0141]). Further, the cationic particles preferably comprises a monomer including (meth)acrylic acid esters having a dialkylamino group and alkyl(meth)acrylates (i.e., acrylic resins) (Hiraishi; [0144-0148] and [0160]).
Given that Hiraishi discloses cationic polymeric particles that overlap the presently claimed resin particles carrying a negative charge, including wherein the cationic polymeric particle comprises an acrylic resin, it therefore would have been obvious to one of ordinary skill in the art to use an acrylic resin, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 13, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 3 as discussed above. Specific examples of the polymer forming the cationic polymer particles include (meth)acrylic polymers and vinyl acetate polymers as claimed (Hiraishi; [0141]). Further, the cationic particles preferably comprises a monomer including (meth)acrylic acid esters having a dialkylamino group and alkyl(meth)acrylates (i.e., acrylic resins) (Hiraishi; [0144-0148] and [0160]).
Given that Hiraishi discloses cationic polymer particles that overlap the presently claimed resin particles carrying a negative charge, including wherein the polymer modified with a cationic group is a vinyl-acetate based resin or an acrylic resin, it therefore would have been obvious to one of ordinary skill in the art to use the vinyl acetate- or acrylic-based cationic resin, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 14, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. Hiraishi teaches that the anionic colorant particles preferably comprise anionic polymer particles (i.e., anionic resin particles) (Hiraishi; [0045], [0063], [0105-0107]). The colorant may be exposed on the particles of the anionic polymer (i.e., the dye is on the surface of an anionic resin particle) (Hiraishi; [0119]).
Regarding claim 15, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. Specific examples of the polymer forming the cationic polymer particles include (meth)acrylic polymers (i.e., acrylic resins) (Hiraishi; [0141]). Further, the cationic particles preferably comprises a monomer including (meth)acrylic acid esters having a dialkylamino group and alkyl(meth)acrylates (i.e., acrylic resins) (Hiraishi; [0144-0148] and [0160]).
Given that Hiraishi discloses cationic polymeric particles that overlap the presently claimed resin particles carrying a negative charge, including wherein the cationic polymeric particle comprises an acrylic resin, it therefore would have been obvious to one of ordinary skill in the art to use an acrylic resin, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 21, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. To form the composite particles, Hiraishi teaches mixing a water dispersion of cationic polymer particles with a water dispersion of anionic color particles (Hiraishi; [0312] and [[0314]). Thereafter the mixture was either dispersed by ultrasonic dispersion (i.e., breaking up) or filtered to remove coarse particles (Hiraishi; [0312] and [[0314]). Although Hiraishi does not explicitly teach a resin emulsion, forming aggregates and crushing as claimed, the claims are directed to product, not a process.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claims 22-24, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. Hiraishi teaches that the ratio of anionic colorant particles to cationic polymer particles is preferred 1/3 to 100/1, more preferably 2/1 to 50/1, most preferably 5/1 to 30/1 from the viewpoint of improved optical density of an image (Hiraishi; [0229]). Therefore, Hiraishi teaches ratios of cationic resin particles to anionic colorant particles of from 3/1 to 1/100, more preferably 1/2 to 1/50, most preferably 1/5 to 1/30. These ratios overlap in scope with 1/0.1 to 1/50 (claim 22), 1/0/5 to 1/10 (claim 23) and 1/1 to 1/5 (claim 24). For example, the ratio of 1/3, which falls within Hiraishi’s most preferred range, falls within the range of 1/1 to 1/5 of claim 24.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 25 and 26, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 1 as discussed above. Hiraishi teaches that both meth(acrylic) polymers (i.e., the acrylic resins of claim 26) and vinyl-acetate polymers (claim 25) can be used to form to the cationic polymer particles (Hiraishi; [0141], [0146]).
Given that Hiraishi discloses cationic polymers that overlaps the presently claimed polymers modified with a cationic group, including vinyl acetate and acrylic acid polymers, it therefore would be obvious to one of ordinary skill in the art to use the cationic vinyl acetate and acrylic acid polymers, which are both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi in view of Maruyama taken in view of evidence by Tozuka as applied to claim 3 above, and further in view of Shirota, JP 2010184982A (Shirota ‘2).
The English machine translation of Shirota ‘2 provided with the Office Action mailed 07/31/2026 is referenced in the below rejection.
Regarding claim 16, Hiraishi in view of Maruyama is relied upon as teaching the limitations of claim 3 as discussed above, wherein the inks for ink-jet printing comprise an aqueous dispersion of composite particles formed from anionic colorant particles and cationic polymer particles (Hiraishi; [0207]). Colorants include acid dyes, reactive dyes and direct dyes (Hiraishi; [0048]). The cationic polymer may be methacrylic acid esters, vinyl acetate, and styrenic polymers (Hiraishi; [0141] and [0146-0149]). By using the composite particles, improved optical density can be achieved (Hiraishi; [0025-0026]).
Hiraishi does not explicitly a cationic urethane-based resin as claimed.
With respect to the difference, Shirota ‘2 teaches aqueous dispersions for ink-jet recording comprising anionic pigment particles and cationic pigment particles to obtain a dispersion of composite particles (Shirota ‘2; Abstract). The colorant used for the anionic particle include, e.g., acid dyes, reactive dyes and direct dyes (Shirota ‘2; page 3, para 7). The cationic colored particles are used to improve the print density of the printed matter (Shirota ‘2; page 10, para 4). As the cationic polymers used to form the cationic particles, polyurethane and vinyl polymers such as methacrylic acid esters and styrenes are used (Shirota ‘2; page 11, para 1-9).
Shirota is analogous art as it teaches aqueous inks comprising composites of anionic colorant particles and cationic particles.
In light of the disclosure of Shirota ‘2 of the equivalence and interchangeability of using vinyl polymers such as methacrylic acid esters and styrenic polymers as disclosed in Hiraishi, with polyurethane-based polymers as presently claimed, it would therefore been obvious to one of ordinary skill in the art to use polyurethanes as taught in Shirota ‘2 in the composite colored particles of Hiraishi in view of Maruyama, in order to provide cationic particles which improve the print density of the printed matter, and thereby arrive claimed invention.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi taken in view of evidence by Tozuka as applied to claim 1 above, and further in view of Shirato ‘1, JP 62215671 and Fujita et al, JP 2010-1500331A (Fujita).
The EPO translation of Shirato ‘1 was provided with the IDS filed 01/12/2023. The Examiner has provided a machine translation of Fujita. The citation of the prior art in this rejection refer to the machine translations.
Regarding claims 18-21, Hiraishi is relied upon as teaching the limitations of claim 1 as discussed above, wherein the inks for ink-jet printing comprise an aqueous dispersion of composite particles formed from anionic dye-containing particles and cationic polymer particles through Coulombic force (Hiraishi; [0207-0208] and [0212]). Further, as is evidenced by Tozuka, inkjet printers are known in the art as “writing instruments” as claimed (Tozuka; [0421]). The resulting inks have excellent storage stability (Hiraishi; [0024]).
Hiraishi teaches that the composite particles preferably have an average particle size of 40 to 1000nm (0.04-1µm) (Hiraishi; [0223]).
Hiraishi does not explicitly teach:
wherein at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm, and wherein, in the water-based ink composition, a content of the composite colored particles having a particle size of less than 0.1 µm is less than 3%, as a frequency of the composite colored particles; and
wherein the writing instrument is a felt-tip pen (claim 18), a marking pen (claim 19), or a ballpoint pen (claim 20).
With respect to the difference 2), Shirato ‘1 teaches an aqueous ink having good water resistance and hardly causing blurring of the dye (Shirato ‘1; page 1, lines 1-2). By mixing an aqueous solution of a cationic polymer with an acid dye (i.e., an anionic dye or colorant), it is possible to obtain a water-based ink which is excellent in water resistance and less likely to cause bleeding of the dye by forming a dye aggregate (Shirato ‘1; page 1, lines 4-9 and 19-26).
The water-based inks may be used as an ink not only for writing instruments used for handwriting, but also for printing such as for jet printers (page 2, lines 2-4 and 13-15).
Shirato ‘1 is analogous art as it teaches composites of anionic dyes and cationic polymers for handwriting instruments.
With respect to differences 1) and 2), Fujita teaches writing instruments comprising an ink, wherein the ink contains a non-color changing microcapsule dye or pigment (i.e., a composite colored particle), an aqueous vehicle, and a polymer flocculant (Fujita; [0004]).
The non-color changing “pigment” is not particularly limited as long as the average particle diameter is in the range of 0.5 to 4.0µm, and wherein the non-color changing pigment having a size less than 0.5µm is less than 10% by volume, preferably less than 5% by volume, more preferably less than 3% by volume of the total non-color-changing pigment. If the average particle size of the non-color-changing pigment exceeds 4.0µm, it becomes difficult to stably hold the pigment in the ink and the handwriting is easily peeled off by rubbing. When the pigment less than 0.5µm is 10% by volume or more, the pigment particles penetrate to the back side of the paper, making it difficult or impossible to see the characters printed on the back side. (Fujita; [0006]).
Examples of the microcapsule “pigment” include those comprising oil-soluble dyes and disperse dyes (i.e., dye-comprising composite particles) (Fujita; [0006]).
The writing instruments include marking pens, ballpoint pens, and pens having polyester fiber at the tip (i.e., felt-tip pens) ((Fujita; [0016], [0019] and [0026]).
Fujita is analogous art as it teaches writing instruments comprising aqueous inks, wherein the inks comprise composite dye-containing particles with particle sizes overlapping the claimed ranges.
In light of the motivation provided by Shirato ‘1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the water-based inks of Hiraishi comprising composite particles of cationic polymers and anionic colorants in handwriting instruments because Shirato ‘1 teaches that inks comprising such composites are not only suitable for ink-jet printers, but also result in inks for writing instruments that have good water resistance, and hardly any blurring or bleeding. Further, Fujita teaches that aqueous inks comprising composite colored particles are suitable for writing instruments, including felt-tip pens, marking pens and ballpoint pens as claimed. Therefore, it would have been obvious to those skilled in the art to use the inks of Hiraishi in pens as claimed with an expectation of the improved water resistance and decreased color bleeding results as taught by Shirato ‘1.
Based on the teaching of Hiraishi’s composite average particle size of 0.04-1µm, and in light of the motivation provided by Fujita to use dye-comprising particles having an average particle diameter in the range of 0.5 to 4.0µm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the average particle diameter of the composite colored particles in the aqueous dispersions of Hiraishi to 0.5 to 1.0µm when used in handwriting instruments (such as pens) in order to obtain to dispersion stably and rub-fastness of the ink, and in order to avoid penetration of the inks to the back side of the paper upon writing.
Further, it would have been obvious to one of ordinary skill in the art to adjust the size of the colored composites particles in the writing instruments inks of Hiraishi in view of Shirato and Fujita such that the frequency having a particle size of less than 0.5µm is less than 3% by volume of the total composite colorant particles, in order to avoid penetration of the inks to the back side of the paper upon writing.
Less than 3% by volume of composite colored particles having a particle size of less than 0.5µm based on the total composite colorant particles, overlaps in scope with the claimed “composite colored particles having a particle size of less than 0.1 µm is less than 3%, as a frequency of the composite colored particles.”
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
While Hiraishi in view Shirato ‘1 and Fujita do not explicitly disclose wherein at least 95% of the composite colored particles have a particle size in a range of from 0.5 to 1.0µm, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the average particle diameters of the composite colored particles in the writing instruments of Hiraishi in view Shirato ‘1 and Fujita, including over the presently claimed, in order to obtain aqueous inks with good storage stability, dispersion stably and rub-fastness, while not penetrating the back side of the paper upon writing.
Response to Arguments
Applicant's arguments and Declaration under 37 C.F.R. § 1.132 filed 10/31/2025 have been fully considered, but they are not persuasive for the following reasons.
Applicant primarily argues:
“By using composite colored particles having the particle size distribution as claimed, not only the thickness of the drawn lines can be achieved, but also excellent anti-blurring and scratch resistance in writing instruments, as described in the present application in [0015], [0063], and [0068] (PCT [0011], [0055], and [0059]).
In contrast to the claims, Hiraishi's [0312] and Shirota's [0064] describe a method of dispersing using an ultrasonic disperser.”
Remarks, page 5.
First, Hiraishi is relied upon as the closest prior art of record. Shirota ‘2 is relied upon as a teaching reference for claim 16. Examiner notes, however, that a rejection over Shirota ‘2 would be cumulative of the rejections of record over Hiraishi.
Second, Hiraishi does not explicitly require ultrasonic dispersion, and teaches many dispersion methods and apparatus (Hiraishi; [0114-0116] and [0212-0213]). Hiraishi further exemplifies forming composite particles wherein the anionic colorant particles and cationic polymer particles are stirred by means of a magnetic stirrer (Hiraishi; [0298]). The claims are directed to a writing instrument, not a method requiring specific steps.
Applicant further argues:
“However, it cannot be assumed, and there is no concrete evidence of record, that the composite coloring particles obtained by Hiraishi's and Shirota's methods would provide the particle size distribution recited in claim 1. While, for example, Shirota's [0052] indicates an openness to alternative preparative methods, the claimed particle size distribution does not necessarily flow from the cited art.”
“A declaration under 37 CFR § 1.132, illustrating the failure of the methods exemplified in the cited art to provide the claimed features, and the unexpectedly superior results provided by the claims over the art, is submitted with this response. In the attached declaration, the composite colored particles obtained by the dispersing method using the ultrasonic disperser, which is described in Hiraishi and Shirota, have a wide particle size distribution and did not meet the condition of the present invention that "at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm," nor the feature that "a content of the composite colored particles having a particle size of less than 0.1 µm is less than 3%, as a frequency of the composite colored particles."
As noted in [0064] to [0068] of the present application (PCT [0056] to [0058]), such composite coloring particles having this particle size distribution can be manufactured through a "breaking up process" in which the particles are stirred and crushed using a stirrer.”
Remarks, page 6.
Regarding the dispersion/”breaking up” step, see 1) above.
Regarding the claimed particle size distributions, as noted in the above rejection on pages 7 and 17, Examiner recognizes that Hiraishi does not explicitly teach particle size distributions as claimed. Instead, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). “The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art.” See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Because the particle sizes range taught by Hiraishi broadly encompass particle size distribution ranges as claimed, particularly when combined with Maruyama and Fujita as discussed on pages 7-9 and 18-21 above, Examiner maintains that optimizing such ranges is within the ordinary skill of those in the art, absent a showing otherwise.
Applicant further argues:
“Compared to the ink containing composite coloring particles outside of the claims, the ink containing the composite coloring particles claimed exhibited superior results in writing performance evaluations, particularly in terms of anti-blurring and scratch resistance.
Since Hiraishi and Shirota relate to inks for inkjet printing, Hiraishi and Shirota do not address resolve issues concerning anti-blurring or scratch resistance. Hiraishi and Shirota do not describe or otherwise indicate the features claimed, nor the result effectiveness of such features, let alone the technical effects that can be achieved by the combination of features claimed.
Therefore, based on the objective experimental evidence and declaratory opinion of record, an ink comprising composite coloring particles of the particle size distribution recited in the claims exhibits unexpectedly superior effects compared to inks comprising composite coloring particles with particle size distributions falling outside the claims. No combination of the references cited would have predictably led to the claims. Thus, the claims should not be obvious over the cited art.”
Remarks, pages 6-7.
In response to applicant’s remarks in 3) above and items # 8-17 in the Declaration filed 10/31/2025 regarding the presently claimed writing instruments exhibiting superior results, while it is appreciated to point to specific examples and comparative examples to support the position, the data to establish unexpected results remains unpersuasive for the reasons below.
The data is not commensurate in scope with the scope of the claims. Specifically, the data shows using a specific water-based ink composition comprising specific amounts and types of composite colored particles dispersed in a water-based medium, wherein each of the composite colored particles comprises (i) specific amounts and types of a resin particle carrying a positive electric charge on a particle surface, and (ii) specific amounts and types of a dye-comprising particle carrying a negative electric charge on a particle surface, wherein the resin particle and the dye-comprising particle form the composite colored particle through Coulombic force, wherein specific amounts of at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 um, and wherein, in the water-based ink composition, specific amounts of a content of the composite colored particles having a particle size of less than 0.1 m is less than 3%, as a frequency of the composite colored particles;
while the present claims broadly recite a water-based ink composition comprising any amounts and types of composite colored particles dispersed in a water-based medium, wherein each of the composite colored particles comprises (i) any amounts and types of a resin particle carrying a positive electric charge on a particle surface and (ii) any amounts and types of a dye-comprising particle carrying a negative electric charge on a particle surface, wherein the resin particle and the dye-comprising particle form the composite colored particle through Coulombic force, wherein at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 mm, and wherein, in the water-based ink composition, a content of the composite colored particles having a particle size of less than 0.1 mm is less than 3%, as a frequency of the composite colored particles.
Further, there is no data using the lower end (i.e., 95%) of the claimed range of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm, and using the upper end of the content of the composite colored particles having a particle size of less than 0.1 µm as a frequency of the composite colored particles.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The data in the Declaration is also unclear for the following reasons. Item #8 states that Composite color particles of Comparative Example 21 were obtained in the same manner as in production Example 1 in ¶¶ [0085] and [0086] of US 2022/0380612A1. However, ¶¶ [0085] and [0086] form anionic urea-urethane resin based resin encapsulating an oil-soluble dye (i.e., anionic dye-containing resin particles B-1), not composite colored particles. Examiner assumes that Example 11 of the Declaration contains composite particle P-1 as shown in Tables 1-2 and Example 11 of Table 3 of US 2022/0380612A1, and Comparative Example 21 of the Declaration differs only in the dispersion step.
Item #11 states that the composite colored particles of Comparative Example 22 were obtained in the same manner as in production Example 2 in ¶¶ [0087] to [0090] of US 2022/0380612A1. ¶¶ [0087] -[0089] form anionic acrylic resin encapsulating an oil-soluble dye (i.e., anionic dye-containing resin particles B-2), not composite colored particles as claimed. ¶ [0090] forms a comparative anionic colored resin particle.
Item #12 states that except for dispersing for 3 minutes using an ultrasonic disperser, the ink composition containing the composite colored particles was prepared in the same manner as in Example 12 in ¶¶ [0095] and [0096] of US 2022/0380612A1.
Example 12 of US 2022/0380612A1 comprises composite P-1:
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388
354
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[AltContent: arrow]From Table 2 of US 2022/0380612A1 composite P-1 has the following particle size range:
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94
254
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However, from Table A of the Declaration, the composites of “Example 12” have the following particle size range:
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128
508
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Therefore, it appears as though “Example 12” and Comparative Example 22 of the Declaration uses Composites P-2, more in line with Examples 13-14 of the specification, not Example 12.
For all these reasons, Applicant’s Remarks and the evidence of record have been fully considered, but are not deemed persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ohno et al, US 2019/0367755 A1, teaches aqueous writing inks comprising resin particles combined with a colorant. For the purpose of keeping dispersibility and avoiding line skipping and/or blur, the size is preferably small. On the other hand, to realize high color development, the size is large. In view of those facts, the mean particle size of the resin particles combined with a colorant is from 0.05 to 3µm, more preferably 0.1 to 1µm [0037].
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732