DETAILED ACTION
Response to Amendments
In response to the amendment received on 11/13/2025:
• Claims 1, 4, and 16-23 are currently pending. Claims 2, 3, and 5-15 are canceled. Claims 16-17 are withdrawn for being directed to a non-elected invention(s).
• The previous grounds of rejection over Maegawa et al. (US-20200070554-A1), Suzuki et al. (US-20190077978-A1), and Takahashi et al. (JP-2020011503-A), are withdrawn following the amendments to the claims.
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 22 is objected to because of the following informality:
• Claim 22 should be amended as follows: “…wherein the acrylic resin is a styrene acrylic emulsion.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 18, 20, and 23 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.
Claim 18 contains the trademark/trade name TEGO Twin, TEGO Glide, and TEGO Wet. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a particular commercial product and, accordingly, the identification/description is indefinite. To correct, the Examiner suggests deleting the claim.
In claim 20, the phrase “the oxidized polyethylene wax” lacks sufficient antecedent basis, given that claim 20 is dependent claim 1. To correct, the Examiner suggests amending claim 20 to be dependent on claim 19. For the purposes of examination, the Examiner is interpreting claim 20 to be dependent on claim 19.
In claim 23, the phrase “wherein the surfactant is an acetylene-based surfactant” is confusing. Claim 1 already claims the surfactant to include a polysiloxane compound. Thus, the surfactant cannot be both a polysiloxane compound and an acetylene-based surfactant. It is believed Applicants intended the surfactant to further comprise an acetylene-based surfactant, and the Examiner is interpreting as such. To correct, the Examiner suggests amending claim 23 as follows: “wherein the surfactant further comprises an acetylene-based surfactant.”
Claim Rejections - 35 USC § 102
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, 18-20, and 23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hayamizu et al. (US-20210060993-A1) (hereinafter referred to as “Hayamizu”).
Regarding claims 1 and 23, Hayamizu teaches an inkjet aqueous ink comprising: a color material; an aqueous medium; a surfactant; a wax resin; and an acrylic resin as a binder resin, wherein the surfactant further comprises an acetylene-based surfactant (see Hayamizu at para. 0111, teaching an inkjet ink; also see Hayamizu at para. 0112, teaching the ink may contain a pigment; also see Hayamizu at para. 0140 and 0142, teaching the ink may contain a binder resin, such as (meth)acrylic resin microparticles; also see Hayamizu at para. 0150, teaching the ink may contain a polyolefin wax emulsion; also see Hayamizu at para. 0159 and 0162, teaching the ink may contain an acetylene-based surfactant as well as a surfactant other than the acetylene-based surfactant (hereafter referred to as “other surfactant”); also see Hayamizu at para. 0163 and 0166, teaching the other surfactant to preferably be a siloxane-based surfactant; also see Hayamizu at para. 0169-0170, teaching the inkjet ink may be aqueous); wherein
• the surfactant includes a polysiloxane compound having a siloxane structure (-Si-O-) with a repetition number of 5 or more and 1000 or less, wherein the polysiloxane compound is represented by the general formula (2) (see Hayamizu at para. 0163 and 0166, teaching the other surfactant to preferably be a siloxane-based surfactant, and that the siloxane-based surfactant may be selected from the same group of surfactants mentioned earlier for the treatment liquid; also see Hayamizu at para. 0081, teaching TEGO Glide 410 as a suitable siloxane-based surfactant for the treatment liquid; thus, Hayamizu necessarily teaches their ink may contain a siloxane-based surfactant, such as TEGO Glide 410; TEGO Glide 410 reads on the claimed surfactant represented by the general formula (2), as disclosed by Applicant’s specification at para. 0054).
Regarding claim 18, see Hayamizu at para. 0081, teaching TEGO Twin 4100 as a suitable siloxane-based surfactant; note that the claim 18 rejection relies upon the teaching of TEGO Twin 4100 alternative to the teaching of TEGO Glide 410 in claim 1 above.
Regarding claim 19, see Hayamizu at para. 0273 and Inkjet ink No. 1 at Table 4 at pg. 25, teaching the use of AQUACER 515 in their examples. Thus, Hayamizu reasonably teaches the use of AQUACER 515 as the wax in their ink composition, as exemplified in their example embodiments. AQUACER 515 is an oxidized polyethylene wax, as disclosed by Applicant’s specification at para. 0203.
Regarding claim 20, see Hayamizu at para. 0153, teaching the content of the wax to be preferably at least 0.5 mass% in the ink, which falls within the claimed range.
Claims 1, 4, and 18-23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Utsugi et al. (US-20200199387-A1) (hereinafter referred to as “Utsugi”).
Regarding claim 1, Utsugi teaches an inkjet aqueous ink comprising: a color material; an aqueous medium; a surfactant; a wax resin; and an acrylic resin as a binder resin (see Utsugi at para. 0013, teaching a water-based ink for an inkjet containing a pigment; also see Utsugi at para. 0145, teaching the ink may include a surfactant; also see Utsugi at para. 0100 and 0102, teaching the ink may contain a polyolefin wax emulsion; also see Utsugi at para. 0034, teaching the ink as containing a fixing resin (i.e., binder resin) block polymer containing an A block and a B block, and that the A and B block each independently may be (meth)acrylic-based polymers; thus, Utsugi necessarily teaches the fixing resin (binder resin) may be an acrylic resin, given both blocks are taught to suitably be (meth)acrylic-based polymers);
• wherein the surfactant includes a polysiloxane compound having a siloxane structure (-Si-O-) with a repetition number of 5 or more and 1000 or less, wherein the polysiloxane compound is represented by the general formula (2) (see Utsugi at para. 0145 and 0147, teaching the surfactant to be a compound represented by general formula (5), and that a commercial product represented by the general formula (5) includes TEGO Glide 440; TEGO Glide 440 reads on the claimed surfactant represented by the general formula (2), as disclosed by Applicant’s specification at para. 0054).
Regarding claim 4, Utsugi teaches the inkjet aqueous ink according to claim 3, wherein the polysiloxane compound has an amount of 0.05% by mass or more and 2.0% by mass or less of a total amount of the inkjet aqueous ink (see Utsugi at para. 0147, teaching the content of the surfactant to preferably range from 1 to 1.5 wt% in the ink, which falls completely within the claimed range).
Regarding claim 18, see Utsugi at para. 0147, teaching the surfactant may be a compound represented by general formula (3) and/or a compound represented by general formula (5); also see Utsugi at para. 0151, teaching TEGO Wet 270 as a suitable surfactant represented by the general formula (3); thus, Utsugi teaches their surfactant may contain both TEGO Glide 440 (surfactant represented by general formula (5)) and TEGO Wet 270 (surfactant represented by general formula (3)).
Regarding claim 19, see Utsugi at para. 0102, teaching the ink may contain both the A-B block polymer and the wax emulsion; also see Utsugi at para. 0225 and Example 54 at pg. 28, teaching AQUACER 515 as a suitable wax emulsion; thus, Utsugi reasonably teaches the use of AQUACER 515 as the wax in their ink composition, as exemplified in their example embodiments; AQUACER 515 is an oxidized polyethylene wax, as disclosed by Applicant’s specification at para. 0203.
Regarding claim 20, see Example 54 of Utsugi at pg. 28, teaching an example ink containing 4 wt% of fixing resin 1 (a block polymer) and 1 wt% of AQ515 wax, or AQUACER 515; thus, Utsugi reasonably teaches via their example embodiments a content for the wax that falls within the claimed range (e.g., 1 wt%).
Regarding claim 21, see Example 54 of Utsugi at pg. 28, teaching an example ink containing 4 wt% of fixing resin 1 (a block polymer) and 1 wt% of AQ515 wax, or AQUACER 515; thus, Utsugi reasonably teaches via their example embodiments a content for the block polymer resin that falls within the claimed range (e.g., 4 wt%).
Regarding claim 22, see Utsugi at para. 0034, teaching that the A and B block in the block polymer may each independently be styrene-based, (meth)acrylic-based, or styrene-(meth)acrylic based; thus, Utsugi necessarily teaches the fixing resin (binder resin) may be an styrene-acrylic resin; also see Utsugi at para. 0059 and 0061, teaching the A-B block polymer may be in the form of an emulsion.
Regarding claim 23, see Utsugi at para. 0146, teaching the surfactant to preferably contain both an acetylene-based surfactant and a siloxane-based surfactant.
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 4 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hayamizu.
Regarding claim 4, see Hayamizu at para. 0167, teaching the other surfactant may be present in an amount ranging from 0.01 to 3% by mass, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 21, see Hayamizu at para. 0149, teaching the content of the binder resin to range from 3 to 10% by mass in the ink, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hayamizu, as applied to claim 1 above, and further in view of Yoda et al. (US-20180237646-A1) (hereinafter referred to as “Yoda”).
Regarding claim 22, Hayamizu teaches the ink according to claim 1 outlined above, wherein the acrylic resin is a styrene-acrylic resin (see Hayamizu at para. 0140 and 0142, teaching the binder resin may be styrene-(meth)acrylic resin microparticles). However, Hayamizu fails to explicitly teach the resin microparticles as being in the form of an emulsion.
However, it is generally well-known that styrene-acrylic microparticles that function as binder resins in aqueous inks may suitably take the form of emulsions (see Yoda at para. 0017 and 0078).
Hayamizu teaches examples where the binder resin is in the form of an emulsion (see Hayamizu at para. 0278).
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 styrene-acrylic binder resin microparticles in the form of an emulsion in the ink of Hayamizu, given it is well-known resin microparticles are suitably added to inks in the form of emulsions (see Yoda at para. 0078). Combining known elements to obtain predictable results is 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.
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue Hayamizu discloses methacrylic resins, styrene-(meth)acrylic resins, PVA1.03 varnish, and BYK190, but fails to disclose utilizing an acrylic resin as a binder resin (see Applicant’s Remarks at pg. 9-10). Similarly, Applicants argue Utsugi fails to disclose an acrylic resin as a binder resin (see Applicant’s Remarks at pg. 10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Hayamizu explicitly teaches the binder resin in their ink composition may be a (meth)acrylic resin, and that (meth)acrylic means “acrylic” and/or “methacrylic” (see Hayamizu at para. 0088, 0140, and 0142). Accordingly, Hayamizu necessarily teaches their binder resin may be an acrylic resin. Moreover, Utsugi explicitly teaches their fixing resin (i.e., binder resin) may be an A-B Block polymer, and that the A block and B block may each be independently a (meth)acrylic-based polymer (see Utsugi at para. 0034; also see Utsugi at para. 0046). Accordingly, Utsugi necessarily teaches their binder resin may be an acrylic resin, i.e., where both blocks are acrylic-based polymers.
Next, Applicants point to their Examples 17-20 to demonstrate the claimed invention as demonstrating advantageous results in terms of water repellency and appearance, which the cited references do not suggest (see Applicant’s Remarks at pg. 10),
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 17-20 only a single acrylic binder resin, VONCOAT IJ-8800, despite the claims suggesting a wide variety of possible acrylic resins (see Applicant’s specification at pg. 93-94). Similarly, Applicants use in their examples 17-20 only a single wax resin, Aquacer 515, despite the claims suggesting a wide variety of possible wax resins (see Applicant’s specification at pg. 93-94). Likewise, Applicants only provide support in their examples for 1 wt% of the polysiloxane surfactant, despite claim 1 allowing for any amount (e.g., 0.05 to 2.0 wt% in claim 4). Furthermore, examples 17-20 only test four types of polysiloxane surfactants, despite claim 1 claiming at least five possible polysiloxane surfactants (Chemical Formula 1 (A), (B), (C), and (D), as well as Chemical Formula 2). As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the wax resin, the acrylic binder resin, and the polysiloxane surfactant included in claim 1.
Moreover, examples 17-20 do worse in terms of “Appearance” and “Mottling” than inks that fall outside of the claimed invention. For instance, example 1 has an “Appearance” of “3” and a “Mottling” of “5” – scores which are higher than the “Appearance” and “Mottling” scores of examples 17-20. Example 1 does not contain an acrylic binder resin. Consequently, doubt is raised as to the “advantageous” or unexpected nature of the alleged benefits, given that examples that fall outside the scope of claim 1 perform better than examples that fall within claim 1.
Furthermore, Applicants do not provide any comparative examples where the ink lacks a wax resin, i.e., all the comparative examples contain a wax resin. Thus, it is unclear whether the addition of the wax resin is critical in combination with the claimed acrylic resin and surfactant, given that no comparative examples without the wax resin are provided.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731