DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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(s) 1-9, 11, 12, 14, 16-18, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimamura et al. (JP 2011-225867A) in view of Sakamoto (JP 2020-084072A).
Regarding claims 1, 3, 11, 12, 16, 22 and 23: Shimamura et al. teach an aqueous ink for ink jet recording [0001-0002], comprising an aqueous ink for inkjet recording, comprising a resin having an anionic group that is an acrylic resin [0023]; 100 parts by weight of a vinyltriethoxysilane surface treated titanium oxide particles, wherein at least a port of the titanium oxide is covered with alumina and silica; and potassium hydroxide (a potassium ion) [0036; Example 1]. The composition comprising 8 parts by weight of an acrylic resin [0036; Examples]. Shimamura et al. teach that the amount of alumina is 35% to 80 mass% based on the total of alumina and silica, and that to total of alumina and silica is 30 parts or less based upon 100 parts of titanium oxide [0015]. Shimamura et al. teach an example of alumina:silica of 2:3 [0036; Example 1].
The mass ratio of acrylic resin to alumina overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Shimamura et al. fail to specify the claimed polyacrylic acid.
However, Sakamoto teaches an acrylic resin for dispersing a titanium oxide pigment, wherein the acrylic resin is polyacrylic acid with a Mw of 1,000 to 10,000 [0034-0035], with an example Mw of 5,000 [0059], that can be used interchangeably with a styrene-acrylic resin [0060; Examples].
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 polyacrylic acid resin with the Mw of Sakamoto as the acrylic resin in Shimamura et al. to disperse the titanium oxide pigment. It is a simple substitution of one known element for another to obtain predictable results.
For claim 12, the Mw overlaps the claimed range. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 2: Shimamura et al. fail to specify the claimed polyacrylic acid.
However, Sakamoto teaches an acrylic resin for dispersing a titanium oxide pigment, wherein the acrylic resin is sodium polyacrylate with a Mw of 1,000 to 10,000 [0034-0035], with an example Mw of 5,000 [0059], that can be used interchangeably with a styrene-acrylic resin [0060; Examples].
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 sodium polyacrylate with the Mw of Sakamoto as the acrylic resin in Shimamura et al. to disperse the titanium oxide pigment. It is a simple substitution of one known element for another to obtain predictable results. Sodium is the claimed monovalent cation.
Regarding claims 4-8: The ranges in Shimamura et al. overlap the claimed ranges. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 9: Shimamura et al. teach an average particle diameter of 150 to 400 nm, with examples at 250 nm, 260 nm, and 270 nm [0015; Examples].
Regarding claim 14: Shimamura et al. teach 3.53 parts potassium hydroxide.
Regarding claim 17: Shimamura et al. teach 3 parts vinyltriethoxysilane to 100 parts of titanium oxide [0036; Example 1].
Regarding claim 18: Since the composition is the same as claimed it will possess the claimed pH. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 21: Shimamura et al. teach rutile type titanium oxide [0015].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimamura et al. (JP 2011-225867A) and Sakamoto (JP 2020-084072A) as applied to claim 1 above further in view of Sato et al. (2018/0311968).
Shimamura et al. fail to teach a range for the titanium oxide.
However, Sato et al. teach an analogous composition, and that the amount of the titanium oxide is 3 to 20 mass% of a water-based ink composition [0129].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 3 to 20 mass% as taught by Sato et al. as the amount of the titanium oxide in the water-based ink composition of Shimamura et al. to use an art tested range to obtain the desired color.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 of copending Application No. 17/937684 in view of Sato et al. (2018/0311968).
The copending application fails to claim potassium.
However, Sato et al. teach adding a potassium salt to an analogous polyacrylic acid composition to improve the dispersion stability of titanium dioxide [0055; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a potassium salt as taught by Sato et al. to the composition of the copending claims to improve the dispersion stability.
This is a provisional nonstatutory double patenting rejection.
Claims 1-18 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of copending Application No. 18/617399 in view of Sato et al. (2018/0311968).
The copending application fails to claim potassium.
However, Sato et al. teach adding a potassium salt to an analogous polyacrylic acid composition to improve the dispersion stability of titanium dioxide [0055; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a potassium salt as taught by Sato et al. to the composition of the copending claims to improve the dispersion stability.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 1/29/2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant has alleged that Shimamura teaches that an acrylic copolymer is preferred. The argument is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The applicant has made the argument that Simamura fails to teach a ratio of titanium oxide to alumina or silica. This is not persuasive because Shimamura teaches that the amount of alumina is 35% to 80 mass% based on the total of alumina and silica, and that to total of alumina and silica is 30 parts or less based upon 100 parts of titanium oxide [0015]. Shimamura teaches an example of alumina:silica of 2:3 [0036; Example 1].
The mass ratio of acrylic resin to alumina overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
The applicant has alleged the unexpected results of sedimentation recovery property of pigment and the sticking recovery property of the ink. This is not persuasive for the following reasons:
The claims are not commensurate in scope with the data provided.
The applicant has not demonstrated unexpected results over the closest prior art, which is Shimamura et al.
Regarding the double patenting rejections, the applicant has made the argument that Sato does not relate to alumina coating titanium oxide to polyacrylic acid added to ink. This is not persuasive because Sato et al. is relied upon only for adding a potassium salt to improve the dispersion stability of titanium dioxide. Sato et al. is an analogous polyacrylic acid composition.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763