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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/16/2026 has been entered.
Response to Amendment
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 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.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
It is unclear what “in any form” is intended to encompass, i.e., physical form or chemical form?
Claim Rejections - 35 USC § 103
Claims 1 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 109651836, machine translation cited on IDS dated 12/9/2022) in view of Morrison (US 5,151,129) and Devreux (US 2018/0362769).
With respect to claims 1, 7, and 11, Yang discloses an environmentally friendly low PCB (polychlorinated biphenyl content) for Pigment Yellow 83 (disazo pigment) that is lower than 25 ppm (abstract). Yang teaches that reducing the PCB content is environmentally friendly (paragraphs 0007 and 0023). The PCB content is reduced by adding a substituted olefin such as hydroxymethyl acrylamide to effectively prevent side reactions with dichlorobenzidine that generate polychlorinated biphenyls (paragraphs 0020 and 0023).
Yang fails to disclose (i) Pigment Yellow 13 or Pigment Yellow 14 or (ii) the primary aromatic amine content.
With respect to (i), Morrison teaches that Pigment Yellow 83 disclosed by Yang is a diarylide yellow pigment produced by coupling acetoacet-4-chloro-2,5-dimethoxyanilide onto 3,3’-dichlorobenzidine. Similarly, other diarylide yellow pigments include Pigment Yellow 13 which is prepared by coupling acetoaceto-m-xylidide onto 3,3’-dichlorobenzidine and Pigment Yellow 14 which is prepared by coupling acetoaceto-o-toluidide onto 3,3’-dichlorobenzidine (col. 3, lines 9-21). It is the examiner’s position that Yang’s method of reducing PCB content in Pigment Yellow 83 is applicable to reducing PCB content in Pigment Yellow 13 or Pigment Yellow 14 because Yang discloses that the pigments are all derived from 3,3’-dichlorobenzidine and would therefore would be expected to behave the same during Yang’s process.
Given that Yang utilizes Pigment Yellow 83, a dichlorobenzidine-coupled pigment, and further given that Pigment Yellow 13 and Pigment 14 are also dichlorobenzidine-coupled pigments as disclosed by Morrison, it would have been obvious to one of ordinary skill in the art to utilize the same process applied to Pigment Yellow 83 by Yang to a similar diarylide yellow pigments as claimed Pigment Yellow 13 and Pigment Yellow 14. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
With respect to (ii), Devreux discloses azoic pigments such as Pigment Yellow 83, Pigment Yellow 13, and Pigment Yellow 14 (paragraph 0035) and teaches that these pigments contain impurities such as primary aromatic amines which make packaging made from these pigments potentially harmful to the end-consumer (paragraph 0002). Devreux discloses how prior art has reduced primary aromatic amines in Pigment Yellow 83 and Pigment Yellow 13 to 370 ppm (paragraph 0008). To improve the reduction, Devreux discloses using a derivatization agent and performing encapsulation (paragraph 0021-0022) to reduce PAA to below 20 ppm (paragraph 0025).
Given that both Yang and Devreux are drawn to environmentally friendly disazo pigments such as Pigment Yellow 83 and 13 and further given that Devreux teaches reducing the amount of primary aromatic amines, it would have been obvious to one of ordinary skill in the art to prepare a disazo pigment having PBC of less than 15 ppm and PAA content of less than 700 ppm.
With respect to claim 5, Yang discloses a printing ink that uses Pigment Yellow 83 (paragraph 0004).
With respect to claims 6 and 8, Yang discloses PCB content of lower than 25 ppm which overlaps with claimed range of less than 8 ppm.
With respect to claims 9 and 10, Devreux discloses reducing PAA to below 20 ppm (paragraph 0025).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 109651836, machine translation cited on IDS dated 12/9/2022) in view of Morrison (US 5,151,129) and Devreux (US 2018/0362769) and further in view of Liu (US 7,883,557) and Tateishi (US 8,172,910).
The discussion with respect to Yang, Morrison, and Devreux in paragraph 5 above is incorporated here by reference.
With respect to claim 3, Yang teaches adding OS-15 in the preparation process which results in pigment particles covered in active agent (i.e., surfactant) molecules (paragraphs 0020). OS-15 is C12-18H25-37—O—(CH2CH2O)15—H as evidenced by Liu, i.e., OS-15 is a polyoxyethylene C12 to C18 ether.
Yang fails to disclose that the surfactant is a polyoxyethylene alkyl ester that has alkyl group with carbon number of 8 or more.
Tateishi discloses an azo pigment dispersion (abstract; col. 14, lines 3-8) and teaches that a suitable dispersant includes nonionic surfactants such as polyoxyethylene alkyl ethers (like OS-15) and polyoxyethylene fatty acid esters (col. 14, line 63 to col. 15, line 1). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Given that Yang teaches adding a polyoxyethylene ether surfactant for disazo pigment Yellow 83 and further given that Tateishi teaches that polyoxyethylene fatty acid esters are also suitable as equivalent nonionic surfactants in an azo pigment dispersion, it would have been obvious to one of ordinary skill in the art to utilize equivalent nonionic ester surfactants in Yang’s pigment composition.
With respect to claim 4, this claim which further limits the alkylamine does not exclude the embodiment of claim 3 comprising poly(oxyethylene) alkyl ester having alkyl group with at least 8 carbon atoms. Because the latter embodiment is taught by the prior art, it is proper to include this claim in the rejection.
Response to Arguments
Applicant's arguments filed 1/16/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that the combination of Yang and Devreux is nonobvious because the N-hydroxymethylacrylamide used by Yang would be polymerized with Devreux’s derivatizing agent resulting in an ineffective hydroxyl group-containing monomer.
The N-hydroxymethylacrylamide of Yang which is used to reduce polychlorinated biphenyl content (PCB) is added in a different step than Devreux’s derivatizing agent. Specifically, N-hydroxymethylacrylamide is added during the product and coupling reactions to form the pigment, and Devreux’s derivatizing agent is applied in a slurry comprising the pigment. Therefore, they can both be used to prepare the same final pigment and do not interfere with each other. Also, Devreux teaches that the derivatization agent can include hydrophilic groups such as acidic carboxylic acids and substituted acrylamides (paragraph 0040) and monomers can include alcohol groups (paragraph 0045), which suggests that the hydroxyl group of Yang’s N-hydroxymethacrylamide would be permitted in Devreux’s mixture of derivatizing agent and encapsulant monomer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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