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 .
Election/Restrictions
Applicant's election with traverse of Group II (claims 26 and 28-29) in the reply filed on January 15, 2026 is acknowledged. The traversal is on the ground(s) that: 1) the restriction between Groups II and V is improper because the nature of the claims is such that the claims are related as a product and a process of use of said product and 2) Nagahama does not disclose or reasonably suggest an aqueous particle dispersion comprising a polymer and a Si-O-containing moiety of Formula I or Formula II. This is not found persuasive for the following reasons. Regarding 1), Groups II and V lack unity of invention because they have a special technical feature of the aqueous particle dispersion comprising a polymer and a Si-O-containing moiety which does not make a contribution over the prior art and regarding 2), while Nagahama may not teach the recited SI-O-moiety of Formula I or II, upon further search and consideration, the Ala (WO 2020/076744) reference used below in the rejections does teach the recited aqueous particle dispersion (please see the rejection for mapping of the teachings in Ala to the claim limitations.)
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
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.
Claim(s) 26 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ala (WO 2020/076744) in view of Dain (US 2015/0275075).
Regarding claim 26, Ala teaches an aqueous dispersion (Abstract) comprising a colorant (page 5, lines 1-5) and an aqueous particle dispersion (Abstract) comprising a polymer (page 2, lines 27-30) and a Si-O-containing moiety with the following structure:
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Which reads on Formula I when R1 is an alky group and R2 is C1-C3 alkyloxy group (page 4).
While Ala teaches that the aqueous dispersion can be used in paint formulations (Examples), however, it fails to teach that the aqueous dispersion is used as an inkjet ink.
Dain teaches a liquid coating composition can be used in many different application techniques, such as roll-coating, brush-coating as well as inkjet application ([0002]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the aqueous dispersion of Ala be an inkjet in as taught by Dain. One would have been motivated to do so in order to receive the expected benefit of printing on substrates using precision inkjet ink techniques.
Regarding claim 28, Ala teaches that the formulation can further contain a water soluble organic solvent (such as propylene glycol) (Table 1).
Regarding claim 29, Ala teaches that the colorant is a pigment (page 5, lines 1-5).
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 26 and 29 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12 of U.S. Patent No. 12,369,077. Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach an aqueous inkjet ink with a colorant and aqueous particle dispersion that comprises a polymer and a Si-O containing moiety.
Conclusion
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764