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 .
The amendment filed 11/24/2025 has been entered. Claims 1-28 have been canceled. Claims 29-50 are pending in the application. 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
Claim 46 is 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, for essentially the same reasons as recited in the prior office action and restated below.
As noted in the prior office action, claim 46 recites, “The printed substrate of claim 45, which after printing and thermal curing, is water resistant to at least 100 rubs,” however, given that the claim nor the specification clearly defines how water resistance is evaluated based upon the number of “rubs” and that the conditions for applying said “rubs” may directly affect how many rubs would need to be applied, the limitation with respect to the printed substrate being “water resistant” is a relative limitation that renders the claim indefinite. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, e.g., one skilled in the art would not be able to determine whether or not a printed substrate was “water resistant to at least 100 rubs” as required by claim 46.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.)
Claim Rejections - 35 USC § 102
Claims 29-34, 36, 38-39, and 41-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitagawa (US2012/0306976A1), for generally the reasons recited in the prior office action and restated below, wherein it is again noted that Kitagawa clearly discloses an aqueous inkjet printing ink composition comprising an acid-functional water-soluble or water-dispersible resin that is an acrylic copolymer as a water-soluble pigment dispersant, and a hydroxyl-functional polyurethane resin having a hydroxyl value of 20-70 mg KOH/g, preferably 30-60 mg KOH/g (of the resin), as a “water-soluble fixing agent” that “become[s] soluble to water by neutralizing the acidic carboxyl groups or sulfonate groups that exhibit acidic nature using a basic substance” and that after application of the inkjet printing ink to a fiber or fabric substrate and heating to a temperature of 100°C or more, crosslinks with the water-soluble dispersant by a crosslinking agent to form a printed substrate wherein the printed ink is fixed on the fiber/fabric, and hence, the Examiner maintains her position that the claimed invention as recited in instant claims 29-34, 36, 38-39, and 41-50 is anticipated by Kitagawa as further detailed below.
As discussed in the prior office action, Kitagawa discloses “an inkjet printing ink which, upon printing a desired design using an inkjet printer, can be stably ejected into fine patterns, can firmly fix pigments on the fibers by heating at 100 °C. or more, and can provide colored fabric of fibers with soft texture and good fastness” (Paragraph 0001); wherein the ink composition comprises: (A) a pigment dispersion consisting of a pigment, a water-soluble pigment dispersant, and a hydrophilic solvent; (B) a water-soluble fixing agent; and (C) a crosslinking agent (Abstract, Claim 1). Kitagawa discloses that “the water-soluble pigment dispersant in (A) is a specific emulsion polymer neutralized by a basic substance” (Abstract), particularly “(A2-d) an emulsion polymer consisting of (A2-a) a (meth)acrylic acid ester monomer, (A2-b) an aliphatic vinyl monomer having a carboxyl group, and (A2-c) an aliphatic vinyl monomer having a crosslinking functional group, which is neutralized with (A2-e) a basic substance” (Paragraph 0070); wherein examples of the aliphatic vinyl monomer having a carboxyl group (A2-b) include (meth)acrylic acid and other acid-containing vinyl monomers as recited in Paragraph 0073 and combinations thereof (reading upon the claimed “acid-functional water-soluble or water-dispersible resin…wherein the acid-functional water-soluble or water-dispersible resin is an acrylic or styrene copolymer” as in instant claims 29, 33, and 43); while examples of the basic substance (A2-e) used as a neutralizer of the emulsion polymer include those as recited in Paragraphs 0086-0087, preferably a secondary or tertiary amine, such as triethylamine, N,N-dimethylethanolamine, diethylethanolamine, and triethanolamine (Paragraphs 0070-0087; the latter three basic substances reading upon the claimed “involatile base” of claims 33 and 43, in light of the instant specification). Kitagawa discloses that the water-soluble fixing agent (B) is one or more selected from the group consisting of a water-soluble urethane resin, a water-soluble epoxy resin, a water-soluble acrylic resin, and a modified polyvinyl alcohol (Paragraph 0041, Item 9); preferably a water-soluble urethane resin having an acid value of 20-90 mg KOH/g and a hydroxyl value of 20-70 mg KOH/g (Paragraph 0041, Item 11; Paragraph 0097), and more preferably having an acid value of 50-70 mg KOH/g and a hydroxyl value of 30-60 mg KOH/g (Paragraph 0097); wherein the “[w]ater-soluble fixing agents become soluble to water by neutralizing the acidic carboxyl groups or sulfonate groups that exhibit acidic nature using a basic substance” (Paragraph 0098), and given the use of the urethane resins in the examples for the water-soluble fixing agent, Kitagawa clearly discloses the claimed “hydroxyl-functional polyurethane dispersion having a hydroxyl value of ≥ 25 mgKOH/g based on the dry polymer weight” as recited in instant claims 29, 33, 36, and 43. Kitagawa further discloses that by blending the pigment dispersion with the water-soluble fixing agent having a crosslinking functional group and the crosslinking agent, and then applying the ink composition to a fabric or fiber substrate (as in instant claims 44 and 47) by inkjet printing and heating to a temperature of 100°C or more (as in instant claims 29-31) to induce crosslinking between the water-soluble pigment dispersant, the water-soluble fixing agent, and the crosslinking agent (e.g., “thermally curing”), the polymer pigment dispersant and the water-soluble fixing agent become insoluble to water and react as a pigment fixing agent firmly fixing pigments on the fibers; wherein the ink before heat treatment is in a condition of being soluble to water (e.g. as in instant claim 42) and has excellent jetting stability, while by heating after printing, the ink acts as a water-insoluble pigment-fixing agent to give water-resisting fastness (Entire document, particularly Abstract, Paragraphs 0001, 0037-0038, and 0117-0118). Hence, Kitagawa anticipates instant claims 29-31, 33, 36, 43-45, and 47.
With respect to instant claim 32, Kitagawa discloses that in general, the heat treatment is conducted at a temperature of 100-200°C for 1-20 min., preferably 100-150°C and 3-10 min., and more preferably 120-150°C and 3-5 min. (Paragraph 0118), thereby anticipating instant claim 32.
With respect to instant claim 34, Kitagawa discloses that the ink composition has a viscosity of 3-15 mPa-s at 20°C (Paragraph 0115), and given that Kitagawa discloses that the pigment dispersions have time-course viscosity stability with no changes in viscosity at 60°C for 1 week, and specifically discloses working examples with ink compositions having a viscosity at 6 mPa-s and 4 mPa-s at 20°C, wherein the ink compositions have excellent long-term storage stability and are not reactive under normal temperature atmosphere given that the crosslinking agent induces reactivity upon heating at 100°C or more, the Examiner takes the position that Kitagawa discloses the claimed invention with sufficient specificity to anticipate instant claim 34 (Entire document, particularly Paragraphs 0052, 0057, 0093-0094, 0126, Examples).
With respect to instant claim 38, Kitagawa discloses that the water-soluble pigment dispersant, e.g. the acrylic copolymer, is present in a blending weight ratio of 0.1-2.0 per 1.0 of the pigment (Paragraph 0093), while the water-soluble fixing agent, e.g. hydroxyl-containing polyurethane, is present in an amount of 20 parts or less relative to 100 parts of the inkjet printing ink, more preferably 10 parts or less, and furthermore preferably 5 parts or less (Paragraph 0100), and given that the ink composition of working Example 3 disclosed by Kitagawa comprises 1.3wt% acrylic copolymer pigment dispersant and 15wt% urethane fixing agent (Example 3) for a total of less than 20% (w/w) of “acid-functional resin and hydroxyl-functional material”, Kitagawa anticipates instant claim 38.
With respect to instant claim 39, Kitagawa discloses that as the hydrophilic solvent, water and water-soluble organic solvents may be used (Paragraphs 0088 and 0112-0113), wherein most of the volatile components of the ink composition is water (Paragraph 0111), and specifically discloses at least one working example wherein the concentration of organic water-soluble co-solvents is less than 35% (w/w) as instantly claimed (e.g. Example 3), thereby anticipating instant claim 39.
With respect to instant claims 41-42, Kitagawa discloses that the ink compositions maintain a water-soluble state when no heat treatment is applied such that even when water evaporates and the ink dries at the nozzle end during printing, the ink is soluble to water so that the ink itself can re-disperse, resulting in no clogging of the nozzle and continuous inkjet printing is possible; and that to easily resume a printable state after a resting state, a hydrophilic solvent or alkaline water can be used for a cleaning operation (Paragraph 0058). Kitagawa also discloses that the inks when volatilized under the condition of normal temperature for 3 days or 40°C for 1 hour have excellent re-dispersibility in water, alkaline water, or ink without generating aggregates, and specifically discloses working examples wherein the ink is dried and then completely re-dispersed in alkaline water; and given that the ink composition disclosed by Kitagawa comprises the same components as instantly claimed, the Examiner takes the position that the ink composition disclosed by Kitagawa would inherently be “resoluble after drying at 50°C for 15 minutes” in “aqueous solutions comprising a glycol solvent, a surfactant and an amine” as in instant claim 41 and/or “in deionized water” as in instant claim 42, thereby anticipating instant claims 41-42 (Paragraphs 0110-0111, 0135, Examples).
With respect to instant claim 46, Kitagawa discloses that the ink compositions after printing and heat treatment at 100°C or more (i.e. “thermal curing”) provide printed substrates with water-resisting fastness, particularly good fastness for washing-resistance when subjected to washing fastness test JIS L-0217103 for 5 times (Entire document, particularly Paragraphs 0038, 0071, 0077-0078, 0081, 0095, 0138, 0154, and Examples), and although Kitagawa does not specifically recite the printed substrate is “water resistant to at least 100 rubs” as instantly claimed, given that washing 5 times in a normal washing cycle would provide more than “100 rubs” and that Kitagawa discloses a printed substrate formed from an ink composition comprising the same components as instantly claimed and formed by the same method as instantly claimed, the Examiner takes the position that the printed substrate disclosed by Kitagawa would inherently exhibit water resistant properties as instantly claimed when subjected to “at least 100 rubs” in the same manner as in the instantly claimed invention, thereby anticipating instant claim 46.
With respect to instant claim 48, Kitagawa discloses that examples of fibers for the substrate to be printed include cotton (Paragraph 0124), and specifically utilizes cotton broadcloth for print evaluation, printing stability, and washing fastness tests for the example compositions, thereby anticipating instant claim 48.
With respect to instant claims 49-50, Kitagawa discloses that before inkjet printing of the ink composition, the fiber to be printed is preferably pretreated with a cationated compound such that bleeding and permeation of the inkjet printing ink can be prevented and high-concentration printing can be carried out, wherein pretreatment of the fiber substrate with the cationated compound as disclosed in Paragraph 0121 reads upon the claimed “substrate is pre-coated with a pint receptive primer” as recited in instant claims 49-50. Hence, Kitagawa anticipates instant claims 49-50.
Claims 33-36, 38-42, 45-48, and 50 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Illsley (US2022/0041874A1), for the reasons recited in the prior office action and restated below, wherein it is again noted that Illsley clearly discloses an aqueous inkjet composition comprising a water-soluble and/or water-dispersible styrene-(meth)acrylic acid dispersion, and a polyurethane dispersion having a hydroxyl value of 10 mgKOH/g or greater, preferably 20 mgKOH/g or greater, based on the dry polymer matter, with working examples specifically utilizing a hydroxyl-functional polyurethane having a hydroxyl value greater than 25 mgKOH/g in combination with an acid-containing styrene-acrylic resin, and hence, absent a proper statement pursuant to 35 U.S.C. 102(b)(2)(C), the Examiner maintains her position that the claimed invention as recited in claims 33-36, 38-42, 45-48, and 50 is anticipated by Illsley as further detailed below.
As discussed in the prior office action, Illsley discloses an aqueous inkjet composition comprising a composite resin vehicle wherein at least one component of the composite resin vehicle is a polyurethane dispersion, and the other component of the composite resin vehicle is a styrene-(meth)acrylic resin dispersion, a metal oxide nanoparticle dispersion such as of colloidal silica, or a combination thereof (Abstract, Paragraph 0006); wherein pigments may be incorporated into the inkjet composition utilizing a water-soluble and/or a water-dispersible surfactant, such as styrene-(meth)acrylic acid copolymers, that is neutralized with a basic compound (Paragraph 0058), and the polyurethane dispersion has a hydroxyl value of 10 mgKOH/g or greater (Abstract, Paragraphs 0020 and 0037), preferably a hydroxyl value of 20 mgKOH/g or greater, based on the dry polymer matter (Paragraph 0066), and given that Illsley specifically discloses working examples comprising a commercially-available polyurethane dispersion having a hydroxyl value greater than 25 mgKOH/g (i.e. DAOTAN® 7010, as utilized in the instant invention, which has a hydroxyl number of about 105 mgKOH/g) reading upon the claimed “hydroxyl-functional polyurethane dispersion having a hydroxyl value of ≥ 25 mgKOH/g based on the dry polymer weight” as the claimed “hydroxyl-functional material”, an acid-containing styrene-acrylic dispersion (i.e. JONCRYL® 90 as utilized in the instant invention and/or as evidenced by the attached BASF JONCRYL® 90 product data sheet; or JONCRYL® 538, as evidenced by Ming, WO2008/005403A2, Paragraph 0017) as the claimed “acid-functional water-soluble or water-dispersible resin” that “is an acrylic or styrene copolymer”, and triethanolamine as an “involatile base” that at least partially neutralizes the acid-functional acrylic or styrene-acrylic copolymer as in instant claim 33, Illsley discloses the claimed invention with sufficient specificity to anticipate instant claims 33 and 35-36.
With respect to instant claim 34, Illsley discloses that the ink composition preferably has a viscosity of no more than 20 mPa-s, more preferably no more than 10 mPa-s at 32°C, with the working examples having a viscosity as instantly claimed (Paragraph 0035, Examples), thereby anticipating instant claim 34.
With respect to instant claim 38, Illsley discloses that preferably, the total dispersion content of the combined amount of polyurethane dispersion and styrene-methacrylic resin dispersion and/or metal oxide nanoparticle dispersion I from about 5% to about 30%, with the solid content of each in the range of 30% to 50% (w/w) such that the dry solids content derived from these components in the ink composition is preferably in the range of from about 1.5% to about 15.0% (w/w) (Paragraph 0047), thereby anticipating instant claim 38, particularly in light of the working examples (Examples).
With respect to instant claims 39-40, Illsley discloses that the aqueous ink compositions also may contain one or more water-compatible organic solvent(s) as recited in Paragraph 0050, preferably at a level between 1 and 40% by mass of the entire ink composition, and given the working examples comprising 34.6 weight parts of deionized water with 10 weight parts of propylene glycol and 10 weight parts of propylene glycol n-propyl ether as organic co-solvents, both of which have a boiling point less than 200°C, mixed with 30 parts by weight total of the aqueous polyurethane and acrylic dispersions, and 15 parts by weight of an aqueous pigment dispersion (Diamond D71C), Illsley clearly discloses a concentration of organic water-soluble co-solvents of ≤ 35% (w/w) as recited in instant claim 39, and more particularly, a concentration of water-soluble organic solvents having boiling points of greater than 200°C of ≤ 10% (w/w) as recited in instant claim 40. Hence, Illsley anticipates instant claims 39-40.
With respect to instant claims 41-42, Illsley discloses that the aqueous ink compositions have “excellent resolubility” or the ability of a drying or dried ink to re-dissolve either in itself or a suitable flushing agent (Paragraphs 0010-0014, 0024-0025), and although Illsley does not specifically disclose that the composition is “resoluble after drying at 50°C for 15 minutes” as in instant claims 41-42, particularly “in aqueous solutions comprising a glycol solvent, a surfactant and an amine” as in instant claim 41, or “in deionized water” as in instant claim 42, given that the ink compositions of Illsley, particularly as in the working examples, comprise the same components as the instantly claimed ink composition, the Examiner takes the position that the ink composition disclosed by Illsley would inherently exhibit the same resoluble properties as instantly claimed. Hence, Illsley anticipates instant claims 41-42.
With respect to instant claim 45-48 and 50, as discussed in the prior office action, Illsley discloses that the ink compositions are suitable for inkjet printing onto textiles, especially cotton-rich fabrics (Paragraph 0060), wherein the inkjet compositions may be preceded by the application of a print-receptive primer to the substrate to be printed (Paragraph 0060), thereby anticipating instant claims 45-48 and 50.
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim Rejections - 35 USC § 103
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa as applied above to claim 33, and in further view of Lussier (US2012/0247365A1) for the reasons recited in the prior office action and restated below.
The teachings of Kitagawa are discussed in detail above (an incorporated herein by reference), and although Kitagawa teaches that any pigments can be used in the ink composition including organic pigments or inorganic pigments in varying colors such as black pigments, yellow pigments, and white pigments such as titanium oxide, aluminum silicate, silicate oxide, etc. (Paragraphs 0068-0069), wherein a dispersion auxiliary or dispersing aid may be further incorporated (Paragraph 0090), and that the ink composition is subjected to drying and further heat treatment at elevated temperature as discussed in detail above, Kitagawa does not teach that the ink compositions comprise a hydroxyl functional organically modified colloidal silica as instantly claimed.
However, it is well established in the art that colloidal silica may be added to an inkjet ink composition for various reasons as taught by Lussier in the Background section (Paragraph 0009), including for affecting physical properties of the resulting printed image, for decreasing drying times, for increasing water and smear resistance, etc., with Lussier further teaching that for an aqueous inkjet ink comprising yellow or black colorant (e.g. as in Kitagawa) that utilizes a near-infrared (IR) drying system, a known drying system to reduce operating cost and improve productivity, the incorporation of aqueous colloidal silica dispersions into the aqueous inkjet ink comprising the yellow or black colorant may provide the yellow or black inkjet ink with improved balanced near-IR drying (Entire document, particularly Abstract, Paragraphs 0002-0010), wherein the colloidal silica may be anionic or cationic, modified or non-modified silica particles with or without polymeric stabilizers (Paragraph 0022, e.g. “organically modified”), and given that Lussier teaches that the Si-OH functionality of the colloidal silica absorbs in the near-IR thereby enhancing the ink’s energy absorption and increasing the rate of evaporation of water and optional co-solvents of the ink (Paragraphs 0018, 0020-0022, Examples, Fig. 1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate colloidal silica such as hydroxyl functional organically modified colloidal silica (e.g. as in the instantly claimed invention) into the ink composition taught by Kitagawa for any of the reasons discussed by Lussier with respect to providing improved ink and/or drying properties. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 37 would have been obvious over the teachings of Kitagawa in view of Lussier given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way
Claims 29-32, 37, 43-44 and 49 are rejected under 35 U.S.C. 103 as being obvious over Illsley (US2022/0041874A1), for the reasons discussed in the prior office action and restated below, wherein absent a proper statement pursuant to 35 U.S.C. 102(b)(2)(C), the Examiner maintains her position that the claimed invention as recited in instant claims 29-32, 37, 43-44 and 49 would have been obvious over the teachings of Illsley as further detailed below.
The teachings of Illsley are discussed in detail above (and incorporated herein by reference) and although Illsley provides examples wherein the inkjet-printed ink is dried using a hot air drier for 20 seconds followed by complete drying in an oven at 70°C for a further 2 minutes (Examples, Paragraph 0088), Illsley does not specifically teach “thermally curing the printed ink by heating at a temperature of at least 80°C” as in instant claim 29, and more particularly at least 100°C as in instant claim 31. However, given that it is well established in the art that drying time can be reduced by increasing the drying temperature, wherein it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum drying conditions including drying temperature and drying time for a particular ink composition and end use, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 29-32 as well as instant claims 43, 44, and 49 (each dependent upon claim 29), the limitations of which have been discussed in detail above with respect to instant claims 33, 47/48, and 50, respectively, would have been obvious over the teachings of Illsley.
With respect to instant claim 37, as discussed above, Illsley clearly teaches that the ink composition may comprise one or more second aqueous dispersion(s) selected from the group consisting of a styrene-(meth)acrylic resin dispersion, a metal oxide nanoparticle dispersion, or a combination thereof such that the use of both the styrene-(meth)acrylic resin dispersion and the metal oxide nanoparticle dispersion in combination with the polyurethane dispersion would have been obvious to one having ordinary skill in the art; and given that Illsley teaches that organically modified colloidal silicas supplied by Akzo under the BINDZIL CC tradename may be utilized as the metal oxide nanoparticle dispersion, which include hydroxyl groups (Paragraph 0045), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a combination of any of the commercially available organically modified colloidal silicas taught by Illsley and the styrene-(meth)acrylic resin dispersion (and/or water-soluble and/or water-dispersible styrene-acrylic acid copolymer dispersing resin) in the ink composition taught by Illsley. Hence, absent any clear showing of criticality and/or unexpected results, instant claim 37 would have been obvious over the teachings of Illsley given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive with respect to the prior art rejections as restated above. With respect to the anticipation rejection over Kitagawa, the Applicant first argues, “While each element of the present composition claims may be present in the Kitagawa reference, the Kitagawa process and compositions [allegedly] are not shown in as complete a detail as contained in the applicants' present claims nor [allegedly] are they arranged in the same manner as the current claim,” arguing that the claimed invention and the invention disclosed by Kitagawa allegedly have “vastly different natures” wherein the emphasis of Kitagawa “is on pigment management, fixing, and crosslinking to fibers to improve color quality, water resistance, and abrasion resistance under heat” (see section A on page 7 of the response). The Applicant then argues, “Without wishing to be bound by theory, the presently claimed invention's acid-hydroxyl pairing and resin/PU-or-silica framework (with viscosity/solids limits and resolubility requirement) [allegedly] contrasts with Kitagawa's pigment-dispersant/fixing/crosslinker triad and particle-size constraints” and that the “curing chemistry, component roles, and quantitative constraints are materially different between Kitagawa and the applicants' claims which is why the reader only sees isolated elements which may be similar, but never the full combination of elements in as complete a detail as in the applicants' claim” (see page 7, penultimate paragraph of section A). However, the Examiner respectfully disagrees and notes that the claimed invention does not require any particular curing chemistry, does not exclude the incorporation of an additional crosslinking agent as in “Kitagawa’s pigment-dispersant/fixing/crosslinker triad,” and does not recite any quantitative constraints, particularly in the independent claims, that are materially different from Kitagawa as argued by the Applicant, and given that the Applicant fails to specifically point out how the language of the claims patentably distinguishes the instant claims from Kitagawa, the Examiner maintains her position that the claimed invention as recited in instant claims 29-34, 36, 38-39, and 41-50 is anticipated by Kitagawa for the detailed reasons discussed above.
With respect to the anticipation rejection over Illsley, the Applicant notes that the “Illsley reference is also assigned to the current assignee of this application, i.e. Sun Chemical,” but the Applicant does not include a proper statement pursuant to 35 U.S.C. 102(b)(2)(C) that the same assignment to Sun Chemical was “not later than the effective filing date of the claimed invention” as required, and given that the Applicant then argues that the instant claims are directed toward a thermally curable aqueous inkjet composition repeating essentially the same language as recited in instant claim 33, and that there is allegedly “no teaching or direction which suggests this combination of elements from within Illsley” without specifically pointing out how the language of the claims patentably distinguishes them from Illsley, particularly in light of the working examples as discussed above, the Examiner does not find Applicant’s arguments persuasive and maintains her position that the claimed invention as recited in instant claims 33-36, 38-42, 45-48, and 50 is anticipated by Illsley.
With respect to the obviousness rejection of claim 37 over Kitagawa in view of Lussier, the Applicant first argues that claim 37 is dependent upon claim 33 which is allegedly not disclosed by Kitagawa. However, the Examiner does not find this argument persuasive given the above discussion with respect to the anticipation of claim 33 by Kitagawa, which is incorporated herein by reference. The Applicant then argues that claim 37 adds the additional elements of the hydroxyl functional material comprising a hydroxyl functional organically modified colloidal silica, arguing that “crosslinking is a key aspect of Kitagawa’s invention” and that “there is no suggestion that their crosslinking would not be disrupted by the addition of a hydroxyl functional organically modified colloidal silica” (see the first full paragraph of page 9 of the response). However, the Examiner notes that the Applicant provides no evidence that such silica particles would disrupt the crosslinking/curing of the ink composition taught by Kitagawa, and given that Kitagawa teaches that any pigments can be used in the composition with specific reference to pigments that would naturally comprise hydroxyl groups on the surface thereof such as titanium oxide, aluminum silicate, and/or silicate oxide, Applicant’s arguments with respect to the possibility of disrupting the crosslinking are not persuasive. The Applicant then argues that “Kitagawa suggested their invention was color neutral, i.e. the ink color was immaterial to their invention” and that “[i]n contrast, for Lussier’s invention (which differs from both Kitagawa and the applicants’) the addition of nanoparticulate colloidal silica is only relevant to addressing the inefficiencies of drying yellow and magenta inks” (see the first full paragraph of page 9 of the response). However, the Examiner respectfully disagrees and first notes that Lussier clearly teaches in the background section that the incorporation of colloidal silica into an ink composition for various reasons is known in the art such that in general, the addition of colloidal silica would have been obvious to one skilled in the art to provide any of the properties discussed by Lussier in the background section. It is also noted that Lussier does not limit the addition of the colloidal silica to just yellow and magenta inks as argued by the Applicant given that Lussier also teaches that black and cyan inks may contain a minor content of colloidal silica as evidenced by claims 1, 13, 14, and 16; and further given that Kitagawa specifically discloses that the ink composition may comprise cyan (C), magenta (M), yellow (Y), or black/key (K) pigments (Paragraph 0130), and that inkjet inks are typically provided as CMYK inks, Applicant’s arguments over Kitagawa in view of Lussier are not persuasive.
With respect to the obviousness rejection of claims 29-32, 37, 43-44 and 49 over Illsley, the Applicant argues that “Illsley is directed to an aqueous inkjet ink composition featuring a composite resin vehicle comprising a thermoplastic polyurethane dispersion and one or more additional aqueous dispersions (e.g., styrene-(meth)acrylic resin, metal oxide nanoparticles), with broad options for colorants and substrate compatibility whereas the present claims are directed to a specific method for preparing a printed substrate using an aqueous inkjet ink composition characterized by the pairing of an acid-functional water-soluble or water-dispersible resin with a hydroxyl-functional material (either a polyurethane dispersion with a defined hydroxyl value or an organo-modified colloidal silica), followed by thermal curing at a temperature of at least 80°C” (see the paragraph bridging pages 9 and 10 of the response). The Applicant then argues:
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However, the Examiner respectfully disagrees given that Illsley clearly “pairs” an acid-functional styrene-acrylic resin with a hydroxyl-functional polyurethane dispersion having a hydroxyl value of 20 mgKOH/g or greater, based on the dry polymer weight, with at least one working example utilizing a hydroxyl-functional polyurethane having a hydroxyl value within the instantly claimed range of ≥25 mgKOH/g, “paired” with an acid functional styrene-acrylic resin. It is also noted that the only difference between the claimed method as recited in instant claim 29 and Illsley, particularly as in the examples, is the heating temperature wherein as discussed above, Illsley provides examples wherein the inkjet-printed ink is dried using a hot air drier for 20 seconds followed by complete drying in an oven at 70°C for a further 2 minutes, while instant claim 29 recites a temperature of at least 80°C. Hence, Applicant’s arguments with respect to the additional properties or limitations that are not specifically recited in instant claim 29 are moot with respect to the obviousness of instant claim 29 over Illsley, and given that the Applicant provides no clear showing of criticality and/or unexpected results with respect to the claimed temperature of at least 80°C over the teachings of Illsley, the Examiner maintains her position that the claimed method as recited in instant claim 29 would have been obvious over the teachings of Illsley as discussed in detail above. Further, given that the additional properties and/or limitations as argued by the Applicant, including viscosity, solids limits, post-drying resolubility, and/or water resistance are not recited in any of the claims of the obviousness rejection over Illsley (i.e., claims 29-32, 37, 43-44 and 49), and more particularly, given that said properties/limitations are explicitly or implicitly disclosed and/or suggested by Illsley as discussed in detail above (e.g., see Illsley, Paragraphs 0010-0014, 0024-0025, 0035, 0047, 0060, and examples), Applicant’s arguments with respect to the obviousness rejection of claims 29-32, 37, 43-44 and 49 over Illsley are not persuasive and the Examiner maintains her position that the claimed invention as recited in instant claims 29-32, 37, 43-44 and 49 would have been obvious over the teachings of Illsley as detailed above.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 11/24/2025.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787