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 .
Note
Applicant’s response along with the Request for Continued Examination (RCE) filed on 12/03/2025 has been fully considered. Claim 1 is amended, claims 2-4, 6, 10, 12-15, 17, 19 and 26 are canceled claims 27 and 28 are added and 1, 5, 7-9, 11, 16, 18, 20-25, 27 and 28 are pending.
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.
Claims 1, 5, 7-9, 11, 16, 18, 20-25, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Sadamu (JP 2011-140560 A) as evidence by Ning et al. (CN 115677961 A) and Duan et al. (CN 119463057 A), and further in view of Fukui et al. (US 2017/0158893 A1).
Claims 1, 8, 11, 27 and 28: Sadamu teaches an ink jet ink {instant claim 8} comprising a urethane resin A as a binder [0026], a pigment and aqueous medium [0105]. Sadamu teaches the urethane resin A is a reaction product of 14.2 parts by mass of 2,2-dimethylolpropionic acid {instant claim 11} {meets the claimed (a1-1)}, 74.5 parts by mass of polyether polyol (polytetramethylene glycol) {meets the claimed (a1-2)}, 61.4 parts by mass Ymer N120 (polyalkylene oxide chain) [0046], and 44.3 parts by mass isophorone diisocynate {meets the claimed (a2)} (see Example 2). The molar mass of isophorone diisocynate is 222.29, a quantity of the urethan resin A composition is 14.2 + 74.5 + 61.4 + 44.3 = 194.4 parts by mass, and ratio of isophorone diisocynate (alicyclic structure) in the urethane resin A is calculated to be ((44.3/222.29)/194.4) x 106 = 1025 mmol/kg.
Sadamu teaches the pigment has a particle size of 200 nm or less [0104] which overlaps with the claimed 50-400 nm. Sadamu teaches the acid group in the urethan resin A is neutralized with a basic compound including Na, K such as potassium hydroxide KOH ([0037], [0038] and [0114]). Sadamu teaches the urethane resin A has an acid value of 20-100 [0034] which overlaps with the claimed 9-28.
Sadamu teaches the urethane resin A can be hydrazine extended ([0074]-[0075]). Sadamu teaches use of Ymer N120 in the making of urethane resin A (Example 2). Even though the term “hydrazine extender” is not disclosed in Example 2 of Sadamu, use of hydrazine extender is expressly taught in the disclosure of Sadamu (see [0074]-[0075]); and the invention of Sadamu is not limited to the claimed the examples only. It is interpreted that the Ymer N120 functions as a chain extender because evidence shows that Ymer N120 can be used as a chain extender (see page 2, last line of Ning, and also see page 5, line 14 and page 8, line 14 of Duan. Therefore, Ymer N120 meets the claimed hydrazine.
Sadamu teaches the ink jet ink can be printed onto a plastic film [0106] but does not teach the material of the plastic film. However, Fukui teaches an aqueous ink for an ink jet printer to be printed onto a resin substrate including a polyethylene terephthalate (PET), polypropylene or polyethylene substrate {instant claims 27 and 28} (abstract and [0079]). Sadamu and Fukui are analogous art because they are from the same field of endeavor that is the ink jet recording art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polyethylene terephthalate (PET), polypropylene or polyethylene substrate of Fukui with the invention of Sadamu, and the motivation for combining would be to provide eco-friendly and cost-effective printed matter.
Claim 5: Sadamu teaches the amount of the urethane resin A is 0.1-10% [0105] which overlaps with the claimed 5-30%.
Claim 7: Sadamu teaches the amount of the pigment is 0.5-15% [0105] which overlaps with the claimed 10-50%.
Claims 9 and 20: Sadamu teaches a printed matter printed using the ink jet ink [0107].
Claim 16: Sadamu teaches the aqueous medium includes solvent such as propylene glycol [0070].
Claim 18: Sadamu teaches the ink further comprises a surfactant [0096].
Claim 25: Sadamu teaches the molecular weight of the urethane resin A ranges from 3,000 to 150,000 ([0040] and [0113]).
Claims 21-24: With respect to the claimed ink discharge property {instant claim 21}, resolubility {instant claim 22}, laminate strength {instant claim 23} and substrate adhesion property {instant claim 24}, the Office realizes that all of the claimed effects and physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients, and process limitations. Therefore, the claimed effects and physical properties, i.e., ink discharge property, resolubility, laminate strength and substrate adhesion property would implicitly be achieved by a composition with all the claimed ingredients. If it is the Applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Response to Arguments
Applicant’s arguments with respect to claims 1, 5, 7-9, 11, 16, 18, 20-25, 27 and 28 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The reference of Fukui teaches the claimed plastic substrate.
Applicant’s argument is based on that each of Ning et al. (CN 115677961 A) and Duan et al. (CN 119463057 A) was published after the effective filing date of the present application. This argument is not persuasive for the following reasons. Ning and Duan are not prior arts, but they are evidentiary documents. An evidentiary document depends on the type of document and specific context, not the date of the publication.
In response to Applicant’s argument regarding the Declaration Under 37 C.F.R. 1.132 filed on 07/02/2025, the Declaration has been fully considered; however, the Declaration fails to provide sufficient evidence because, in the Declaration, Yuya Enomoto selected binder (12) but admitted that the molecular weight is 36,413 (¶4.2 of Declaration) which is off by 1,587 from 38,000 (¶4.2 of Declaration, and Table 1, 3rd column of Sadamu). Since the binder (12) in the Declaration has molecular weight of 36,413 (¶4.2 of Declaration) which is different from the 38,000 molecular weight of composition of Ex. 2 (Table 1, 3rd column of Sadamu), the Declaration shows that the unsatisfactory result of comparative example 9 in Table A (¶9.3 of Declaration) is caused by the difference in molecular weight. In addition, the criticality of the claimed invention does not rely upon molecular weight values of the claimed urethane resin A because the molecular weight is 20,000-100,000 as recited in instant claim 25.
For the above reasons claims 1, 5, 7-9, 11, 16, 18, 20-25 stand rejected, and claims 27 and 28 are included in the rejection.
Correspondence
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BS
January 8, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights