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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 13, 2026 has been entered.
Claims 1 and 3-19 are currently pending in the above identified application.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 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.
Claim 18 recites the limitation “wherein the trialkylphosphonium salt is dihydroxylpropyltributylphosphonium chloride salt.” However, it appears that dihydroxylpropyltributylphosphonium chloride salt is the salt that is reacted to form the side chain group that is an aliphatic phosphonium salt having the claimed structure. It does not appear to be present in the claim product as dihydroxylpropyltributylphosphonium chloride salt. It is unclear if the claim intends for dihydroxylpropyltributylphosphonium chloride salt to be present in this form or intends for the trialkylphosphonium salt to be formed from dihydroxylpropyltributylphosphonium chloride salt. For the purpose of prior art application, Examiner will interpret claim 18 as encompassing the trialkylphosphonium salt to being formed from dihydroxylpropyltributylphosphonium chloride salt.
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, 3-9, 12-14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2022/0259448 to Van Aert, optionally as evidenced by US Pub. No. 2016/0017080 to Tian, in view of “Water-dispersible cationic polyurethanes containing pendant trialkylphosphoniums” to Zhang and US Pub. No. 2016/0304734 to Feng.
Regarding claims 1, 3-9, 12-14, and 16-18, Van Aert teaches an aqueous polyurethane resin dispersion (polyurethane composition with aqueous liquid vehicle) comprising a polyurethane resin having a cationic group, such as a quaternary phosphonium (phosphonium-containing polyurethane, phosphonium salt) and a polyalkylene oxide in a side chain thereof (polyurethane backbone having side chain groups along the polyurethane backbone) (Van Aert, abstract, para 0014-0018, 0060-0062). Van Aert teaches the aqueous dispersion used in treatment liquids for inkjet printing and inkjet ink (coating composition, claim 9) for substrates, including dark textiles (coated fabric medium, claim 13) (Id., abstract, para 0001, 0096, 0102-0107). Van Aert does not teach end cap groups (Van Aert, all, esp. para 0054-0060, claim 1), reading on the polyurethane polymer being devoid of end cap groups. Van Aert teaches the aqueous treatment liquid comprising water and a surfactant (aqueous liquid vehicle including water and a surfactant, claim 9), to be used with the polyurethane resin (Id., para 0061-0108). As the polyurethane is use to bind or fix the colorant (Id., para 0003, 0017), the polyurethane can also map to a polymeric binder (claim 9). Van Aert teaches the cationic group and the polyalkylene oxide increase the dispersibility and colloidal stability of the dispersed resin in water (Van Aert, para 0015). Van Aert teaches the use of polyester diol, polyether diol, and polycarbonate diols to form the polyurethane (Id., abstract). Van Aert teach another embodiment using quaternary ammonium, including quaternary salts containing alkyl (aliphatic) or alkaryl groups (Id., para 0018-0026), such as having the structure
PNG
media_image1.png
82
280
media_image1.png
Greyscale
PNG
media_image2.png
76
336
media_image2.png
Greyscale
PNG
media_image3.png
22
292
media_image3.png
Greyscale
(Id., para 0022-0026). R1 and R2 being C4, butyl alkyl groups, results in the number of total carbons being 8 and is within the scope of the invention. Van Aert teaches the use of a chloride counter ion (claim 18) (Id., Table 1). When a phosphorous atom is used in place of the nitrogen with butyl alkyl groups, the resultant structure is dihydroxylpropyltributylphosphonium chloride salt (claim 18) and reads on the claimed aliphatic phosphonium salt group having the claimed formula.
Van Aert does not explicitly teach the quaternary phosphonium cationic (salt) being a trialkylphosphonium having the claimed structure.
However, Zhang teaches a cationic polyurethane containing pendant trialkylphosphoniums, including tributyl phosphonium, (Zhang, title, abstract). Zhang teaches a specific embodiment formed using tri-n-butyl(1,3-dihydroxypropyl)phosphonium bromide (Id., p. 3796-3798), reading on the claimed trialkylphosphonium salt having the claimed formula. Zhang teaches quaternary nitrogens represent the most common example of cationic polyurethanes (Id., p. 3796). Zhang also teaches the alkyl length influences the nanoparticle size (Id., p. 3801). Zhang teaches the phosphonium polyurethane having spontaneous water-dispersibility (Id., p. 3801).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the aqueous polyurethane resin dispersion of Van Aert, wherein the quaternary phosphonium has the tributyl phosphonium structure taught by Zhang, motivated by the desire of forming conventionally known cationic polyurethane containing phosphonium pendant (side-chain) group predictably suitable for forming water dispersible polyurethane and within a similar scope of an alternative cationic quaternary salt containing ammonium in place of the phosphonium taught as predictably suitably taught by Van Aert and by the desire to impart water dispersibility to the polyurethane.
The prior art combination is silent with regards to the acid number of the polyurethane, specifically being ranging from 0 to 5 mg KOH/g.
However, Feng teaches a polyurethane polymer dispersion comprising a polyurethane polymer having an acid number ranging from 0 mg/g to less than 20 mg/g used in a pre-treatment fixing fluid ink set or in the fixable, UV curable ink (Feng, abstract). Feng teaches the polyurethane being a polyether-based polyurethane, a polyester-based polyurethane, a polycarbonate-based polyurethane, and a mixture thereof (Id.). Feng teaches the polyurethane polymer having a weight average molecular weight ranging from about 1,000 to about 10,000 and a glass transition temperature less than 0C and acting as a binder that contributes to the durability (Id., para 0035).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the aqueous polyurethane resin dispersion of the prior art combination, wherein the polyurethane resin has an acid number as taught by Feng, motivated by the desire of forming conventionally known polyurethane resin having predictably suitable acid number for use as a binder in pretreatment or ink compositions.
While the reference does not specifically teach the claimed acid number range of 0 to 5 mg KOH/g (claims 1, 9, and 13), specifically 0 mg KOH/g (claim 16), the disclosed range of the prior art combination overlaps with the instant claimed range. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the acid number, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Regarding claims 3-5, 12, and 14, the prior art combination teaches the polyalkylene oxide including polyethylene oxides, such as Ymer N120 (Van Aert, para 0031-0036). Ymer N120 has a molecular weight of about 1,090 g/mol (claims 12 and 14) as evidenced by Tian (Tian, para 0063). The prior art combination teaches the polyether diol being more than 2 wt% and less than 15 wt% of the polyurethane resin (Van Aert, para 0037). This equates to a molecular weight of the polyurethane using the Ymer N120 of 7,267 to 54,500 g/mol (claims 3-5).
Regarding claim 6, the prior art combination teaches embodiments having a particles size from 31.70 nm to 45.66 nm (Van Aert, para 0137-0159, Table 2). While the prior art combination does not teach the particle size of the specific polyurethane particle embodiment comprising the quaternary phosphonium group, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the specific embodiment, wherein the particle size is from about 31.70 to 45.66 nm, motivated by the desire of forming predictably suitable particle size of the invention of Van Aert.
Regarding claims 7-8, the prior art combination teaches the polyurethane backbone comprising polymerized monomers including polyisocyanates, including diisocyanates, and diols, wherein the diols collectively comprises cationic diols (aliphatic phosphonium salts) and polyether diols (polyalkylene oxide groups) (Van Aert, para 0013-0041). The prior art combination teaches the polyisocyanate including isophorone diisocyanate, hexamethylene diisocyanate, and diphenylmethane diisocyanate (methylene diphenyl diisocyanate) (Id., para 0039-0041).
Regarding claim 17, the prior art combination teaches the polyurethane rein showing no coagulation, a particle size below 60 nm (Van Aert, para 0159), reading on a particle size less than 60 nm. While the reference does not specifically teach the claimed range of 59.8 nm to about 500 nm, the disclosed range of the prior art combination overlaps with the instant claimed range. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the particle size, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Claims 10-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Van Aert and Zhang and Feng, optionally as evidenced by Tian, as applied to claims 1, 3-9, 12-14, and 16-18 above, further in view of WO 2019/240820 to Brandstein.
Regarding claim 11, the prior art combination teaches the polyurethane resin being used in treatment liquids of substrates for inkjet printing or inkjet inks (Van Aert, para 0001). The prior art combination teaches the use of colorants, such as pigments including titanium dioxide in the treatment (Id., para 0077), suitable for treating textile fabric before or after printing images with inkjet printing (Id., para 0105-0106).
The prior art combination does not teaches a polymer binder comprising an epoxy resin and a curing agent.
However, Brandstein teaches an ink receiving layer suitable for use on textile substrates and in combination with inkjet printing (Brandstein, abstract, para 0011, 0022, 0039-0041). Brandstein teaches the ink receiving layer comprising a first and second crosslinked polymeric network including polyurethane and epoxy used in combination and can comprising a crosslinking agent or resin hardener to crosslink the resins (curing agent) (Id., para 0041, 0043-0052). Brandstein teaches the ink receiving layer comprising whitening agents such as titanium dioxide (Id., para 0056). Brandstein teaches the ink receiving layer being designed to provide good printing properties for the specific type of ink to be printed on the print medium (Id., para 0041).
It would have been obvious to one of ordinary skill in the art to form the treatment of the prior art combination, wherein the treatment further comprises an epoxy and crosslinking agent/resin hardener as taught by Brandstein, motivated by the desire of using conventionally known materials predictably suitable for use in an ink receiving layer in inkjet printing and usable in combination to be designed to provide good printing properties for the specific type of ink to be printed on the print medium.
Regarding claims 10 and 15, the prior art combination teaches the polyurethane resin being used in treatment liquids of substrates for inkjet printing or inkjet inks (Van Aert, para 0001). The prior art combination teaches the use of colorants, such as pigments including titanium dioxide in the treatment (Id., para 0077), suitable for treating textile fabric before or after printing images with inkjet printing (Id., para 0105-0106).
The prior art combination does not teaches a polymer binder in addition to the polyurethane particles that includes polyacrylate, polyurethane that is different from the polyurethane polymer of the polyurethane particles, vinyl-urethane, polyurethane-acrylic, polyether polyurethane, polyester polyurethane, polycaprolactam polyurethane, polyether polyurethane, polyglycidyl resin, polyoxirane resin, polyamine, styrene maleic anhydride, a copolymer thereof, or a mixture thereof.
However, Brandstein teaches an ink receiving layer suitable for use on textile substrates and in combination with inkjet printing (Brandstein, abstract, para 0011, 0022, 0039-0041). Brandstein teaches the ink receiving layer comprising a first and second crosslinked polymeric network including polyurethane and polyacrylate or polyamine epoxy resin hardener (polyamine) in combination (Id., para 0041-0048, 0052, 0058). Brandstein teaches the ink receiving layer comprising whitening agents such as titanium dioxide (Id., para 0056). Brandstein teaches the ink receiving layer being designed to provide good printing properties for the specific type of ink to be printed on the print medium (Id., para 0041).
It would have been obvious to one of ordinary skill in the art to form the treatment of the prior art combination, wherein the treatment further comprises an epoxy and crosslinking agent/resin hardener as taught by Brandstein, motivated by the desire of using conventionally known materials predictably suitable for use in an ink receiving layer in inkjet printing and usable in combination to be designed to provide good printing properties for the specific type of ink to be printed on the print medium.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Van Aert, Zhang, and Feng, optionally as evidenced by Tian, as applied to claims 1, 3-9, 12-14, and 16-18 above, further in view of US Pub. No. 2008/0194757 to Fujita.
Regarding claim 19, Van Aert teaches the use of a chloride counter ion (Van Aert, Table 1). The prior art combination also teaches the polyalkylene oxide including polyethylene oxides, such as Ymer N120 (Id., para 0031-0036). As the polyurethane is taught as having the polyurethane resin with the cationic quaternary phosphonium group, specifically the tributylphosphonium having a chloride counter ion, and the polyalkylene oxide sides chains, the polyurethan polymer consists of the polyurethane backbone having side chains groups along the polyurethan backbone, wherein the side chains groups consist of the claimed aliphatic phosphonium salt group and the polyalkylene oxide groups.
The prior art combination does not explicitly teach the polyalkylene oxide groups consisting of both polyethylene oxide groups and polypropylene oxide groups.
However, Fujita teaches a water-dispersed polyurethane containing a cationic group that provides good dispersibility in water and teaches including of polyethylene oxide unit and ethylene oxide/propylene oxide copolyaddition products into side-chain of the polyurethane, as well as nonionic group-introducing compounds, such as ethylene oxide and/or propylene oxide adduct (Fujita, abstract, para 0033, 0036-0038, 0050-0051), reading on polyalkylene oxide groups consisting of both polyethylene oxide groups and polypropylene oxide groups.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the aqueous polyurethane resin dispersion of the prior art combination, wherein the polyalkylene oxide include both polyethylene oxide and polypropylene oxide as taught by Fujita, motivated by the desire of forming conventionally known polyalkylene predictably suitable for use in water-dispersed polyurethane containing cationic charges.
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub. No. 2012/0252957 to Geremia teaches a polymeric backbone, such as polyurethane, contains a cationic group, such as tributylphosphonium that may be directly connected to the polymeric backbone or through a linker.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A GILLETT/Examiner, Art Unit 1789
Prosecution Insights