DETAILED ACTION
An Office Action was mailed 11/25/2025. Applicant filed a Response on 02/25/2026, amended claims 1-6, 10 and 12, cancelled claims 7-9, and added claim 13.
Claims 1-6 and 10-13 are pending. Claims 1-6 and 13 are rejected. Claims 10-12 are withdrawn from consideration.
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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable Nishikawa et al, JP 2018-193545A (Nishikawa) in view of Takagishi et al, JP 2004-058615A (Takagishi).
Nishikawa was cited in the IDS filed 02/23/2023. The Examiner has provided a machine translation of Nishikawa, with a Google assisted translation of the Table including Examples 201-207, with the Office Action mailed 11/25/2025. The citation of the prior art in this rejection refers to the machine translation.
The Examiner has provided a machine translation of Takagishi with this Office Action. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-4 , Nishikawa discloses a water-based ink suitable for writing instruments comprising a polysaccharide-sterol derivative, a colorant, and a solvent (Nishikawa; page 2, lines 17-24).
Polysaccharides of the derivative include, e.g., pullulan, amylose, amylopectin and dextran (Nishikawa; page 2, lines 36-40). The polysaccharide-sterol derivative is a compound having a cholesterol skeleton introduced into the polysaccharide, with pullulan-cholesterol being preferred (Nishikawa; page 3, lines 40-41 and 54). As disclosed in Applicant’s specification at ¶ [0030] and [0037], pullulan is an α-1,4-1,6 glucan (claim 2), with pullulan-cholesterol being a preferred pullulan derivative (claim 3).
The content of the polysaccharide-sterol derivative is 0.001 to 10 mass%, more preferably 0.005 to 5 mass%, based on the total mass of the ink composition. When within this range, the effect of the polysaccharide-sterol derivative can be sufficiently obtained, the dry-up resistance can be improved, and it is possible to impart sufficient water resistance to the obtained handwriting. Further, from the viewpoint of improving the writing and ejection properties, it is more preferred that the content is 0.005 to 1% by mass (Nishikawa; page 4, lines 8-14).
The polysaccharide-sterol derivative mass% ranges of Nishikawa overlap in scope with the claimed range of 0.001 to 1 mass% α-glucan derivative, based on the total mass of the water-based ink composition (claim 4).
As set forth in MPEP 2144.05, in the case where the claimed range “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 pigment is not limited, as long as it can be dispersed in a solvent (Nishikawa; page 4, line 20). The pigment may be microencapsulated (i.e., a self-dispersible pigment as claimed) (Nishikawa; page 4, lines 24-28). The solvent is preferably water or a water and organic solvent mixture (Nishikawa; page 4, lines 59-60). The content of the colorant in the ink is preferably 0.1 to 30% by mass, based on the total mass of the ink composition (Nishikawa; page 4, lines 46-47).
Nishikawa teaches mass percentages which overlap in scope with the mass ratio of α-glucan derivative to self-dispersible pigment of 0.0001 to 0.1 as claimed. For example, using 0.005g of α-glucan derivative and 0.1g of self-dispersible pigment results in a mass ratio of α-glucan derivative to self-dispersible pigment equal to 0.05, which falls within the claimed range of 0.0001 to 0.1. Similarly, using 1.0g of α-glucan derivative and 30g of self-dispersible pigment results in a mass ratio of α-glucan derivative to self-dispersible pigment equal to 0.03, which falls within the claimed range of 0.0001 to 0.1.
As set forth in MPEP 2144.05, in the case where the claimed range “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 compositions may further comprise an antiseptic, wherein preferred antiseptics include phenoxyethanol as claimed, as well as 1,2-benzisothiazolin-3-one (Nishikawa; page 6, lines 21-23).
In Example 201, Nishikawa exemplifies an ink comprising:
1.0% by weight of a 1% aqueous dispersion of a pullulan-cholesterol derivative (i.e., 1 * 0.01 = 0.01 mass% of a pullulan derivative);
26.6% by weight of a carbon black 15% aqueous dispersion (emphasis added) (i.e., 26.6% * 0.15 = 3.99 mass% of self-dispersed carbon black pigment);
0.1% of the preservative/antiseptic 1,2-benzisothiozolin-3-one,
and water (Nishikawa; page 10, Example 201, lines 7-11; and the Google-translated Table on page 12, Example 201). The pullulan-cholesterol carrier comprises phenoxyethanol as claimed (see line (1) under Google-translated Table on page 12).
In Example 201, the content ratio of pullulan derivative to self-dispersible pigment based on mass equals 0.0025 (0.01 pullulan derivative / 3.99 self-dispersible pigment = 0.0025), which falls within the claimed mass ratio of 0.0001 to 0.1.
See Examples 202-207 for additional exemplified inks (Nishikawa; page 10, lines 16-18; and the Google-translated Table on page 12, Examples 202-207).
In light of the disclosure of Nishikawa of the equivalence and interchangeability of using the antiseptic 1,2-benzisothiozolin-3-one as exemplified in Examples 201-207, with phenoxyethanol as presently claimed, it would therefore been obvious to one of ordinary skill in the art to substitute 1,2-benzisothiozolin-3-one with phenoxyethanol as the antiseptic in Examples 201-207 of Nishikawa, and thereby arrive at aqueous inks for writing instruments comprising a pullulan derivative and a self-dispersing pigment in the claimed mass ratios, and phenoxyethanol.
Nishikawa teaches the importance of preventing dry-up of the ink (Nishikawa; page 1, lines 56-58; page 3, lines 2-7 and 21-27; page 9, lines 38-46). Nishikawa teaches that using a polyhydric alcohol such as ethylene glycol, butylene glycol or glycerin, the moisturizing power is synergistically improved and excellent dry-up resistance is obtained (Nishikawa; page 5, lines 3-13). Such polyhydric alcohol solvents are present in an amount of 0.1 to 30% by mass, more preferably 0.5 to 10% by mass, based on the total mass of the ink composition (Nishikawa; page 5, lines 28-32).
Nishikawa teaches that the inks have a smooth and improved writing feel, wherein a lubricant may be added to improve the writing feel (Nishikawa; Abstract; page 3, lines 29; and page 6, lines 56-58).
Nishikawa also teaches that a nonionic surfactant may be used as a pigment dispersant and as the lubricant (Nishikawa; page 4, lines 27-29 and page 6, lines 52-59). Preferred surfactants include phosphate ester-based surfactants because they improve lubricity, suppress wear of the ball seat, and improve writing (Nishikawa; page 7, lines 1-7).
Nishikawa does not explicitly teach a content of phenoxyethanol from 3,000-30,000 ppm (i.e., 0.3 to 3.0 mass%), based on a total mass of the water-based ink, as presently claimed.
Nishikawa does not explicitly teach a nonionic surfactant having a polyoxyalkylene structure as presently claimed.
With respect to the difference, Takagishi teaches an aqueous ballpoint pen ink comprising a pigment, a shear thinning substance, and a reducing substance (Takagishi; page 1, lines 54-56). In addition to water, organic solvents may be added for the purpose of preventing ink drying and preventing freezing at low temperatures. Solvents include ethylene glycol, 1,3-butanediol and glycerin (i.e., the polyhydric alcohols of Nishikawa), as well as 2-phenoxyethanol. These can be used in combinations of two or more. The amount used is preferably 0.5% to 40% by weight, based on the total of the ink. If less than 0.5% by weight, the effect of preventing drying is weak, and there is a possibility that it cannot be used (Takagishi; page 5, lines 35-45).
Takagishi teaches that various additives conventionally used in water-based inks for writing may be used, such as polyoxyethylene polyoxypropylene glycol, which is used to improve writing feel (Takagishi; page 5, lines 48-51). The instant specification at ¶ [0052-0056] discloses polyoxyethylene polyoxypropylene glycol as a preferred nonionic surfactant having a polyoxyalkylene structure.
Takagishi teaches that when a pigment is used as the colorant, a dispersant such as a nonionic surfactant, may be used to stably disperse the pigment (Takagishi; page 4, lines 10-12). Suitable nonionic surfactants include polyoxyethylene alkylether phosphates (Takagishi; page 4, lines 19-21).
Takagishi is analogous art as it teaches aqueous inks for writing instruments which may comprise a pigment, phenoxyethanol and a nonionic surfactant having a polyoxyalkylene structure.
In light of the motivation provided by Nishikawa to add an organic solvent to water-based inks for pens, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an organic solvent, such as ethylene glycol, 1,3-butanediol or glycerin, to the inks of Nishikawa, in amounts of 0.5 to 10% by mass, based on the total mass of the ink, in order to prevent ink dry-up. In light of the disclosure of Takagishi of the equivalence and interchangeability of using organic solvents such as ethylene glycol, 1,3-butanediol and glycerin as disclosed in Nishikawa, with using phenoxyethanol as presently claimed, it would therefore been obvious to one of ordinary skill in the art to use phenoxyethanol as an organic solvent and antiseptic agent in the inks of Nishikawa, in order to prevent ink drying and freezing at low temperatures.
0.5 to 10% by mass phenoxyethanol, based on the total mass of the ink, overlaps in scope with the phenoxyethanol content of 3000-30000ppm (i.e., 0.3 to 3% by mass), based on the total mass of the ink, as presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In light of the motivation provided by Takagishi to add polyoxyethylene polyoxypropylene glycol to aqueous-based writing inks, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add polyoxyethylene polyoxypropylene glycol as a lubricant to the inks of Nishikawa in view of Takagishi in order to obtain an improved writing feel, and thereby arrive at the claimed invention.
Further, in light of the motivation provided by Nishikawa to add a nonionic phosphate ester nonionic surfactant to the writing inks, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a nonionic phosphate ester surfactant to the inks of Nishikawa in order to obtain good pigment dispersibility, improved lubricity and writing, and suppressed wear of the ball seat. It would have been obvious to one of ordinary skill in the art to select a polyoxyethylene alkylether phosphate nonionic surfactant as the phosphate ester nonionic surfactant because Takagishi teaches such nonionic surfactants as suitable in order to achieve dispersion stability of pigments in aqueous-based writing inks, and thereby arrive at the claimed invention.
Those skilled in the art would have had a reasonable expectation of success in using phenoxyethanol in the claimed amounts and polyoxyalkylene nonionic surfactants in the inks of Nishikawa because Takagishi teaches using these components in order to obtain the same results as disclosed by Nishikawa, i.e., preventing ink dry-up, improving writing feel and lubricity, and achieving a stable pigment dispersion.
Regarding claim 6, Nishikawa in view of Takagishi are relied upon as set forth above as teaching the limitations of claim 1. Nishikawa teaches that the inks comprising the polysaccharide-sterol derivative are capable of forming a low-viscosity ink having a viscosity of 50 mPa.s or less at a shear rate of 380 sec -1, while maintaining excellent drying (Nishikawa; page 8, lines 8-11).
Regarding claim 13, Nishikawa in view of Takagishi are relied upon as set forth above as teaching the limitations of claim 1. Nishikawa teaches that the content of the colorant in the ink is preferably 0.1 to 30% by mass, based on the total mass of the ink composition, wherein the colorant may be a self-dispersible pigment (Nishikawa; page 4, lines 20-28 and 46-47; and page 10, lines 7-18, Examples 201-207). Nishikawa in view of Takagishi are relied upon above as teaching the addition of phenoxyethanol to the inks in an amount of 0.5% to 10% by mass, based on the total mass of the ink, in order to obtain antiseptic properties as well as preventing dry-up and freezing of the ink (Nishikawa; page 6, line 21 and page 5, lines 3-13 and 29-32) and (Takagishi; page 5, lines 35-46).
Nishikawa in view of Takagishi teaches mass percentages which overlap in scope with the mass ratio of self-dispersible pigment to phenoxyethanol of 1:1 to 1:0.01 as claimed. For example, using 0.5g self-dispersible pigment and 0.5g of phenoxyethanol results in a mass ratio of self-dispersible pigment to phenoxyethanol of 1:1 as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa in view of Takagishi as applied to claim 1 above, and further in view of Morioka et al, JP 2003-138181A (Morioka).
The Examiner has provided a machine translation of Morioka with the Office Action mailed 11/25/2025. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 5, Nishikawa in view of Takagishi are relied upon as set forth above as teaching the limitations of claim 1. Nishikawa teaches that the pigment is not particularly limited as long as it can be dispersed in a solvent, wherein specific examples of inorganic pigments include carbon black (Nishikawa; page 4, lines 20-21).
Nishikawa in view of Takagishi do not explicitly teach an anionic self-dispersible carbon black as claimed.
With respect to the difference, Morioka teaches a water-based ink for writing instruments (Morioka; [0001]). The aqueous ink comprises a color material, a resin and an organic solvent, wherein the color material is a self-dispersing carbon black having an anionic hydrophilic group on the surface (i.e., anionic self-dispersible carbon black) (Morioka; [0006]). When the self-dispersing carbon black is used as the color material, the amount of pigment dispersant added to the water-based ink can be reduced. Even if a dispersant is not used, the carbon black is stably dispersed. As a result, ink ejection and stability from the nozzle and pen nib, and clogging resistance are improved (Morioka; [0009]). The water-based inks also have improved scratch, water and marker resistance (Morioka; [0005]).
Morioka is analogous art as it teaches aqueous inks for writing instruments comprising a self-dispersible anionic carbon black pigment.
In light of the motivation provided by Morioka to use an anionic, self-dispersing carbon black pigment in aqueous inks for writing instruments, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the anionic, self-dispersing carbon black of Morioka as the pigment in the inks of Nishikawa in view of Takagishi in order to reduce or eliminate the amount of dispersant needed, thereby improving ink ejection and stability from pen nibs, and improving the resistance of the inks to clogging, scratching, water and marker.
Response to Arguments
1) Applicant’s Amendments filed 02/25/2026 have overcome the claim objections, and the 35 U.S.C. § 112 rejection previously of record.
2) Applicant’s arguments, see Remarks, page 5, filed 02/25/2026, with respect to the rejection of claims 1-5 and 9 under 35 U.S.C § 102(a)(1) over Fukaya et al, US 2015/0259551 (Fukaya) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, Fukaya does not anticipate water-based ink compositions which comprise the antimicrobial substance phenoxyethanol in the claimed amounts.
3) Applicant’s arguments, see Remarks, page 8, filed 02/25/2026, with respect to the rejection of claims 1-4 and 6-7 under 35 U.S.C § 102(a)(1) over Nishikawa et al, JP 2018-193545 (Nishikawa) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, Nishikawa does not anticipate water-based ink compositions which comprise a nonionic surfactant, and which comprise the antimicrobial substance phenoxyethanol in the claimed amounts.
However, upon further consideration, a new ground(s) of rejection is made over Nishikawa in view of Takagishi.
4) Applicant’s Remarks regarding Nishikawa have been fully considered, but are not deemed persuasive for the following reasons.
Applicant first argues:
“Regarding the α-glucan content ratio, … when the α-glucan content ratio falls within the claimed range, dispersion stability, handwriting water resistance, and dry-up resistance can be achieved in good balance. See paragraph [0042] of the specification.
However, Nishikawa does not teach the polysaccharide-sterol derivative content ratio with respect to the colorant amount, and thus, the above noted effect associated with the a-glucan content ratio would not have been obvious over Nishikawa.”
Remarks, page 9.
Examiner respectfully traverses for the following reasons. Although the claimed α-glucan content to self-dispersing pigment ratio may result in dispersion stability, handwriting water resistance, and dry-up resistance in good balance, conclusory statements must be supported by factual evidence, i.e., data. There is no evidence of record showing the criticality of the content of α-glucan to self-dispersing pigment ratio as presently claimed.
Further, Nishikawa teaches that the writing inks achieve excellent water resistance, excellent dry-up resistance, and dispersion stability (Nishikawa; Abstract; page 2, lines 17-18, and page 5, lines 12-14).
Because the amounts of α-glucan and self-dispersing pigment disclosed by Nishikawa fall within the claimed content ratios, and result in inks having the same improved properties, as set forth on pages 4-6 of the above rejection, Examiner maintains that the claimed ratios are obvious in view of Nishikawa.
5) Applicant further argues:
“Further, claim 1 requires that the water-based ink composition contains a specific amount of phenoxyethanol. When the specific amount of phenoxyethanol is used together with a self- dispersing pigment, a water-based ink composition having improved dispersion stability as well as the function as an antibacterial substance can be obtained. …
However, Nishikawa is silent about using phenoxyethanol as an ingredient of water- based ink, and thus, the amount of phenoxyethanol and the dispersion stability effect due to this feature are neither taught nor suggested by Nishikawa.”
Remarks, pages 9-10.
Examiner respectfully traverses because Nishikawa teaches using phenoxyethanol in the writing inks (Nishikawa; page 4, lines 3-6; page 6, line 21), and Nishikawa in view of Takagishi teach using phenoxyethanol in the claimed amounts in order to prevent ink dry-up, as set forth in the above rejection on pages 5-10.
Regarding using phenoxyethanol for dispersion stability, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
6) Applicant further argues:
“The nonionic surfactant having a polyoxyalkylene group is not disclosed in Nishikawa. Thus, the effect, maintaining wettability on the inner side surface of an ink storage body and dispersion stability of the self-dispersible pigment, due to the use of the nonionic surfactant having the polyoxyalkylene group also would not be obvious from the teachings of Nishikawa.
Although various surfactants are known, it is not common to select a surfactant in terms of the dispersion stability of self-dispersing pigment. Thus, it is respectfully submitted that it would not be easy to select the surfactant specified in claim 1.”
Remarks, page 10.
Examiner respectfully traverses because although Nishikawa does not explicitly teach the claimed nonionic surfactant having a polyoxyalkylene group, the combination of Nishikawa and Takagishi teach the claimed nonionic surfactant for dispersion stability of pigments in aqueous writing inks, as set forth on pages 7-11 of the above rejection.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
7) Applicant lastly argues:
“As explained above, by satisfying all the features of claim 1, a water-based ink composition having remarkably excellent characteristics, such as handwriting density in addition to handwriting fastness, handwriting water resistance, and dispersion stability by including specific materials at specific content ratios, can be obtained.
However, Nishikawa fails to disclose all the elements of claim 1, and thus, the prima facie case of obviousness cannot be established. Accordingly, the water-based ink composition of claim 1 and the results associated with the claimed water-based ink composition would not have been obvious over Nishikawa.”
Remarks, page 10.
Applicant argues that Nishikawa does not expressly teach all the limitations of the invention as presently claimed. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Nishikawa does not disclose the entire claimed invention. Rather, Takagishi is relied upon to teach claimed elements missing from Nishikawa for the reasons set forth in the above 35 U.S.C. 103 rejection.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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