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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 8/24/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 8/24/2025. In particular, claims 1 and 11 have been amended to specify the pH of the at least partially neutralized styrene-maleic anhydride copolymer to 8-12.. This combination of limitations was not present in the original claims. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
Claims 1-6, 11, and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 1 and 11, it is not clear if the pH value is for the ink composition or the dispersing agent.
With respect to claims 2-6 and 12, they are rejected for failing to clarify the claims from which they depend.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘979 (JP H04-146979, cited by applicant on IDS filed 6/9/2026, citations to machine translation, unless otherwise noted).
JP ‘979 discloses a water-based printing ink composition comprising, based on solids content, 2-90 wt % of styrene-maleic acid copolymer resin and 0.2-10 w % one or more alkynols, alkyne diols, and alkylene adducts of alkyne diols (page 5, lines 8-19). The second example includes 20 parts by weight styrene-maleic acid copolymer resin which was neutralized with ammonia, 40 parts by weight pigment dispersion, and 0.5 wt % 2,4,7,9-tetramethyl-5-decyne-4,7-diol (70% solids), wherein the pH is 8.4 (page 8, last line to page 9, line 8). This example provides for a dispersing agent comprising 98.3 wt % maleic anhydride and 1.7 wt % acetylenic surfactant having structure
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which reads on claimed formula (1) when R1 is C3 alkyl and R2 is C1 alkyl. The third example includes an acetylenic surfactant having structure
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where m+n = 10 (page 9, lines 8-14; page 599, original document) which reads on claimed formula (2) when R3 is C4 alkyl and R4 is C1 alkyl.
JP ‘979 teaches that the styrene-maleic acid copolymer has a weight average molecular weight (Mw) of 1,000-100,000 (page 4, lines 10-12) but only exemplifies Mw of 35,000.
JP ‘979 fails to disclose with sufficient specificity so as to anticipate claimed molecular weight of 3,000-8,000.
Nevertheless, it is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Given that JP ‘979 discloses a molecular weight range that overlaps with the claimed range, it would have been obvious to one of ordinary skill in the art to utilize any molecular weight within the range, including 3,000-8,000.
Claims 1-6, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Marsella (Marsella, et al, Colloids and Surfaces A: Physicochemical and Engineering Aspects 234 (2004) 63-69, cited on IDS filed 11/13/24) in view of Rehman (US 7,678,844).
With respect to claims 1-4, Marsella discloses a dispersing agent comprising styrene-maleic anhydride (SMA) copolymers and acetylenic alcohols or ethoxylates (abstract). The exemplified SMA is SMA 1440H having weight-average molecular weight (Mw) of 7000 in a solution of pH 8-9.5 (page 64, 2.1 Materials) and
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where n is about 7 and R is CH2CH2OBu (page 64, Table 1) which reads on claimed formula (3) when a = 1, b = 7, and the anhydride is neutralized with ammonia. An exemplified acetylenic compound is S420 having structure
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where x+y is about 1.2 having a calculated molecular weight 226 g/mol (page 65, Table 1) which reads on claimed formula (2) when m+n = 1.2. In Figure 7, a dispersing agent comprises 0.1 wt % S420 is mixed with 0.5-10 wt % SMA 1440H, which provides for relative amounts acetylenic ethoxylated S420 of 1-16 wt % and thereby 84-99 wt % SMA.
Marsella teaches formulating ink from SMA copolymers as a pigment dispersant (page 63, first column) but fails to disclose an ink comprising SMA and acetylenic compound.
Rehman discloses an ink-jet ink comprising water and 0.001-6 wt % styrene-maleic anhydride copolymer having weight-average molecular weight of 400-15,000 (abstract), wherein acetylenic polyethylene oxide is added as a surfactant in an amount of 0.001-10 wt % (col. 11, lines 5-13).
Given that Marsella discloses a dispersing agent suitable for ink and further given that Rehman discloses an aqueous ink comprising styrene-maleic anhydride copolymer and acetylenic polyethylene oxide (like Marsella), it would have been obvious to one of ordinary skill in the art to prepare an ink composition comprising water, dispersed pigment, SMA, and acetylenic compound.
With respect to claim 5, Marsella fails to disclose the HLB value of acetylenic ethoxylate S420 but teaches that acetylenic compound S465 which has x+y = 10 (rather than x+y=1.2 of S420) has HLB of 13 (page 64, Table 1; page 67, Table 2). Because S465 is more has longer hydrophilic ethoxylate groups, it is expected to have HLB greater than HLB of S420. Therefore, it would have been obvious to one of ordinary skill in the art to select an acetylenic compound having HLB of up to 12
With respect to claim 6, Marsella discloses that the claimed dispersing agent provides defoaming properties (abstract). Therefore, it would have been obvious to one of ordinary skill in the art to control the foam height by controlling the amount of the dispersing agent.
With respect to claim 11, Rehman teaches that the inkjet ink compositions are formed by dispersing ingredients including SMA, acetylenic compound, and other additives in water (col. 4, lines 34-42).
With respect to claim 12, Marsella’s SMA S420 has a Mw of 7000 which is outside the claimed range of 3000-5000.
Rehman discloses an aqueous inkjet ink composition comprising SMA and acetylenic polyethylene oxide, like Marsella, and teaches that a suitable weight-average molecular weight of the SMA ranges from 400 to 15,000 (abstract; col. 11, lines 5-9).
Given that both Marsella and Rehman are drawn to dispersing agents comprising SMA and acetylenic surfactants and further given that Rehman teaches that weight-average molecular weights of the SMA lower than the 70000 exemplified by Marsella are suitable in these compositions, it would have been obvious to one of ordinary skill in the art to utilize a SMA having relatively lower weight-average molecular weight that overlaps with the claimed range of 3000-5000.
Response to Arguments
Applicant's arguments filed 8/24/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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