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 .
Election/Restrictions
Applicant's election of Group I, claims 1-7, without traverse in the reply filed on 11/18/2025 is acknowledged.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/18/2025.
Claim Interpretation
For the purposes of examination, the term “bead” as used throughout the claims (see claim 3) will be given its broadest reasonable interpretation consistent with the specification – a discrete particle of any size or shape. For example, paraffin wax particles would read on the claimed “bead,” given that they are discrete particles.
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.
Claims 1-7 are 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.
In claim 5, the phrase “filler:resin ratio” is unclear. There is no previous mention of a “filler,” and it is unclear what exactly the filler is supposed to represent. In other words, the term “filler” is a vague term that is undefined. Based on Applicant’s specification (see Applicant’s specification at para. 0015 and 0043), as well as the parentheses in claim 5, it appears that the claimed filler is intended to refer to the claimed PCM. Accordingly, for the purposes of examination, the Examiner is interpreting the “filler:resin ratio” to refer to the “PCM:resin ratio.”
In claim 5, the claim contains limitations in parentheses. However, the use of parentheses renders the claim indefinite, as it is unclear whether the terms in the parentheses are required to limit the claim or not (i.e., the use of the term “PCM” in parentheses and “filler” outside of the parentheses generates confusion as to which is meant to define the claimed ratio). To correct, the Examiner suggests deleting the terms in the parentheses. For the purposes of examination, the Examiner is interpreting the “filler:resin ratio” to refer to the “PCM:resin ratio.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kusahara et al. (JP-2018144414-A1), with reference to the included machine translation (hereinafter referred to as “Kusahara”).
Regarding claim 1, Kusahara teaches an ink composition (see Kusahara at pg. 2, para. 7, teaching a composition for three-dimensional modeling; also see Kusahara at pg. 7, para. 3, teaching the composition may be used in an ink jet method; the composition for three-dimensional modeling of Kusahara corresponds to the claimed “ink composition”) comprising:
• particles composed of a phase change material (PCM) (see Kusahara at pg. 2, para. 7, teaching the composition as containing a phase-change substance (i.e., phase-change material); also see Kusahara at pg. 3, para. 1-3, teaching the phase-change material to be a solid material, including a solid at the time of additive manufacturing; thus, the phase-change material of Kusahara necessarily is in the form of “particles”);
• a resin (see Kusahara at pg. 2, para. 7, teaching the composition as containing particles; also see Kusahara at pg. 6, para. 1, teaching the particles may be resin particles).
Regarding claims 2-3, see Kusahara at pg. 3, para. 6, teaching the phase change material may be a paraffin wax, which is an organic PCM; further, with the addition of a solid paraffin wax to the composition of Kusahara, the PCM particles necessarily are “PCM beads,” given that the solid material is in the form of particles; also see the “Claim Interpretation” section above.
Regarding claim 4, see Kusahara at pg. 3, para. 6, teaching the phase change material may be a paraffin wax; it necessarily follows that following the addition of paraffin wax to the composition of Kusahara, the wax adjusts the rheology of the composition by its nature as a solid wax material; in other words, any addition of a solid to a composition necessarily adjusts the rheology of the composition; moreover, the “rheology modifier” limitation is a recitation of function; since the paraffin wax is the same as that claimed, the same is considered capable of meeting the limitation, see MPEP § 2114.
Regarding claim 6, see Kusahara at pg. 6, para. 1, teaching the resin particles may be an epoxy resin or an unsaturated polyester; epoxy resins are necessarily “cross-linkable” resins; further, unsaturated polyesters are necessarily “curable resins.”
Regarding claim 7, the “thermal regulation” is notably a property of the resulting composition. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Here, the composition of Kusahara contains the same phase-change material, paraffin wax. Accordingly, it necessarily follows that the composition exhibits at least some kind of “thermal regulation” property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof is then shifted to Applicants to provide evidence to the contrary. See MPEP § 2112-2112.02.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoki et al. (US-20120249705-A1) (hereinafter referred to as “Aoki”), with evidence from Nakagawa et al. (US-20170022380-A1) (hereinafter referred to as “Nakagawa”) as to the rejection of claim 6 only.
Regarding claims 1 and 2, Aoki teaches an ink composition comprising: particles composed of a phase change material (PCM); and a resin (see Aoki at para. 0012-0013, teaching an aqueous ink containing particles of a paraffin wax and resin particles; paraffin wax reads on the claimed “phase change material”, as disclosed by Applicant’s specification at para. 0008 and 0026; further, paraffin wax is an organic PCM).
Regarding claim 3, see Aoki at para. 0046, teaching the paraffin wax as being in the form of fine particles, e.g., an emulsion; thus, the paraffin wax particles necessarily are “PCM beads,” given that they are in the form of particles; also see the “Claim Interpretation” section above.
Regarding claim 4, see Aoki at para. 0046, teaching the paraffin wax particles as adjusting the viscosity of the ink composition; thus, the paraffin wax particles necessarily function as rheology modifiers.
Regarding claim 5, see Example 2 of Aoki at pg. 9 at Table 1, teaching an example ink containing 3 wt% of a paraffin wax and 2 wt% of a resin; thus, the ratio of the phase-change material to the resin (i.e., the filler to the resin, see the interpretation set forth in the 112(b) rejection above) in Example 2 of Aoki is 1.5:1; this range of 1.5:1 falls within the claimed range; thus, Aoki reasonably suggests to one of skill in the art to choose values within the claimed range (e.g., 1.5:1) which are exemplified in the example embodiments.
Regarding claim 6, see Aoki at para. 0053, teaching the resin particles may include “polymers and copolymers of acrylic acid” or a styrene-acrylic acid copolymer resin; also see Aoki at para. 0054, teaching commercial product Boncoat 4001 as a suitable resin; Boncoat 4001 is an acrylic-based resin particle (i.e., acrylate resin), as evidenced by Nakagawa at para. 0102.
Regarding claim 7, the “thermal regulation” is notably a property of the resulting composition. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Here, the ink of Aoki contains the same phase-change material, paraffin wax. Accordingly, it necessarily follows that the ink exhibits at least some kind of “thermal regulation” property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof is then shifted to Applicants to provide evidence to the contrary. See MPEP § 2112-2112.02.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kusahara.
Regarding claim 5, see Kusahara at pg. 3, para. 11, teaching the content of the phase change material in the composition to range from 0.1 to 10%; also see Kushara at pg. 6, para. 4, teaching the content of the particles to range from 1 to 90%; thus, Kusahara necessarily teaches a ratio of the phase-change material to the resin (i.e., the filler to the resin, see the interpretation set forth in the 112(b) rejection above) to range from 0.0011 to 10 (0.1/90 = 0.0011; 10/1 = 10); this range of 0.0011 to 10 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Toosi et al. (US-20140073723-A1) teach a phase change ink (see Toosi at Abstract).
KR-102091276-B1, with reference to the included machine translation (herein ‘276), teaches a building material for an exterior comprising multiple thermochromic beads (see ‘276 at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731