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
The amendment filed on 4/14/2026 has been entered. Claim(s) 33, 35, 37, 48, 49 and 52 is/are currently amended. Claim(s) 1-32, 34, 36 and 45 has/have been cancelled. Claims 53-55 are new. Claim(s) 33, 35, 37-44, 46-55 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 4/14/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the cited references fail to disclose a writing ink composition that forms a peelable written mark when applied to a writing porous substrate at all. In amended independent claim 33 (and in claim 45 prior to its cancellation), the limitation that the ink forms a peelable written mark is positively recited. Further, because the cited references do not relate to peelable writing ink compositions, the skilled artisan would have no motivation to make the modification to Zhu proffered by the Office.
In response, the recited “wherein application of the writing ink composition to the writing porous substrate forms a peelable written mark” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Applicant argued that the combination of (i) an aqueous dispersion of a homopolymer or copolymer of an anionic polyurethane and (ii) polyether-modified polysiloxane promotes vivid colors for deposits, peelability with a suitable amount of friction, peelability after a significant duration of time, and good quality of peelability for written marks (see, e.g., the examples and comparative examples described at paragraphs [0077] through [0105] of the Specification). For instance, "Example 1" described in the Specification (which included the combination of the claimed components) exhibited significantly improved properties in terms of peelability, relative to the comparative writing ink composition described in "Example 3" (which did not include the combination of claimed components). The cited references fail to teach or even suggest that combining these two components would facilitate these qualities for an ink composition.
In response, the recited peelability is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Applicant argued that Zhu broadly recites a "thermoplastic polyurethane resin" without providing any further information with respect to its nature. Zhu, paragraph [0012]. The Office Action acknowledges that Zhu does not teach an ink composition including a dye or pigment in an amount ranging from 0.1% to 10% by weight. Office Action, p. 4. The Office Action relies on Kimura for these deficiencies in Zhu. Office Action, pp. 4 and 5. However, Applicant notes that Kimura discloses an ink composition include urethane beads, which cannot be considered a film forming elastomeric polymer, since the urethane beads cannot interact with one another to provide a film forming effect. Kimura, paragraph [0079]. Thus, the skilled artisan would not have been led to combine Kimura with Zhu at all, let alone in the manner proffered by the Office.
In response, the office action stated that Zhu in view of Loccufier et al teaches the polyurethane in an aqueous dispersion. One cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references. In re Keller, 642 F.2d 413,426 (CCPA 1981). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Zhu teaches an ink composition on paper comprising the claimed film former, dye and pigment. Kimura teaches an ink composition on paper comprising the claimed dye and pigment with specified amounts. It would have been obvious to one of ordinary skill in the art at the time of the invention to form a writing ink composition according to Zhu including the amounts of dye and pigment taught by Kimura, as Kimura demonstrates these ranges to be suitable for similar writing ink composition. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Applicant argued that Zhu is silent regarding an anionic polyurethane and the polyurethane being present in a dispersion. Office Action, p. 8. The Office Action relies on Loccufier for this deficiency in Zhu. Office Action, p. 8. However, Loccufier relates to inkjet printing inks and not ink compositions that form a peelable written mark when applied to a writing substrate. Loccufier, paragraph [0032]. Thus, the skilled artisan would have had no reason to incorporate the dispersion of an anionic polyurethane of Loccufier with the ink composition of Zhu to achieve a writing ink composition in which "application of the writing ink composition to the writing porous substrate forms a peelable written mark," as recited in Applicant's claim 33.
In response, Zhu and Loccufier are in the same field of endeavor as both are concerned with ink composition on paper. Again “ink compositions that form a peelable written mark when applied to a writing substrate” is a property of the product, as explained above.
Applicant argued that JP2002265843 states, in part, "In addition, fluorine-based surfactants, silicone-based, nonionic, anionic, and cationic surfactants, antifoaming agents such as dimethylpolysiloxane, dispersants, and the like may be used as ink permeability improvers." Hence, the skilled person in the art would have been led, at most, to use a silicone raw material in order to facilitate the penetration of the ink into porous substrates. In contrast, according to the disclosure, polyether modified polysiloxane is used as release agent, meaning that the polyether modified polysiloxane migrates to the surface on the porous substrate and decreases the adhesion of the ink composition on porous substrate. Specification, paragraph [0008].
In response, the 103 rejection cites prior art that teaches the claimed polyether modified polysiloxane. Therefore, the aforementioned “migrates to the surface on the porous substrate and decreases the adhesion of the ink composition on porous substrate” is expected.
Applicant argued that regarding claim 51, the compositions disclosed in Zhu do not include more than 40% water by weight, and thus, the skilled artisan would not have been led to modify Zhu to arrive at a writing ink composition including an amount of water ranging from 40% to 80% by weight, relative to the total weight of the writing ink composition. The Examiner cites Kimura to support its rejection of this subject matter at page 6 of the Office Action. However, as noted herein, Kimura discloses polyurethane beads that cannot act as a film-forming agent, and thus, the skilled artisan would not have been led to utilize the water content of Kimura's composition in the composition of Zhu.
In response, this issue is addressed in paragraph 9 above.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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(s) 33, 35, 37-38, 41-44, 46-47, 50-51 and 53-55 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (CN 109504177 A, machine translation is referenced herein) in view of Loccufier et al (US 20220204788 A1) and Kimura et al (WO 2019049247 A1, machine translation is referenced herein).
Regarding claims 33 and 35, Zhu teaches a writing ink composition and a method of writing the ink composition on paper [P9L35]. As evidenced by the applicant, paper meets the claimed “writing porous substrate” [P6L15-16 spec.].
The writing ink composition comprises 6.8-15.7 % of polyurethane, 1.5-1.8 % of a lubricant including polyether modified silicone oil, and water [P3L32-37, P5L18]. The composition comprises dyes and pigments [P4L7-8].
The examiner submits that the polyurethane reads on the claimed film-forming elastomeric polymer including homopolymer or copolymer of polyurethane; the polyether modified silicone oil reads on the claimed polyether-modified polysiloxane because silicone oil is art recognized as polysiloxane.
Zhu is silent about it being an anionic polyurethane or included in an aqueous dispersion.
In the same field of endeavor, Loccufier teaches an aqueous ink composition suitable for printing on porous substrates including paper [0108]. The composition comprises a polyurethane resin that can be an anionic polyurethane homopolymer dispersion [0033, 0036-0037].
It would have been obvious to one of ordinary skill in the art at the time of filing to select an aqueous anionic polyurethane homopolymer dispersion as the polyurethane resin in Zhu’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Zhu does not teach that the total content of the at least one dye (c) ranges from 0.1 to 10 % by weight, relative to the total weight of the writing ink composition and the total amount of the pigment (d) ranges from 0.1 to 10% by weight, relative to the total weight of the writing ink composition.
In the same field of endeavor, Kimura teaches a pen ink for paper [P11L39] comprising 1-40 wt%, more preferably 5.0-30%, and most preferably 10-25% of dye [P17L19-24]; and 1-40 wt%, most preferably 10-25% of pigment [P21L14-17]. Kimura also indicates that if solid content of the ink is too high, the writing can become heavy [P17L21-22], and writing blur due to clogging due to sedimentation [P21L18-20]. This might motivate one skilled in the art to explore lower portions of the ranges; and it seems like there would be an economic benefit to employing less day and pigment as well.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a writing ink composition according to Zhu including 1-40 wt% of dye and 1-40 wt% of pigment, as Kimura demonstrates these ranges to be suitable for similar writing ink composition. This represents the use of a suitable ranges of dye and pigment in a writing ink which is compositionally similar to those of Kimura. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The 1-40 wt% of dye and 1-40 wt% of pigment overlap the claimed “the total content of the at least one dye (c) ranges from 0.1 to 10 % by weight, relative to the total weight of the writing ink composition and the total amount of the pigment (d) ranges from 0.1 to 10% by weight, relative to the total weight of the writing ink composition”.
The recited “wherein application of the writing ink composition to the writing porous substrate forms a peelable written mark” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 37, the 6.8-15.7 % of polyurethane overlaps the claimed polyurethane solid content of 8-25 wt%.
A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 38, the silicone oil is art recognized as polysiloxane which is nonionic. Zhu teaches that it is a polyether modified silicone oil [abstract].
Regarding claim 41, the 1.5-1.8 % of a lubricant including polyether modified silicone oil overlaps the claimed amount of the polyether-modified polysiloxane of 0.5-5 wt%.
A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 42, Zhu teaches the pigment but is silent about the pigment dispersion.
In the same field of endeavor, Loccufier teaches an aqueous ink composition suitable for printing on porous substrates including paper [0108]. The composition comprises a pigment of DISP-M1, Diamond D75M, a 15 wt. % pigment red 122 dispersion [0133].
It would have been obvious to one of ordinary skill in the art at the time of filing to select pigment red 122 dispersion as the pigment in Zhu’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Regarding claims 43 and 51, Kimura teaches that the ink composition comprises 35-70 wt% of water [P7L38-39].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a writing ink composition according to Zhu including 35-70 wt% of water, as Kimura demonstrates this range to be suitable for similar writing ink composition. This represents the use of a suitable range of water in a writing ink which is compositionally similar to those of Kimura. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The 35-70 wt% of water overlap the recited 10-80 wt% in claim 43 and 40-80 wt% in claim 51. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 44, Zhu teaches stabilizer, corrosion inhibitor, and preservative as stated above, meeting the claimed additive.
Regarding claims 46-47, Zhu teaches printing paper substrate as stated above. A paper is art recognized as cellulosic fiber containing material, as evidenced by the applicant [0022 spec.].
Regarding claims 50 and 54, the recited viscosity is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 53, the recited aqueous dispersion of the homopolymer or copolymer of the anionic polyurethane is a component of the writing ink composition recited in claim 33. The amount of the homopolymer and the amount of water in the aqueous dispersion of the homopolymer or copolymer of the anionic polyurethane contribute to the amount of the homopolymer or copolymer of the anionic polyurethane and the amount of water in the final product of the writing ink composition. As long as the prior art teaches the same amount of the homopolymer or copolymer of the anionic polyurethane and the same amount of water in the final product of the writing ink composition, the amount of the homopolymer and the amount of water in the aqueous dispersion of the homopolymer or copolymer of the anionic polyurethane do not matter.
Nonetheless, Loccufier teaches suitable polyurethane dispersions such as BAYHYDROL UH 2606 [0037]. As evidenced by Covestro (Covestro “Bayhydrol® UH 2606), Bayhydrol® UH 2606 contains approx. 35% of anionic polyurethane solids and therefore approx. 65% of water.
Regarding claim 55, the recited “wherein the writing ink composition is non-thermochromic” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Claim(s) 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu in view of Loccufier and Kimura as applied to claim 33 above, further in view of Shigeta et al (US 20180244093 A1).
Regarding claims 38-40, Zhu in view of Kimura teaches the method in claim 33. Zhu teaches the polyether-modified polysiloxane, but is silent about it being polyether-modified polydimethylsiloxane or Bis-PEG 15-Methyl Ether Dimethicone.
In the same field of endeavor, Shigeta teaches an aqueous ink composition for paper printing [0194], comprising a polyether-modified silicone including PEG-9 methyl ether dimethicone, PEG-11 methyl ether dimethicone, and PEG-32 methyl ether dimethicone [0186].
It would have been obvious to one of ordinary skill in the art at the time of filing to select PEG-9 methyl ether dimethicone, PEG-11 methyl ether dimethicone, or PEG-32 methyl ether dimethicone as the polyether-modified silicone in Zhu’s composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
PEG-9 methyl ether dimethicone, PEG-11 methyl ether dimethicone, and PEG-32 methyl ether dimethicone are homologs of the claimed Bis-PEG-15 methyl ether dimethicone - compounds differing regularly by the successive addition of the same chemical groups, in the present instance, a -CH2CH2O- group. Homologs “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); MPEP 2144.09.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Zhu to select Bis-PEG-15 methyl ether dimethicone as homologs of PEG-9 methyl ether dimethicone, PEG-11 methyl ether dimethicone, and PEG-32 methyl ether dimethicone, as they are expected to possess similar properties and have similar utility.
As evidenced by the applicant, Bis-PEG-15 methyl ether dimethicone reads on the claimed polyether-modified polydimethylsiloxane having formula (1) [0042 spec.].
Claim(s) 48-49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu in view of Loccufier and Kimura as applied to claim 33 above, further in view of Yoshimoto (JP 2003082262 A, machine translation is referenced herein).
Regarding claims 48-49, Zhu in view of Kimura teaches the method in claim 33. Zhu is silent about the claimed peeling and erasing.
In the same field of endeavor, Yoshimoto teaches an erasing composition for eraser of ball-point pen ink [abstract].
It would have been obvious to one of ordinary skill in the art at the time of filing to erase any writing mistakes using the prior art erasers as they are known to be suitable for this purpose. The color of the written mark will inherently change via peeling since the claimed method step is being performed on a compositionally identical ink.
Claim(s) 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu in view of Kimura as applied to claim 33 above, further in view of Cornelius et al (US 20070204387 A1).
Regarding claim 52, Zhu in view of Kimura teaches the method in claim 33. Zhu is silent about the claimed felt-tip marker.
In the same field of endeavor, Cornelius teaches a device suitable as a capillary feed used as an ink feeder and writing tip in "felt-tip" pens.
It would have been obvious to one of ordinary skill in the art at the time of filing to use Cornellius’ device for dispensing Zhu’s ink composition, as Cornelius expressively teaches that the device is suitable for such application.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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