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 III (claims 33-52) in the reply filed on 11/12/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant canceled Group I (claims 1-2 and 16-30) and Group II (claims 31-32) on 11/12/2025.
Response to Amendment
The amendment filed on 11/12/2025 has been entered. Claim(s) 33 is/are currently amended. Claim(s) 1-32 has/have been cancelled. Claims 34-52 are new. Claim(s) 33-52 is/are pending and is/are under examination in this office action.
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, 37-38, 41, 43-47 and 50-51 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 Kimura et al (WO 2019049247 A1, machine translation is referenced herein).
Regarding claim 33, 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 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”.
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 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 claim 45, the recited “peelable writing ink” is an intended use limitation that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
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 claim 50, 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.
Claim(s) 34-36 and 42 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 Loccufier et al (US 20220204788 A1).
Regarding claims 34-36, Zhu in view of Kimura teaches the method in claim 33. Zhu teaches the polyurethane resin but 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.
Regarding claim 42, Zhu in view of Kimura teaches the method in claim 33. 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.
Claim(s) 38-40 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 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 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
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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/JIANGTIAN XU/Primary Examiner, Art Unit 1762