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 without traverse of Group I claims 4-11 in the reply filed on 10/27/2025 is acknowledged.
Claims 1-3 and 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/27/2025.
Claim Objections
Claim 4 is objected to because of the following informalities: In claim which recites, “the pure solvent or solvent mixture”. In order to ensure proper antecedent basis, Applicant is requested to change “the” to “a” before “pure” Appropriate correction is required.
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.
Claim 4-11 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.
Claim 4 is 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 4, which recites, “from 0.0001 to 5.0 wt% of modified particles”, it is not clear if this is based on the total weight of the particle dispersion (claim 5) or the total weight of the particles only, clarification is requested.
Regarding claim 8, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “polymer is selected from polyvinylpyrrolidone, polyvinyl alcohol 87% hydrolyzed and methyl cellulose”, and the claim also recites the polymer to be polyvinylpyrrolidone, polyvinyl alcohol 87% hydrolyzed in same claim which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In claim 7 which recites, “soluble interfacially-active polymer having a molecular weight of more than 5 kDa” fails to further limit from the claim which it depends on as claim 4 recites the same limitation. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 4-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (EP 2487209) in view of Sato et al. (US 2021/0187971), further evidence by https://pubchem.ncbi.nlm.nih.gov/compound/1-Butanol#section=Computed-Properties
Regarding claims 4-8, 10-11, Matsumoto discloses an inkjet ink composition (i.e. corresponds to particle dispersion of present claim) including at least one water-soluble organic solvent, water, at least one colorant, and at least one colloidal silica, wherein 40% or more by mass of a total content of the water-soluble organic solvent has an SP value of 27.5 or less, and the inkjet ink composition having excellent discharge reliability, and suppressing curling of prints (abstract). The ink composition for inkjet recording of exemplary embodiments of the invention contains at least one type of colorant which includes water-dispersible pigment is preferable and water-dispersible resin-coated pigment is more preferable from the viewpoints of lightfastness (para 0104). Specific example of water dispersible includes resin-coated pigment (corresponds to core-shell structure of present invention), which may be referred as an encapsulated pigment in some case, specifically, a polymer emulsion prepared by adding a pigment to polymer particles (para 0105). The content of the colorant particles in the ink composition is preferably from 0.1% by mass to 25% by mass, more preferably from 1% by mass to 20% by mass, further preferably from 1.5% by mass to 15% by mass, and particularly preferably from 1.5% by mass to 10% by mass, based on the ink composition (para 0128). Examples of the second water soluble organic solvent according to the aspect of the invention include alkyl alcohols having 1 to 4 carbon atoms such as ethanol, methanol, butanol, propanol, or isopropanol (para 0031), As Matsumoto discloses butanol or ethanol as the organic solvent which is identical to the one used by the applicant in his invention, it therefore would be obvious that butanol would intrinsically have the claimed boiling point (i.e. 243.9F = 117C) and claimed surface tension (26.28 dynes/cm = 26.25 mN/m) as evidenced by (https://pubchem.ncbi.nlm.nih.gov/compound/1-Butanol#section=Computed-Properties).
However, Matsumoto fails to disclose that the resin coated pigment is solid core particle a resin coated on the core is polyvinylpyrrolidone which is soluble interfacially-active polymer and the molecular weight of polyvinylpyrrolidone is 5 kDa and greater.
Whereas, Sato discloses ink composition according to the embodiment of the present disclosure contains at least one kind of pigment (para 0150). The kind of the pigment is not particularly limited, and known organic pigments and inorganic pigments of the related art can be used as the pigment and inorganic pigment such as titanium oxide, iron oxide, or carbon black (para 0151). Sato discloses pigments which are surface-treated with a surfactant or a polymer dispersing agent (para 0151). The pigment of which at least a part is coated with a polymer dispersing agent is referred to as a “resin-coated pigment” [para 0155]. The examples of the polymer dispersing agent, a hydrophilic polymer compound can be used as a water-soluble polymer dispersing agent (para 0158) and Examples of the synthetic hydrophilic polymer compound include a vinyl-based polymer such as polyvinyl alcohol, polyvinylpyrrolidone (para 0161). The weight-average molecular weight of the polymer dispersing agent is preferably in a range of 3000 to 200000, more preferably in a range of 5000 to 100000, still more preferably in a range of 5000 to 80000, and particularly preferably in a range of 10000 to 60000 (para 0167). Although, Sato does not disclose the unit of molecular weight, but it is well known that such high molecular weight is measured in g/mol and by converting 3000-200000 g/mol to kDA, it comes out be 3-200 kDa which meets the claim limitation.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include resin coated pigment where pigment is inorganic oxide and resin is polyvinylpyrrolidone having a molecular weight of 3-200 kDa as taught by Sato as the colorant in the ink composition of Matsumoto motivated by the desire to have improved ink colorability and imagine density.
As Matsumoto in view of Sato discloses a particle dispersion comprising 0.1-25 wt% of colorant and a solvent such as butanol, where colorant is solid core particle and a polymeric shell having the claimed molecular weight and a solvent having the claimed boiling point and surface tension as presently claimed, it therefore would be obvious that particle dispersion would intrinsically have the claimed formula of claim 4 and would exhibit a homogenous drying pattern.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (EP 2487209) in view of Sato et al. (US 2021/0187971) as applied to claim 4, further in view of Nakamura et al. (US 2013/0295344).
Regarding claim 9, Matsumoto in view of Sato fails to disclose that the solid core particle comprises at least one of silica, hematite and goethite.
Whereas, Nakamura discloses the ink composition according to the invention contains (Component C) a coloring material. The coloring material that can be used in the invention is not particularly limited, and any material arbitrarily selected from known colorants such as a pigment. Among these, it is more preferable that the ink composition include a pigment, from the viewpoint of having excellent weather resistance and rich color reproducibility, as a coloring material (para 0201-202). Nakamura discloses the pigment is not particularly limited and can be appropriately selected according to the purpose, and examples thereof include known organic pigments and inorganic pigments (para 0204). The inorganic particles used as the white pigment may be particles of a simple substance, or may be composite particles with an oxide of silicon (para 2015).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include silicon oxide as the pigment as taught by Nakamura in the core of Matsumoto in view of Sato motivated by the desire to have excellent weather resistance and rich color reproducibility.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788