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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/7/2026 has been entered.
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 4/7/2026.
Claim Rejections - 35 USC § 103
Claims 1-4 and 10-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2010/0086689) in view of Sugihara (US 2019/0330486).
With respect to claim 1 and 10-19, Ohta discloses an aqueous ink composition for inkjet ink comprising a silicone surfactant and an acetylene glycol-based surfactant (abstract). The acetylene glycol-based surfactant is added in an amount of 0.1-1.0 mass % (paragraph 0052) and includes SURFYNOLS 440, 465, and 104PG50 (paragraph 0053) which are the same as B1, B2, and B3 in the examples in the application as originally filed (see Table 4) and therefore have claimed formula (2). Ohta discloses that the silicone surfactant is added in an amount of 0.1-1.5 mass % (paragraph 0050) and is preferably a polyether-modified organosiloxane (paragraph 0051) in order to provide uniform spreading and no ink bleeding (paragraph 0050).
Ohta fails to disclose that the polyether-modified silicone surfactant has claimed formula (1).
Sugihara discloses an inkjet ink composition (abstract) and teaches that a favorable surfactant is silicone-based surfactant having polyether groups at both terminals of formula (5)
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where r is 1-80 and R----1- has formula (4) (paragraphs 0072-0073)
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wherein m is 1-6, n is 0-50, o is 0-50, n+o is at least one, and R3 is a hydrogen atom or 1-6C alkyl group (paragraph 0070-0071). When r = 7, and R1 has n = 50, o = 0, m = 6, and R3 is a methyl group, the molecular weight of surfactant is calculated to be up to 5648 g/mol. In paragraph 0132, an exemplified polyether-modified siloxane 1 is prepared having formula (5) where r = 6 and R1 is of formula (4) where m = 3, n = 2, o = 0, and R3 is a methyl group, which provides for a molecular weight of 866 g/mol. Sugihara teaches that the polydimethylsiloxane surfactants provide a superior printed image quality (paragraph 0068)
Given that Ohta discloses adding a polyether-modified silicone surfactant to provide an ink with good print quality and further given that Sugihara discloses an advantageous polyether-modified silicone that reads on claimed formula 1 and has a calculated molecular weight of 866-5648 which substantially overlaps with the claimed range of 1500-7500 g/mol, it would have been obvious to one of ordinary skill in the art to utilize a silicone surfactant having claimed molecular weight.
Regarding claimed mass ratio of A to A+B of 0.36 (or 0.35) or less and the total amount of A and B 1.00 % by mass or less, Ohta discloses in Example 3 in Table 1, an ink composition comprising 0.3 mass % silicone surfactant and 0.50 mass % acetylene surfactant, which provides for ratio of silicone surfactant per sum of silicone surfactant and acetylene surfactant of 0.375 (above claimed 0.36 or less). In Example 5, the ink composition comprises 0.1 mass % silicone surfactant and 1.00 mass % acetylene surfactant, which provides for ratio of silicone surfactant per sum of silicone surfactant and acetylene surfactant is 0.09 but the total amount of A+B of 1.1 mass % is greater than claimed 1.00 mass % or less.
There is no exemplified embodiment by Ohta requiring both claimed weight ratio and total amount of surfactants.
Even so, Ohta exemplifies a range of relative mass amounts and total amounts of silicone surfactant and acetylene surfactant and also generally teaches an amount of silicone surfactant of 0.1-1.5 mass % and an amount of acetylene surfactant of 0.1-1.0 mass %.
Given that Ohta discloses overlapping ranges for silicone and acetylene surfactants, it would have been obvious to one of ordinary skill in the art to adjust the relative mass amount and amounts of silicone and acetylene surfactants to within the claimed ranges—absent a showing of unexpected or surprising results that is commensurate in scope with the scope of the claims.
With respect to claims 2, 20, and 21, Ohta teaches that the surface tension of the aqueous ink composition is 20-40 mN/m at 25°C (paragraph 0076) which overlaps with claimed 32.0 mN/m or less (or 25.0 mN/m or more).
Ohta fails to explicitly disclose the ink composition’s dynamic surface tension and therefore does not disclose the absolute value of the difference between dynamic and static surface tensions.
Even so, given that the aqueous ink composition is taught to be stably ejected and exhibits appropriate wettability (paragraph 0076), it would have been obvious to one of ordinary skill in the art to formulate an aqueous ink that has a suitable dynamic surface tension to provide for stable ejection and wettability.
With respect to claim 22, Ohta fails to explicitly disclose the ink composition’s dynamic surface tension.
Even so, given that the aqueous ink composition is taught to be stably ejected and exhibits appropriate wettability (paragraph 0076), it would have been obvious to one of ordinary skill in the art to formulate an aqueous ink that has a suitable dynamic surface tension to provide for stable ejection and wettability.
With respect to claim 3, Ohta’s exemplified SURFYNOLS 440, 465, and 104PG50 (paragraph 0053) have HLB of 8, 13, and 4, respectively, as evidenced by Applicant’s Table 4 in the specification as originally filed. Sugikawa teaches that its exemplified silicone-based surfactant having HLB values of 1-8 (paragraph 0068). For acetylene surfactant having HLB of 8, the absolute value difference is always under 10 for silicone-based surfactant having HLB of 1-8. For acetylene surfactant having HLB of 13 and 4, the absolute value difference is up to 12, which substantially with claimed difference of 10 or less.
With respect to claim 4, within the scope of Ohta’s Chemical formula 2 allows for 2a/p of 1-10. For example, when n is 25 and l is 50 (arbitrarily selecting mid-range values of Oha’s n and l (claimed a and p, respectively), 2a/p is 1.
With respect to claim 23, although Sugihara teaches that the surfactant has HLB of 1.5-8.0 (paragraph 0066) which is outside claimed range of 9-16, it is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a silicone surfactant having HLB of at least 9.
With respect to claim 24, Ohta’s exemplified SURFYNOL 465 (paragraph 0053) has HLB of 13 as evidenced by Applicant’s Table 4 in the specification as originally filed.
Response to Arguments
Applicant's arguments filed 4/7/26 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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