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 Arguments
In their response dated 2/2/2026 the applicants argued following:
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Response: Applicant’s claims as amended recite comprise new added limitation:
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This means that the neutralization degree is at most 90%, while lower limit includes zero. Therefore applicant’s own claims do not require the polymeric dispersant to be neutralized at al.
With respect to the obviousness rejection over Miyuki in view of Daisuke, the applicants stated following:
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While the quote from KSR v. Teleflex is selected to suit the arguments, one cannot ignore principles behind the above statement. Specifically, the same case law stated that the findings of obviousness as to specific understanding or principle within the knowledge of a skilled artisan that would have motivated to modify the references. Court decision in this situation referred to obviousness of attaching an electronic control to the support bracket of the Asano assembly. The level of ordinary skill in the art in this particular situation is very different from the level of ordinary skill in the art in the instant invention. Chemical arts, including polymers, the obviousness is formulated based on the compounds utilized and their properties. This is because of long standing case laws that were established and are still valid today, long before KSR, wherein the same case laws would never apply in the automotive industry, especially with ever changing technology.
For example: The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). This is further emphasized by MPEP 2112.01 which states that “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.” See also, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the same manner, when two compositions are utilized for the same purpose their combination to make third composition for the same purpose may also be obvious (see In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 426 (CCPA 1971)), however, The Office has to establish the suitability of such combination. The KSR just few pages later restates this in following manner:
(“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschelle, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
Having said that arguing case laws can take forever. Therefore, going back to the office action itself, while applicants may not agree with examiner’s grounds of rejection, specifically polymeric dispersants that are common to both Miyuki and Daisuke (in this case specifically copolymers of styrene and acrylate), they are examiner’s grounds of rejection and reason for utilizing specific dispersant does not have to be the same as the reasons for which applicants utilize the dispersant.
In the rejection of claim 3, the office action clearly compared the two references in many ways. For one, their field of endeavor is in making inkjet compositions. They both utilize thickeners, pigments, binders, water, water soluble solvent and a dispersant. The dispersants in both are styrene and acrylate copolymers and one could argue that the reference could be stand-alone reference because it does teach claimed dispersant is partially neutralized. For now, this reference will be kept in a 103 rejection because the dispersants themselves are not required to be neutralized. The neutralization is within the same degree because the pH of Daisuke is in the same range as the pH of the instant invention [0026-0027] due to presence of the base to neutralize the dispersant.
The obviousness statement on page 8, clearly states that the since the dispersants of Daisuke are the same type of copolymers and can be neutralized with base, the dispersants of Miyuki will also undergo the same neutralization. While this is very basic chemistry principle that one of ordinary skill in the art would readily understand, in law what matters is not always what one knows, but what one can prove.
In any event, applicants arguments addressing each reference separately, does address the grounds of rejection, which why one of ordinary skill in the art would utilize the dispersants of Daisuke in the teachings of Miyuki especially since Miyuki teaches the same type of dispersant.
In summary rejections of record are maintained.
Claim Interpretation
Instant claim 1 recited thickener that has an acid number of at least 150 mg KOH/g of solids. While many tradenames do not provide this value based on the content of monomers (specifically acid groups) such can be easily calculated. For example, tradename Pemulan TR 2, one of ordinary skill in the art would know that the molecular weight of acrylic acid is 72.06 g/mol. Pemulan TR 2 is a copolymer of acrylic acid and C10-30 alkyl acrylate as hydrophobic modification, wherein carboxylic acid groups are contained in an amount of 52-62%, with average being 57%. Calculating moles of acid:
1000 mg /1000 g = 1 g
0.57 g of acrylic acid is in 1 g of polymer
(0.57 g) / (72.06 g/mol) = 0.0079 mol of acrylic acid.
With neutralizing agent one mole of KOH is required for every more of acid. The molar mass of KOH is 56.11 g/mol.
(0.0079 mol) x (56.11 g/mol) = 0.443 g of KOH
This gives an acid value of approximately 443 mg KOH/g
While this is theoretical calculation taking into consideration average content of the acrylic acid, the actual value will be dependent on actual acid content, having said that with acid content being 52% to 62%, the acid value of the tradename at lower range of 52% will be 404 mg KOH/g and for upper range of 62% the acid value will be 482 mg KOH/g.
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.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4-10, 11-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Miyuki (JP 2013/112748).
With respect to claims 1 and 6, Miyuki discloses ink composition for use with inkjet printers. The composition comprises:
Pigment dispersion in water with along with dispersant and surfactant [0042] wherein antifoaming agent is a surfactant Surfynol 104.
Diethylene glycol monobutyl ether which is water soluble solvent [0043].
Surfactant (sodium diisooctyl sulfosuccinate)
Resin emulsion (binder Aquabrid AST 499) which is a polyurethane polymer emulsion.
Thickener Pemulen TR2 (see claim interpretation above) having acid value that meets instant claims 1 and 6.
Water.
Polymeric dispersant which meets the neutralization degree of “up to 90%”, which limitation include zero neutralization.
With respect to claim 2, styrene acrylic acid dispersant is a polymeric dispersant [0026].
With respect to claims 4 and 5, the resin emulsion meets the instant limitation of a binder [0027] and in addition to polyurethane based polymer it includes acrylate or methacrylate based binders [0028], wherein binders are structurally and chemically different from dispersants.
With respect to claim 7, polymeric thickener is utilized in amount of 0.03-0.2% [0014], example in [0043] discloses thickener used in 0.1 %.
With respect to claim 8, pigment dispersion comprises 20% of pigment, final composition contains 7.5 parts [0042-0043]. In [0024] Miyuki discloses the content of pigment to be within 1-20% preferably 0.5-10%.
With respect to claims 9 and 10, the solvents utilized are water soluble solvents [0031-0034] utilized in amount of 2-30% and exemplified solvent diethylene glycol monobutyl ether has boiling point of 230oC. Having said that any solvent in [0031-0034] is suitable for use and it includes diethylene glycol monomethyl ether which has a boiling point of 196-202oC.
With respect to claims 12 and 13, examples 1 and 2 of Miyuki have viscosity of 10.2 and 10.9 mPa*s respectively. The comparative composition 1, which contains no thickener has viscosity of 2.0 which is definitely more than 20% difference (see Table [0053]).
With respect to claim 14, polymeric thickener of Miyuki has Pemulen TR 2 is a high molecular weight polymer having molecular weight in a range of 50,000 to 300,000. With minimum molecular weight of 50,000, average molecular weight has to be higher than the minimum.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3, 11, 15, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyuki (JP 2013/112748) in view of Daisuke (JP 2011-202030).
With respect to claim 3, Miyuki exemplifies styrene-acrylic acid polymer as a dispersant, wherein his teachings [0026] do not limit the dispersant to what is exemplified but also to what is known in the art. As such Daisuke discloses another aqueous composition for inkjet ink which defines in greater detail dispersants suitable for use in inkjet applications.
Specifically, Daisuke also discloses aqueous inkjet composition comprising thickener [0096], pigment, binder, water, water soluble solvent and a dispersant.
The dispersants [0026] include those having hydrophobic and hydrophilic group, wherein hydrophobic groups include styrene and acrylate esters and hydrophilic groups capable for forming such as acrylic acid and methacrylic acid, wherein acrylic acid and methacrylic acid for purpose of acting as dispersants are functional equivalent. Examples include styrene carboxylic acid (here methacrylic acid and acrylic acid) as well as styrene and maleic acid.
It would have been obvious to one having ordinary skill in the art at the time the instant invention was filed to utilized polymeric dispersant of Daisuke (styrene methacrylic acid or styrene maleic acid and still obtain the claimed invention. The modification is obvious because Miyuki clearly stated that polymeric dispersants are preferred. Miyuki further exemplified styrene acrylic acid, which is functionally equivalent to styrene methacrylic acid polymer and styrene maleic acid polymer, because all three when acting as dispersants have functional groups capable of forming salt in alkali conditions.
Additionally, such dispersants would prevent flocculation and allow pigments to stay in dispersed phase longer.
With respect to claim 11, Miyuki does not explicitly disclose the pH od the composition however, such would be inherent in his composition. With neutral being 7 on scale 0-14, the composition of Miyuki has basic character due to use of water diethylmonobutyl glycol ether both of which are neutral and basic surfactants. The composition also has to undergo alkali substitution with the OH groups of the carboxylic acid in the acrylic polymers. Additionally, Miyuki discloses use of pH adjusters if necessary in order to achieve alkali swelling of the acrylic acid groups. Without that the polymer will not “swell” or gel for lack of better words.
Furthermore, Miyuki discloses the same basic composition including all components as required by instant claim 1 (on which claim 11 depends), which includes the same amounts of each components (including the ranges). Since properties of the composition flow from each present ingredient and the amounts of each ingredient, the pH value is seen as a physical property, which will also be met.
With respect to claims 15 and 16, acrylic acid thickener has carboxylic acid groups which are alkali swellable groups. This fact has been well established in the art. Acrylic polymers are known to swell to a large degree and retain large amounts of water when present in their alkali sodium form. For example, sodium salt of PMMA (widely used as an absorbent). This is an inherent property of the acrylic acids and polymers made therefrom. The secondary reference of Daisuke further established criticality of the pH in the ink jet composition. As mentioned above, alkali salts can absorb and retain large amounts of water. As such adjusting pH, will control the degree of alkali spelling. If the pH is more than 10, inkjet head will clog [0038]. As such the best pH range for inkjet composition is between 6 and 10 with alkali salts as the pH adjusters.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 17, 2026