DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/22/2026 has been entered.
Response to Amendment
In response to the amendment received on 01/22/2026:
claims 1-12 are currently pending
claim 1 is amended
new prior art grounds of rejection applying Suzuki, Kou, Takiguchi and Kaeriyama are presented herein
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 text of those sections of Title 35 U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (JP 2019119855 A) with reference to the provided machine translation, hereinafter referred to as SUZUKI, in view of Kou et al. (US 9701785 B2), hereinafter referred to as KOU, Takiguchi et al. (US 20180037759 A1), hereinafter referred to as TAKIGUCHI, and Kaeriyama et al. (US 20220041880 A1), hereinafter referred to as KAERIYAMA.
Regarding claim 1, SUZUKI teaches a pigment composition (see SUZUKI at paragraph [13]: water-based ink composition) comprising:
a base-metal pigment, at least one dispersant, an organic solvent, and water (see SUZUKI at paragraphs [13]: ink composition comprises water, glitter pigment particles and dispersing agent; [71]: the aqueous ink composition can contain an organic solvent; and [19]: glittering pigment particles selected from the group consisting of aluminum), wherein:
the base-metal pigment is metal particle having a surface treated with at least one compound represented by formula (1) or (2):
(R1-)P(O)(OH)2 … (1) (see SUZUKI at paragraph [22]: the metal pigment particles are surface treated with an alkyl phosphonic acid);
(R2)-O-)aP(O)(OH)3-a … (2)
where R1 and R2 independently represent a hydrocarbon group having 12 or more carbon atoms (see SUZUKI at paragraph [23]: the carbon number of the alkyl group contained in the alkyl phosphonic acid is 1 or more and 20 or less), optionally substituted with one or more substituents, and a is 1 or 2;
the organic solvent contains at least one of a monohydric alcohol (see SUZUKI at paragraph [71]: as the organic solvent, for example, ethanol, propanol, … and the like),
a total amount of the at least one of the monohydric alcohol is 0.5 to 40% by mass of a total mass of the pigment composition (see SUZUKI at paragraph [71]: the content of the organic solvent is preferably 30% by mass or less. SUZUKI teaches a range which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim. See MPEP §2144.05(I)); and
the pigment composition is an aqueous one (see SUZUKI at paragraph [13]: water-based).
While SUZUKI teaches the composition comprising a dispersant (see SUZUKI at paragraph [13]), SUZUKI fails to explicitly teach wherein the dispersant includes an amine compound having a polyester structure.
However, KOU discloses the polymers P that act as dispersant for fine particulate materials in liquid dispersions of said solid fine particulate material, i.e., they stabilize the solid particles, thus, preventing them from coagulation or clumping and settling from the liquid composition (see KOU at Col. 4, lines 21-28). KOU teaches that the polymers have superior pigment affinity, show improved rheology behavior and improved gloss of surface coatings (see KOU at Col. 2, lines 18-20). KOU also discloses that in view of ecological requirements, the use of aqueous pigment dispersion is preferred (see KOU at Col. 1, lines 26-28). KOU teaches that polymer P is selected from the group consisting of polyesters (see KOU at Col. 9, lines 5-6); suitable monomers include: amides and amino esters (see KOU at Col. 15, lines 24-36). KOU also teaches the polymer P, where the polymer backbone is an aliphatic polyesters, where the majority of repeating units of the polyester backbone are derived from aliphatic lactones (see KOU at Col. 12, lines 6-10). Additionally, KOU discloses that polymers P have a number average molecular weight in the range from 500 to 100000 Dalton (see KOU at Col. 10, lines 24-26); that with regard to the capability of acting as dispersant for pigments and fillers, preference is given to polymers P, which are characterized by an acid number in the range of 10 to 300 mg KOH per gram of polymer P (see KOU at Col. 10, lines 33-37) and amine number in the range of 10 to 300 mg KOH per gram of polymer P (see KOU at Col. 16, lines 41-45).
One of ordinary skill in the art would have recognized the potential benefit of improving the water-based ink composition of SUZUKI by utilizing a dispersant polymer including amine compound with polyester structure as disclosed by KOU since KOU explicitly teaches that the disclosed polymers stabilize the solid particles in liquid dispersions by preventing them from coagulation or clumping and settling from the liquid composition (see KOU at Col. 4, lines 21-28). Moreover, one of ordinary skill in the art would have been motivated to use the polymers of KOU in the ink composition of SUZUKI based on KOU’s disclosure describing that the polymers have superior pigment affinity, show improved rheology behavior and improved gloss of surface coatings (see KOU at Col. 2, lines 18-20).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of SUZUKI by including a polymer dispersant disclosed by KOU in order to stabilize the solid particle in liquid dispersions by preventing them from coagulation or clumping and settling from the liquid composition.
While SUZUKI discloses that the aqueous ink composition can contain organic solvent, for example, ethanol, propanol, isopropyl alcohol and the like (see SUZUKI at paragraph [71]), SUZUKI fails to explicitly teach a monohydric alcohol having an aromatic ring and an aliphatic monohydric alcohol having four or more atoms.
However, KAERIYAMA discloses an ink composition containing water and a pigment (see KAERIYAMA at paragraph [0046]). KAERIYAMA also discloses that it is preferable that the pigment dispersant is adsorbed on the pigment and at least a part of the pigment is coated, the pigment dispersant is preferably a polymer having both a hydrophilic structure and a hydrophobic structure (see KAERIYAMA at paragraphs [0058-59]). KAERIYAMA teaches that the ink composition preferably further contains an organic solvent (see KAERIYAMA at paragraph [0099]). KAERIYAMA also teaches that the water-soluble organic solvent can be contained for the purpose of adjusting the viscosity; specific examples of the water-soluble organic solvent suitable for adjusting the viscosity include alcohols (for example, methanol, ethanol, propanol, isopropanol, butanol, isobutanol, sec-butanol, t-butanol, pentanol, hexanol, cyclohexanol, or benzyl alcohol) (see KAERIYAMA at paragraph [0102]). It is noted that among suitable organic solvents KAERIYAMA lists alcohols disclosed by SUZUKI such as ethanol, propanol, isopropanol (see SUZUKI at paragraph [71]). Thus, one of ordinary skill in the art would have recognized the possibility of substituting organic solvents of SUZUKI for one of the alcohols disclosed by KAERIYAMA because there is a reasonable expectation of success that the disclosed alcohols would be suitable. Moreover, based on KAERIYAMA’s disclosure that he water-soluble organic solvent can be contained for the purpose of adjusting the viscosity (see KAERIYAMA at paragraph [0102]), and SUZUKI’s teaching that the aqueous ink composition may contain a viscosity modifier (see SUZUKI at paragraph [72]), it would have been obvious to one of ordinary skill in the art to have modified the ink composition of SUZUKI by using alcohols such as butanol, pentanol, hexanol, cyclohexanol, or benzyl alcohol) disclosed by KAERIYAMA in order to modify the viscosity of the composition.
While SUZUKI teaches the base-metal pigment (see SUZUKI at paragraphs [13]: ink composition comprises water, glitter pigment particles and dispersing agent; and [19]: glittering pigment particles selected from the group consisting of aluminum), SUZUKI fails to explicitly teach a volume-average particle diameter D50 of the base-metal pigment is 0.8 µm or less.
However, TAKIGUCHI discloses an aqueous coating composition comprising flake-shaped metal pigments and water (see TAKIGUCHI at Abstract). TAKIGUCHI also discloses that from the stand-point of ensuring the metal gloss and saving costs, the base metal is most preferably Al or an Al alloy (see TAKIGUCHI at paragraph [0027]). TAKEGUCHI taches that, when the aqueous coating composition is used as an ink jet ink, the average particle diameter (D50) of the base metal pigment is preferably less than or equal to 3.0 µm; and that as a result, coated articles produced using the aqueous coating composition have further enhanced gloss and high quality appearance; in addition, when used as an ink jet ink, the aqueous coating composition exhibits further enhanced storage stability and ejection stability (see TAKIGUCHI at paragraphs [0050-51]). TAKIGUCHI also teaches that the “average particle diameter” refers to a volume median diameter based on measurement using a laser diffraction light scattering method (see TAKIGUCHI at paragraph [0052]).
One of ordinary skill in the art would have anticipated success when modifying the water-based ink composition of SUZUKI by utilizing flake-shaped metal pigments with average particle size of less than 3 µm as disclosed by TAKIGUCHI for application in ink jet ink since TAKIGUCHI explicitly teaches that when the aqueous coating composition is used as an ink jet ink, the average particle diameter (D50) of the base metal pigment is preferably less than or equal to 3.0 µm; in addition, when used as an ink jet ink, the aqueous coating composition exhibits further enhanced storage stability and ejection stability (see TAKIGUCHI at paragraphs [0050-51]). The rationale for such modification would be “known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art” (see MPEP §2143(I)(example of rationale (G)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of SUZUKI by utilizing flake-shaped metal pigments with average particle size less than or equal to 3 µm disclosed by TAKIGUCHI in order to obtain the composition that can be used as ink jet ink with enhanced storage stability and ejection stability.
It is noted, that as set forth, claim 1 is drawn to a pigment composition, thus, the examiner treats the limitation “ink jet ink” as a statement of intended use and not further limiting structurally a pigment composition. However, while SUZUKI is silent with respect to the disclosed water-based ink composition being ink jet ink, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches all structural limitations of the aqueous composition as set forth. Therefore, one of ordinary skill in the art would have anticipated success when using the aqueous composition of SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI as ink jet ink.
Regarding claim 2, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: the amine compound having a polyester structure is an amine compound having a polylactone structure (see rejection of claim 1 above and KOU at Col. 12, lines 6-10: the polymer P, where the polymer backbone is an aliphatic polyesters, where the majority of repeating units of the polyester backbone are derived from aliphatic lactones).
Regarding claim 3, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: the amine compound having a polyester structure has a weight-average molecular weight of 3000 to 100000 (see rejection of claim 1 above and KOU at Col. 10, lines 24-26: polymers P have a number average molecular weight in the range from 500 to 100000 Dalton). KOU teaches a range which overlaps with the claimed range. See MPEP §2144.05(I).
Regarding claim 4, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: the amine compound having a polyester structure has an acid number of 5 to 80 mg KOH/g and an amine number of 5 to 80 mg KOH/g (see rejection of claim 1 above and KOU at Col. 10, lines 33-37: an acid number in the range of 10 to 300 mg KOH per gram of polymer P; and Col. 16, lines 41-45: amine number in the range of 10 to 300 mg KOH per gram of polymer P).
Regarding claim 5, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: an amount of the amine compound having a polyester structure (as modified by KOU) is from 0.1% to 50% by mass, with an amount of the metal particles being 100% by mass (see SUZUKI at paragraphs [29]: the content of the glitter pigment particles is 0.5% by mass or more and 15% by mass and less; and [35]: the content of dispersing agent is 0.1% by mass or more and 10% by mass or less); thus, SUZUKI teaches 0.7% to 67% of dispersant by mass, with an amount of the glitter pigment particles being 100% by mass. SUZUKI teaches a range which overlaps with the claimed range.
Regarding claim 6, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: an amount of the compound represented by formula (1) or (2) is from 0.1% to 50% by mass, with an amount of the metal particles being 100% by mass (see SUZUKI at paragraph [24: the ratio of the adsorption mass of the alkyl phosphonic acid to 100 parts by mass of the metal pigment particles is preferably 0.1 parts by mass or more and 20 parts by mass or less). SUZUKI teaches a range which overlaps with the claimed range.
Regarding claim 7, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: the metal particles are particles of aluminum or an aluminum alloy (see SUZUKI at paragraph [19]: glittering pigment particles selected from the group consisting of aluminum).
Regarding claim 8, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: a volume-average particle diameter D50 of the base-metal pigment is from 0.1 to 0.8 µm (see TAKIGUCHI at paragraph [0050]: the average particle diameter (D50) of the base metal pigment is preferably less than or equal to 3.0 µm). TAKIGUCHI teaches a range which overlaps with the claimed range.
Regarding claim 9, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: a volume-average particle diameter D50 of the base-metal pigment is 0.7 µm or less (see TAKIGUCHI at paragraph [0050]: the average particle diameter (D50) of the base metal pigment is preferably less than or equal to 3.0 µm). TAKIGUCHI teaches a range which overlaps with the claimed range.
Regarding claim 10, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: for the compound represented by formula (1), the R1, in formula (1) is a hydrocarbon group having 15 to 30 carbon atoms (see SUZUKI at paragraph [23]: the carbon number of the alkyl group contained in the alkyl phosphonic acid is 1 or more and 20 or less). SUZUKI teaches a range which overlaps with the claimed range.
Regrading claim 11, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein the metal particles are in flake shape (see TAKIGUCHI at Abstract: the base metal pigments are flake-shaped).
Regarding claim 12, SUZUKI as modified by KOU, KAERIYAMA and TAKIGUCHI teaches a coloring method comprising:
attaching a coloring composition to a substrate, wherein:
the pigment composition according to claim 1 is the coloring composition (see SUZUKI at paragraph [11]: the ink composition for writing instruments excellent in the fixability with respect to a non-penetrable to-be-written object can be provided, even when the object to be written is bent or deformed, or the object to be written shrinks due to heat or the like, the original shape and color tone can be maintained).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731