DETAILED ACTION
Response to Amendment
In response to the amendment received on 05/06/2026:
claims 1-12 are currently pending
claims 1, 6 and 10 are amended
new prior art grounds of rejection applying Suzuki, Shigeki, 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 Shigeki et al. (JP 10130545 A) with reference to the provided machine translation, hereinafter referred to as SHIGEKI, 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 (see SUZUKI at paragraph [22]: the metal pigment particles are surface treated with an alkyl phosphonic acid);
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).
SUZUKI teaches that the bright pigment particles are preferably the metal pigment particles adsorbed by alkylphosphonic acid; and that by using such bright pigment particles, it is possible to prevent hard caking and to improve the redispersion of the bright pigment particles; in addition, the bright pigment has low reactivity with a solvent such as water and continuously has high stability (see SUZUKI at paragraph [22]). While SUZUKI teaches that it is preferable to use metal pigment particles in which metal powder is surface-treated with alkylphosphonic acid (see SUZUKI at paragraph [22]), SUZUKI fails to explicitly teach the base-metal pigment being metal particle having a surface treated with a compound represented by formula (2):
(R2)-O-)aP(O)(OH)3-a … (2), where R2 independently represent a hydrocarbon group having 12 or more carbon atoms, optionally substituted with one or more substituents, and a is 1 or 2.
However, SHIGEKI discloses an aqueous aluminum pigment composition having extremely excellent dispersibility and storage stability even in water-based inks and water-based paints having low water and pigment dispersibility (see SHIGEKI at paragraph [0001]). SHIGEKI also discloses that the aluminum pigment is coated with the phosphorus compound (see SHIGEKI at paragraphs [0011] and [0029]). Similarly to SUZUKI describing that by utilizing metal pigment particles adsorbed by alkylphosphonic acid to prevent hard caking, improve the redispersion of the bright pigment particles, and to obtain pigment having high stability and low reactivity with a solvent such as water (see SUZUKI at paragraph [22]), SHIGEKI discloses that the objective of the invention is to resolve an issue of dispersibility and storage stability in water-based inks and water-based paints (see SHIGEKI at paragraphs [0001] and [0003]). Moreover, SHIGEKI teaches the amount of phosphorus compound used for surface treatment in the range of 0.1 to 20% by weight, more preferably 0.1 to 10% by weight, based on the aluminum powder (see SHIGEKI at paragraph [0022]), which is very similar to the disclosure of SUZUKI describing that the ratio of the adsorption mass of the alkylphosphonic 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 (see SUZUKI at paragraph [24]). SHIGEKI teaches that an aqueous aluminum pigment composition having extremely excellent dispersibility and storage stability is obtained by surface modification of aluminum pigments with phosphorus compounds (see SHIGEKI at paragraphs [0008-9]). SHIGEKI also teaches aqueous aluminum pigment composition according to or described above, wherein the phosphate ester compound is one or more selected from compounds represented by formula (1).
PNG
media_image1.png
125
288
media_image1.png
Greyscale
wherein R is hydrogen, an alkyl group having 8 to 24 carbon atoms, an alkenyl group, or an aryl group containing one or more alkenyl substituents having 1 to 24 carbon atoms or alkenyl substituents having 6 to 24 carbon atoms, m is 0 to 20, R1 may be the same as or different from R, hydrogen, an alkyl group, n is 1-10 (see SHIGEKI at paragraphs [0011-12]). Thus, when m=0 and R1 is a hydrogen and R is an alkyl group having 8 to 24 carbon atoms, SHIGEKI teaches phosphate ester with a compound represented by formula (2), as set forth in claim 1.
According to MPEP § 2144.06(I), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the metal pigment of SUZUKI by utilizing the phosphorus compound for surface treatment, e.g., the phosphate ester compound is one or more selected from compounds represented by formula (1), as disclosed by SHIGEKI based on teachings of SHIGEKI describing that an aqueous aluminum pigment composition having extremely excellent dispersibility and storage stability is obtained by surface modification of aluminum pigments with disclosed phosphorus compounds (see SHIGEKI at paragraphs [0008-9]).
Moreover, since SUZUKI and SHIGEKI both disclose coating aluminum pigments with phosphorus compounds in order to improve dispersibility and storage stability of a pigment composition, one of ordinary skill in the art would have a reasonable expectation of success that phosphate ester compound of SHIGEKI would be suitable for surface modification of metal pigments of SUZUKI.
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 SHIGEKI, 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 SHIGEKI, 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 SHIGEKI, 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 SHIGEKI, 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 SHIGEKI, KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein: an amount of the compound represented by formula (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 SHIGEKI, 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 SHIGEKI, 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 SHIGEKI, 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 SHIGEKI, KOU, KAERIYAMA and TAKIGUCHI teaches the pigment composition according to claim 1, wherein the R1, in formula (1) is a hydrocarbon group having 15 to 30 carbon atoms (see rejection of claim 1 above and SHIGEKI at paragraph [0012]: R is an alkyl group having 8 to 24 carbon atoms). SHIGEKI teaches a range which overlaps with the claimed range.
Regrading claim 11, SUZUKI as modified by SHIGEKI, 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 SHIGEKI, 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
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANASTASIA KUVAYSKAYA whose telephone number is (703)756-5437. The examiner can normally be reached Monday-Thursday 7:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights