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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/9/2026 has been entered.
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.
Claim(s) 1-3, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kido et al. (2018/0127610) in view of Groenendaal et al. (2008/0171815).
Regarding claims 1 and 2: Kido et al. teach a water-based ink jet composition comprising Pigment Yellow 150 [0113], N-hydroxyethyl-pyrrolidone as an “other organic solvent” [0038, 0041], and a polymeric dispersing agent [0118]. Kido et al. teach a plurality of organic solvents where the total is 20 to 70 mass% [0041], which includes 1-10 mass% of an alkoxy group solvent [0036] and 5 to 27 mass% of a diol [0033]. Kido et al. teach examples comprising 1 or 2 mass% of other organic solvent D [Tables 1-2].
Kido fails to specify a particular polymer dispersing agent and its molecular weight.
However, Groenendaal et al. teach a polymeric dispersant for yellow inkjet ink compositions that improves the dispersion stability of the pigment [0012-0013]. Groenendaal et al. teach that the polymeric dispersant as an average molecular weight of smaller than 100,000 [0056], and is used in the pigmented inkjet ink in an amount of 5 wt% to 200 wt% based on the weight of the pigment [0064].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 5 wt% to 200 wt% of the polymeric dispersant of Groenendaal et al. with a Mw of smaller than 100,000 as the polymer dispersing agent of Kido to improve the dispersion stability of the pigment.
The Mw overlaps the claimed range and the ranges taught provide an overlapping ratio of N-hydroxyethyl-pyrrolidone to the dispersing resin.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 3: The amount of N-hydroxyethyl-pyrrolidone in Kido overlaps the claimed range. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 5: Kido teaches resin particles [0008, 0042-0043; Examples].
Regarding claim 6: Kido teaches glycerin [0038], which is the same compound as glycerol.
Response to Arguments
Applicant's arguments filed 1/9/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that the prior art does not relate the amount of polymeric dispersant to the amount of N-hydroxyethylpyrrolidone. This is not persuasive because ranges are taught for each component, and those ranges provide overlapping ratios. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
The Applicant has stated that the amount of polymeric dispersant used in Groenendaal is selected based on the amount of pigment in the ink composition. This is not persuasive because when the amount is incorporated into Kido, based on the amount of pigment in Kido, the ranges of each component provide an overlapping ratio to the claimed ratio.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763