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 .
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-26, in the reply filed on 09/25/2025 is acknowledged. The traversal is on the grounds that the claims are sufficiently related to each other such that an undue burden would not be placed upon the Examiner (see Applicant’s Remarks at pg. 2). However, this is not found to be persuasive as the two inventions are related to different categories of invention that would require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries), thereby resulting in a serious burden. Therefore, the restriction/election requirement is still deemed proper and is made final.
Claims 27-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/25/2025.
Claim Objections
Claim 19 is objected to because of the following informality:
• In claim 19, the term “a de-foamers” should be amended to read: “a de-foamer”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, the phrase “a ratio between a weight of the di-functional monomer and a weight of the mono-functional monomer” is unclear. It is unclear which ratio is actually being claimed – the di-functional monomer to the mono-functional monomer, or the mono-functional monomer to the di-functional monomer? Applicant’s specification indicates the former (see Applicant’s specification at para. 0070), and the Examiner is interpreting as such. Claims 2-21 are also rejected by virtue of their dependency on claim 1.
In claims 7 and 24, the term “1,6-hexanediol (2EO) diacrylate” is unclear. It is unclear whether the portion in the parentheses necessitates the compound to be a 2EO ethoxylated compound, or whether it is merely optional. For the purposes of examination, the Examiner is interpreting the 2EO ethoxylated portion to be required in the compound. To correct, the Examiner suggests removing the parentheses, e.g., 1,6-hexanediol 2EO diacrylate.
In claim 13, the phrase “the colorant is dispersed in a dispersant” is confusing. The term “in” suggests the colorant must be physically inside or encapsulated by the dispersant. However, this would appear to limit the claim beyond what was intended, as polymeric dispersants are typically adsorbed to the colorant rather than used as a capsule. If this is the case, the Examiner suggests amending the claim to read: “wherein the colorant is dispersed with
In claim 15, the phrase “the total dispersion” lacks sufficient antecedent basis in the claims. There is no previous mention of a dispersion in the claims. The specification supports the claimed “dispersion” to reference a pigment dispersion that is added to the ink (see Applicant’s specification at para. 0085), and the Examiner is interpreting as such. To correct, the Examiner suggests deleting the claim or amending the claim to have proper antecedent basis.
In claim 21, the limitation “a low odor profile as measured by olfactory analysis” is unclear. The term “low odor” is defined in Applicant’s specification at para. 0054 as “a less emotional impact persevered when a smelling test is conducted under a specific atmosphere.” However, this appears to be a relative term that renders the claim indefinite. An “emotional impact” is not a quantifiable metric, and it is unclear whether one person’s definition of a “low odor” may be subjectively different than another person’s. Further, the exact “olfactory analysis” is unclear. While Applicant’s mention assessing the odor after 10 seconds the ink is exposed to the air (see Applicant’s specification at para. 0158), how close or far away is the person assessing from the jar? This makes the actual analysis unclear, and thus, indefinite. To correct, the Examiner suggests deleting the limitation. For the purposes of examination, the Examiner is interpreting any ink that meets the compositional limitations of claim 1 to have a “low odor” as claimed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakashima et al. (WO-2022024704-A1), with reference to patent family member US-20230257608-A1 as a certified English translation (hereinafter referred to as “Nakashima”), with evidence from Iizuka (US-20240417580-A1) (hereinafter referred to as “Iizuka”), Tateishi et al. (US-20230150020-A1) (hereinafter referred to as “Tateishi”), Okamoto et al. (US-20160251527-A1) (hereinafter referred to as “Okamoto”),and Fujiwara (US-20230136807-A1) (hereinafter referred to as “Fujiwara”), as to the rejection of claims 9 and 22 only.
Regarding claims 1, 4, 7, 8, Nakashima teaches an ink composition (see Nakashima at para. 0001, teaching an active energy ray-curable inkjet printing ink) comprising:
• a mono-functional monomer, the mono-functional monomer comprising a hydrophilic mono-functional monomer, wherein the hydrophilic mono-functional monomer comprises 4-hydroxybutyl acrylate (see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 8% of a plant oil-derived lauryl acrylate, and 16.7% of 4-hydroxybutyl acrylate; 4-hydroxybutyl acrylate reads on the claimed “hydrophilic mono-functional monomer”, see claim 4);
• a di-functional monomer, wherein the di-functional monomer comprises dipropylene glycol diacrylate (see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 10% of propoxylated (2) neopontyl glycol diacrylate, 23% of plant oil-derived 1,10-decanediol diacrylate, 3.3% of dipropylene glycol diacrylate, and 2% of hydroxypivalic acid neopentyl glycol diacrylate; Example 5 also contains 13% of cyan pigment dispersion liquid; the cyan pigment dispersion liquid contains 72% of 1,6-hexanediol diacrylate, see Nakashima at Table 1 at pg. 11; thus, Example 5 of Nakashima further contains 9.36% of 1,6-hexanediol diacrylate (13% pigment dispersion total • 0.72 ratio of 1,6-hexanediol diacrylate in the pigment dispersion = 9.36% of 1,6-hexanediol diacrylate in the total ink composition);
• an optional colorant; and an optional photoinitiator (see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing a cyan pigment dispersion liquid and photopolymerization initiators); wherein
• a ratio between a weight of the di-functional monomer and a weight of the mono-functional monomer in the ink composition is greater than 0.1 (0.4 to 2.6, regarding claim 8) (see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 24.7% of total monofunctional monomers (8% of a plant oil-derived lauryl acrylate + 16.7% of 4-hydroxybutyl acrylate = 24.7% total), and 47.66% of total difunctional monomers (10% of propoxylated (2) neopontyl glycol diacrylate + 23% of plant oil-derived 1,10-decanediol diacrylate + 3.3% of dipropylene glycol diacrylate + 2% of hydroxypivalic acid neopentyl glycol diacrylate + 9.36% of 1,6-hexanediol diacrylate = 47.66% total); thus, the ratio of the weight of the difunctional monomer to the weight of the monofunctional monomer in Example ink 5 of Nakashima is 1.93 (47.66% total difunctional monomer/24.7% total monofunctional monomer = 1.93 ratio); this ratio of 1.93 falls within the claimed ranges).
Regarding claim 2, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 24.7% of total monofunctional monomers, which falls within the claimed range.
Regarding claim 3, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 16.7% of 4-hydroxybutyl acrylate, which corresponds to the claimed hydrophilic monomer; this value of 16.7% falls within the claimed range.
Regarding claim 5, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 8% of plant oil-derived lauryl acrylate; lauryl acrylate is a hydrophobic monomer, as disclosed by Applicant’s specification at para. 0056.
Regarding claim 6, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 47.66% of total difunctional monomers, which falls within the claimed range.
Regarding claim 9, see Example 5 of Nakashima at Table 2 at pg. 11-12; the following Table shows how the number of moles of each component in Example ink 5 were calculated by the Examiner. The “Moles of Component in Example 5 of Nakashima” was calculated by taking the mass of the component in Example 5 of Nakashima and dividing that by the molar mass of the component (e.g., for dipropylene glycol diacrylate, 3.3/242 = 0.0136):
Polymerizable Component in Example 5 of Nakashima
Molar Mass of Component (g/mol)
Mass of Component in Example 5 of Nakashima (wt%)
Moles of Component in Example 5 of Nakashima (mol)
Amine-modified Oligomer, CN371, see Nakashima at para. 0157
1600, as evidenced by Iizuka at para. 0095
9.20%
0.0058
Ethoxylated (3) trimethylolpropane triacrylate
428, as evidenced by Tateishi at para. 0208
5%
0.0117
Propoxylated (2) neopentyl glycol diacrylate
328, as evidenced by Tateishi at para. 0206
10%
0.0305
Plant oil-derived lauryl acrylate
240, as evidenced by Okamoto at para. 0147
8%
0.0333
Plant oil-derived 1,10-decanediol diacrylate
282, as evidenced by Okamoto at para. 0152
23%
0.0816
Dipropylene glycol diacrylate
242, as evidenced by Tateishi at para. 0206
3.3%
0.0136
Hydroxypivalic acid neopentyl glycol diacrylate
312, as evidenced by Tateishi at para. 0206
2%
0.0064
4-hydroxybutyl acrylate
144, as evidenced by Fujiwara at para. 0125
16.7%
0.1160
1,6-hexanediol diacrylate
226, as evidenced by Tateishi at para. 0206
9.36% (see claim 1 rejection above for how this value was calculated)
0.0414
Applicants calculate their “average double bond density” using the following formula (see Applicant’s specification at para. 0178):
Average double bond density = (1 x mole number of monofunctional component + 2 x mole number of di-functional component + 3 x mole number of trifunctional component+…)/total mole number of polymerizable components.
After applying this formula to ink Example 5 of Nakashima, when using the values in the above Table, one gets the following (note that CN371 is a difunctional compound, as evidenced by Iizuka at para. 0095):
Average double bond density = (1 x (0.0333 mol lauryl acrylate + 0.1160 mol 4-hydroxybutyl acrylate)) + (2 x (0.0058 mol amine-modified oligomer + 0.0305 mol propoxylated (2) neopentyl glycol diacrylate + 0.0816 mol 1,10-decanediol diacrylate + 0.0136 mol dipropylene glycol diacrylate + 0.0064 mol hydroxypivalic acid neopentyl glycol diacrylate + 0.0414 mol 1,6-hexanediol diacrylate)) + (3 x 0.0117 mol ethoxylated (3) trimethylolpropane triacrylate))/(0.0058 + 0.0117 + 0.0305 + 0.0333 + 0.0816 + 0.0136 + 0.0064 + 0.1160 + 0.0414) = 0.543/0.3403 = 1.60.
This value of 1.60 falls completely within the claimed range.
Regarding claims 10-12, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 13% of a cyan pigment dispersion; also see Nakashima at Table 1 at pg. 11, teaching the cyan pigment dispersion as containing 20% of Pigment Blue 15:4; thus, the total content of Pigment Blue 15:4 in Example 5 of Nakashima is 2.6% (13% total pigment dispersion in ink • 0.2 ratio of pigment in pigment dispersion = 2.6% total pigment in ink); this value of 2.6% falls within the claimed range.
Regarding claims 13-15, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 13% of a cyan pigment dispersion; also see Nakashima at Table 1 at pg. 11, teaching the cyan pigment dispersion as containing 8% of PB822; this value of 8% falls within the claimed range; also see Nakashima at para. 0156 and 0108, teaching PB822 as being a polymeric pigment dispersant.
Regarding claim 16, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 2% of TPO, 2% of SB-PI719, and 2% of ESACURE ONE as photopolymerization initiators, for a total content of 6% (2 + 2 + 2 = 6); this value of 6% falls within the claimed range.
Regarding claims 17-18, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 5% of ethoxylated (3) trimethylolpropane triacrylate, which is a tri-functional monomer; this value of 5% falls within the claimed range.
Regarding claims 19-20, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 0.5% of a surface conditioner, BYK-331; the BYK-331 in Example 5 of Nakashima corresponds to the claimed “flow agent”.
Regarding claim 21, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink having a viscosity of 20.40 cPs at 25 °C; this value falls within the claimed range.
Regarding claims 22-26, see Example 5 of Nakashima at Table 2 at pg. 11-12, teaching an example ink containing 16.70% of a hydrophilic mono-functional monomer, 4-hydroxybutyl acrylate; Example 5 further contains 47.66% of total difunctional monomers, 2.6% of a colorant, and 6% of photoinitiator; these values fall within their respective claimed ranges; also see claims 6, 10, and 16 rejections above; also see claim 9 rejection above, showing Example 5 of Nakashima as having an average double bond density of 1.6, which falls within the claimed range; also see the claim 4, 7, 17, and 19 rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yoshikawa et al. (US-20240166902-A1) teach an active energy ray-curable inkjet ink (see Yoshikawa at Abstract).
Nakashima et al. (US-20220056293-A1) teach a photo-curable inkjet printing ink (see Nakashima at Abstract).
Yoda et al. (US-20210079242-A1) teach a radiation-curable ink jet ink composition (see Yoda at Abstract).
Herlihy (US-20170009091-A1) teaches digital printing inks (see Herlihy at Abstract).
Saito et al. (US-20210079241-A1) teach a radiation-curable ink jet composition (see Saito at Abstract).
Wada et al. (US-20130286095-A1) teach UV inks (see Wada at para. 0094).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731