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 .
Claim Objections
Claims 6-7 are objected to because of the following informalities:
Claim 6, lines 1-2, “a first repeating unit derived from a specific monomer”, “a second repeating unit derived from (meth)acrylic acid” and “a styrene unit” should read “the first repeating unit derived from the specific monomer”, “the second repeating unit derived from the (meth)acrylic acid” and “the styrene unit”.
Claim 7, lines 1-2, a first repeating unit derived from a specific monomer”, “a second repeating unit derived from (meth)acrylic acid” and “a styrene unit” should read “the first repeating unit derived from the specific monomer”, “the second repeating unit derived from the (meth)acrylic acid” and “the styrene unit”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4, which depends on claim 1, recites that of all the repeating units included in the specific resin, the second repeating unit has a percentage content of at least 20% by mass and no greater than 45% by mass, while claim 1 recites that of all the repeating units included in the specific resin, the second repeating unit has a percentage content of at least 30% by mass and no greater than 50% by mass. Therefore, claim 4 fails to further limit claim 1 given that the amount of second repeating unit in claim 4 is broader than that recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (EP 1760122).
Regarding claims 1 and 4, Yoshida et al. disclose water-based ink jet ink (see paragraph 0001) comprising pigment-containing water-insoluble vinyl polymer particles (see paragraphs 0007(3) and 0113). The vinyl polymer is made from monomers including 5-50 wt.% monomer of the formula CH2=C(R3)COO(R4O)pR5 (corresponding to claimed formulas 1 and 2) where R3 (corresponding to claimed R2) is hydrogen or C1-C5 alkyl group, R4O group includes C2-C7 oxyalkylene, R5 (corresponding to claimed R1) is a C1-C30 alkyl group, and p = 1-30 (see paragraphs 0080-0085 and 0095), 3-30 wt.% (meth)acrylic acid (see paragraphs 0040, 0043, and 0090), and 10-70 wt.% styrene (see paragraphs 0043, 0051, and 0091).
In light of the overlap between the claimed ink jet ink and the ink jet ink disclosed by Yoshida et al., it would have been obvious to one of ordinary skill in the art to use ink jet ink that is both disclosed by Yoshida et al. and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Yoshida et al. disclose the water-insoluble vinyl polymer has a weight average molecular weight of 5,000-500,000 (see paragraph 0107).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (EP 1760122) as applied to claim 1 above, and further in view of Takeda et al. (US 2024/0182736) taken in view of the evidence given by Microtrac.
Regarding claim 2, Yoshida et al. disclose an ink jet ink as set forth above. Yoshida et al. do not disclose the D50, D10, and D90 of the pigment-containing water-insoluble vinyl polymer particles.
Takeda et al. disclose ink jet ink (see paragraph 0001) comprising a colorant that has D50 of 50-250 nm, D90 of 300 nm or less, and D10 of 10-100 nm in order to produce an ink jet ink that is stably ejected without clogging of an inkjet head nozzle while maintaining the storage stability of the ink composition (see paragraph 0119). The particle size is measured using laser diffraction (see paragraph 0119) which as evidenced by Microtrac (see page 2) provides volume-based particle size distribution, i.e. particle size is volume-average particle size.
In light of the motivation for using a colorant with D50, D90, and D10 disclosed by Takeda et al. as described above, it would have been obvious to one of ordinary skill in the art to use colorant, i.e. the pigment-containing water-insoluble vinyl polymer particles, in Yoshida et al. with such D50, D90, and D10, including that presently claimed, in order to produce an ink jet ink that is stably ejected without clogging of an inkjet head nozzle while maintaining the storage stability of the ink composition.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Takemura et al. (JP 2012149251)
Regarding claims 1 and 4, Takemura et al. disclose ink jet ink (see paragraph 0005) comprising water and pigment-containing polymer particles (see paragraphs 0006, 0032, and 0037). The polymer is a water-insoluble polymer (see paragraph 0021) made from nonionic monomer such as 1-40 wt.% methoxy polyethylene glycol (n=1-30) (meth)acrylate and polypropylene glycol (n=2-30) (meth)acrylate (see paragraphs 0027-0028), 3-40 wt.% (meth)acrylic acid (see paragraphs 0023 and 0028), and 10-95 wt.% styrene (see paragraphs 0024-0025 and 0028). Methoxy polyethylene glycol (n=1-30) (meth)acrylate meets formula (1) where n=1-30, R1 is C1 alkyl group, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate while polypropylene glycol (n=2-30) (meth)acrylate meets formula (2) where n=2-30, R1 is H, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate.
In light of the overlap between the claimed ink jet ink and the ink jet ink disclosed by Takemura et al., it would have been obvious to one of ordinary skill in the art to use ink jet ink that is both disclosed by Takemura et al. and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 2, Takemura et al. disclose that the pigment-containing polymer particles have D50 of 70-130 nm, D10 of 40-90 nm and D90 of 90-160 nm (see paragraphs 0006 and 0010) where D10, D50, and D90 represent the particle sizes corresponding to 10%, 50%, and 90%, respectively, of the cumulative volume frequency calculated from the smaller particle size of the pigment-containing polymer particle (see paragraph 0006), i.e. particle size is volume average particle size.
Regarding claim 5, Takemura et al. disclose the water-insoluble polymer has a weight average molecular weight of 20,000-300,000 (see paragraph 0030).
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (US 8,545,000).
Regarding claims 1 and 4, Saito discloses an ink jet ink (col.38, lines 53-60) comprising water (col.36, lines 11-13) and pigment particles coated with a water-insoluble polymer (see col.23, lines 37-41). The water-insoluble polymer is made from monomers including 5-40 wt.% polyethylene glycol (n=2-30) (meth)acrylate and polypropylene glycol (n=2-30) (meth)acrylate (see col.19, lines 54-67 and col.21, lines 32-35), 1-50 wt.% methacrylic acid (see col.3, lines 57-58 and col.21, line 11), and 5-98 wt.% styrene (col.3, lines 34-35, col.19, lines 1-2 and 21-28, and col.21, lines 22-23). Polyethylene glycol (n=2-30) (meth) meets formula (1) where n=2-30, R1 is H, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate while polypropylene glycol (n=2-30) (meth)acrylate meets formula (2) where n=2-30, R1 is H, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate.
In light of the overlap between the claimed ink jet ink and the ink jet ink disclosed by Saito, it would have been obvious to one of ordinary skill in the art to use ink jet ink that is both disclosed by Saito and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Saito discloses the water-insoluble polymer has a weight average molecular weight of 5,000-500,000 (see col.22, lines 33-34).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Saito (US 8,545,000) as applied to claim 1 above, and further in view of Takeda et al. (US 2024/0182736) taken in view of the evidence given by Microtrac.
Regarding claim 2, Saito discloses an ink jet ink as set forth above. Saito does not disclose the D50, D20, and D90 of the pigment particles coated with a water-insoluble polymer.
Takeda et al. disclose ink jet ink (see paragraph 0001) comprising a colorant that has D50 of 50-250 nm, D90 of 300 nm or less, and D10 of 10-100 nm in order to produce an ink jet ink that is stably ejected without clogging of an inkjet head nozzle while maintaining the storage stability of the ink composition (see paragraph 0119). The particle size is measured using laser diffraction (see paragraph 0119) which as evidenced by Microtrac (see page 2) provides volume-based particle size distribution, i.e. particle size is volume-average particle size.
In light of the motivation for using a colorant with D50, D90, and D10 disclosed by Takeda et al. as described above, it would have been obvious to one of ordinary skill in the art to use colorant, i.e. the pigment particles coated with a water-insoluble polymer, in Saito with such D50, D90, and D10, including that presently claimed, in order to produce an ink jet ink that is stably ejected without clogging of an inkjet head nozzle while maintaining the storage stability of the ink composition.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa (U.S. 2012/0188312).
Regarding claims 1 and 4, Nakagawa discloses water-based ink jet ink (see paragraphs 0020 and 0101) comprising resin-coated pigment particles where the resin is water-insoluble (see paragraphs 0020 and 0040). The resin is made from 2-40 wt.% (a) salt generating group-containing monomer including (meth)acrylic acid, 5-98 wt.% (c) hydrophobic monomer including styrene, and 5-40 wt.% (e) monomer, i.e. nonionic monomer, of the formula CH2=C(R1)COO(R2O)qR3 (corresponding to claimed formulas 1 and 2) where R1 (corresponding to claimed R2) is hydrogen or C1-C5 alkyl group, R2O group includes C1-C30 divalent hydrocarbon group including oxyethylene group, R3 (corresponding to claimed R1) is a C1-C30 alkyl group, and q = 1-30 (see paragraphs 0043-0044, 0047, 0057, 0061-0062, 0065-0074, 0078, and 0080-0081).
In light of the overlap between the claimed ink jet ink and the ink jet ink disclosed by Nakagawa, it would have been obvious to one of ordinary skill in the art to use ink jet ink that is both disclosed by Nakagawa and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Nakagawa discloses the resin has a weight average molecular weight of 5,000-500,000 (see paragraph 0091).
Regarding claim 6, Nakagawa discloses the resin is only made from, i.e. consists of, (a) salt generating group-containing monomer, (c) hydrophobic monomer, and (e) monomer (see paragraphs 0043 and 0067-0068). While Nakagawa also discloses the use of a styrene macromer and hydroxy-group containing monomer (see paragraphs 0043 and 0065), they are not required.
Regarding claim 7, Nakagawa discloses the (a) salt generating group-containing monomer also comprises a cationic monomer such as vinyl pyridine (see paragraph 0046). Nakagawa discloses the resin is only made from, i.e. consists of, (a) salt generating group-containing monomer, (c) hydrophobic monomer, and (e) monomer (see paragraphs 0043 and 0067-0068). While Nakagawa also discloses the use of a styrene macromer and hydroxy-group containing monomer (see paragraphs 0043 and 0065), they are not required.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa (U.S. 2012/0188312) as applied to claim 1 above, and further in view of Takeda et al. (US 2024/0182736) taken in view of the evidence given by Microtrac.
Regarding claim 2, Nakagawa discloses an ink jet ink as set forth above. Nakagawa does not disclose the D50, D20, and D90 of the resin-coated pigment particles.
Takeda et al. disclose ink jet ink (see paragraph 0001) comprising a colorant that has D50 of 50-250 nm, D90 of 300 nm or less, and D10 of 10-100 nm in order to produce an ink jet ink that is stably ejected without clogging of an inkjet head nozzle while maintaining the storage stability of the ink composition (see paragraph 0119). The particle size is measured using laser diffraction (see paragraph 0119) which as evidenced by Microtrac (see page 2) provides volume-based particle size distribution, i.e. particle size is volume-average particle size.
In light of the motivation for using a colorant with D50, D90, and D10 disclosed by Takeda et al. as described above, it would have been obvious to one of ordinary skill in the art to use colorant, i.e. the resin-coated pigment particles, in Nakagawa with such D50, D90, and D10, including that presently claimed, in order to produce an ink jet ink that is stably ejected without clogging of an inkjet head nozzle while maintaining the storage stability of the ink composition.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive. In light of applicant’s amendment, new grounds of rejection are set forth above.
Applicant argues that as demonstrated by Examples 1-7 of the preset specification, the claimed ink has excellent preservation stability, possesses an appropriate viscosity, can form images with a desired density, and successfully inhibits the occurrence of nozzle clogging.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims. Specifically, the data (i) uses specific pigment (carbon black) in specific amounts (15-16% of the pigment particle) while the claims encompass any pigment in any amount, (ii) uses acrylic acid as the second repeating unit while the present claims encompass broader second repeating unit that encompasses methacrylic acid or acrylic acid, (iii) uses specific monomer of formula (1) and formula (2) where R1 is methyl group and R2 is hydrogen while the present claims encompass broader formula (1) and formula (2) where R1 is hydrogen or C1-C5 alkyl group and R2 is hydrogen or methyl group, (iv) uses resin with specific weight average molecular weight while present claims encompass resin of any weight average molecular weight, and (v) uses pigment particles with specific particle sizes D50, D90, and D10 while the present claims encompass pigment particles of any particle size. Further, even if the data were commensurate in scope with the claims, there does not appear to be any proper side-by-side comparison between the inventive examples and the comparative examples. For instance when comparing Example 1 with Comparative Example 4, the resins have different molecular weight and the pigment particles have different D50, D90, and D10. Therefore, it is not clear if the difference in properties is due to the absence of the nonionic monomer or due to the difference in weight average molecular weight/particle size.
Applicant argues that while Yoshida discloses resin composition as set forth in Table 1, such resin does not meet that presently claimed.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). The broader disclosure of Yoshida et al. discloses water-insoluble vinyl polymer particles (see paragraphs 0007(3) and 0113) where the vinyl polymer is made from monomers including 5-50 wt.% monomer of the formula CH2=C(R3)COO(R4O)pR5 (corresponding to claimed formulas 1 and 2) where R3 (corresponding to claimed R2) is hydrogen or C1-C5 alkyl group, R4O group includes C2-C7 oxyalkylene, R3 (corresponding to claimed R1) is a C1-C30 alkyl group (see paragraphs 0080-0085 and 0095), and p = 1-30, 3-30 wt.% (meth)acrylic acid (see paragraphs 0040, 0043, and 0090), and 10-70 wt.% styrene (see paragraphs 0043, 0051, and 0091).
Applicant argues that while Takemura discloses a polymer of Synthesis Example 1, such polymer does not meet that presently claimed.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). The broader disclosure of Takemura et al. discloses pigment-containing polymer particles where the polymer is a water-insoluble polymer (see paragraph 0021) made from nonionic monomer such as 1-40 wt.% methoxy polyethylene glycol (n=1-30) (meth)acrylate and polypropylene glycol (n=2-30) (meth)acrylate (see paragraphs 0027-0028), 3-40 wt.% (meth)acrylic acid (see paragraphs 0023 and 0028), and 10-95 wt.% styrene (see paragraphs 0024-0025 and 0028). Methoxy polyethylene glycol (n=1-30) (meth)acrylate meets formula (1) where n=1-30, R1 is C1 alkyl group, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate while polypropylene glycol (n=2-30) (meth)acrylate meets formula (2) where n=2-30, R1 is H, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate.
Applicant argues that while Saito discloses a polymer of Production Example 1 in Table 1, such polymer does not meet that presently claimed.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). The broader disclosure of Saito discloses pigment particles coated with a water-insoluble polymer (see col.23, lines 37-41) where the water-insoluble polymer is made from monomers including 5-40 wt.% polyethylene glycol (n=2-30) (meth)acrylate and polypropylene glycol (n=2-30) (meth)acrylate (see col.19, lines 54-67 and col.21, lines 32-35), 1-50 wt.% methacrylic acid (see col.3, lines 57-58 and col.21, line 11), and 5-98 wt.% styrene (col.3, lines 34-35, col.19, lines 1-2 and 21-28, and col.21, line 22). Polyethylene glycol (n=2-30) (meth)acrylate meets formula (1) where n=2-30, R1 is H, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate while polypropylene glycol (n=2-30) (meth)acrylate meets formula (2) where n=2-30, R1 is H, and R2 is a hydrogen (acrylate) or methyl group (meth)acrylate.
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.
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787