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 .
This communication is responsive to the claim set dated 02/27/2023 and Response to Restriction dated 10/31/2025. Claims 1-16 are current pending. Claims 1-12 are under consideration in this Office Action.
Non-elected claims 13-16 are withdrawn.
Claims 1-12 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12 in the reply filed on 10/31/2025 is acknowledged. The traversal is on the ground(s) that examination of all the claims would not place serious burden on the Examiner. This is not found persuasive because the examination requires searching in different classifications and along with different keywords.
The requirement is still deemed proper and is therefore made FINAL.
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 1-12 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.
Claim 1 recites “the amount of the alkali metal hydrogen carbonate by mass.” Alkali metal hydrogen is often used as an aqueous solution as a pH adjusting agent, however, the Specification does not clarify if the amount refers to the solid amount, the amount of an alkali metal hydrogen carbonate solution, or both. The pending claims must be given their broadest reasonable interpretation consistent with the specification (MPEP 2111). Thus, an amount would may meet the limitation either in solid amount or amount of a solution.
Claims 2-12 are rejected under 35 U.S.C. 112(b) for being dependent on Claim 1.
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 and 4-12 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Tateishi et al. (US8,623,101 B2).
Regarding Claim 1, 4-6, Tateishi discloses that a pH adjusting agent improves storage stability of an ink for inkjet (24:13-35). Attention is drawn to table 12, wherein aqueous ink compositions of Ex 41-46, 48-54, 58 and 60-61 show that potassium hydrogen carbonate improves pH storage stability at least one level. Among the aforementioned examples, compositions of Ex 41, 42, 43 and 52 are summarized in the table below.
PNG
media_image1.png
200
400
media_image1.png
Greyscale
The mass ratios of pigments to potassium hydrogen carbonate of the above examples fall within the claimed range of 7.5 to 60 of instant Claim 5.
Regarding Claims 7-8, Tateishi discloses that an acetylene-based surfactant is a preferable surfactant of the ink composition (24: 60-63). Acetylenol E 100 is used at 1 mass% of each of the exemplary aqueous ink compositions (Table 3 to Table 8).
Regarding Claims 9-10, triethylene glycol monobutyl ether is used at 8 mass% of each of the exemplary aqueous ink compositions (Table 3 to Table 8). Tateishi further discloses triethylene glycol monobutyl ether is a permeation promoting agent (23: 25-35), i.e., a penetrating agent.
Regarding Claim 11, Tateishi discloses pigments forming fine particles with a polymer and the fine particles are dispersed in aqueous medium (25:5-15).
Regarding Claim 12, Tateishi discloses the ink compositions are for inkjet recording (2:42-50).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Tateishi et al. (US8,623,101 B2), as applied to Claim 1 at para. 9.
Tateishi discloses that the pH of the ink composition preferably ranges from pH 7 to 10, the range overlapping with the claimed less than 9.2.
Tateishi is silent on the pH change in percentage. However, Tateishi teaches an ink composition comprising the claimed components in the claimed ratio, therefore, Tateishi teaches a substantially identical ink composition, as such the properties of pH storage stability is expected. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (See MPEP 2112.01 II). In this case,
Tateishi discloses that pH of the ink compositions change less than 0.10 (43: 40-45 and Table 12) after being stored at 600C for 3 month. Therefore, one ordinary skilled artisan would reasonably expect that the pH change of the ink compositions would be less than 10% or 5% after storing at 600C for 1 week.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Masahiro et al. (JP2004123904A) in view of Tateishi et al. (US8,623,101 B2).
Regarding Claims 1 and 4-6, Masahiro teaches a water-based ink containing a colorant, water (ab) and a pH adjuster including sodium hydrogen carbonate and potassium hydrogen carbonate lins396-399), wherein the colorant can be one of the pigments listed from lns412-413. Masahiro further teaches that the ink containing a pH adjuster is for the purpose of ensuring its storage stability (lns335-339).
The difference between Masahiro and instant claims is that Masahiro is silent on the mass ratio of pigment to the pH adjuster.
However, as discussed above, Tateishi discloses an aqueous ink comprising pigment and pH adjusting agent and exemplifies that the mass ratio of pigment to pH adjusting agent is from 7.9 to 57. One ordinary skilled artisan would have been motivated before the effective filing date of instant application to adopt the mass ratio taught by Tateishi to the ink of Masahiro because Tateishi teaches such ratios able to achieve the purpose of storage stability.
Regarding Claims 2-3, same reasoning as paragraph 10, the ink of Masahiro in view of Tateishi is expected to have a Ph less than 9.2 and lee than 5% change after storing at 600C for 1 week.
Regarding Claims 7-8, Masahiro exemplifies that the ink composition containing acetylene-based
Surfactant at 0.5 mass% and 1 mass% (Table 3).
Regarding Claims 9-10, Masahiro exemplifies that the ink composition containing penetrating agent, such as diethylene glycol monobutyl ether, triethylene glycol monobutyl ether, propylene glycol monobutyl ether and dipropylene glycol monobutyl ether, from 5 mass% to 9 mass% (Table 3, examples 15, 16, 17 20 and 22).
Regarding Claim 11, Masahiro teaches pigment in a polymer to be disposable in water (claim 5).
Regarding Claim 12, Masahiro teaches the ink is for inkjet printing (lns335-342).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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, Joseph Del Sole can be reached at 571-272-1130. 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.
/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763