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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 19 December 2025, with respect to the rejection(s) of claim(s) 1-8 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Koyama et al. (US Serial No. 2019/0023918) and KR 2008-0114371.
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 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.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koyama et al. (US Serial No. 2019/0023918), in view of Jang (KR 2008-0114371), wherein the machine English translation is used for citation.
Regarding claims 1-2 and 6; Koyama et al. teaches an aqueous dispersion including a microcapsule and water, to be used in an inkjet ink [0006], the microcapsule including: a shell having a three-dimensional crosslinked structure containing at least one bond selected from a urethane bond or a urea bond (P); and an anionic group and a nonionic group; and a core [abs]. Koyama et al. teaches the core is prepared from monomers, such as tricyclodecanedimethanol diacrylate (M) [0756]. Koyama et al. teaches the oil-phase component and the water-phase component may contain a basic compound as a neutralizer, like organic amines such as triethylamine [0250], for an unneutralized anionic group; therefore, during the formation process of the microcapsule, the neutralized anionic group can be formed [0631-0633].
Koyama et al. teaches an organic amine neutralizer (e.g. triethylamine), however fails to teach a neutralizer having a solubility in water at 20°C of 12.5 g/100 mL or less. Jang teaches preparing water dispersible and crosslinkable polyurethane compounds and aqueous coating compositions wherein neutralization of the polyurethane prepolymer is carried out by an organic amine, such as triethylamine or diisobutylamine (solubility in water 0.5 g/ 100 mL, ClogP 2.4) [018]. Koyama et al. and Jang are analogous art because they are both concerned with the same field of endeavor, namely aqueous dispersions comprising neutralized urethane-containing compounds, suitable for use as coating compositions. At the time of filing, a person of ordinary skill in the art would have found it obvious to substitute triethylamine for another organic amine, such as diisobutylamine, in the invention of Koyama et al., and would have been motivated to do so in order to achieve a desired pH, as suggested by Jang [018].
In the instance only diisobutylamine is used, 100 mol% of the salt is derived from the diisobutylamine.
Regarding claims 3-4 and 7; Koyama et al. fails to teach an HSP distance between the amine and a polymer P1 is 4.5 MPa1/2 or more, does not teach wherein a HSP distance between the polymerizable monomer M and polymer P1 is 12 MPa1/2 or less, and does not teach the polymer P has a glass transition temperature of 85°C or less. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, the mixture of a polyurethane, triethylamine, tricyclodecanedimethanol diacrylate yields a HSP distance between the amine and a polymer P1 is 11.4 MPa1/2 and a HSP distance between the polymerizable monomer M and polymer P1 is 10.3 MPa1/2 [Ex]. The original specification teaches suitable polymers P include urethane polymers, urethane-urea polymers, urea polymers; said polymers have a Tg of less than 85C [0053-0054]. Therefore, the claimed effects and physical properties, i.e. change in HSP and Tg, would necessarily in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 8; Koyama et al. teaches an image forming method of the present embodiment includes an application step of applying the aqueous dispersion of the present disclosure described above onto the recording medium (substrate), and a curing step (e.g. via ultraviolet rays [0677]) of curing the aqueous dispersion applied onto the recording medium [0660].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767