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 filed 03/21/2023 and Response to Restriction filed 11/21/2025. Claims 1-12 are pending. Elected claims 1-6 are under consideration in this Office Action.
Non-elected claims 7-12 are withdrawn.
Claims 1-6 are rejected for the reasons 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 of Group I, Claims 1-6 in the reply filed on 11/21/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-2 and 4-5 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Furukawa et al. (US2019/0276692 A1).
Regarding Claims 1-2, attention is drawn to Table 2. The aqueous white ink 15 and 17 each comprises white pigment dispersion and 0.2% by mass of 2-amino-2-ethyl-1,3-propanediol which is a primary amine having a molecular weight of 119.16 g/mol. The white ink 15 and 17 comprise water dispersible urethane resin 2.7% and 3% by mass, respectively, therefore, the mass ratio of 2-amino-2-ethyl-1,3-propanediol to urethane resin are 0.074 and 0.067, respectively.
Regarding Claims 4-5, the hydroxy groups of 2-amino-2-ethyl-1,3-propanediol relative to the molecular weight is 2/119.16=0.017, falling within the claimed 0.016.
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 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (JP2020169232 A, citing US11,285,732 B2 for English translation).
Regarding Claim 1, Hatta teaches that a white ink comprising a urethane resin and a coloring material (claim 1). The exemplary aqueous white ink comprising titanium oxide, urethane resin emulsion and 0.3 mass% of triethanolamine. The molecular weight of triethanolamine is 149.19 g/mol. Hatta further teaches the proportion of the urethane resin is preferably from 5 mass% to 20 mass% of the total content of the white ink (6: 49-54). Therefore, Hatta teaches the mass ratio of triethanolamine to the urethane resin being from 0.015 to 0.06, overlapping the claimed 0.02 to 0.08. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Hatta.
Regarding Claim 4, the number of hydroxy groups relative to the molecular weight of triethanolamine is 0.02.
Claims 1, 3-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (US20190352528 A1).
Regarding Claim 1, Yamazaki teaches an aqueous inkjet ink comprising a pigment, a first water dispersible resin and a second water dispersible resin (claim 1) wherein a water-dispersible urethane resin is a preferred resin of the first water dispersible resin water (examples) and wherein the pigment can be a white pigment ([0052]). Yamazaki further teaches the ink comprising a basic substance (claim 4) wherein the basic substance is an amine compound ([0071]) and the content of the basic substance is preferably 0.2 mass% to 2 mass% of the total mass of ink ([0072]). Yamazaki furthermore teaches the total amount of the first water-dispersible resin and the second water-dispersible resin is from 2 to 18% by mass relative to the total mass of the ink, and the mass ratio of the second water-dispersible resin relative to the first water dispersible resin (second water-dispersible resin/first water dispersible resin) is from 0.1 to 5.0 (Claim 1). Therefore, the amount of the water-dispersible urethane resin relative the total mass of ink is from 2/(5+1) *mass% to 18/(1+0.1) * mass%. Consequently, the mass ratio of the basic substance to water-dispersible urethane resin is from 0.2/(18/1.1)=0.012 to 2/(2/6)=6. As Yamazaki exemplifies the basic substance is triethanolamine (examples) which has a molecular weight of is 149.19 g/mol, Yamazaki teaches the mass ratio of the amine compound with a molecular weight between 110 and 150 to water-dispersible urethane resin is from 0.012 to 6, encompassing the claimed 0.02 to 0.08. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I).
Regarding Claim 3, Yamazaki teaches that the content of the basic substance is preferably 0.2 mass% to 2 mass% of the total mass of ink ([0072]), overlapping the claimed 1.1 to 1.3% by mass.
Regarding Claims 4 and 6, the number of hydroxy groups relative to the molecular weight of triethanolamine is 0.02.
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.
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763