DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/3/2026 has been entered.
Claims 1-7 are pending.
Claim Rejections - 35 USC § 103
Claims 1-4, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. (US 2012/0227623) as evidenced by Fujiwara et al. (Heliyon 5 (2019)) and Fujiwara et al. (Toxicology in Vitro 99 (2024) 105885) and the product information sheet for propylene glycol methyl ether.
Regarding claim 1: Sekiguchi is directed to an ink set comprising:
A colored ink including a leuco dye, a developer, and a surfactant (equivalent to a dispersant); and
A decoloring ink including a solvent, surfactant, and water ([0008] claim 6).
It is noted that the claim recites the transitional phrase “consisting essentially of”, which limits the scope of the claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” is construed as equivalent to “comprising” (see MPEP 2111.03).
Solvents include ethanol and propylene glycol methyl ether. Developers include bisphenol A.
Per Fujiwara et al. Toxicology in Vitro 99 (2024) 105885 and Fujiwara et al. Volume 5, Issue 12, December 2019, e02833, and the product information sheet for propylene glycol methyl ether, respectively, the Hansen solubility parameters for BPA Ethanol and propylene glycol methyl ether are below:
Bisphenol A
Ethanol
Propylene Glycol Methyl Ether
δd
19.2
15.8
15.6
δp
5.9
8.8
7.2
δH
13.8
19.4
13.6
Therefore, the solvent of ethanol differs from the Hansen solubility parameter of the developer of BPA by an absolute value of less than 5.3. Specifically Δδd = |19.2-15.8| = 3.4. Likewise, for propylene glycol methyl ether the Δδd = |19.2-15.6| = 3.6. Example 5 comprises BPA and a solvent of propylene glycol methyl ether (Table 1 Sekiguchi).
While Sekiguchi doesn’t mention the solvent is configured to separate the leuco dye and the developer of the colored ink jet ink to decolor a recorded area including the colored ink jet ink, the same solvents are used in Sekiguchi. Specifically, Sekiguchi discloses solvents of alcohols, glycols, glycol monoalkyl ethers and glycol dialkyl ethers ([0020] Sekiguchi), which are the same solvent used in the present invention. For instance, propylene glycol monomethyl ether is utilized in Sekiguchi, and is substantially similar to triethylene glycol monomethyl ether utilized in the working examples of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Sekiguchi suggests a solvent configured to separate the leuco dye and the developer of the colored ink jet ink to decolor a recorded area including the colored ink jet ink. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 2: The glycol ether of propylene glycol methyl ether is disclosed.
Regarding claim 3: Many fluorans are disclosed ([0018]).
Regarding clam 4: BPA is disclosed which contains phenolic hydroxy group in a molecule.
Regarding claim 7: A decoloring ink of an ink jet ink is disclosed in Example 1.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi as applied to claim 1 above, and further in view of Saito et al. (US 2013/0278690).
Regarding claim 5: Sekiguchi mentions a surfactant additive, although doesn’t mention a dispersant is a dispersant resin having a sulfonic acid structure.
Aida is directed to a nonaqueous inkjet ink comprising a glycol solvent and a pigment. The dispersant comprises a dispersant including Demol RN,N and SN-B which are a dispersing resin having a sulfonic acid structure ([0037] Aida). One skilled in the art would have been motivated to have selected the dispersants of Aida as the surfactant of choice in Sekiguchi to enhance dispersibility of pigments and storage stability of inks ([0034] Aida). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the dispersant of Aida as the dispersant of choice in Sekiguchi to arrive at claim 5 of the present invention.
Regarding claim 6: Demol SN-B is defined by the present invention as having a weight average molecular weight of 13000.
Response to Arguments
Applicant's arguments filed 4/13/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 3-5 Remarks) claim 1 now recites the solvent is configured to separate the leuco dye and the developer of the colored ink jet ink to decolor a recorded area including the colored ink jet ink. Therefore, it is clear the composition cannot contain a leuco dye or a developer because the solvent would separate them.
This argument is not found persuasive since claim 1 does not require separated lueco dye and developer. Rather, claim 1 recites the solvent is configured to separate them. Give the same solvents are used in the present invention as well as Sekiguchi, one skilled in the art would conclude the solvent would be configured to separate the leuco dye or a developer.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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