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 .
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.
Claim 15 is 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.
The metes and boundaries of claim 15 is vague and indefinite. It is not clear as to what constitutes the claimed “aqueous pigment dispersion”; this is because the coloring composition of claim 1 recites the very same components that are claimed in claim 15 for the aqueous pigment dispersion. It is not clear as to what Applicant had intended to claim with claim 15.
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.
Claim(s) 1-2, 4-5, 7-9, 11, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2015/0210859 to Denda et al. (hereinafter Denda) submitted in the IDS filed on 03/24/2023.
With respect to claim 1, Denda teaches an aqueous ink composition comprising water, metal pigment, which is surface treated with a fluorine-based compound which can follow the disclosed formulas 1 to 4 (abstract, [0037]-[0038], [0044]-[0054]). The disclosed formulas 1 and 2 of Denda meet the structural limitations as claimed in, at least, claimed formula 1 ([0044]-[0048]); this is because “m” is an integer equal to or greater than 1 and less than or equal to 12 and “l” is an integer of greater than or equal to 1 and less than or equal to 12 as well. As disclosed in Denda, R1 in formula 1 can be any of the disclosed structural formulae disclosed in paragraph [0045] which include structures of 12 carbons or more; also, with “m” being 12, the formula 2 of Denda also meets the claimed structural limitation for claimed formula 1, i.e. “(R1-)P(O)(OH)2”.
Denda discloses the use of polar organic solvents in terms of compatibility with water, in the disclosed composition, wherein Denda discloses alcohols such as ethyl alcohol, butyl alcohol, and ethers such as triethylene glycol ([0066]). Organic solvents such as ethyl alcohol and triethylene glycol have been disclosed in the original disclosure of the present Application under examination as those compounds reading on “organic solvent (A)” (see specification of the present Application under examination, page 21, [0059]), and butyl alcohol is disclosed in the original disclosure of the present Application under examination as one of the compounds reading on “organic solvent (B)” (see specification of the present application under examination, page 23, [0066]). Considering the fact that the reference discloses some of the very same compounds, i.e. solvent, which have been disclosed in the original disclosure of the present Application under examination as organic solvent (A) and organic solvent (B), it is expected of butyl alcohol to satisfy the claimed characteristic of “having a water solubility of 100 g/L or less at 20˚C” and of ethyl alcohol and triethylene glycol to meet the claimed characteristic of “water solubility of 1000 g/L or more at 20˚C”. This is because the exact same compounds cannot have mutually exclusive characteristics.
Although Denda may not expressly disclose that more than one solvent may be used, wherein one would be butyl alcohol and the other being one or both of ethyl alcohol and triethylene glycol, it is well recognized to combine more than one solvent from the list of disclosed solvents in paragraph [0066] of Denda to be included in the composition of Denda motivated by the fact that according to MPEP 2144.06 “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
The reference is, then, taken to broadly renders an embodiment of using a combination of butyl alcohol and the one or both of ethyl alcohol and triethylene glycol obvious.
With respect to claim 2, Denda discloses organic solvents such as butyl alcohol (i.e. 1-butanol) which reads on the claimed “organic solvent (B)” and triethylene glycol as well as ethyl alcohol (i.e. ethanol) which read on the claimed “organic solvent (A)” ([0066]).
With respect to claim 4, Denda discloses a content of less than or equal to 60 mass% of organic solvent in the composition ([0066]).
With respect to claim 5, Denda discloses organic solvents such as butyl alcohol (i.e. 1-butanol) ([0066]) which would read on the claimed “organic solvent (B)” of aliphatic monohydric alcohol.
With respect to claim 7, Denda discloses an average particle diameter of preferably 0.25 microns to 3 microns, for the metal pigment ([0076]). This range shares and end point, i.e. at 3 microns, with the claimed range of “3 µm or more and 15 µm or less” for the volume-average particle diameter D50 of the metal pigment. Irrespective of the literal disclosure of “volume-average particle diameter”, the reference discloses an average particle diameter which reads on the claimed particle diameter.
MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 8, Denda discloses an average particle diameter of preferably 0.25 microns to 3 microns, for the metal pigment ([0076]). This range overlaps with the claimed of “1 µm or less” for the volume-average particle diameter D50 of the metal pigment. Irrespective of the literal disclosure of “volume-average particle diameter”, the reference discloses an average particle diameter which overlaps with the claimed particle diameter.
MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 9, as noted above, under the rejection of claim 1 above, the R1 in the disclosed formula 1 of Denda can be a hydrocarbon group having 12 carbons; also, the substituted hydrocarbon structure of formula 2 of Denda contains, at least, 12 carbon.
With respect to claim 11, Denda discloses the metal particles of the composition to be of materials such as Al or an alloy thereof ([0038]).
With respect to claim 13, Denda discloses flat plate and scale like shape as the shape of the metal pigment particles ([0075]) which reads on the claimed “flake shape”.
With respect to claim 14, Denda discloses applying their aqueous ink composition onto a recording surface of a recording medium, which is taken to read on the claimed coloring method comprising attaching the claimed coloring composition to a substrate.
With respect to claim 15, Denda discloses an aqueous ink composition comprising metal pigment particles, water and organic solvents, examples of which would read on the claimed “organic solvent (A)” and “organic solvent (B)” (abstract, [0037]-[0038, [0044]-[0049], [0066], [0083]-[0085]). The disclosed aqueous ink composition may comprise other components such as resins, surfactant, alkanediol, polymeric alcohol, pH adjuster, or the like ([0090]); thus, the components of water, metal pigment, and organic solvents are taken to read on the claimed “aqueous pigment dispersion”. The cumulative components of metal pigment, water, organic solvent and the additional components disclosed in paragraph [0090] is taken to read on the claimed “coloring composition”.
Additionally, it is noted that disclosed organic solvents such as ethyl alcohol, and triethylene glycol read on the claimed “organic solvent “(A)” and the disclosed organic solvents such as butyl alcohol reads on the claimed “organic solvent (B)” (Denda, [0066]; specification of the present Application under examination, pages 21 and 23 and paragraphs [0059] and [0066]).
Claim(s) 1-2, 4-5, 7-11, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2018/0371281 to Takiguchi.
With respect to claim 1, Takiguchi discloses an aqueous coating composition comprising water, organic solvents, and an aluminum pigment (i.e. claimed “metal pigment”) of tabular particles which surface-treated by a fluorine-containing compound (abstract, [0033]-[0034], [0072]-[0073]). Takiguchi discloses fluorine-containing compounds used in surface-treating metal pigment particles by formulas 1 to 4, out of them, the, at least, disclosed formulas 1 and 2 would meet the structural limitations of, at least, the claimed formula 1 ([0041]-[0052]). This is because “m” is an integer of 1 to 12; this results in more than 12 carbons for the hydrocarbon group of R1. Also, “n” is 1 to 3; thus, with “n” being 1, the disclosed “(OM)3-n” in formula 1 would be “(OH)2” in the claimed formula 1.
Takiguchi teaches compounds such as ethyl alcohol, triethylene glycol, and butyl alcohol as organic solvents ([0093]). Ethyl alcohol and triethylene glycol read on the claimed “organic solvent (A)” and butyl alcohol reads on the claimed “organic solvent (B)” according to the original disclosure of the present Application under examination (see specification of the present Application under examination, pages 21 and 23, [0059] and [0066]). As a result, it is expected of ethyl alcohol and triethylene glycol to have a water solubility of 1000 g/L or more at 20˚C and of butyl alcohol to have a water solubility of 100 g/L or less at 20˚C because same compounds cannot have mutually exclusive characteristics.
Although Takiguchi may not expressly disclose the use of more than one organic solvent, one of which being butyl alcohol and the other being one or both of ethyl alcohol and triethylene glycol, it is well recognized to have combined more than one solvent from the list of compounds all disclosed as organic solvent motivated by the fact that according to MPEP 2144.06 “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
The reference is, then, taken to broadly renders an embodiment of using a combination of butyl alcohol and the one or both of ethyl alcohol and triethylene glycol obvious.
With respect to claim 2, as disclosed by Takiguchi, glycols, glycol ethers and monohydric alcohols are among the organic solvents ([0093]).
With respect to claim 4, Takiguchi discloses a concentration of 60 % by mass or less for the content of organic solvents ([0093]).
With respect to claim 5, Takiguchi discloses organic solvents such as butyl alcohol (i.e. 1-butanol) ([0093]) which would read on the claimed “organic solvent (B)” of aliphatic monohydric alcohol.
With respect to claim 7, Takiguchi discloses an average particle diameter of preferably 1-50 microns, for the aluminum pigment particles ([0055]). This range overlaps with the claimed range of “3 µm or more and 15 µm or less” for the volume-average particle diameter D50 of the metal pigment. Irrespective of the literal disclosure of “volume-average particle diameter”, the reference discloses an average particle diameter which overlaps with the claimed particle diameter.
MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 8, Takiguchi discloses an average particle diameter of preferably 1-50 microns, for the aluminum pigment particles ([0055]). This range overlaps with the claimed range of “3 µm or more and 15 µm or less” for the volume-average particle diameter D50 of the metal pigment. Irrespective of the literal disclosure of “volume-average particle diameter”, the reference discloses an average particle diameter which overlaps with the claimed particle diameter.
MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 9, as noted above, under the rejection of claim 1 above, the R1 in the disclosed formula 1 of Takiguchi can be a hydrocarbon group having 12 carbons; also, the substituted hydrocarbon structure of formula 2 of Takiguchi contains, at least, 12 carbon.
With respect to claim 10, Takiguchi discloses an aqueous paint ([0005]) comprising water, aluminum pigment having surface treatment reading on the claimed formula 1 of claim 1, and organic solvents reading on the claimed organic solvents (A) and (B).
With respect to claim 11, as noted above, Takiguchi discloses the use of aluminum pigment particles (abstract, [0033]).
With respect to claim 13, Takiguchi discloses scale shape and flat plate shape (i.e. claimed flake) ([0054]) wherein the particles have a very thin thickness of 9-90 nm but much larger size of 1-50 microns ([0055]-[0056]).
With respect to claim 14, Takiguchi discloses using the aqueous composition as a coating and paint; thus, it is inevitable that this composition is applied onto a substrate.
With respect to claim 15, Takiguchi discloses an aqueous coating composition which is used as a paint, comprising aluminum pigment particles in scale shape, water, organic solvents which would read on the claimed organic solvents (A) and (B) and wherein the aluminum pigment particles have surface treatment reading on, at least, the claimed formula 1 (abstract, [0005], [0032]-[0035], [0041]-[0056], [0072]-[0074], and [0093]). The cumulative above cited components read on the claimed aqueous pigment dispersion. The composition of Takiguchi, also, comprises other components such as surfactant, alkanediol, polyalcohol, pH adjusters and others ([0076]-[0080]). The cumulative components of all these additional components and water, aluminum pigment, and organic solvent is taken to read on the claimed coloring composition.
Allowable Subject Matter
Claims 3, 6, and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: neither of the references disclose or teach the cumulative limitations of claims 1 and 3 because none of the references disclose a ratio of an amount of the organic solvent (B) to organic solvent (A). Moreover, neither of the references disclose or suggest the amount of the compounds reading on organic solvent (A) and the amount of the compounds reading on organic solvent (B). Furthermore, neither of the references disclose or suggest an amount for the surface treatment agent used on the aluminum pigment particles.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731