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 .
Status of Claims
Claims 1-7 are pending in the current application.
Claim 1 is amended in the current application.
Response to Arguments
Applicant's remarks and amendments filed August 12, 2026 have been fully considered.
Applicant argues that the Van Aert and Mougin do not appear to teach or suggest a total amount of polyurethane and pigment as recited by newly amended claim 1.
This is not persuasive for the following reasons. The grounds of rejection have been updated below to reflect the present claim amendments. Van Aert teaches the aqueous liquid polyurethane resin dispersion comprises equal to or lower than 30 wt% of polyurethane with respect to the total aqueous liquid (Van Aert, [0049]). Van Aert teaches the pigment is included in the dispersion in an amount of preferably 0.1 to 10 wt% to achieve sufficient saturation and image density, and to prevent decrease in color and nozzle clogging (Van Aert, [0076]). The totality of polyurethane (equal to or lower than 30 wt%) and pigment (0.1 to 10 wt%) yields a range of 0.1 to 40 wt%; this range encompasses the claimed range of 5 to 20 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05). In view of the foregoing, Van Aert is considered to render obvious the new amendments to claim 1, and in combination with Mougin is considered to establish a prima facie case of obviousness over the presently claimed invention with a predictable and reasonable expectation of success.
Claim Interpretations
Claim 5 recites the term “normal boiling point.” The specification as originally filed at [00119] defines this term as referring to a boiling point measured at an atmospheric pressure of 0.101 MPa (about 1 atm).
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.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Van Aert et al. (WO 2021/013690 A1) in view of Mougin et al. (US 2006/0067907 A1).
Regarding Claim 1, Van Aert teaches an aqueous inkjet ink comprising an aqueous polyurethane resin dispersion, pigment, water, and a water-soluble organic solvent (Van Aert, Abstract, [0008]-[0013], [0049]-[0052], [0060]-[0077]). Van Aert teaches the polyurethane resin pigment dispersion contains a polyol (i.e., an active hydrogen atom-containing component) having a cationic group of a quaternary ammonium, a polyether polyol, polyisocyanates, and polymeric diols (Van Aert, [0013]-[0039]). Van Aert teaches the polyisocyanates include aliphatic diisocyanates, cyclic aliphatic diisocyanates, and aromatic diisocyanates (Van Aert, [0030]-[0032]). Van Aert teaches the aqueous liquid polyurethane resin dispersion comprises equal to or lower than 30 wt% of polyurethane with respect to the total aqueous liquid (Van Aert, [0049]). Van Aert teaches the pigment is included in the dispersion in an amount of preferably 0.1 to 10 wt% to achieve sufficient saturation and image density, and to prevent decrease in color and nozzle clogging (Van Aert, [0076]). The totality of polyurethane (equal to or lower than 30 wt%) and pigment (0.1 to 10 wt%) yields a range of 0.1 to 40 wt%; this range encompasses the claimed range of 5 to 20 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Van Aert remains silent regarding the polyol having a cationic group of a quaternary ammonium being included in an amount of 12 wt% or more based on the total components of the polyurethane resin.
Mougin, however, teaches a polyurethane resin formed with a polyol cationic unit having at least one quaternary ammonium, a non-ionic unit, and a polyisocyanate compound (Mougin, Abstract, [0010]-[0014], [0048]-[0066]). Mougin teaches the polyol cationic unit having at least one quaternary ammonium is included in the polyurethane in an amount of 0.1 to 90 wt% based on total weight of the polyurethane (Mougin, [0076]-[0078]). Mougin’s range overlaps the claimed range of 12 wt% or more, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Van Aert and Mougin both disclose polyurethane resins containing polyols having a cationic group of a quaternary ammonium and polyisocyanates, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included Van Aert’s polyol having a cationic group of a quaternary ammonium in an amount of that renders obvious the claimed range according to the guidance of Mougin to yield a polyurethane-based composition that exhibits improved film forming properties, exhibits improved viscoelastic properties, and prevents film brittleness as taught by Mougin (Mougin, [0008]-[0009], [0077]).
Regarding Claim 2, modified Van Aert teaches the polyols having a cationic group of a quaternary ammonium include Formulas I and II that satisfy formulas (1) and (2) of claim 2 (Van Aert, [0018]-[0020]).
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Van Aert – Formula I & II
Regarding Claim 3, modified Van Aert teaches the polyurethane resin pigment dispersion contains a polyether polyol, a polycarbonate polyol, and a polyester polyol (Van Aert, [0021]-[0029], [0033]-[0039]).
Regarding Claim 4, modified Van Aert teaches the polycarbonate polyol includes crystalline polycarbonate polyol such as Duranol T5651 (Van Aert, [0039]).
Regarding Claim 5, modified Van Aert teaches the water-soluble organic solvent includes dipropylene glycol that has a boiling point of 232oC (Van Aert, [0049]-[0052]).
Regarding Claim 6, modified Van Aert teaches the aqueous inkjet ink comprises a surfactant (Van Aert, [0053]-[0055]).
Regarding Claim 7, modified Van Aert teaches the surfactant includes a nonionic surfactant (Van Aert, [0053]-[0055]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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