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 03/17/2023 and Response to Restriction filed 11/18/2025. Claims 1-20 are pending. Elected claims 1-16 are under consideration in this Office Action.
Non-elected claims 17-20 are withdrawn.
Claims 1-16 are rejected for the reasons set forth below.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16 in the reply filed on 11/18/2025 is acknowledged.
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 1-11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Beltrame et al. (WO2019185825 A1), as evidenced by Matsumoto et al. (US2023/0050122 A1).
Regarding Claims 1, Beltrame teaches an ink composition comprising a terpene phenolic resin (claim 9) wherein Dertophene T is used as the preferred terpene phenolic resin (Table 14). Matsumoto discloses that Dertophene T has a hydroxyl value of 40 mgKOH/g ([0086]). Beltrame further teaches the ink composition comprising an organic solvent which may be dimethyl carbonate (p11 last para. to p12 top para.). Dimethyl carbonate has a boiling point of 90.50C.
Regarding Claims 2-4, Matsumoto discloses that Dertophene T is copolymer formed from a reaction between a phenolic compound comprising at least one hydroxyl group and at least two replaceable hydrogen atoms in ortho- and/or parapositions with respect to the at least one hydroxyl group, such as phenol, and bicyclic monoterpenes ( e.g., 3-carene, a-pinene, β-pinene, a-fenchene, camphene) ([0086]).
Regarding Claim 5, Dertophene T has a hydroxyl value of 40 mg KOH/g.
Regarding Claim 6, Beltrame teaches terpene phenolic resin, as a tackifier, presents in the amount of 0.3 to 10 wt.% of the ink composition (p31 2nd-3rd para.).
Regarding Claim 7, Beltrame teaches organic solvent is present in the ink composition between 10 to 95 wt.% (p12 3rd para.) and the organic solvent can be dimethyl carbonate. Therefore, Beltrame discloses that dimethyl carbonate can be present in the amount of 10 to 95 wt.% of the ink composition.
Regarding Claim 8, Beltrame teaches the organic solvent can be dimethyl carbonate (p11 last para. to p12 top para.).
Regarding Claim 9, as discussed above, Beltrame teaches, based on the total weight of the ink composition, the terpene phenolic resin can be 0.3 to 10 wt.%, dimethyl carbonate can be 10 to 95 wt.%, therefore, the weight ratio of dimethyl carbonate to terpene phenolic resin is between 1:1 to 317:1, overlapping the claimed 2:1 to 25:1.
Regarding Claim 10, Beltrame teaches the organic solvent can be a mixture of dimethyl carbonate and ethanol (p11 last para. to p12 top para.).
Regarding Claim 11, Beltrame teaches, when ethanol is mixed with another organic solvent, the amount of ethanol is 10 wt.% to 70wt.% of the ink composition (p13 last para.). Therefore, the amount of dimethyl carbonate can be 0 to 85 wt.% of the ink composition, as such, the weight ratio of dimethyl carbonate to ethanol being 0 to 8.5:1, overlapping the claimed 0.05:1 to 0.8:1.
Regarding Claim 16, Beltrame teaches the ink composition comprising a colorant (p5).
Claims 1-9, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Goustiaux et al. (US2016/0272827 A1), as evidenced by Matsumoto et al. (US2023/0050122 A1).
Regarding Claim 1, Goustiaux teaches that an ink composition comprising a terpene phenol resin
and one or more organic solvent compounds (claim 1). Goustiaux further teaches the preferred terpene phenol resin is Dertophene T (Table 1). According to Matsumoto, Dertophene T has a hydroxyl value of 40 mg KOH/g. Goustiaux furthermore teaches the organic solvent can be dimethyl- and diethyl-carbonates ([0112]), which have boiling point of 90.50C and 1260C, respectively.
Regarding Claims 2-4, Goustiaux teaches that Dertophene T is obtained from polycondensation of phenol and a terpene selected from α-pinene or β-pinene, the carenes, dipentene, limonene, and mixtures thereof ([0056-0058]).
Regarding Claim 5, Dertophene T has a hydroxyl value of 40 mg KOH/g.
Regarding Claim 6, Goustiaux teaches the ink composition preferably comprising 1 wt.% to 10 wt.% of terpene-phenol resin ([0097]).
Regarding Claim 7, Goustiaux teaches the ink composition comprising 20 wt.% to 90 wt.% solvent and volatile solvent is 50 to 100% by weight of the total weight of solvent ([0107-0109]). Therefore, Goustiaux teaches dimethyl- and/or diethyl-carbonate can be 10 wt.% to 90 wt.% of the total weight of the ink composition.
Regarding Claim 8, as discussed above, Goustiaux teaches solvent of the ink composition can be dimethyl carbonate.
Regarding Claim 9, Goustiaux teaches the ink composition preferably comprising 1 wt.% to 10 wt.% of terpene-phenol resin ([0097]) and 10 wt.% to 90 wt.% of dimethyl- and/or diethyl-carbonate. Therefore, the weight ratio of carbonate ester to terpene-phenol resin is 1:1 to 90:1.
Regarding Claims 14-15, Goustiaux teaches the ink composition comprising a compound having an ethylenically unsaturated double bond and a silicon chain in the amount of 0.01 wt.% to 5 wt.% (claim 5) wherein the compound is notably selected from a compound of polydimethylsiloxanes with acrylic functional groups ([0064]).
Regarding Claim 16, Goustiaux teaches the ink composition comprising one or more dyes or pigments (ab.).
Claims 1-10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over De Saint-Romain (US20170190926) in view of Beltrame et al. (WO2019185825 A1).
Regarding Claim 1, De Saint-Romain teaches an ink composition comprising a solvent which can be dimethyl carbonate (claim 4 and Ex.4) which has a boiling point of 90.50C.
The difference between De saint-Romain and instant Claim 1 is that De saint-Romain is silent on the ink composition comprising a terpene phenol resin having a hydroxyl value of 10 to 80 mgKOH/g.
However, as discussed at para. 6, Beltrame teaches an ink composition comprising Dertophene T and further teaches that Dertophene T functions as a tackifier. One ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to add Dertophene T into the ink composition of De saint-Romain to obtain a modified ink composition because a tackifier would provide the benefits, such as improving adhesion of ink to substrate, increasing compatibility between pigments and solvents, ect.
Regarding Claims 2-4, as discussed above, Dertophene T is obtained from polycondensation of phenol and a terpene selected from α-pinene or β-pinene, the carenes, dipentene, limonene, and mixtures thereof.
Regarding Claim 5, Dertophene T has a hydroxyl value of 40 mg KOH/g.
Regarding Claim 6, Beltrame teaches terpene phenolic resin, as a tackifier, presents in the amount of 0.3 to 10 wt.% of the ink composition (p31 2nd-3rd para.).
Regarding Claim 7, De saint-Romain exemplifies that dimethyl carbonate being 40 wt.% of the ink composition (Ex. 4).
Regarding Claim 8, De saint-Romain exemplifies the ink composition comprising dimethyl carbonate (Ex. 4).
Regarding Claim 9, Beltrame teaches the ink composition comprising 0.3 to 10 wt.% of Dertophene T. De saint-Romain exemplifies the ink composition comprising 40 wt.% of dimethyl carbonate. Thus, the weight ratio of dimethyl carbonate to Dertophene T in the modified ink composition can be 4:1 to 133:1.
Regarding Claim 10, De saint-Romain teaches that solvent of the ink composition can be a mixture of ethanol and dimethyl carbonate (claim 4).
Regarding Claim 16, each of the exemplary ink composition comprises a colorant (Table 1).
Claims 1-6, 8, 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kozo (JP2017061637 A) in view of De Saint-Romain (US20170190926).
Regarding Claim 1, Kozo teaches an ink composition comprising a terpene phenol resin having a hydroxyl value of 10 mg KOH/g to 45 mg KOH/g and an organic solvent containing at least an alcohol having 2 to 4 carbon atoms (ab.) Kozo further teaches a small amount of acetone being blended in for low voltage ink ejection (lns316-320).
The difference between Kozo and instant Claim 1 is that Kozo is silent on the solvent of the ink composition containing a carbonate ester whose boiling point is less than 150 °C.
However, De Saint-Romain teaches an ink composition comprising one or more organic solvent having a dielectric constant less than 15 (claim 1). An exemplary solvent is dimethyl carbonate (Ex. 4). One ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to replace acetone taught by Kozo by dimethyl carbonate taught by De Saint-Romain to obtain a modified ink composition because: the low dielectric constant property contributes to eject ink droplets having a sufficient volume at a low voltage and dimethyl carbonate is less toxic than acetone.
Regarding Claims 2-4, Kozo teaches that the exemplary terpene phenol resin includes YS Polystar U 130 and YS Polystar U 115 (lns214-215) which are suitable terpene phenol resins for instant application ([0068] of US publication of instant application).
Regarding Claim 5, Kozo exemplifies the terpene phenol resin having a hydroxyl value of 30 mg KOH/g (example 1).
Regarding Claim 6, Kozo exemplifies terpene phenol resin being used at 7.5 wt.% of an ink composition (table 1).
Regarding Claim 8, as discussed at claim 1, the modified composition comprising dimethyl carbonate.
Regarding Claim 10, the ink composition comprising ethanol (claim 5).
Regarding Claim 11, ink composition of example 1 contains 35.6 parts by weight ethanol and 2 parts by weight acetone. Therefore, a modified ink composition contains 35.6 parts by weight ethanol and 2 parts by weight dimethyl carbonate, consequently, the weight ratio of dimethyl carbonate to ethanol is 0.056: 1.
Regarding Claims 12-13, Kozo teaches that the ink composition comprising a pH adjusting agent, such as ethanolamine, propanolamine, isopropanolamine, diethanolamine, and triethanolamine, and the pH adjusting agent is present in the amount of 0.1 to 1 wt.% of the total amount of the ink composition (lns482-492).
Regarding Claims 14-15, Kozo teaches the ink composition comprising an acrylic silicone copolymer-based surfactant in the amount of 0.2 wt.% to 3 wt.% of the total amount of the ink composition (lns403-408).
Regarding Claim 16, Kozo teaches the ink composition comprising titanium oxide (lns186-190).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 and claim 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over the allowed claim 6 of U.S. Patent Appl. No. 18/254,955 (‘955) in view of De Saint-Romain (US20170190926).
Claim 6 of ‘955 claims an inkjet ink comprising a terpene phenol resin having a hydroxyl value of 10 to 80 mg KOH/g and a volatile organic solvent having a boiling point of less than 1000C.
The difference between Claim 6 of ‘955 and instant Claim 1 is that Claim 6 of ‘955 is silent on the solvent is a carbonate ester,
However, De Saint-Romain teaches that an ink composition comprising dimethyl carbonate as an organic solvent (Ex.4). Dimethyl carbonate is volatile and have a boiling point of less than 1000C. One ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to use dimethyl carbonate as the organic solvent for the ink composition of Claim 6 of ‘955 because De Saint-Romain teaches dimethyl carbonate suitable for being an organic solvent for an ink composition and dimethyl carbonate possesses the physical properties required by the solvent of Claim 6 of ‘955.
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
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763