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 05/18/2026. Claims 1-8, 10-19 and 21-22 are currently pending. Claims 9 and 20 are canceled. The non-elected claims 17-19 are withdrawn. Therefore, Claims 1-8, 10-16 and 21-22 are under consideration in this Office Action.
The 35 USC 103 rejection dated 02/27/2026 based on Kozo at para. 9 is WITHDRAWN due to Applicant’s amendment.
The elected Claims 1-8, 10-16 and 22 are rejected for the reasons set forth below.
While the scope of amended claim 1 is changed by a newly inserted limitation, the limitation is disclosed by the combination of references used previously, therefore, the prior art is still applicable and the grounds of rejection have been appropriately set forth. Thus the following action is properly made final.
Claim 21 is objected.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Claim Rejections - 35 USC§ 103
Claims 1-8, 10-11, 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Beltrame et al. (WO2019185825 Al), as evidenced by Matsumoto et al. (US2023/0050122 Al).
Regarding Claims 1-8, 10-11 and 16, the 35 USC 103 rejection dated 02/27/2026 at para. 6 is MAINTAINED.
Regarding Claim 22, the disclosure of Beltrame on Claims 10-11 is incorporated herein by reference.
Beltrame teaches the organic solvent can be a mixture of dimethyl carbonate and ethanol (pl I last para. to pl2 top para.) and the ink composition comprising 10 to 95 wt.% of organic solvent (pl2 3rd para.), therefore, Beltrame teaches a combined weight of ((B)+(C)) is 10 to 95 wt.%, overlapping the claimed 60 to 95 wt.%.
Claims 1-8, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Goustiaux et al.
(US2016/0272827 Al), as evidenced by Matsumoto et al. (US2023/0050122 Al).
The 35 USC 103 rejection dated 02/27/2026 at para. 7 is MAINTAINED.
Claims 1-8, 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 Al).
The 35 USC 103 rejection dated 02/27/2026 at para. 8 is MAINTAINED.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Beltrame, as applied to claim 1 above at para.8, and in further view of Kozo (JP2017061637 A).
The disclosure of Beltrame on the instant Claim 1 is incorporated herein by reference.
Beltrame teaches an inkjet ink composition comprising a terpene phenol resin having a hydroxyl value of 40 mgKOH/g and dimethyl carbonate having a boiling point of 90.5°C. Beltrame further teaches the weight ratio of dimethyl carbonate to terpene phenolic resin is between 1: 1 to 317: 1, overlapping the claimed 5:1 to 18:1. (see the Office Action dated 02/27/2026 at para. 6.
The difference between Beltrame and the claims 12-13 is that Beltrame is silent on the composition comprising alkanolamine.
However, Kozo teaches an inkjet ink composition comprising a terpene phenol resin and organic solvent (ab.). Therefore, Kozo is analogous art to Beltrame. Kozo further teaches 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). Kozo furthermore teaches the pH adjuster functions to make the inkjet ink alkaline and prevent corrosion of metal members of the inkjet printer (Id.), In view of such benefits. One ordinary skilled artisan would have been motivated before the effective filing date of the instant application to incorporate the pH adjusting agents and the amounts taught by Kozo into the ink composition of Beltrame for protecting inkjet printers.
Allowable Subject Matter
Claim 21 is 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: the closest prior art is Beltrame above, however, Beltrame does not teach or fairly suggest that the terpene phenol resin requires certain hydroxyl values. The preferred terpene phenol resin of Beltrame has a hydroxyl value of 40 mgKOH/g, Beltrame does not teach or fairly suggest an ink composition comprising terpene phenol resin having a hydroxyl value of 50 to 80 mgKOH/g would have the same properties as the ink composition of Beltrame.
Response to Arguments
Applicant’s arguments with respect to the 35 USC 103 rejection based on Kozo
(JP2017061637 A) in view of De Saint-Romain (US20170190926) have been considered but are moot because the rejection is WITHDRAWN.
Applicant's arguments on Beltrame, Gousitaux, and De Saint-Romain have been fully considered but they are not persuasive.
Applicant argued that each of Beltrame, Gousitaux, and De Saint-Romain discloses a broad weight ratio range of carbonate ester (B) to the terpene phenol resin, while the instant application demonstrates criticality of the claimed range “5:1 to 18:1.” The argument is not persuasive because the instant data only show superior results of the weight ratios of 5: 1, 9:1, 12.5:1, and 17.5:1 over the weight ratio 22.5:1. The data could support the criticality of 18:1 but fail to support the criticality of 5:1. As such, doubts are raised as to the criticality of the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. 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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights