DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 1-5 and 16; “a method for producing an aqueous titanium dioxide slurry”) in the reply filed on 12/01/2025 is acknowledged. The applicants at pages 8 and 9 of their Remarks filed 12/01/2025 argue that the written opinion of the International Searching Authority found unity of invention and since this is national stage application submitted under USC section 371, it should be analyzed under this standard. The applicants also argue at page 9 of their Remarks filed 12/01/2025 that the seven Groups listed in the Restriction requirement mailed on 10/02/2025 are linked and thus, there is no additional search burden during examination because any art applied for elected Group I’s claims would also be relevant to the unelected Group II-VII claims.
However, these arguments are not well taken for the following reasons. Specifically, the written opinion of the International Searching Authority is a non-binding first opinion that provides a preliminary assessment of the claims. When making the restriction requirement, it was also analyzed under 35 USC section 371 and concluded there was lack of unity between Groups I-VII for the reasons set forth in the Office action mailed 10/02/2025. Moreover, there is additional search burden because the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries). For instance, the invention of elected Group I is classified in C09C 3/04 whereas the other inventions of non-elected Groups are classified in different search areas like C09D 7/61 and C09D 7/65. Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 6-15 and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 12/01/2025.
Claim Objections
4. Claim 1 is objected to because of the following informalities:
As to Claim 1: The applicants are advised to delete the comma (,) after the claimed phrase “at least one defoamer”.
The applicants are advised to replace the claimed phrase “dispersing titanium dioxide” with the new phrase “dispersing titanium dioxide particles” to provide basis for the “titanium dioxide particles” recited later in the same claim.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
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.
5. Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2005/0282928)1 in view of English Translation of WO 2020/091003 (hereinafter referred to as “WO ‘003”), Tsuzuki et al. (US 2003/0209695) and Grosse-Brinkhaus et al. (US 2004/0094425).
The claims are directed to a method for producing an aqueous titanium dioxide slurry comprising (a) providing an aqueous medium containing particular amounts of water, water-soluble and/or water-miscible organic solvent having a boiling point above 100°C, a defoamer, and a dispersing agent, (b) dispersing titanium dioxide into the aqueous dispersion medium provided in step (a) to obtain a titanium dioxide slurry, and optionally, (c) adjusting the titanium dioxide content of the titanium dioxide slurry obtained in step (b) by adding a binder-free aqueous medium and optionally a pH adjusting agent.
As highlighted above, by virtue of using the term “optionally”, the claimed step (c) is not required by applicants’ method for producing an aqueous titanium dioxide slurry.
Regarding claims 1-3 and 5, Lin al. disclose a method for producing an aqueous titanium dioxide slurry (Paragraph [0001], [0013], and [0152]-[0153]) used for inkjet printing (see abstract), comprising the steps of (a) providing a liquid carrier which is an aqueous carrier (corresponding to the claimed aqueous dispersion medium) comprising >50 weight % of water (Paragraphs [0014] and [0140]-[0141]), 5-30 weight % of a water-miscible co-solvent, e.g., glycol ether (Paragraphs [0141], [1043], [0157] and [0162]-[0163]), which according to present claim 2 and paragraph [0053] of applicants’ published application, i.e., US PG PUB 2023/0374320, correspond to the claimed water-miscible organic solvent having a boiling point above 100°C, and a dispersant (dispersing agent) (Paragraphs [0166] and ) and (b) dispersing titanium dioxide into the aqueous carrier (aqueous dispersion medium) provided in step (a) to obtain a titanium dioxide slurry containing 15-80 weight percent of titanium dioxide, based on the total slurry weight (which overlaps with the claimed at least 65 wt% up to 85 wt% of titanium dioxide), by mixing in a mixing vessel (Paragraphs [0014], [0056] and [0152]-[0153]). The amount of water-miscible co-solvent taught by Lin et al. (5-30 weight %) overlaps with the claimed 10-28 wt% of at least on water-miscible organic solvent. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
While Lin et al. broadly disclose the addition of other ingredients, including additives such as dispersants, in their aqueous carrier (aqueous dispersion medium) (Paragraphs [0145]-[0148] and [0166]), they do not specify them as including particular amounts of a defoamer comprising a mineral oil and hydrophobic solid silica particles and a dispersing agent selected from polymers containing polyalkylene groups wherein the polymers are anionic poly(meth)acrylates, as required by claims 1 and 3.
Nevertheless, WO ‘003 teaches the use of a defoaming agent (defoamer) comprising at least one hydrophobic liquid selected from mineral oil and hydrophobic silica particles for the purposes imparting excellent defoaming performance when applied to aqueous liquids (Paragraphs [0001]-[0004], [0064] [0089] and [0095]). In other words, the amount of defoaming agent (defoamer) used is a known results-effective variable, i.e., affecting the defoaming properties of the final product. See MPEP section 2144.05, IIB.
Moreover, Tsuzuki et al. disclose employing a dispersant composition used in the presence of an aqueous solvent and contains polymers containing polyalkylene oxide groups, wherein the polymers are anionic poly(meth)acrylates, for the purposes of improving dispersing property and dispersing stability in water (Paragraphs [0002], [0010] and [0069], and see also abstract). In other words, the amount of dispersant composition (dispersing agent) used is a known results-effective variable, i.e., affecting the dispersing properties of the final product. See MPEP section 2144.05, IIB.
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add optimum and workable amounts of the defoaming agent (defoamer) and dispersant composition (dispersing agent) comprising polymers containing polyalkylene oxide groups, wherein the polymers are anionic poly(meth)acrylates, as suggested by WO ‘003 and Tsuzuki et al., to the aqueous dispersion medium used in the method of Lin et al., with a reasonable expectation of imparting desired defoaming and dispersing properties in water.
Additionally, Lin et al. do not specifically mention dispersing titanium dioxide by use of a non-milling mixing device such as dissolver and at least until the Hegman fineness of the titanium dioxide particles is below 15 µm as required by claims 1 and 5. Nevertheless, Grosse-Brinkhaus et al. disclose the use of a high-speed dissolver stirring mechanism (corresponding to the claimed non-milling mixing device) to disperse titanium dioxide particles in water to obtain titanium dioxide particles having a Hegman fineness of, for example, 12 µm (encompassed by the claimed Hegman fineness of below 15 µm) and to impart improved surface appearances (Paragraphs [0010] and [0151]). Thus, it would have been obvious to one of ordinary skill in the art to use the high-speed dissolver (non-milling device) to obtain titanium dioxide particles having the claimed Hegman fineness as suggested by Grosse-Brinkhaus et al. in the method of Lin et al., with a reasonable expectation of successfully obtaining improved surface appearances.
6. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2005/0282928) in view of English Translation of WO 2020/091003 (hereinafter referred to as “WO ‘003”), Tsuzuki et al. (US 2003/0209695) and Grosse-Brinkhaus et al. (US 2004/0094425)
as applied to claims 1-3 and 5 above, and further in view of Bremser et al. (US 2005/0159523).
The disclosures with respect to Lin et al., WO ‘003, Tsuzuki et al., and Grosse-Brinkhaus et al. in paragraph 5 are incorporated here by reference. However, they do not specify their dissolver as including the claimed inline-dissolvers.
Nevertheless, Bremser et al. disclose employing any known mixing equipment such as the claimed inline dissolvers for the purposes of dispersing titanium dioxides in aqueous dispersions suitable for printing inks (Paragraphs [0001], [0184] and [0233], and see also claim 18 of Bremser et al.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to utilize any known mixing equipment including the claimed inline dissolvers taught by Bremser et al. as the dissolver in the method suggested by Lin et al., WO ‘003, Tsuzuki et al. and Grosse-Brinkhaus et al., with a reasonable expectation of successfully using the same in aqueous dispersions suitable for printing inks.
Allowable Subject Matter
7. Claim 4 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.
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 04/05/2023.