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 claims filed on 04/21/2023 and Response After Non-Final filed on 07/02/2026.
The rejections based on Sato (JP2008150535 A) dated 04/20/2026 are WITHDRAWN.
The rejections based on Nagano (WO2019013173 A1) dated 04/20/2026 are Maintained. Thus, the following action is properly made final.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nagano et al.
(WO2019013 l 73 Al citing US2020123402 Al as English translation).
The Non-Final Office Action dated 04/20/2026 at para. 12 is MAINTAINED.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nagano, as applied to
Claim 1 above, and in further view of Yoshida et al. (WO2019180847Al).
The Non-Final Office Action dated 04/20/2026 at para. 13 is MAINTAINED.
Response to Arguments
Arguments on Sato (JP2008150535 A).
The Examiner agrees with the argument that Sato teaches ammonia is added before the dispersion is heated to 60 °C under reduced pressure. Sato has no explicit disclosure of the amount of ammonia in the inkjet ink. Therefore, rejections based on Sato (JP2008150535 A) dated 04/20/2026 are withdrawn.
Arguments on Nagano et al. (WO2019013 l 73 Al).
Applicant's arguments on Nagano have been fully considered but they are not persuasive.
Applicant’s argument: Nagano teaches that ammonia is added before crosslinking. See [0080]. Ammonia would be lost from solution during the heating step of crosslinking. Therefore, the amount of ammonia used in Nagano does not correspond to the final concentration of ammonium ions.
Examiner’s answer: Para. [0080] of Nagano states “a neutralizing agent may be used to neutralize
anionic groups in the polymer before being crosslinked.” Nagano does not express that a neutralizing agent must be used to neutralize anionic groups in the polymer before being crosslinked.
Nonetheless, the mol% amounts of neutralizing agents of the pigment dispersion are applicable to the mol% amounts of neutralizing agents of the ink composition because Nagano discloses that suitable pH range for both the dispersant polymer and the ink composition is the same, 7 to 11 ([0080] and [0141]).
Moreover, Nagano discloses that pH value of the aqueous ink is related to ejection stability and storage stability ([0141]), therefore, the pH value, and consequently, the contents of NaOH/KOH and ammonia for achieving the pH value, would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amounts of NaOH/KOH and ammonia cannot be considered critical. Accordingly, one of the ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the amounts of NaOH/KOH and ammonia in the ink composition to obtain an ink composition with desired ejection stability and storage stability.
Applicant’s argument: Nagano only generally teaches the use of some combination of an alkali
metal and ammonia but does not provide any guidance as to the relative amounts. One ordinary skilled artisan would not arrive with the claimed amounts without undue experimentation.
Examiner’s answer: Although Nagano exemplifies each ink composition containing one neutralizing agent, Nagano expressly discloses that the neutralizing agent, more preferred, is a combination of sodium hydroxide and ammonia ([0082]). Additionally, Nagano teaches both alkali metal ions and ammonium ions are neutralizing agents. It is well settled that it is primarily obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose (see MPEP 2144.06(I)). When combining two compounds for the same purpose, one ordinary skilled artisan would be motivated by common sense to start with (half mol% amount of the alkali metal ions) and (the total amount mol% of the neutralizing agents – (half mol% amount of the alkali metal ions)), OR, (half mol% amount of the ammonium ions) and (the total amount mol% of the neutralizing agents - (half mol% amount of the ammonium ions). When one ordinary skilled artisan tests (half mol% amount of the alkali metal ions) and (the total amount mol% of the neutralizing agents - half mol% amount of the alkali metal ions), the mol% of NaOH/KOH is in the range of 25 to 37 ((50-73)/2) mol% and ammonia from 64 to 160 mol% (100-37; 185-25), as discussed at paragraph 12 of the Office Action dated 04/20/2026.
The Examiner does not agree that arriving at the claimed mol% amounts involve undue experimentation. Nagano discloses the general conditions, such as pH range, types of neutralizing agents and the mol% ranges of the individual neutralizing agents. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Applicant’s argument: the claimed range of 100 to 185 mol¾ is associated with unexpected results and is critical to achieving them.
Examiner’s answer: The Examiner agrees that data supports the criticality of the claimed range of 100 to 185 mol% of the total content of Na+ and NH4+ in terms of the totality of the storage stability, ejection stability and water resistance. Applicant tested the total content of Na+ and NH4+ at 97 mol% (comparative Example 6), 104 mol%, 120 mol%, 145 mol%, 150 mol%, 180 mol%, and 190 mol% (comparative Example 5). 97 mol% and 190 mol% are outside of claimed range and the inks of comparative Example 5 and comparative Example 6 resulted in inferior totality of storage stability, ejection stability and water resistance. Comparative Example 5 has an inferior storage stability of 112% and a water resistance of 50%, Comparative Example 6 has an ejection stability of 75%. In contrast, inks having the total content of Na+ and NH4+inside the claimed range result in good storage stability (close to 100), ejection stability (not less than 90%), and water resistance (greater than 50%).
However, evidence of unexpected results has not been sufficiently established because Applicant tested only Na+ while claimed alkali metal ions. The showing of unexpected results must be commensurate in scope with the claims. See MPEP 716.02(d).
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.
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/HUIHONG QIAO/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/
Supervisory Patent Examiner, Art Unit 1763
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