DETAILED ACTION
Response to Amendments
In response to the amendment received on 06/09/2026:
• Claims 1-10 are currently pending. Claims 6-9 are withdrawn for being directed to a non-elected invention(s).
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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (JP-H07179800-A), with reference to the previously included machine translation (hereinafter referred to as “Otsuka”), in view of Hashimoto et al. (JP-S62295976-A), with reference to the included machine translation (hereinafter referred to as “Hashimoto”), with evidence from Konda (US-20170114234-A1) (hereinafter referred to as “Konda”) as to the rejection of claims 1-5 only.
Regarding claim 1, Otsuka teaches an ink composition for printing on metal, comprising: a coloring pigment, resins, a solvent, and an alkanolamine compound, wherein at least some of the resins have an acid value of 25 mg KOH/g or more (see Otsuka at pg. 2, para. 11, teaching a printing ink containing a colorant, a binder resin, a high boiling point solvent, and an amine compound; also see Otsuka at pg. 5, para. 2, teaching the colorant may be a pigment; also see Otsuka at pg. 3, last paragraph, teaching the amine compound may be N,N,N,N-tetrapropanol ethylenediamine, which is an alkanolamine; also see Otsuka at pg. 5, para. 7, teaching the ink may be a metal printing ink; also see Otsuka at pg. 4, last paragraph and pg. 5, para. 1, teaching the binder resin may have an acid value of 100 or less; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
While Otsuka teaches the ink composition outlined above, Otsuka fails to explicitly teach the solvent as comprising a polyoxyalkylene glycol ether represented by the claimed formula (1).
However, Hashimoto teaches a printing ink for printing on metals, such as metal cans (see Hashimoto at pg. 1, para. 2-3 and Title). Hashimoto further teaches their ink to contain a solvent represented by a specific formula, and further teaches dipropylene glycol monobutyl ether as a suitable solvent (see Hashimoto at pg. 2, para. 1-3). Moreover, Hashimoto teaches that by including the solvent (e.g., dipropylene glycol monobutyl ether), the ink for printing on metal has sufficient suitably (i.e., compatibility) with aqueous overprints and does not cause problems in printability (see Hashimoto at pg. 1, para. 5-6). Additionally, Hashimoto teaches their printing may be performed using dry offset printing (see Hashimoto at pg. 2, para. 12).
Otsuka teaches their printing ink may contain a high boiling point organic solvent (i.e., a boiling point ≥ 200 °C), and further teaches glycol ethers as suitable solvents (see Otsuka at Abstract, and pg. 5, para. 7-8). Moreover, Otsuka teaches their ink may be printed on a metal can using dry offset printing (see Otsuka at pg. 6, last two paragraphs).
Dipropylene glycol monobutyl ether has a boiling point of 230 °C, as evidenced by Konda at para. 0046, and thus, accordingly would readily be recognized by one of ordinary skill as a “high boiling point” organic solvent in the context of Otsuka.
In this case, the compositions of Otsuka and Hashimoto are very similar; accordingly, one of ordinary skill in the art would have a reasonable expectation of success in using the dipropylene glycol monobutyl ether solvent of Hashimoto as the glycol ether in Otsuka.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the dipropylene glycol monobutyl ether of Hashimoto as the glycol ether solvent in the ink of Otsuka. One of ordinary skill in the art would have been motivated to do so in order to improve the suitably (i.e., compatibility) of the ink with aqueous overprints without causing problems in printability (see Hashimoto at pg. 1, para. 5-6). Moreover, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Dipropylene glycol monobutyl ether satisfies the claimed formula (1), see Applicant’s specification at para. 0036.
Regarding claims 2-3, N,N,N,N-tetrapropanol ethylenediamine has four hydroxyl groups per molecule (“tetrapropanol” indicates four hydroxyl groups).
Regarding claims 4-5, see Otsuka at pg. 4, last paragraph and pg. 5, para. 1, teaching the binder resin may include a rosin maleic acid resin, i.e., a rosin-modified resin with a maleic acid moiety.
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered. The Examiner agrees that the claim amendments overcome the previous grounds of rejection (see Applicant’s Remarks at pg. 6). However, a new grounds of rejection is presented over Otsuka in view of Hashimoto, see claim 1 rejection above.
To the extent that Applicant’s arguments apply to the current grounds of rejection, they are addressed below:
Applicants argue their claimed solvent as contributing to controlling the viscosity and flowability of the ink composition, and thus is not an arbitrary component but forms an overall configuration for achieving desired ink characteristics (see Applicant’s Remarks at pg. 5).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). See MPEP § 2145. A mere conclusion that Applicant’s solvent controls the viscosity and flowability of the ink is not enough to show nonobviousness. See MPEP § 716.02.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a potential amendment to overcome the current grounds of rejection. It is noted that this amendment is suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendment won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if such amendment is added (i.e., allowability is NOT guaranteed following the incorporation of such amendment). Lastly, Applicants may use all or none of such suggestion – it is merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendment further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion 1 (support found at para. 0043 of Applicant’s specification):
An ink composition for printing on metal, comprising:
a coloring pigment, resins, a solvent, and an alkanolamine compound…
…
…an integer of 2 to 6,
wherein a content of the alkanolamine compound in the ink composition ranges from 12 mass% to 20 mass%.
Examiner’s Note: the above amendment would appear (on a cursory glance) to overcome Otsuka, given Otsuka necessitates a content for their alkanolamine compound of 0.1 to 10% by weight (see Otsuka at Abstract and pg. 4, para. 11).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
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