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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/10/2026 has been entered.
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 non-obviousness.
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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/071055 in view of SU et al. (U.S. Publication No. 2017/0335048, hereinafter SU).
To further advance the prosecution of this invention, SATO et al. (U.S. Publication No. 2022/0041877, hereinafter SATO) which is an English equivalent of WO 2020/071055 will be used in the rejection.
Regarding claims 1 and 2, SATO teaches an aqueous inkjet ink composition that contains a pigment, an alkali-soluble resin, an aqueous medium, and surfactant (Abstract). The pigment may be any of various types of organic pigments and inorganic pigments. The inorganic pigments includes titanium oxide [0024-0025 and 0086]. The alkali-soluble resin is a copolymer constituted by monomers having carboxyl groups including acrylic acid, methacrylic acid, styrene and etc. [0032-0034]. The amount of titanium oxide is 1 to 10 percent by mass [0029] (which is within the claimed range of 5 to 20% by mass).
The alkali-soluble resin has an acid value is 100 to 300 mg KOH/g [0035] (which is within the claimed range of 100 mgKOH/g or more and 250 mgKOH/g or less), a glass transition temperature of 40 to 100oC [0036] (which is within the claimed range of 50oC or more and 100oC or less), and a weight-average molecular weight of the alkali-soluble resin is 10,000 to 50,000 [0037]. The amount of alkali-soluble resin is in the amount of 10 to 60 parts by mass [0039] (which is within the claimed range of 10 to 30 parts by mass).
However, SATO does not explicitly teach a white composition.
Given SATO teaches pigments including titanium oxide [0024-0025 and 0086]] which is a well-known white pigment, it would have been obvious to a person of ordinary skill in the art to reasonably expect the ink composition to be a white ink composition when titanium oxide is used as the pigment in the composition.
However, SATO does not teach said titanium oxide pigment being treated with silica, alumina, and organic compounds.
In the same field of endeavor of coating formulations (paint and ink formulation) (Abstract; [0002]), SU teaches a polymer modified titanium dioxide pigment wherein the polymer is selected from the group of polyvinylpyrrolidone, polyethylenimine, polyoxazolines and polyamides.
Note: the polymers listed are organic compounds.
The titanium dioxide particles are coated by consisting of silica, alumina, and mixtures thereof [0048-0049] in order to modify the properties and characteristics of the pigment. Therefore, the polymer modified coated titanium dioxide pigment of SU satisfies the titanium pigment oxide pigment of the present invention.
Given SATO teaches an aqueous inkjet ink composition that contains a pigment (i.e., titanium oxide) [0024-0025 and 0086], it would have been obvious to a person of ordinary skill in the art to have provided the polymer modified coated titanium dioxide pigment of SU with the ink composition of SATO for the benefit of modifying the properties and characteristics of the pigment as taught by SU. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/071055 in view of WO 2019/130704 as evidenced by Technical Data Sheet of TIPAQUE® CR-90-2.
To further advance the prosecution of this invention, SATO et al. (U.S. Publication No. 2022/0041877, hereinafter SATO) which is an English equivalent of WO 2020/071055 will be used in the rejection.
To further advance the prosecution of this invention, SUGIHARA et al. (U.S. Publication No. 2021/0130639, hereinafter SUGIHARA) which is an English equivalent of WO 2019/130704 will be used in the rejection.
Regarding claims 1 and 2, SATO teaches an aqueous inkjet ink composition that contains a pigment, an alkali-soluble resin, an aqueous medium, and surfactant (Abstract). The pigment may be any of various types of organic pigments and inorganic pigments. The inorganic pigments includes titanium oxide [0024-0025 and 0086]. The alkali-soluble resin is a copolymer constituted by monomers having carboxyl groups including acrylic acid, methacrylic acid, styrene and etc. [0032-0034]. The amount of titanium oxide is 1 to 10 percent by mass [0029] (which is within the claimed range of 5 to 20% by mass).
The alkali-soluble resin has an acid value is 100 to 300 mg KOH/g [0035] (which is within the claimed range of 100 mgKOH/g or more and 250 mgKOH/g or less), a glass transition temperature of 40 to 100oC [0036] (which is within the claimed range of 50oC or more and 100oC or less), and a weight-average molecular weight of the alkali-soluble resin is 10,000 to 50,000 [0037]. The amount of alkali-soluble resin is in the amount of 10 to 60 parts by mass [0039] (which is within the claimed range of 10 to 30 parts by mass).
However, SATO does not explicitly teach a white composition.
Given SATO teaches pigments including titanium oxide [0024-0025 and 0086]] which is a well-known white pigment, it would have been obvious to a person of ordinary skill in the art to reasonably expect the ink composition to be a white ink composition when titanium oxide is used as the pigment in the composition.
However, SATO does not teach said titanium oxide pigment being treated with silica, alumina, and organic compounds.
In the same field of endeavor of ink composition, SUGIHARA teaches the composition contains a pigment (Abstract), more specifically a white pigment including titanium oxide [0137 and 0157]. The titanium oxide is either in anatase form or rutile form; Rutile is preferred in terms of increasing the opacity of the printed items [0165]. The titanium oxide is subjected to a surface treatment with an inorganic compound and/or organic compound. Examples of inorganic compounds include silicon (Si) and aluminum [0166]. Note: silicon (Si) is the same as silica and aluminum is the same as alumina. Examples of organic compound include polyhydric alcohols and alkanolamines and derivatives thereof, higher fatty acids and metal salts thereof, polysiloxane compounds, and organometallic compound.
In the production Example, SUGIHARA teaches the use of TIPAQUE CR-90-2 (titanium oxide) manufactured by Ishihara Sangyo Kaisha, Ltd. [0294]. As evidenced by the technical data sheet, TIPAQUE®CR-90-2 is a medium particle size rutile titanium dioxide pigment produced by the chloride process and post-treated with dense silica, alumina, and an organic compound. TIPAQUE®CR-90-2 has superior durability in gloss retention, chalk resistance, and shows ease of dispersion and is suitable for paints/ink.
Given SATO teaches an aqueous inkjet ink composition that contains a pigment (i.e., titanium oxide) [0024-0025 and 0086], it would have been obvious to a person of ordinary skill in the art to have provided the titanium oxide of SUGIHARA with the composition of SATO for the benefit of obtaining superior durability in gloss retention, chalk resistance, and shows ease of dispersion in paint/ink compositions as taught in the Technical Data Sheet. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Response to Arguments
Applicant’s arguments, filed 09/10/2026, with respect to the rejection(s) of claims 1 and 2 under U.S.C 103(a) have been fully considered and are persuasive. Therefore, the rejection mailed 07/01/2026 has been modified. As discussed above, a new ground(s) of rejection is made in view of WO 2020/071055 in view of SU et al. (U.S. Publication No. 2017/0335048, hereinafter SU) and WO 2020/071055 in view of WO 2019/130704 as evidenced by Technical Data Sheet of TIPAQUE® CR-90-2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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