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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election of the species corresponding to “an ink” in the reply filed on 10 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 February 2026.
Information Disclosure Statement
The Information Disclosure Statements filed on 11 April 2025 and 28 July 2023 have been received and considered by the Examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki et al. (US 2014/0296413 A1).
Regarding claim 1, Miyazaki discloses a carbon black comprising iron element in an amount of 1330 ppm ([0122]), which is equivalent to 0.133 parts by mass iron per 100 parts by mass of the carbon black.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Honma et al. (US 2016/0190594 A1).
Regarding claim 1, Honma discloses a carbon black composition (Lionite CB) comprising iron element in an amount of 1000 ppm to 5000 ppm by mass ([0057]), which is equivalent to 0.1 to 0.5 parts by mass iron per 100 parts by mass of the carbon black.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (J. Phys. Chem. B 1999, 103, 2042-2049).
Regarding claim 1, Wang discloses a carbon black comprising iron element in an 10,040 ppm (Table 4), which is equivalent to 1.00 parts by mass iron per 100 parts by mass of the carbon black.
Regarding claim 2, Wang discloses the carbon black of claim 1, and further discloses that said carbon black has a ratio of Fe/C of 0.002, where Fe is a concentration in atomic % of the iron element on a surface of particles of the carbon black, and C is a concentration in atomic % of elemental carbon on the surface of the particles of the carbon black, as determined by X-ray photoelectron spectroscopy (Figure 10, copied below).
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Figure 10 of Wang, with red lines added as visual aids.
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.
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 3 are rejected under 35 U.S.C. 103 as being unpatentable over Asakawa and Ogino (J. Colloidal Interface Science, 1984, 102(2), 348-355) in view of Abussaud et al. (J. Molec. Liq. 2016, 213, 351-359).
Regarding claims 1 and 3, Asakawa teaches that carbon black adsorbs phenol, a weak acid, in amounts up to ~100 mg/g (EC carbon black; Fig. 1), and that such unmodified carbon black (EC carbon) has a surface area of 886 m2/g (Table I). Given the molar mass of phenol (94 g/mol), this corresponds to an acid adsorption amount of 1.2 μmol/m2, which lies in the range of acid adsorption amount recited in claim 3 .
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Asakawa does not teach the carbon black comprising iron element in an amount of 0.01 to 2.00 parts by mass per 100 parts by mass of the carbon black, as required by claims 1 and 3.
However, Abussaud teaches that adding iron element (in the form of Fe2O3) to the related carbon based adsorbent of activated carbon increases the adsorption amount of the material toward phenol (iron oxide…impregnation has improved its phenol removal efficiency from aqueous solution; Section 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iron to the carbon black of Asakawa in order in to increase the affinity for phenol, as taught by Abussaud. It would have additionally been obvious to optimize the amount of iron by routine experimentation, including into the claimed range of 0.01 to 2.00 parts per 100 parts carbon, in order to achieve the desired level of phenol adsorption.
It is noted that the courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed ranges of iron content and acid adsorption amount merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Honma et al. (US 2016/0190594 A1).
Regarding claim 4, Honma discloses a carbon black composition (Lionite CB) comprising iron element in an amount of 1000 ppm to 5000 ppm by mass ([0057]), which is equivalent to 0.1 to 0.5 parts by mass iron per 100 parts by mass of the carbon black. Honma further teaches that carbon black is used as a conductivity imparting agent in printing ink.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the carbon black taught by Honma into printing ink, thereby arriving at the invention of claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735