DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/17/2026 has been entered.
Claims 1, 9, 11 and 13 have been amended. Claim 14 has been cancelled. Claims 15-18 have been added.
Claims 1, 3-9, 11-13, and 15-18 are pending.
Claims 1, 3-9, 11-13 and 15-18 are rejected.
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9, 11-13 and 15-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 9 recite “a content of the composite colored particles smaller than 0.1 µm is less than 3%.” The basis for this claim limitation is unclear, e.g. less than 3% by weight, less than 3% by volume, less than 3% by frequency of the particles, etc. Amending this term to read, “a content of the composite colored particles smaller than 0.1 µm is less than 3%, as a frequency of the particles” can overcome this rejection. This language is consistent with paragraph [0054] of the specification.
Claim 4 is indefinite with regard to the term “at least one type”. The addition of the word "type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase "ZSM-5-type aluminosilicate zeolites" was held to be indefinite because it was unclear what "type" was intended to convey. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). See MPEP § 2173.05(b).
Claim 12 is indefinite with regard to the term “The water-based ink composition according to claim 3,” because claim 3 claims “composite colored particles”. Amending this term to read, “The composite colored particles according to claim 3,” can overcome this rejection.
Claim 13 recites the limitation "the composite forming process" in line 2. There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear if this term is referring to “the method of producing composite colored particles” or the “breaking-up process” of claim 9. The term has been interpreted as referring to “the method of producing composite colored particles” for this Office Action. Clarification is required.
Claims 16 and 17 recite “wherein the content of the composite colored particles smaller than 0.1 µm is less than 1%.” The basis for this claim limitation is unclear, e.g. less than 1% by weight, less than 1% by volume, less than 1% by frequency of the particles, etc. Amending this term to read, “a content of the composite colored particles smaller than 0.1 µm is less than 1%, as a frequency of the particles” can overcome this rejection. This language is consistent with paragraph [0054] of the specification.
Regarding dependent claims 3, 5-8, 11, 15 and 18 these claims do not remedy the deficiencies of parent claims 1 and 9 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 103
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.
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, 3-7, 9, 11, 13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi et al, US 2011/0306708 A1 (Hiraishi) in view of Maruyama et al, JP 2001-220528A (Maruyama).
The Examiner has provided a machine translation of Maruyama. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1, 6, 9 and 13, Hiraishi teaches a process for preparing an aqueous dispersion comprising mixing a water dispersion of anionic colorant particles, wherein the colorant is preferably a pigment (i.e., mixing a pigment dispersion comprising pigment particles carrying a negative electric charge on a particle surface and a water-based medium of claim 1 and 9), and a water dispersion of cationic polymer particles (i.e., mixing a resin dispersion of resin particles carrying a positive electric charge on a particle surface and a water-based medium of claim 1 and 9) to thereby produce a water dispersion of composite particles formed of the cationic polymer particles and the anionic colorant particles adhered thereto (i.e., composite colored particles, each comprising a resin particle carrying a positive electric charge on a particle surface and a pigment particle carrying a negative electric charge on a particle surface of claim 1) (Hiraishi; Abstract, [0017-0018] and [0048]).
Hiraishi teaches that when the anionic colorant particle and cationic polymer particle dispersions are mixed, these two types of particles are electrically bonded to thereby produce the composite particles (i.e., forming a composite through electrostatic interaction of claim 1) (Hiraishi; [0207-0208] and [0212]).
Although Hiraishi does not explicitly state mixing a resin “emulsion” as claimed, Hiraishi’s cationic polymer particle dispersions contain the particles in water (see for example Hiraishi; Synthesis Example I-1 [0287] and Synthesis Example II-1 [0306]). Applicant’s specification states that the medium of the water-based emulsion and dispersion is preferably water, a water-soluble organic solvent, or a mixture of these [0051]. Further, the terms “dispersion” and “emulsion” appear to be used interchangeably at paragraphs [0054-0055], and as well as in Production Examples 1-3 wherein anionic resin-encapsulated dye particle “emulsions” are obtained (rather than “dispersions” as claimed) [0075], [0078] and [0080-0081]. For these reasons, the office holds the position that Hiraishi’s disclosed cationic polymer particle “dispersions” are equivalent to the “emulsions” as claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In Production Example II-1, Hiraishi discloses a method wherein 10g of a water dispersion of pigment-containing anionic polymer particles of Preparation Example I-1 is stirred (i.e., a dispersion of pigment particles carrying a negative electric charge on a particle surface) (Hiraishi; [0312]). The water dispersion of pigment-containing anionic polymer particles of Preparation Example I-1 has a solids content of 30.0% (Hiraishi ; [0294]). Therefore, the amount of pigment particles used in Production Example II-1 = 10g * 0.30 = 3 g pigment particles.
The water dispersion of cationic polymer particles of Synthesis Example II-1 was mixed with ion exchange water to a total of 20g so as to adjust the solids content to 6% (i.e., a dispersion of resin particles carrying a positive electric charge on a particle surface) (Hiraishi; [0312]). Therefore, the amount of resin particles used in Production Example II-1 = 20g * 0.06 = 1.2g resin particles.
The mass ratio of pigment particles/resin particles of Example II-1 = 3/1.2 = 2.5/1.
A mass ratio of pigment particles/resin particles of 2.5/1 falls within the claimed range of 0.1/1 to 50/1 (claim 13).
The latter dispersion was added dropwise to the former dispersion under stirring and subject to a dispersion treatment to form composite particles (II-1) having an average particle size of 138nm (emphasis added) (i.e., the claimed composite colored particles of claim 1 and method of producing of claim 9) (Hiraishi; Production Example II-1, [0312]).
The stirring step of Hiraishi reads on the claimed step of “stirring with a stirrer,” i.e., stirring with a device that stirs, of claim 1 and 9.
Further, Hiraishi teaches that after the two dispersions are mixed, dispersion treatment is further carried out to produce particles having a uniform particle size. Any dispersers listed in step (1) can be used for the dispersion treatment, as well as homogenizers (Hiraishi; [0212-0213]). Dispersers of step (1) include, e.g., a disper, a homo mixer, and an Ultra Disper (i.e., ultra mixer) (Hiraishi; [0114-0115]).
Hiraishi further discloses the Production of Water Dispersion of Composite Particles (II-2) having an average particle size of 147nm, and Composite Particles (II-3) having an average particle size of 138 nm (Hiraishi; [0314] and [0316]).
Based on the final average composite particle sizes, those skilled in the art would recognize that the exemplified stirring and dispersion processes of Hiraishi would result in the breaking-up/crushing of aggregates having a particle size over 10µm by stirring with a stirrer as claimed in claims 1 and 9.
The composite particles produced preferably have an average particle size of 40 to 1000nm (i.e., 0.04 to 1 µm), from the viewpoint of optical density of a printed image (Hiraishi; [0223]).
The water dispersions comprising the composite particles are used in water-based inks for ink-jet printing (claim 6) (Hiraishi; [0017-0018]. The water dispersions for inkjet printing realize sufficient optical density and excellent filterability and storage stability.
Hiraishi does not explicitly teach:
wherein at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm, and
wherein, in the water-based ink composition, a content of the composite colored particles having a particle size of less than 0.1 µm is less than 3%, as a frequency of the composite colored particles.
With respect to the difference, Maruyama teaches an aqueous dispersion ink comprising a polymeric dispersant with a specific acid value and an insoluble dye having a set particle size range. The resulting ink retains excellent ejection and storage stability, and high recording and good density are achieved with no bleeding (Maruyama; [0005]).
The water-insoluble “dye” as defined by Maruyama includes organic pigments and inorganic pigments (Maruyama; [0011-0013]). The water-insoluble “dyes” include those obtained by physically bonding a dispersant thereto, e.g., dispersant adsorbed thereon in advance (i.e., composite colored particles) (Maruyama; [0020]).
The greatest feature of the recording liquid is that the average diameter of the dispersed water-insoluble dye is 0.1 to 0.3µm. By adjusting the average particle diameter to within the above range, the dispersion and ejection stability of the recording liquid are enhanced, and performance results in terms of recording density are obtained (Maruyama; [0035]). Further, the maximum particle size of the water-insoluble dye in the recording liquid is 5µm or less from the viewpoint of dispersion and ejection stability (Maruyama; [0036]).
The recording liquid can be used not only for inkjet and writing instruments, but also for other purposes (Maruyama; [0038]).
Maruyama is analogous art as it teaches aqueous inks comprising composite pigment-containing particles with average particle sizes overlapping the claimed ranges.
Based on the teaching of Hiraishi’s preferred composite average particle size of 0.08-0.3µm, and in light of the motivation provided by Maruyama to use dye particles having an average diameter of 0.1-0.3µm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the average particle diameter of the composite colored particles in the aqueous dispersions of Hiraishi in view of Maruyama to 0.1 to 0.3µm in order to obtain aqueous inkjet recording liquids with enhanced dispersion and ejection stability, and good performance results in terms of recording and optical density.
Further, it would have been obvious to one of ordinary skill in the art to limit the amount of colored particles below the average particle size of 0.1 µm in the inks of Hiraishi in view of Maruyama in order to obtain the improved results disclosed by Maruyama, i.e., enhanced dispersion and ejection stability, and good performance results in terms of recording density.
While Hiraishi in view of Maruyama do not explicitly disclose wherein at least 95% of the composite colored particles have a particle size in a range of from 0.2 to 3.0 µm, and wherein a content of the composite colored particles having a particle size of less than 0.1 µm is less than 3% as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the average particle size distributions of the composite colored particles in the inks of Hiraishi in view Maruyama, including over the presently claimed, in order to obtain aqueous inkjet recording liquids with enhanced dispersion and ejection stability, good performance results in terms of recording and optical density, and which have a uniform particle size.
Regarding claim 3, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 1 as discussed above. Hiraishi teaches cationic polymer particles, i.e., polymers modified with a cationic group (Hiraishi; [0137-0195]). The Synthesis Examples I-1, I-2 and II-1 are of resin particles comprising a cationic polymer (Hiraishi; [0287-0289] and [0306]).
Regarding claim 4, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 3 as discussed above. Specific examples of the polymer forming the cationic polymer particles include (meth)acrylic polymers and vinyl acetate polymers as claimed (Hiraishi; [0141]). Further, the cationic particles preferably comprise a monomer including (meth)acrylic acid esters having a dialkylamino group and alkyl(meth)acrylates (i.e., acrylic resins) (Hiraishi; [0144-0148] and [0160]).
Given that Hiraishi discloses cationic polymer particles that overlap the presently claimed resin particles carrying a negative charge, including wherein the polymer modified with a cationic group is a vinyl-acetate based resin or an acrylic resin, it therefore would have been obvious to one of ordinary skill in the art to use the vinyl acetate- or acrylic-based cationic resin in the composite colored particles of Hiraishi in view of Maruyama, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 1 as discussed above. Hiraishi teaches forming colorant containing anionic polymer particles, i.e., modifying a colorant with an anionic group (Hiraishi; [0105-0119]). In Preparation Example I-1, Hiraishi discloses modifying a solid magenta pigment with an anionic polymer (Hiraishi; [[0293]).
Regarding claim 7, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 6 as discussed above. The exemplified water-based inks comprise nonionic surfactants (Hiraishi; [0317-0319]).
Regarding claim 11, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 9 as discussed above. Hiraishi teaches that the cationic polymer particles preferably have an average particle size of 10-1000nm, more preferably 50 to 500nm, from the viewpoint of optical density of a printed image provided by the water dispersion or the water-based ink (Hiraishi; [0140]).
Hiraishi further discloses the production of cationic polymer particles having an average particle size of 119nm (Synthesis Example I-1, [0280] and [0287-0288]); and having an average particle size of 195nm (Synthesis Example I-2, [0280] and [0289]). These average particle sizes fall within the claimed range of 0.1 to 3.0 µm (100-3000nm).
Hiraishi teaches that the anionic colorant particles preferably have an average particle size of 30-300nm, preferably 40-200nm, more preferably 50-150nm, most preferably 60-90nm (Hiraishi; [0046]) from the viewpoint of optical density of a printed image provided by the water-based ink.
Hiraishi discloses the production of pigment-containing anionic polymer particles having an average particle size of 74nm (Hiraishi, [0293]); and having an average particle size of 77nm (Hiraishi; [0280] and [0295]).
These exemplified and preferred particle size ranges overlap or fall within the claimed range of 0.05 to 0.3µm (50-300nm).
Hiraishi in view of Maruyama does not explicitly disclose a method for producing composite colored particles wherein at least 95% of the resin particles have a particle size of 0.1 to 3.0µm, or wherein at least 95% of the pigment particles have a particle size of 0.05 to 0.3µm (emphasis added).
While Hiraishi in view of Maruyama does not explicitly disclose wherein at least 95% of the resin particles have a particle size of 0.1 to 3.0m, given Hiraishi teaches that the cationic polymer particles preferably have an average particle size of 10-1000nm and exemplifies particles of the claimed sizes, it would be obvious to one of ordinary skill in the art to modify all the cationic resin particles to within the particle size of 10-1000nm (0.1 to 1.0µm), including over the presently claimed particle size distribution, in order to achieve a desirable optical density of a printed image provided by the water-based ink, and thereby arrive at the claimed invention.
Similarly, while Hiraishi in view of Maruyama does not explicitly disclose wherein at least 95% of the pigment particles have a particle size of 0.05 to 0.3µm, given that Hiraishi teaches pigment particles that overlap with the claimed range, it would be obvious to one of ordinary skill in the art to modify the pigment particles, including over the presently claimed particle size distribution, in order to achieve a desirable optical density of a printed image provided by the water-based ink, and thereby arrive at the claimed invention.
It has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
Regarding claim 15, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 9 as discussed above. Hiraishi teaches that after the two dispersions are mixed, dispersion treatment is further carried out to produce particles having a uniform particle size. Any dispersers listed in step (1) can be used for the dispersion treatment, as well as homogenizers (Hiraishi; [0212-0213]). Dispersers of step (1) include, e.g., a disper, a homo mixer, and an Ultra Disper (i.e., ultra mixer) (Hiraishi; [0114-0115]).
Given that Hiraishi discloses a dispersion step to obtain a uniform particle size that overlaps the presently claimed breaking-up process, including stirring with a homogenizer, disper, homo mixer, or ultra mixer, it therefore would have been obvious to one of ordinary skill in the art to use a homogenizer, disper, homo mixer, or ultra mixer in the methods of Hiraishi in view of Maruyama, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 16 and 17, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claims 1 and 9 respectively, as discussed above. Hiraishi teaches the composite particles produced preferably have an average particle size of 40 to 1000nm (i.e., 0.04 to 1 µm), from the viewpoint of optical density of a printed image (Hiraishi; [0223]).
Maruyama teaches the greatest feature of the recording liquid is that the average diameter of the dispersed water-insoluble dye is 0.1 to 0.3µm. By adjusting the average particle diameter to within the above range, the dispersion and ejection stability of the recording liquid are enhanced, and performance results in terms of recording density are obtained (Maruyama; [0035]). Further, the maximum particle size of the water-insoluble dye in the recording liquid is 5µm or less from the viewpoint of dispersion and ejection stability (Maruyama; [0036]).
Based on the teaching of Hiraishi’s preferred composite average particle size of 0.08-0.3µm, and in light of the motivation provided by Maruyama to use dye particles having an average diameter of 0.1-0.3µm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to limit the amount of colored particles below the average particle size of 0.1 µm in the inks of Hiraishi in view of Maruyama in order to obtain the improved results disclosed by Maruyama, i.e., enhanced dispersion and ejection stability, and good performance results in terms of recording density.
While Hiraishi in view of Maruyama do not explicitly disclose wherein a content of the composite colored particles having a particle size of less than 0.1 µm is less than 1% as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the average particle size distributions of the composite colored particles in the inks of Hiraishi in view Maruyama, including over the presently claimed, in order to obtain aqueous inkjet recording liquids with enhanced dispersion and ejection stability, good performance results in terms of recording and optical density, and which have a uniform particle size.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi in view of Maruyama as applied to claim 3 above, and further in taken in view of evidence by Tozuka et al, US 2014/0291585 A1.
Regarding claim 8, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 6 as discussed above. The aqueous inks are used in ink-jet systems (Hiraishi; [0277]). As is evidenced by Tozuka, a “writing instrument” may be an ink-jet printer (Tozuka; [0421]). Therefore, the inkjet printers of Hiraishi read on the “writing instruments” as claimed.
Examiner notes that the “writing instrument” of claim 8 only requires that it comprises a water-based ink as claimed.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hiraishi in view of Chun as applied to claim 3 above, and further in view of Nakao et al, JP 2019/023266A (Nakao).
The Examiner has provided a machine translation of Nakao with the PTO-892 mailed 12/19/2025. The citation of the prior art in this rejection refers to the machine translation.
Regarding claim 12, Hiraishi in view of Maruyama are relied upon as teaching the limitations of claim 3 as discussed above, wherein the composite particles may be formed from cationic polymer particles (Hiraishi; [0144]). Aqueous dispersions of the composite particle are used in water-based inks for ink-jet printing (Hiraishi; Abstract and [0225]).
Hiraishi in view of Maruyama do not explicitly teach wherein the polymer is a urethane-based resin as claimed.
With respect to the difference, Nakao teaches a pigment particle which is excellent in adhesion to a substrate and stably dispersed with time when used in an ink, and to provide an aqueous dispersion of a composite particle (Nakao; page 2, lines 4-6 and 26-28). The aqueous composite particle dispersions may be used in aqueous inks for inkjet printing (Nakao; page 12, lines 4-6 and page 14, lines 4-8).
The composite particle (c) is obtained by aggregating polyurethane particle (b) on the surface of a pigment particle (a) (Nakao; page 2, lines 8-10). From the viewpoint of stability of the aqueous dispersion of the composite particles (c), it is preferable to use self-dispersion type pigment particles wherein a hydrophilic functional group is introduced onto the surface of the pigment particles. Examples of a hydrophilic group includes a carbonyl group, a carboxyl group, a hydroxyl group, a sulfo group and a phosphoric acid groups (i.e., pigment particles carrying a negative electric charge) (Nakao; page 3, lines 26-37).
The polyurethane resin particles (b) are obtained by dispersing a polyurethane resin (U) in an aqueous medium. The polyurethane resin (U) is obtained, for example, by reacting a polyol (e), an organic polyisocyanate (f), a compound (g) having a hydrophilic group and two active hydrogen atoms, and a chain extender (f) (Nakao; page 5, lines 14-18). Examples of the compound (g) having a hydrophilic group and two active hydrogen atoms include a compound (g1) having an anionic group and an active compound (g2) having a cationic group and an active hydrogen atom (Nakao; page 7, lines 44-46). (G) is used such that the content of the hydrophilic group in (U) is preferably 0.5 to 5.0% by weight, meaning the weight percent of unneutralized cationic or anionic group (Nakao; page 8, lines 26-29). Therefore, the polyurethane resin particles of Nakao include cationic urethane-based resins as claimed.
Nakao is analogous art as it teaches composite particles comprising pigment particles having an anionic charge and a polyurethane particle on the pigment particle surface, wherein the polyurethane particles may be cationic.
In light of the motivation provided by Nakao to use cationic polyurethane resin particles to form composite particles with anionic pigments, wherein the composites are used in aqueous inkjet inks, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the cationic polyurethane particles of Nakao as the cationic polymers in the composite particles of Hiraishi in view of Maruyama in order to obtain composite particles which are excellent in adhesion to a substrate and stably dispersed with time when used in an ink, and thereby arrive at the claimed invention.
Claims 1, 3, 5-6, 9, 13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Whalen-Shaw, U.S. Patent No. 5,344,487 (Whalen-Shaw) in view of Nemeh, U.S. Patent No. 5,152,835 (Nemeh).
Whalen-Shaw was cited in the PTO-892 mailed 05/01/2025.
Regarding claims 1, 9 and 15-17, Whalen-Shaw teaches composite pigment particles for use in paper coatings (Whalen-Shaw; page 1, lines 6-8). The composites comprise core pigment particles having adsorbed on their surface a polymeric anionic or cationic dispersant, providing the particles with a positive or negative charge. The co-pigment particles have adsorbed on their surface a polymeric anionic or cationic dispersant which provides the particles with a charge opposite the charge of the color pigment particles. The core pigment particles and co-pigment particles are electrostatically bound together by means of opposite charges of the polymeric dispersants adsorbed on the surface of the pigment particles (i.e., composite colored particles, each comprising a resin particle carrying a positive electric charge on a particle surface and a pigment particle carrying a negative electric charge on a particle surface, the resin particle and the pigment particle forming a composite through electrostatic interaction of claims 1 and 9) (Whalen-Shaw; col. 3, lines 7-21).
The core pigment particles, prior to formation of the composite particles, should have an average particle size greater than 0.1 micron. Below 0.1 micron the core particles are ineffective in improving opacity (Whalen-Shaw; col. 4, lines 39-43).
Whalen-Shaw does not explicitly teach wherein a content of the composite colored particles smaller than 0.1 um is less than 3% (claims 1 and 9), or less than 1% (claims 16 and 17) as claimed (emphasis added).
In light of the motivation provided by Whalen-Shaw to use a pigment core that is at least 0.1 micron, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ensure that all of the pigment cores, and hence composite particles, used have a particle size of at least 0.1 microns, in order to obtain sufficient opacity, and thereby arrive at the claimed ranges wherein the composite colored particles smaller than 0.1 um is less than 3% or less than 1%.
In making either the core pigment particle dispersion or the co-pigment particle dispersions, an aqueous medium is usually employed (Whalen-Shaw; col. 6, lines 23-26). The dispersions of the core and co-particles are made and mixed with along with shear mixing. This prevents the core particles and co-particles from bonding in the form of large aggregates while keeping the composite particles in tact due to the Van der Waals forces (i.e., a composite forming process of mixing a resin emulsion comprising resin particles each carrying a positive electric charge on a particle surface and a water-based medium, and a pigment dispersion comprising pigment particles each carrying a negative electric charge on a particle surface and a water-based medium, and a breaking up process of crushing aggregates by stirring with a stirrer of claims 1 and 9) (Whalen-Shaw; col. 7, lines 2-29).
In Example 1, cationizing oligomer dispersant is added to titanium dioxide to form a dispersion. Kaolin clay having a particle size of 2 microns is diluted with water. The two mixtures are mixed with a kitchen blender (i.e., a mixer of claim 15). The resulting composite particles have a particle size effective for addition to a paper coating formulation (Whalen-Shaw; col. 9, line 64-col. 10, lines 58).
Whalen-Shaw does not explicitly teach wherein at least 95% of the composite colored particles have a particle size within a range of 0.2 to 3.0 microns as claimed.
With respect to the difference, Nemeh teaches titania-calcined kaolin composite pigments achieved using a cationic polyelectrolyte (Nemeh; Abstract). The methods comprise compositing titania and calcined kaolin pigments in the presence of at least one polyanionic dispersant wherein a cationic polymer is introduced to effect co-flocculation (Nemeh; col. 2, line 63-col. 3, lines 14). The cationic polyelectrolyte reacts with opposite charge sites on the pigment particles as well as the anionic dispersant, leading to coalescence by opposite charge attraction. The charge centers react and bridge with neighboring particles, wherein the bridging strengthens the bond between the particles, thereby providing a highly shear resistant, composite mineral composition (Nemeh; col. 4, lines 54-65).
The invention is of special benefit when ultrafine particle size calcined clay is used, i.e., calcined clay in which about 88% is finer than 3 micrometers and at least 50% is finer than 1 micrometer (Nemeh; col. 3, lines 21-28). Typical TiO2/calcined kaolin pigments of the invention have a particle size wherein 90-95% of the particles are finer than 2 micrometers, and have an average particle size of 0.6-0.8 micrometers (Nemeh; col. 6, lines 28-37).
The pigments are especially useful for coating papers, resulting in coated papers with excellent opacity and printability (Nemeh; col., 6, lines 15-19).
Nemeh is analogous art as is teaches composite colored particles comprising a resin particle carrying a positive electric charge, a pigment particle carrying a negative electric charge on a particle surface, wherein the composite is formed through electrostatic interaction, wherein at least 95% of the composite colored particles have a particle size finer than 2 micrometers.
In light of the motivation provided by Nemeh to adjust the particle size of composite pigments used in paper coating compositions, it would have been obvious to adjust the particle size of the composite pigments of Whalen-Shaw, which all have a particle size greater than 0.1 micron as discussed above, to wherein at least 95% of the particles have a particle size finer than 2 microns, in order to obtain a paper coating composition with excellent opacity and printability. Because both Walen-Shaw and Nemeh teach adjusting the particle size to obtain excellent opacity, those skilled in the art would have had a reasonable expectation of success in using such composite pigment particle sizes.
Composite particles wherein 95% of the particles have a particle of from 0.1 to 2 microns overlaps in scope with the claimed wherein at least 95% of the composite colored particles have a particle size within a range of 0.2 to 3.0 microns as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Whalen-Shaw in view of Nemeh are relied upon as teaching the limitations of claim 1 as discussed above. The cationic dispersant which is adsorbed onto the pigment particle may be, e.g., quaternary ammonium polymers, i.e., resin particles comprising a polymer modified with a cationic group (Whalen-Shaw; col. 7, lines 56col. 7, line 33).
Given that Whalen-Shaw discloses composite pigments that overlap the presently claimed composite colored particles, including composite pigments comprising resin particles comprising a polymer modified with a cationic group, it therefore would have been obvious to one of ordinary skill in the art to use composite pigments comprising resin particles comprising a polymer modified with a cationic group, which is both disclosed by Whalen-Shaw and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Whalen-Shaw in view of Nemeh are relied upon as teaching the limitations of claim 1 as discussed above. The pigment may have, e.g., an anionic polymeric dispersant adsorbed thereon (i.e., the pigment particle comprises a solid pigment modified with an anionic group) (Whalen-Shaw; col. 7, lines 30-55).
Given that Whalen-Shaw discloses composite pigments that overlap the presently claimed composite colored particles, including composite pigments comprising a solid pigment modified with an anionic group, it therefore would have been obvious to one of ordinary skill in the art to use composite pigments comprising a solid pigment modified with an anionic group, which is both disclosed by Whalen-Shaw and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 6, Whalen-Shaw in view of Nemeh are relied upon as teaching the limitations of claim 1 as discussed above. The composite pigment dispersion may be aqueous, and may be used in inks (Whalen-Shaw; col. 1, lines 7-12 and claim 13).
Regarding claim 13, Whalen-Shaw in view of Nemeh are relied upon as teaching the limitations of claim 1 as discussed above. The amount of ionic polymeric dispersant employed in the present invention is usually a small amount, in the range of about 0.01-2.5 weight percent based on the weight of the pigment, preferably about 0.05-0.5 w/w percent based on pigment (Walen-Shaw; col. 8, lines 34-38). The composite pigment particles comprise 1-99% core pigment particles, preferably 1-35% core pigment particles (Whalen-Shaw; col. 5, lines 42-46).
Because either the core pigment or the co-pigment may be adsorbed to the cationic resin, thereby forming the “resin particle” as claimed, the range of 1-35% core pigment particles overlaps in scope with the claimed mass ratio of pigment particles/resin particles of 0.1/1 to 50/1 (i.e., 0.1-50% by mass).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 4, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Whalen-Shaw in view of Nemeh as applied to claims 1 and 3 as set forth above, and further in view of Reiff et al, U.S. Patent No. 3,686,108 (Reiff).
Regarding claims 4 and 12, Whalen-Shaw in view of Nemeh are relied upon as teaching the limitations of claim 3 as discussed above.
Regarding claim 18, Whalen-Shaw in view of Nemeh are relied upon as teaching the limitations of claim 1 as discussed above.
Whalen-Shaw teaches the use of a cationic polymeric dispersant to form the pigment composites (Whalen-Shaw; col. 7, lines 56-col. 8, line 33). The composite pigments are used in paper coatings, as paper fillings, and in paint, ink, rubber and plastic compositions (Whalen-Shaw; col. 1, lines 7-12).
Whalen-Shaw in view of Nemeh do not explicitly teach wherein the polymer is at least one type selected from the group consisting of an acrylic resin; a vinyl acetate-based resin, and a urethane-based resin (claim 4); wherein the polymer is a urethane-based resin (claim 12); or wherein the resin particles comprise a urethane-based resin having a quaternary ammonium group (claim 18).
With respect to the difference, Reiff teaches polyurethanes which contain quaternary ammonium group nitrogen atoms, and which have an exceptional degree of lightfastness (Reiff; col. 1, lines 67-72 and col. 4, lines 35-37). The polyurethanes may be used in thermoplastics and rubber, and their dispersions may be used for coating paper (Reiff; col. 4, lines 35-52).
The polyurethanes have greater thermal stability, lower freezing temperatures, and greater softness when used in coating materials (Reiff; col. 4, lines 61-69). They may be used in paints and lacquers, in polymer dispersions, and with pigments (Reiff; col. 4, lines 75 and col. 5, lines 28-29).
Reiff is analogous art as it teaches polyurethanes having a quaternary ammonium group.
In light of the motivation provided by Reiff to use polyurethanes having a quaternary ammonium group in plastic, rubber, paints and paper coatings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyurethanes having a quaternary ammonium group of Reiff as the polymeric dispersant in the composite pigment particles of Whalen-Shaw in view of Nemeh, in order to obtain exceptional lightfastness, thermal stability, lower freezing temperatures, and greater softness when used in coating materials, and thereby arrive at the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,486,414 (patent ‘414) in view of Hiraishi et al, US 2011/0306708 A1 (Hiraishi).
Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘414 claim 3 claims a composite colored particle comprising a resin particle carrying a positive electric charge on a particle surface, and a colored particle carrying a negative electric charge on a particle surface and comprising a dye, wherein the colored particle forms a composite with the resin particle through Coulomb force (i.e., electrostatic interaction). Patented claim 3 also claims wherein at least 95% of the composite colored particles have a particle size in a range of form 0.2 to 3.0 µm.
While patent ‘414 claim 3 further includes a low density particle carrying a negative electric charge on a particle surface, in light of the open language of the present claim 1, i.e., “comprising”, it is clear the present claim is open to the inclusion of the additional limitations of the patent ‘414 claim 3.
Patent ‘414 claim 3 does not explicitly claim:
a pigment particle, and
wherein a content of the composite colored particles smaller than 0.1 um is less than 3%.
With respect to the difference, Hiraishi teaches a process for preparing an aqueous dispersion comprising mixing a water dispersion of anionic colorant particles and a water dispersion of cationic polymer particles to thereby produce a water dispersion of composite particles formed of the cationic polymer particles and the anionic colorant particles adhered thereto (Hiraishi; Abstract). Hiraishi teaches that the colorant employed can be a pigment, a hydrophobic dye, or a water-soluble dye. However, the colorant is preferably a pigment from the viewpoint of optical density (Hiraishi; [0048]).
Hiraishi teaches the composite particles produced preferably have an average particle size of 40 to 1000nm (i.e., 0.04 to 1 µm), from the viewpoint of optical density of a printed image (Hiraishi; [0223]). Hiraishi teaches that dispersion treatment is carried out to produce particles having a uniform particle size (Hiraishi; [0212-0213]).
Hiraishi is analogous art as it teaches composite particles of anionic pigment particles and cationic resin particles.
In light of the motivation provided by Hiraishi to use a pigment as the colorant in composite colored particles, it would have been obvious to one of ordinary skill in the art to at least partially substitute the dye in the colored particles of patent ‘414 claim 3 with a pigment as claimed, in order to obtain composite particles with improved optical density, and thereby arrive at the claimed invention.
While patent ‘414 claim 3 in view of Hiraishi does not explicitly disclose wherein a content of the composite colored particles having a particle size of less than 0.1 µm is less than 1% as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the average particle size distributions of the composite colored particles of patent ‘414 claim 3 in view of Hiraishi, including over the presently claimed, in order to obtain good optical density and uniform particle size.
Although patent ‘414 claim 3 does not explicitly teach “wherein the composite colored particles are produced by a method comprising (i) a composite forming process of mixing a resin emulsion comprising resin particles each carrying a positive electric charge on a particle surface and a water-based medium, and a pigment dispersion comprising pigment particles each carrying a negative electric charge on a particle surface and a water-based medium, and (ii) a breaking up process of crushing aggregates having a particle size of over 10 um by stirring with a stirrer” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that patent ‘414 claim 3 in view of Hiraishi meets the requirements of the claimed product, patent ‘414 claim 3 in view of Hiraishi clearly meets the requirements of the present claim.
Claims 1-8, 12 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 16 and 21 of copending Application No. 17/804,196 (copending ‘196) in view of Hiraishi et al, US 2011/0306708 A1 (Hiraishi).
Regarding claims 1, 6 and 8, copending ‘196 claims 1 and 21 claim a writing instrument (present claim 8) comprising a water-based ink (present claim 6), wherein the water-based ink comprises composite colored particles comprising:
a resin particle carrying a positive electric charge on a particle surface,
and a dye-comprising particle carrying a negative charge on a particle surface,
wherein the resin and dye-comprising particles form a composite colored particle through Coulombic force (i.e., through electrostatic interaction as presently claimed). The composite colored particles of copending ‘196 claim 1 claims wherein at least 95% of the composite colored particles have a particle size within a range of 0.2 pm to 3.0 µm and a content of the composite colored particles smaller than 0.1 um is less than 3%.
Copending ‘196 claim 21 claims mixing a resin emulsion comprising resin particles each carrying a positive electric charge on a particle surface and a water-based medium, and a colored resin dispersion comprising a dye-comprising particle carrying a negative electric charge on a particle surface and a water-based medium to form an aggregate of a composite, and crushing the aggregate, thereby breaking up the aggregate as presently claimed.
Copending ‘196 claim 1 does not explicitly claim composite colored particles comprising a pigment particle carrying a negative electric charge on a particle surface.
With respect to the difference, Hiraishi teaches a process for preparing an aqueous dispersion comprising mixing a water dispersion of anionic colorant particles and a water dispersion of cationic polymer particles to thereby produce a water dispersion of composite particles formed of the cationic polymer particles and the anionic colorant particles adhered thereto (Hiraishi; Abstract). Hiraishi teaches that the colorant employed can be a pigment, a hydrophobic dye, or a water-soluble dye. However, the colorant is preferably a pigment from the viewpoint of optical density (Hiraishi; [0048]).
Hiraishi is analogous art as it teaches composite particles of anionic pigment particles and cationic resin particles.
In light of the motivation provided by Hiraishi to use a pigment as the colorant in composite colored particles, it would have been obvious to one of ordinary skill in the art to at least partially substitute the dye in the composite colored particles of Copending ‘196 claim 1 with a pigment as claimed, in order to obtain composite particles with improved optical density, and thereby arrive at the claimed invention.
It is further noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that claim 1 of copending ‘196 in view of Hiraishi meets the requirements of the claimed product, copending ‘196 claim 1 in view of Hiraishi clearly meets the requirements of the present claim.
Regarding claim 3, copending ‘196 claim 3 claims wherein the resin particle comprises a polymer modified with a cationic group.
Regarding claim 4, copending ‘196 claim 4 claims wherein the polymer modified with a cationic group is at least one selected from the group consisting of an acrylic resin; a vinyl acetate-based resin, and a urethane-based resin.
Regarding claim 5, copending ‘196 claim 5 claims wherein the dye-comprising particle comprises an anionic resin particle comprising a dye inside the anionic resin particle.
Copending ‘196 claim 5 does not explicitly claim a pigment particle comprising a solid pigment modified with an anionic group.
As discussed above, Hiraishi teaches that the anionic colored particle may comprise a dye or pigment, including those anionically modified with an anionic polymer, wherein pigments (i.e., insoluble, solid colorants) are preferred from the viewpoint of optical density (Hiraishi; [0048] and [0063]).
In light of the motivation provided by Hiraishi to use a pigment as the colorant in composite colored particles, it would have been obvious to one of ordinary skill in the art to at least partially substitute the dye in the composite colored particles of Copending ‘196 claim 1 with a solid pigment modified with an anionic group as claimed, in order to obtain composite particles with improved optical density, and thereby arrive at the claimed invention.
Regarding claim 7, copending ‘196 claim 1 in view of Hiraishi are relied upon as claiming the limitations of claim 6 as discussed above. Hiraishi exemplifies nonionic surfactants as ink additives (Hiraishi; [0299]).
Given that Hiraishi discloses the nonionic surfactant ink additives for water-based inks comprising composite colored particles, it therefore would be obvious to one of ordinary skill in the art to use the nonionic surfactants in the inks of copending ‘196, which is both disclosed by Hiraishi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 12, copending ‘196 claim 16 claims wherein the polymer is a urethane-based resin.
Regarding claim 16, copending ‘196 claim 1 claims wherein the composite colored particles smaller than 0.1 um is less than 3%.
Wherein the composite colored particles smaller than 0.1 um is less than 3% overlaps in scope with the presently claimed the composite colored particles smaller than 0.1 um is less than 1%.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments and Declaration filed 04/17/2026 have been fully considered, but they are not persuasive for the following reasons.
1). Regarding the Rule 132 Declaration of Kosuke Ogura, although Examples E1 and E2 of the Declaration show improved results with respect to prevention performance of blurring and scratch resistance, as compared to the inks of Comparative Examples C1 and C2, this evidence is not deemed persuasive to showing unexpected, improved results of the invention as claimed for the following reasons.
The data only shows using specific composite colored particles comprising specific anionic pigment particles carrying a negative charge (i.e., particles of carbon black modified with an α-methylstyrene-acrylic copolymer and phthalocyanine blue 5187 modified with an α-methylstyrene-acrylic copolymer) and specific resin particles carrying a positive charge (Superflex 620 and Mowinyl 6950) in specific amounts (mass ratio of cationic resin particles:pigment particles of 1:2 or 5:6),
while the claims allow for composite colored particles comprising any pigment particles carrying a negative charge and any resin particles carrying a positive charge in any amount or mass ratio.
While the new data provides evidence for wherein at least 96% of the composite colored particles have a particle size of 0.2-3.0µm, the new data does not show the upper range wherein a content of the composite colored particles smaller than 0.1µm is less than 3% (e.g. less than 2.9%), as only ranges of 0% were compared (emphasis added).
Regarding the claimed methods, the examples in the Declaration blend and mix specific commercially available resin emulsions with specific pigment dispersions containing specific pigment particles, dispersing agents, pH adjusters, viscosity modifiers, organic solvents and water in specific amounts using an unspecified “stirrer” for an unspecified amount of time, followed by a specific breaking up process for 3 or 4 minutes with a homomixer;
while the claims allow for any type of mixing any resin emulsion comprising the resin particles carrying a positive charge in any amount, with any pigment dispersion containing the pigment particles carrying a negative charge in any amount, for any amount of time, followed by any breaking up process that uses any type of “stirring with a stirrer.”
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support” (emphasis added). The showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Further, the compared composite colored particles of the Declaration are used in specific inks for pens for writing; however, the claims are not limited to writing or pen inks. Instead, the claims broadly recite composite colored particles, encompassing composite pigments used for inkjet printing and in paper coatings as disclosed by Hiraishi and Whalen-Shaw.
2). Applicant’s arguments with respect to the 35 U.S.C. 103 rejection over Hiraishi in view of Chun have been considered, but are moot because the new ground of rejection does not rely on Chun for any teaching or matter specifically challenged in the argument.
Note, however, the new grounds of rejection over Hiraishi in view of Maruyama; over Hiraishi in view of Maruyama and further in view of Nakao; over Whalen-Shaw in view of Nemeh, and over Whalen-Shaw in view of Nemeh and further in view of Reiff.
3). Regarding Hiraishi, Applicant primarily argues:
“Hiraishi, however, only discloses the average particle size of the composite colored particles, and does not disclose the frequency (%) of particles within a range of 0.2 pm to 3.0 pm of the composite colored particles. … Accordingly, Hiraishi does not disclose or suggest that at least 95% of the composite colored particles have a particle size in the range of 0.2 pm to 3.0 pm, as claimed, or that the content of composite colored particles with a particle size smaller than 0.1 µm is less than 3%, which is low.”
Remarks, pages 7-8.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Office maintains that the combination of Hiraishi in view of Maruyama, in combination with knowledge of those skilled in the art, would have obviated the claimed invention for the reasons set forth in the above rejection, pages 6-13.
4). Applicant further argues:
“Moreover, the average particle size of the composite colored particles in Hiraishi is 138 nm (=0.138 µm) in Production Example I-1, and 186 nm (=0.186 µm) in Production Examples Ill-1 and Ill-2. This suggests that a significant percentage of the composite colored particles in Hiraishi have a particle size smaller than a range of 0.2 µm to 3.0 µm, and more so smaller than 0.1 µm.”
Remarks, page 8.
A reference is not limited to its working Examples. Hiraishi clearly teaches that composite particles sizes of 40 to 1000nm (i.e., 0.04 to 1 µm), are suitable for the inks from the viewpoint of optical density of a printed image (Hiraishi; [0223]). Further, all the examples of Hiraishi result in particles having a size over 0.1 µm as claimed, not smaller than 0.1 µm.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
5). Applicant further argues:
“The particle size distribution of the composite colored particles of the claimed invention cannot be realized by a method using an ultrasonic dispersing apparatus of Hiraishi (see Hiraishi, paragraphs [0299] and [0312]. That is, Hiraishi discloses that composite colored particles are produced by mixing a dispersion consisting of an anionic polymer particle (I-1) containing a pigment and a cationic polymer particle (II-1) and subjecting it to an ultrasonic dispersion apparatus. See Hiraishi, Examples Il-1 to II- 3 of paragraphs [0312], [0314], and [0316]. Notably, however, Hiraishi does not describe (ii) a breaking-up process of crushing aggregates having a particle size of over 10 µm comprising stirring with a stirrer.”
Remarks, pages 8-9.
The teachings of Hiraishi as a whole, including the preferred composite particle size range and exemplified particle sizes, make it clear to those skilled in the art that particles sizes over 10 µm have been broken-up in the methods of Hiraishi. Although Hiraishi exemplifies using an ultrasonic dispersion apparatus, Hiraishi is not limited to the exemplified stirring methods. Hiraishi teaches that after the two dispersions are mixed, dispersion treatment is further carried out to produce particles having a uniform particle size. Any dispersers listed in step (1) can be used for the dispersion treatment, as well as homogenizers (Hiraishi; [0212-0213]). Dispersers of step (1) include, e.g., a disper, a homo mixer, and an Ultra Disper (i.e., ultra mixer) as claimed (Hiraishi; [0114-0115]).
Further, the claimed “stirrer” is not limited to any particular structure or mechanical specification. A homogenizer accomplishes stirring using high-frequency ultrasonic waves to disperse or “stir” materials, thereby reading on the claimed “stirrer”.
Lastly, the two specific comparative examples of the Declaration are not sufficient evidence to demonstrate that particle size distributions as claimed cannot be realized by Hiraishi.
6). Regarding the nonstatutory double patenting rejection over claim 3 of U.S. Patent No. No. 12,486,414, in view of Hiraishi, Applicant argues:
‘As discussed above, independent claim 1 has been amended to specify, in particular, that ‘at least 95% of the composite colored particles have a particle size within a range of 0.2 um to 3.0 µm and a content of the composite colored particles smaller than 0.1 µm is less than 3%,’ and that ‘the composite colored particles are produced by a method comprising (i) a composite forming process of mixing a resin emulsion... and a pigment dispersion... and (ii) a breaking up process of crushing aggregates having a particle size of over 10 pm by stirring with a stirrer.’
The double patenting rejection over claim 3 of U.S. Patent No. No. 12,486,414, in view of Hiraishi, should therefore be withdrawn.’
Remarks, pages 9-10.
Examiner notes that claim 3 of U.S. Patent No. No. 12,486,414 claims “wherein at least 95% of the composite colored particles have a particle size within a range of 0.2 um to 3.0 µm” as presently claimed. For the reasons discussed above, the evidence of record is not sufficient to demonstrate unexpected results wherein the composite colored particles smaller than 0.1 µm is less than 3%, and the optimization of such frequencies is within the knowledge of those skilled in the art. Further, the rejected claims are drawn to products, not methods (see above rejection on pages 35-36).
Also note the new grounds of nonstatutory double patenting over copending Application No. 17/804,196 in view of Hiraishi.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE D LIOTT whose telephone number is (703)756-1836. The examiner can normally be reached M-F 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
Prosecution Insights