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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/24/2026 has been entered.
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.
Claim(s) 1-2 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. App. Pub. No. 2007/0188571 to Tokita et al. (hereinafter Tokita) with evidence provided from U.S. Pat. App. Pub. No. 2009/0246674 to Carlini et al. (hereinafter Carlini) for the rejection of claim 1, and with evidenced provided from WO 2011/021591 to Goto et al. (hereinafter Goto) for the rejection of claim 7.
With respect to claim 1, Tokita discloses a liquid composition for ink jet recording which comprises a number of components (abstract). The reference discloses the use of aggregating agents such as alkali metal salt such as calcium tartrate in an amount of about 0.01-15 wt% ([0059]-[0064]) in said liquid composition; calcium tartrate reads on "divalent metal salt". Furthermore, the reference teaches the use of coloring material such as dyes or pigments, such as pigments having sulfonic acid groups or sulfonate on the surface thereof ([0081]-[0082]). Tokita, additionally, provides a list of a number of pigments ([0086]-[0097]); as examples, C.I. Pigment Red-48:1 and C.I. Pigment Red-57 ([0089]) are disclosed which read on the claimed "divalent metal lake azo pigment".
Although the paragraph disclosing said Pigment Red follows the disclosure of the ink composition, said pigments, i.e. C.I. Pigment Red-48:1 and C.I. Pigment Red-57, are nevertheless, taught by the reference as pigments recognized in the art of ink industry. Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have recognized the use of any of said pigments, such as C.I. Pigment Red-48:1 and C.I. Pigment Red-57 which is the same as C.I. Pigment Red-57:1, as the coloring material of the disclosed liquid composition of Tokita motivated by the fact that Tokita specifically discloses that their coloring materials includes dyes and pigments, in particular, pigments such as those containing sulfonic acid groups and sulfonate groups, and C.I. Pigment Red-57 is known and recognized to contain sulfonate group as that evidenced by Carlini showing C.I. Pigment Red-57 contains sulfonate anion group (Carlini, [0067]). Therefore, the disclosure of the two claimed components, namely the claimed divalent metal lake azo pigment as well as the calcium tartrate, are disclosed for one of the compositions, i.e. liquid composition, taught by Tokita.
MPEP 2144.05 states "In the case where the claimed ranges "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).
With respect to claim 2, as noted above, Tokita discloses calcium tartrate
([0062]).
With respect to claim 5, as noted above, Tokita discloses C.I. Pigment Red-57
([0089]) which is the same as C.I. Pigment Red-57:1.
With respect to claim 6, Tokita discloses a liquid composition for inkjet recording comprising a number of components, as detailed out above; this reads on an ink.
With respect to claim 7, Tokita teaches the liquid composition, also, comprises a polymer such as polyvinyl pyrrolidone (Tokita, [0122]) which is taken to read on the claimed waterborne resin considering the fact that it is a water soluble or water dispersible resin, as that shown and evidenced by Goto (Goto, page 72, lines 14-21). The combination of the liquid composition and polyvinyl pyrrolidone, as both disclosed by Tokita is, then, taken to read on and render obvious the claimed “waterborne ink” especially since the combination of the disclosed liquid composition mixed with polyvinyl pyrrolidone contain all the claimed components, as claimed in dependent claim 7, for an ink. It is noted that Tokita teaches the use of water in the liquid composition as well (Tokita, [0078]-[0079]).
Response to Arguments
Applicant’s arguments, see Remarks pages 2 and 13-16, filed 04/24/2026, with respect to the rejection over Kyriacou and Yui have been fully considered and, in view of the amendment made to independent claim 1 are persuasive. The 35 U.S.C. 103 obviousness rejection of claims over said references has been withdrawn.
However, Applicant's arguments filed 04/24/2026, with respect to Tokita reference have been fully considered but they are not persuasive.
Applicant has asserted Tokita does not disclose a single composition containing the claimed components of divalent metal lake azo pigment and divalent metal salt of mono- or di-carboxylic acid compound, as claimed in claim 1 (Remarks, pages 4 and 5). Applicant has asserted Tokita teaches an ink composition and a liquid composition, which are distinguishable (Remarks, page 5).
The examiner, respectfully, submits that although Tokita teaches two separate compositions, namely an ink composition and a liquid composition, the reliance in rejection the claims over Tokita is based off of the disclosed liquid composition because it contains calcium tartrate and coloring materials which include both dyes and pigments (Tokita, [0081]-[0082]). The disclosed liquid composition is taken to read on and render obvious the claimed “pigment composition” because it discloses both components in overlapping concentration for calcium tartrate. It is noted that although examples of dyes are disclosed in paragraph [0089] of Tokita, following the disclosure of the ink composition, the reference clearly considers and teaches pigments such as Pigment Red-57 and Pigment Red-48:1 as some of the desirable pigments in said disclosure, and therefore, it would have been obvious to a person of ordinary skill in the art to have recognized the use of any of them in the coloring material of the disclosed liquid composition motivated by the fact that Tokita clearly recognizes dyes and pigments as suitable coloring material for their disclosed liquid composition, and such pigments such as Pigment Reds disclosed as pigments in the teaching of the same reference. Further motivation would be the fact that Tokita discloses at least one coloring material is a pigment having sulfonate group, and Pigment Red 57 is known to contain sulfonate group as that evidenced by Carlini as demonstrated in the above rejection. Thus, it would be well within the scope of a skilled artisan to have utilized, as an example, Pigment Red 57, as the coloring material for the liquid composition of Tokita.
Applicant has asserted Tokita teaches the use of calcium tartrate, which reads on one of the compounds claimed as a divalent metal salt of a mono- or di-carboxylic acid, as an aggregating agent, not as a component to be added to a pigment composition to stabilize the dispersion, which Applicant has asserted, has been the purpose of using calcium tartrate according to the present Application under examination (Remarks, pages 5, 6, and 8).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the addition of stabilizing the dispersion of the claimed composition) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Nevertheless, and assuming this feature would be added into the claimed language, it is important to note that because the very same compounds/components as claimed to have been part of the claimed pigment composition, are also disclosed in the disclosed liquid composition of Tokita, any claimed characteristics such as stabilizing the dispersion of the composition, is expected to follow from the liquid composition of Tokita because it contains all the claimed components/parts.
Applicant has, additionally, asserted examiner’s reliance on range overlap for the calcium tartrate is misplaced because the compared ranges pertain to different matrices and different functions because this range in Tokita is the concentration of aggregating agent in a separate treating liquid not in a pigment composition (Remarks, page 7).
The examiner, respectfully, submits that the disclosed concentration of 0.01-15 wt% by Tokita, is for calcium tartrate amount in the disclosed liquid composition, and the liquid composition of Tokita is taken to read on and render obvious the claimed “pigment composition”. Thus, the examiner’s reliance on the range overlap is not misplaced.
Furthermore, Applicant has asserted even if Tokita’s ink for ink jet recording and liquid composition for ink jet recording were considered together, Tokita still does not teach or suggest the same technical idea as the presently claimed invention (Remarks, page 8). Applicant has, again, asserted Tokita expressly identifies the multivalent metal salts as preferred aggregating agents and expressly lists calcium tartrate among the examples of such multivalent metal salts (Remarks, page 8); Applicant has asserted even if one were to assume for the sake of argument, that contact between Tokita’s separately ejected ink and liquid composition could somehow be viewed as producing all claimed components in the same place, Tokita would still be directed to a different technical idea from the claimed invention because Tokita uses the liquid composition for the purpose of causing aggregation of ink components upon contact in order to obtain image-quality benefits such as optical density and reduced feathering and intercolor bleeding (Remarks, page 9). Applicant has continued to assert by contrast, the present specification teaches that blending the divalent metal salt with the azo lake pigment prevents elution of lake metal from the pigment particle surface and thereby reduces aggregation of pigment particles and reduces viscosity increase in the ink (Remarks, page 9). Thus, Applicant has concluded, Tokita employs the metal salt in an aggregation-promoting system, whereas the present invention employs the claimed additive in a controlled amount in the pigment composition to suppress aggregation and suppress viscosity increase over time (Remarks, page 10). Applicant has, also, asserted that difference in operation is also consistent with the present specification’s explanation that undesirable viscosity increase can arise when complex aggregates having cross-linked structures are formed with the metal ion, pigment particles, and resin in the ink system (Remarks, page 10). Applicant has, then, asserted Tokita is directed to using an aggregating component to bring about aggregation on the recording medium, whereas the present invention is directed to avoiding such instability within the ink system itself (Remarks, page 10).
The examiner, respectfully, submits that, first, the rejection is not relied upon two compositions of Tokita, namely ink composition and liquid composition, but that the rejection is based off of only the disclosed “liquid composition” of Tokita. Second, irrespective of what Tokita teaches what effects their composition or compositions have on the final outcome of inkject recording, the liquid composition of Tokita teaches the claimed components, and teaches the concentration of one of them in overlapping ranges; thus, any feature claimed or argued to be attributed to the claimed composition is, naturally, expected to follow from the liquid composition of Tokita because substantially similar materials/compositions/products cannot have mutually exclusive characteristics. Additionally, there are other components added in the pigment composition of the present composition, as claimed, based on the specification of the present Application under examination, which are not part of the claimed language; thus, it is not clear as to whether the feature Applicant has argued is the result of only the claimed components. Again, if the feature is the result of the claimed components, because the same components have been rendered obvious for the liquid composition of Tokita, said features are expected to follow.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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