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 .
Terminal Disclaimer
The terminal disclaimer filed on 6/26/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application No. 18/720098 and Application No. 18/719881 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-4, 19-23, 25, and 28-34 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kubota et al. (US 2017/0218216), when taken with C.I Pigment Orange 43, PubChem and Pigment Orange 43 Technical Data Sheet.
Regarding claims 1, 3-4, 19-22, 28: Kubota et al. (US ‘216) discloses solvent based ink compositions for ink-jet printing [abstract; 0016; 0019; 0024], wherein ink O1 [O1; 0116-0119; Table 1, O1] comprises 3 mass% P.O. 43 (C.I Pigment Orange 43; corresponding to pigment A1 with X1-X12 = H; pH 6.5-7.5; pH of 8.7 measured using JS K5101-17-1:2004 [0120]), 73 mass% diethylene glycol, 10 mass% triethylene glycol monobutyl ether, 10 mass% γ-butyrolactone, 1.9 mass% dispersant (Solsperse 17000; polyester polyamine resin [0125]), 0.1 mass% BYK-340 (silicon based surfactant [0125]), and 2 mass% Solbin CL (vinyl chloride-vinyl acetate copolymer [0125]) [O1; 0116-0119; Table 1, O1].
The claimed effects and physical properties, i.e. a pH of 3 or more or 9 or less, measured using JS K5101-17-1:2004, would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Note C.I. Pigment Orange 43:
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[0125; Table 1, O1].
C.I. Pigment Orange 43 provides evidence for the structure of C.I. Pigment Orange 43 [§1.1].
Pigment Orange 43 Technical Data Sheet provides evidence for a pH pf 6.5-7.5 [§Physical and Chemical Properties].
Instant Table 2, Synthetic Product 5 provides evidence for Pigment Orange 43 having a pH of 8.7 measured using JS K5101-17-1:2004 [0294-0296; Table 2, Synthetic Product 5].
Regarding claims 23 and 25: Kubota et al. (US ‘216) discloses Solsperse 17000 having basic groups [0104]. Kubota et al. (US ‘216) discloses 3 mass% P.O. 43 and 1.9 mass% Solsperse 17000 [O1; 0116-0119; Table 1, O1]; corresponding to ~ 63 parts dispersant to 100 parts pigment.
Regarding claim 29: Kubota et al. (US ‘216) discloses using an ink jet printer; solid printing of a recording resolution of 720x720 dpi of the ink composition [0127] [see also MPEP 2112.02].
Regarding claims 30-31: Kubota et al. (US ‘216) discloses using an ink jet printer, solid printing of a recording resolution of 720x720 dpi of the ink composition was carried out on a vinyl chloride medium [0127]. During recording, the recording medium was heated to 45 oC, discharged from the printer after printing, and then dried at 45 oC [0127].
Regarding claim 32: Kubota et al. (US ‘216) discloses the ink set of Example 1 contains ink O1 [Ex. 1; 0126; Table 4, Ex. 1].
Regarding claim 33: Kubota et al. (US ‘216) discloses using an ink jet printer, solid printing of a recording resolution of 720x720 dpi of the ink composition on a vinyl chloride medium [0127-0128].
Regarding claim 34: Kubota et al. (US ‘216) discloses an ink jet printer for discharging the ink from an ink jet recording head having discharge nozzles [0114]. The printer including piezoelectric elements arranged in the recording head [0114; 0127]. Kubota et al. (US ‘216) discloses SC-S70650” inkjet printer [0127].
Claim(s) 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kubota et al. (US 2017/0218216) as applied to claim 1 above, when taken with Anti-Terra-204 Data Sheet; BYK-Chemie GmbH; 09/2023.
Regarding claim 24: Kubota et al. (US ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Kubota et al. (US ‘216) discloses dispersants [0102-0104], such as Solsperse 17000 and Anti-Terra-204 having an amine value of 37 mg KOH/g [0104] (i.e. exchange Anti-Terra-204 for Solsperse 17000 as the dispersant in ink O1 [see MPEP 2131.02]).
Anti-Terra-204 Data Sheet provides evidence for an amine value of 37 mg KOH/g [§ Product data].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota et al. (US 2017/0218216) as applied to claim 1 above, and further in view of Sakuma et al. (JP 2008-156466) (English machine translation for citation).
Regarding claim 2: Kubota et al. (US ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Kubota et al. (US ‘216) discloses a volume average median particle dimeter (D50) for P.O. 43 of 100 nm to 400 nm [0075-0077].
Kubota et al. (US ‘216) does not disclose a volume average 90% particle dimeter (D90) of 500 nm or less. However, Sakuma et al. (JP ‘466) discloses non-aqueous pigment dispersions [0001], wherein the D90 of the pigment is 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less [0034; Table 1]. Kubota et al. (US ‘216) and Sakuma et al. (JP ‘466) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of non-aqueous pigment dispersions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a pigment having a D90 of 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less, as taught by Sakuma et al. (JP ‘466) in the invention of Kubota et al. (US ‘216), and would have been motivated to do so since Sakuma et al. (JP ‘466) discloses pigments having a D90 of 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less affords pigment dispersions having low viscosity and excellent storage stability [0007; 0034].
Claim(s) 5 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iida et al. (US 2018/0037761) in view of Sakuma et al. (JP 2008-156466) (English machine translation for citation), when taken with Pigment Green 7, PubChem.
Regarding claims 5 and 8-12: Iida et al. (US ‘761) discloses solvent based ink compositions for ink-jet printing [abstract; 0001] comprising cyan pigments, such as C.I Pigment Blue 15:3 and C.I. Pigment Green 7 [0109]. Iida et al. (US ‘761) discloses ink 20 [20; 0189-0201; Table 3, 20] comprises 3 mass% C.I. Pigment Green 7 (phthalocyanine green [0109]) (note: C.I. Pigment Green 7 exchanged for P.B. 15:3 (C.I Pigment Blue 15:3 (phthalocyanine blue [0192]) as the cyan pigment [0109]; see also MPEP 2131.02), 65.5 mass% DEGMEE (diethylene glycol methyl ethyl ether [0134]), 20 mass% γ-butyrolactone, 4 mass% dispersant (Solsperse 17000; polyester polyamine resin [0143-0144]), 1.5 mass% BYK-340 (silicon-based surfactant [0145-0146]), 1.5 mass% Solbin CL (vinyl chloride-vinyl acetate copolymer [0148]), and 3.5 mass% paraloid B60 [20; 0189-0201; Table 3, 20]. Iida et al. (US ‘761) discloses a volume average median particle dimeter (D50 [0066]) for C.I. Pigment Green 7 of 50 nm or more and 500 nm or less [0106].
Iida et al. (US ‘761) does not specifically disclose C.I. Pigment Green 7 having a D50 of 56 nm to 150 nm. However, 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Iida et al. (US ‘761) does not disclose a volume average 90% particle dimeter (D90) of 108 nm or more and 305 nm or less. However, Sakuma et al. (JP ‘466) discloses non-aqueous pigment dispersions [0001], wherein the D90 of the pigment is 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less [0034; Table 1]. Iida et al. (US ‘761) and Sakuma et al. (JP ‘466) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of non-aqueous pigment dispersions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a pigment having a D90 of 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less, as taught by Sakuma et al. (JP ‘466) in the invention of Iida et al. (US ‘761), and would have been motivated to do so since Sakuma et al. (JP ‘466) discloses pigments having a D90 of 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less affords pigment dispersions having low viscosity and excellent storage stability [0007; 0034].
Note C.I. Pigment Green 7 (phthalocyanine green):
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[0109].
Pigment Green 7 provides evidence for the structure of C.I. Pigment Green 7 [§1.1; §3.2.1].
Claim(s) 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota et al. (US 2017/0218216) as applied to claim 4 above, and further in view of Hazama et al. (JP 2008-260947) (English machine translation for citation).
Regarding claims 13-18: Kubota et al. (US ‘216) discloses the basic claimed composition [as set forth above with respect to claim 4]; wherein Kubota et al. (US ‘216) discloses other solvents [0056-0062].
Kubota et al. (US ‘216) does not specifically disclose an alkyl amide solvent of instant formula (2) or a cyclic amide solvent of instant formula 3. However, Hazama et al. (JP ‘947) discloses non-aqueous inkjet inks [0001] comprising solvents, such as N,N-diethylformamide [0011-0012; 0014] and ε-caprolactam [0011-0013]. Kubota et al. (US ‘216) and Hazama et al. (JP ‘947) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of non-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 have combined solvents, such as N,N-diethylformamide [instant claims 13-15] or ε-caprolactam [instant claims 16-18], as taught by Hazama et al. (JP ‘947) in the invention of Kubota et al. (US ‘216), and would have been motivated to do so since Hazama et al. (JP ‘947) discloses solvents, such as N,N-diethylformamide and ε-caprolactam affords non-aqueous inkjet inks having excellent adhesion to polyvinylchloride resin sheet [0008; 0011-0014].
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota et al. (US 2017/0218216) as applied to claim 1 above, when taken with Abe (JP 2014-156511) (English machine translation).
Regarding claims 26-27: Kubota et al. (US ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Kubota et al. (US ‘216) discloses the ink can contain 0.5 mass% or more and 6 mass% or less of an acrylic resin, such as Acrypet MF having a viscosity of 0.1 L/g (100 mL/g) or less [0096-0096].
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Abe (JP ‘511) provides evidence for Acrypet MF having a viscosity of 0.1 L/g or less [§Acrylic resin composition].
Response to Arguments
Applicant's arguments filed 6/26/26 have been fully considered but they are not persuasive. The rejection of claims based upon Kubota et al. (US 2017/0218216) is maintained.
Kubota et al. (US ‘216) was relied on for disclosing solvent based ink compositions for ink-jet printing [abstract; 0016; 0019; 0024], wherein ink O1 [O1; 0116-0119; Table 1, O1] comprises 3 mass% P.O. 43 (C.I Pigment Orange 43; corresponding to pigment A1 with X1-X12 = H; pH 6.5-7.5; pH of 8.7 measured using JS K5101-17-1:2004 [0120]), 73 mass% diethylene glycol, 10 mass% triethylene glycol monobutyl ether, 10 mass% γ-butyrolactone, 1.9 mass% dispersant (Solsperse 17000; polyester polyamine resin [0125]), 0.1 mass% BYK-340 (silicon based surfactant [0125]), and 2 mass% Solbin CL (vinyl chloride-vinyl acetate copolymer [0125]) [O1; 0116-0119; Table 1, O1].
Pigment Orange 43 Technical Data Sheet provides evidence for a pH pf 6.5-7.5 [§Physical and Chemical Properties]. Pigment Orange 43 Technical Data Sheet does not disclose the pH measurement standard. However, the examiner notes that the instant specification Table 2, Synthetic Product 5 (Pigment Orange 43) has a pH of 8.7 measured using JS K5101-17-1:2004 [0296], wherein the Pigment Orange 43 of Synthetic Product 5 does not appear to have been dispersed in a solvent or have substituent introduction [0294-0296; Table 2, Synthetic Product 5]. The examiner takes the position that this Pigment Orange 43 having a pH of 8.7 measured using JS K5101-17-1:2004 would correspond to an untreated Pigment Orange 43 disclosed by Kubota et al. (US ‘216).
“Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01]. “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). [See MPEP 2112]. Evidence {data} would need to be provided showing the Pigment Orange 43 disclosed by Kubota et al. (US ‘216) does not necessarily or inherently possess the characteristics of the claimed product.
Note C.I. Pigment Orange 43:
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[0125; Table 1, O1].
Evidence of secondary considerations, such as unexpected results or commercial success, is irrele-vant to 35 U.S.C. 102 rejections and thus cannot over-come a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) [see MPEP 2131.04].
Iida et al. (US 2018/0037761) was relied on for disclosing solvent based ink compositions for ink-jet printing [abstract; 0001] comprising cyan pigments, such as C.I Pigment Blue 15:3 and C.I. Pigment Green 7 [0109]. While ink 20 contains 3 mass% C.I Pigment Blue 15:3 (phthalocyanine blue [0192]), an embodiment containing 3 mass% C.I. Pigment Green 7 (phthalocyanine green [0109]) as the cyan pigment [0109] is anticipated. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that “the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in 35 U.S.C. § 102(a), in that publication.”). Id. at 1718. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims were directed to polycarbonate containing cadmium laurate as an additive. The court upheld the Board’s finding that a reference specifically naming cadmium laurate as an additive amongst a list of many suitable salts in polycarbonate resin anticipated the claims. The applicant had argued that cadmium laurate was only disclosed as representative of the salts and was expected to have the same properties as the other salts listed while, as shown in the application, cadmium laurate had unexpected properties. The court held that it did not matter that the salt was not disclosed as being preferred, the reference still anticipated the claims and because the claim was anticipated, the unexpected properties were immaterial.) [See MPEP 2131.02].
Note C.I. Pigment Green 7 (phthalocyanine green):
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[0109].
Iida et al. (US ‘761) discloses a volume average median particle dimeter (D50 [0066]) for C.I. Pigment Green 7 of 50 nm or more and 500 nm or less [0106].
Sakuma et al. (JP 2008-156466) was relied on for disclosing non-aqueous pigment dispersions [0001], wherein the D90 of the pigment is 0.6 µm (600 nm) or less, preferably 0.4 µm (400 nm) or less [0034; Table 1] affords pigment dispersions having low viscosity and excellent storage stability [0007; 0034].
Obviousness does not require absolute predictabil-ity, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) [see MPEP 2143.02].
While examples having a D50 of 56 nm to 150 nm and a D90 of 108 nm to 305 nm appear to provide unexpected results with respect to storage stability, weather resistance, and color tone stability, however, said examples represent specific compositions and are not commensurate in scope with the breadth of compositions included in claim 5. As the data from examples having a D50 of 56 nm to 150 nm and a D90 of 108 nm to 305 nm was obtained from compositions of narrower scope than the broad genus of claim 5, it is not possible for the examiner to conclude the data represents unexpected results over the prior art of record [see also MPEP 716.01(c), 716.02(d), 2145; In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)].
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)]. See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) [See MPEP 716.02(d)].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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