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 .
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.
Claim 7 is 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.
In Claim 7, “the alumina” lacks antecedent basis. It is advised to amend “the spherical inorganic powder is silica and” to “the spherical inorganic powder includes silica and alumina, wherein” in claim 7, line 2.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (JP 2012184158).
Yoshikawa describes a titanium oxide powder (title of English translation, attached) with a particle size frequency shown in Figure 8 (of the JP original, attached). The figure is reproduced below:
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In the figure above, it shows a first peak covering the size range of 0.1 to about 0.5 µm (see figure above) and a second peak that covers the size range of 0.6 to about 4µm (see Fig. 8). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
The y-axis shows % frequency (see example 1, para. 4, English version, describing the particle size distribution measured using an analyzer and then shown in the figures).
The ratio of the second peak (larger size range) to the ratio of the first peak (small size range), where the maximum peak of the second peak is between 8-9 and the first peak is between 1-1.3, assuming the largest value of the second peak is 9 and assuming the smallest possible value of the first peak is about 1, the ratio of the second peak to the first peak is about 9, but can be as low as 6.5 (assuming a peak of 8.5 for the second peak and a maximum peak of about 1.3). Therefore, these values all fall within the claimed range.
As to Claim 2, Yoshikawa shows that there is a dip to zero in the range of 0.4 to 0.6 µm (see Fig. 8). This can be considered a local minimum value in the range of 0.4 to 1.0µm.
As to Claim 3, Yoshikawa teaches that the lowest point of second peak is less than 1 (the drop at about 4µm in Figure 8 is about 0.5 or less) and the maximum value of the first peak is slightly greater than 1, at about 1.1-1.3 (see Fig. 8). The ratio of these is about 0.38 or 0.45, which falls within the claimed range.
Claim(s) 4, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa as applied to claim 1 above, and further in view of Tomonari (WO 2019/146783).
Yoshikawa does not specifically state what the cumulative frequency of the titania particles are.
Tomonari teaches a titanium dioxide aqueous dispersion (title). In the background, Tomonari explains that titania having very fine particle sizes (Background, para. 1) have a tendency to aggregate (Background, para. 2) and that when aggregated, have inferior properties when used (Background, para. 2). Dispersibility in aqueous solution of the titania particle is related to the cumulative frequency of the titania particles (see “Coarse grain cumulative frequency”, para. 1). Tomonari explains that the smaller the value of the coarse particle accumulation frequency, the better the dispersibility of the titanium dioxide particle in aqueous dispersion (see “Coarse grain cumulative frequency”, para. 1). Further, Tomonari explains that the size of 1µm or more was
Therefore, although Yoshikawa does not specifically state that the cumulative frequency of the titania particles is 1.2 or higher when a ratio of the second peak to the first peak is calculated (Claim 4) or that the cumulative frequency of the particles with a diameter of 5µm or larger is 1.2% or lower, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the cumulative frequency of the titania particles, as taught by Tomonari for use with the titania particles of Yoshikawa based on the desired aqueous dispersibility of the titania particles used.
It would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as cumulative frequency through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamazaki (WO 2020184169) and in view of Yoshikawa (JP 2012184158).
Hamazaki explains that titanium oxide encapsulated resin particles in a water soluble solvent can be used as an aqueous ink composition of a ball point pen (page 6, para. 5 and 9).
Hamazaki does not specifically describe the features of the titania particles.
Yoshikawa describes a titanium oxide powder (title of English translation, attached) with a particle size frequency shown in Figure 8 (of the JP original, attached). The figure is reproduced below:
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In the figure above, it shows a first peak covering the size range of 0.1 to about 0.5 µm (see figure above) and a second peak that covers the size range of 0.6 to about 4µm (see Fig. 8). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
The y-axis shows % frequency (see example 1, para. 4, English version, describing the particle size distribution measured using an analyzer and then shown in the figures).
The ratio of the second peak (larger size range) to the ratio of the first peak (small size range), where the maximum peak of the second peak is between 8-9 and the first peak is between 1-1.3, assuming the largest value of the second peak is 9 and assuming the smallest possible value of the first peak is about 1, the ratio of the second peak to the first peak is about 9, but can be as low as 6.5 (assuming a peak of 8.5 for the second peak and a maximum peak of about 1.3). Therefore, these values all fall within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the titania of Yoshikawa for use with the ink used in Hamazaki because use of the titania of Yoshikawa would lead to predictable and expected results for use in ink in a pen.
Allowable Subject Matter
Claims 6 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Yoshikawa describes an inorganic particle with the characteristics of Claim 1, but the particles are titania and not silica.
Also, Low “Processing of Spodumeme-modified mullite ceramics”. Journal of Materials Science. Describes a silica-containing particle (see section 2.1), but the characteristics of the particles have the features shown in figure Fig. 2, reproduced below. The peaks overlap the range, but the second peak starts at 2 and ends almost near 100µm.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 April 14, 2026
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