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.
Claims 1-14 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. Independent claim 1 recites, “An aqueous ink composition suitable for a writing instrument,” it is unclear what constituents are “suitable” for a writing instrument.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over KAGATA et al. (U.S. Publication No. 2018/0265725, hereinafter KAGATA).
Regarding claim 1, KAGATA teaches an aqueous ink jet composition (Abstract; [0053]) comprises polyolefin wax including waxes produced from olefin (i.e., ethylene, propylene, and butylene) or derivatives thereof, copolymers thereof [0070-0071] in the amount of 0.01 mass% to 10 mass% [0077], water [0079], and color material including pigment [0081-0089] in the amount of 1.5 mass% to 10 mass% [0092].
The polyolefin wax has an average particle diameter of from 10 nm to 800 nm [0072] (when converted from nm to µm: 0.01 µm to 0.80 µm) (which is within the claimed range of 15 µm or less). The polyolefin wax (e.g., polyethylene wax) which has an average particle diameter of from 200 nm to 800 nm (when converted from nm to µm: 0.20 µm to 0.80 µm) and a penetration method hardness of 3 [0071] (which reads on the claimed penetration method hardness of 1 or more).
However, KAGATA does not explicitly teach wherein a solid content (A)/(B) mass between the colorant (A) and the olefin-based resin particles (B) is in a range of from 1 to 100.
Given KAGATA teaches the ink composition comprising polyolefin wax including waxes produced from olefin (i.e., ethylene, propylene, and butylene) or derivatives thereof, copolymers thereof [0070-0071] in the amount of 0.01 mass% to 10 mass% [0077] and color material including pigment [0081-0089] in the amount of 1.5 mass% to 10 mass% [0092], it would have been obvious to one of ordinary skill in the art to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MFEP 2131.03 and MPEP 2144.05I.
With regard to the claim limitations, “An aqueous ink composition suitable for a writing instrument,” Even though KAGATA does not teach an ink composition suitable for a writing instrument use of his composition, the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393.
Regarding claim 2, KAGATA teaches the ink composition comprises polyolefin wax including waxes produced from olefin (i.e., ethylene, propylene, and butylene) or derivatives thereof, copolymers thereof [0070-0071] in the amount of 0.01 mass% to 10 mass% [0077].
Regarding claims 3-5, KAGATA substantially teaches the aqueous ink composition as claimed, see paragraphs 8-10 above. The position is taken that the ink composition would intrinsically possess the dissolved oxygen concentration, viscosity, and surface tension as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot 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).
Regarding claims 8-14, KAGATA substantially teaches the aqueous ink composition as claimed, see paragraphs 8-11 above. The position is taken that the ink composition would intrinsically possess the dissolved oxygen concentration, viscosity, and surface tension as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot 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).
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over MIYOSHI et al. (U.S. Publication No. 2019/0211220, hereinafter MIYOSHI) as taught by a technical data sheet from MITSUI.
Regarding claims 1, 2, 6, and 7, MIYOSHI teaches an aqueous ink composition for writing instruments (ballpoint pen [0048-0049]) containing pigmented microspheres (also known as colored microspheres) each having a matrix comprising water and a polymer and unpigmented microspheres (also known as non-colored microspheres) (Abstract; [0008, 0015, 0025]).
The colored microsphere [0027] include water-insoluble dye [0032-0035]. The amount of colored microsphere is from 5 mass% to 40 mass% [0023]. Note: the colored microspheres read on a colorant comprising a pigment.
The non-colored microspheres include a matrix composed of a polymer particles [0041-0045] having an average particle diameter of 0.5 µm to 5 µm [0046]. An example of non-colored microspheres including polyethylene particles (Chemipearl W500 having an average particle size of 2.5 µm [0080]). As evidenced by the technical data sheet, Chemipearl W500 has a penetration hardness of 10.
The non-colored microspheres can be 1 mass% to 25 mass% [0024]. Note: non-colored microspheres reads on olefin-based resin particles.
However, MIYOSHI does not explicitly teach wherein a solid content (A)/(B) mass between the colorant (A) and the olefin-based resin particles (B) is in a range of from 1 to 100.
Given MIYOSHI teaches colored microspheres in an amount of 5 mass% to 40 mass% and non-colored microspheres in an amount of 1 mass% to 25 mass%, it would have been obvious to one of ordinary skill in the art to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MFEP 2131.03 and MPEP 2144.05I.
Regarding claims 3-5, MIYOSHI substantially teaches the aqueous ink composition as claimed, see paragraphs 16-18 above. The position is taken that the ink composition would intrinsically possess the dissolved oxygen concentration, viscosity, and surface tension as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot 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).
Regarding claims 8-14, MIYOSHI substantially teaches the aqueous ink composition as claimed, see paragraphs 16-18 above. The position is taken that the ink composition would intrinsically possess the dissolved oxygen concentration, viscosity, and surface tension as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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