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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-6) in the reply filed on 1/6/2026 is acknowledged. The traversal is on the ground(s) that a search of all the claims would not impose a serious burden on the Office. This is not found persuasive because inventions I-XII would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/6/2026.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryoji et al (JP2019073704A, machine translation is referenced herein).
Regarding claim 1, Ryoji teaches an ink composition comprising a resin, a zeolite and a solvent [P12L23-24]. Therefore, the ink is a liquid.
The zeolite comprises primary particles of average size of 40 nm or more and 1000 nm or less [P9L7-10]; and a secondary or higher-order particles of average size of 50 nm or more and 3000 nm or less in which primary particles are aggregated [P9L21-25].
Thus, the secondary or higher-order zeolite particles read on the claimed inorganic filler comprising a zeolite, with the particle size of 50-3000 nm (0.05-3 µm) overlapping the claimed particle size of 1.0-10 µm.
The primary zeolite particles read on the claimed small particle size inorganic filler, with the particle size of 40-1000 nm (0.04-1 µm) overlapping the claimed particle size of 0.1-1.0 µm.
A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 2, Ryoji teaches that the ink composition comprises a dispersant [P13L21-23], including 3-aminopropyltriethoxysilane, 3- (2-aminoethyl) aminopropyltrimethoxysilane, dimethylamine, tributylamine, trimethylamine, cyclohexylamine, ethylenediamine, polyethyleneimine [P13L41-47].
Regarding claim 3, Ryoji teaches that the zeolite’s CBU contains d6r [P3L22-23, P40L7-8].
Regarding claim 4, Ryoji teaches that the zeolite is an aluminosilicate [P6L54].
Regarding claim 5, Ryoji teaches that the resin can be an epoxy resin [P10L25, P10L54-56]. It would have been obvious to one of ordinary skill in the art at the time of filing to select epoxy resin as the resin in Ryoji’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Regarding claim 6, Ryoji teaches that the resin can be an epoxy resin as stated above. Ryoji teaches that the viscosity of the composition is easy to handle by selecting the right resin molecular weight [P11L39-40, P11L] and the right solvent content [P13L16]; and viscosity adjustment can be easily performed [P17L30-31].
Thus, Ryoji recognizes the claimed viscosity being affected by factors such as resin molecular weight and solvent content; and viscosity adjustment can be easily performed. It would have been obvious to one of ordinary skill in the art at the time of filing to optimize viscosity based on the aforementioned factors by routine experimentation, thereby arriving at the claimed viscosity at 23°C of 0.1 Pa.s or more and 250 Pa.s or less. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762