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 3-5 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.
In claims 3, 4, and 5, the terms “water-soluble” and “water-insoluble” used throughout the claims are relative terms which render the claims indefinite. Applicants provide no indication of how exactly “water-soluble” or “water-insoluble” should be defined. For the purpose of examination, the Examiner is interpreting the term “water soluble” as used throughout the claims to refer to any substance where more than 1 g of the substance dissolves in 100 g of distilled water at 25 °C. Furthermore, the term “water-insoluble” as used throughout the claims will be interpreted to refer to any substance where 1 g or less of the substance dissolves in 100 g of distilled water at 25 °C. Such interpretations are supported by the prior art, see US-20220213341-A1 at para. 0074. To correct, the Examiner suggests deleting claim 3 and replacing the term “water-soluble organic amine” in claims 4-5 with specific compounds, e.g., hydroxylamine.
Moreover, in claim 3, the term “water-soluble group” generates confusion. It is unclear which “groups” are intended to be excluded. Is an -OH group water-soluble? Applicants’ examples suggest the presence of hydroxyl groups are okay, given some aromatic monomers in the examples contain hydroxyl functional groups (see Applicant’s specification at pg. 47, teaching benzenedimethanol as an aromatic monomer, which contains hydroxyl groups). However, this leads to confusion, as hydroxyl groups are conventionally viewed as “water-soluble” groups. To correct, the Examiner suggests deleting claim 3. For the purposes of examination, the Examiner is interpreting any water-insoluble aromatic monomer that does NOT contain a sulfo group, a carboxy group, or a phosphoric acid group to read on the claimed monomer (see Applicant’s specification at para. 0043).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanou et al. (US-5913972-A) (hereinafter referred to as “Kanou”), with evidence from ChemBK (“Bisphenol A Bis(2-Hydroxyethyl)Ether.” ChemBK, www.chembk.com/en/chem/Bisphenol%20A%20bis(2-hydroxyethyl)ether) (hereinafter referred to as “ChemBK”) as to the rejection of claim 3 only.
Regarding claim 1, Kanou teaches a dispersant-containing liquid (see Kanou at col. 2, lines 54-62, teaching an aqueous pigment dispersion comprising a pigment, an aqueous medium, and a dispersant resin; also see example 2 of Kano at col. 8, lines 29-48) comprising:
• a polyester functioning as a dispersant; water; and a solvent (see Kanou at col. 2, lines 54-62, teaching the dispersant as being a polyester dispersant; also see example 2 of Kano at col. 8, lines 29-48, teaching the formation of an ink containing the polyester resin dispersant, water, and a solvent, ethylene glycol);
• wherein the polyester has a carboxy group which forms no ester bond and a sulfo group (see example 2 of Kano at col. 8, lines 29-48, teaching the formation of a polyester resin formed from 5-sodium sulfoisophthalic acid and bisphenol A-dihydroxyethyl ether, followed by an addition of pyromellitic anhydride; 5-sodium sulfoisophthalic acid contains a sulfonic group, and thus, it necessarily follows the polyester contains a sulfo group; furthermore, the addition of pyromellitic anhydride at the end of the polymerization necessarily results in “free” carboxy groups not part of an ester bond);
• the solvent includes a polyol having a logP of -2.0 to 0.0 (see example 2 of Kano at col. 8, lines 29-48, teaching the formation of an ink containing the polyester resin dispersant, water, and ethylene glycol; ethylene glycol has a logP value of -1.36, as disclosed by Applicant’s specification at para. 0054).
Regarding claim 2, see example 2 of Kanou at col. 8, lines 29-48, teaching the formation of a polyester containing 65.1 parts of 5-sodium-sulfoisophthalic acid and 39.7 parts of pyromellitic anhydride; 5-sodium-sulfoisophthalic acid has a molar mass of 268.18 g/mol, and pyromellitic anhydride has a molar mass of 218.12 g/mol; thus, example 2 of Kano contains 0.243 moles of 5-sodium-sulfoisophthalic acid and 0.182 moles of pyromellitic anhydride (65.1 parts 5-sodium-sulfoisophthalic acid/268.18 = 0.243 moles of 5-sodium-sulfoisophthalic acid; 39.7 parts pyromellitic anhydride/218.12 = 0.182 moles of pyromellitic anhydride); thus, the molar ratio of pyromellitic anhydride to 5-sodium-sulfoisophthalic acid in example 2 of Kanou is 74.9% (0.182 moles pyromellitic anhydride/0.243 moles 5-sodium-sulfoisophthalic acid • 100 = 74.9 mol%); this value of 74.9% falls within the claimed range.
Regarding claim 3, see example 2 of Kanou at col. 8, lines 29-48, teaching the formation of a polyester containing 65.1 parts of 5-sodium-sulfoisophthalic acid, 196.2 parts of bisphenol A dihydroxyethyl ether, and 39.7 parts of pyromellitic anhydride; 5-sodium-sulfoisophthalic acid has a molar mass of 268.18 g/mol, bisphenol A dihydroxyethyl ether has a molar mass of 316.4 g/mol, and pyromellitic anhydride has a molar mass of 218.12 g/mol; thus, example 2 of Kanou contains 0.243 moles of 5-sodium-sulfoisophthalic acid, 0.620 moles of bisphenol A dihydroxyethyl ether, and 0.182 moles of pyromellitic anhydride (65.1 parts 5-sodium-sulfoisophthalic acid/268.18 = 0.243 moles of 5-sodium-sulfoisophthalic acid; 196.2 parts of bisphenol A dihydroxyethyl ether/316.4 = 0.620 moles of bisphenol A dihydroxyethyl ether; 39.7 parts pyromellitic anhydride/218.12 = 0.182 moles of pyromellitic anhydride); thus, the mol ratio of the aromatic monomer (bisphenol A dihydroxyethyl ether) to the total of all the monomers is 59.3% (0.620 mol bisphenol A dihydroxyethyl ether/(0.243 + 0.620 + 0.182) • 100 = 59.3%); this value of 59.3% falls within the claimed range; it is noted that bisphenol A dihydroxyethyl ether is also known as bisphenol A bis(2-hydroxyethyl)ether, and is “water-insoluble” (according to the Examiner’s interpretation of the term “water-insoluble” set forth in the 112(b) interpretation earlier above), as evidenced by ChemBK at pg. 2 (see ChemBK at pg. 2, teaching bisphenol A bis(2-hydroxyethyl)ether to have a water-solubility of 111.8 mg/L, which is equivalent to 0.01118 g per 100 mL of water; this value of 0.01118 g is less than 1 g, and thus falls within the term “water-insoluble” as defined in the 112(b) interpretation section above).
Regarding claims 7 and 9, see claim 1 rejection above; also see Kanou at col. 2, lines 54-62, teaching the dispersion to contain a pigment (corresponds to the claimed “dispersoid”); also see Kanou at col. 3, lines 40-45, teaching the dispersion may be used for ink-jet printing.
Claims 1, 2, and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komada (US-20220055378-A1) (hereinafter referred to as “Komada”).
Regarding claim 1, Komada teaches a dispersant-containing liquid (see Komada at para. 0004, teaching an inkjet ink containing an aqueous medium, composite particles, and a cross-linking agent, where the composite particles are emulsified particles of a composite of a polyester resin and a disperse dye; the ink of Komada corresponds to the claimed “dispersant-containing liquid;” also see Komada at para. 0012, teaching the composite particles as dispersed in the aqueous medium; thus, the polyester in the composite particles of Komada necessarily functions as a “dispersant” for the disperse dye, given that it holds the disperse dye and disperses it throughout the aqueous medium) comprising:
• a polyester functioning as a dispersant; water; and a solvent (see Komada at para. 0004 and 0012, teaching composite particles containing a disperse dye and a polyester, which functions as a dispersant; also see Komada at para. 0004 and 0090, teaching the ink as containing an aqueous medium and a moisturizing agent, i.e., a solvent);
• wherein the polyester has a carboxy group which forms no ester bond and a sulfo group (see Komada at para. 0020, 0064, and 0079, teaching the polyester resin to include carboxy groups, i.e., “free” carboxy groups which do not form an ester bond; also see Komada at para. 0053 and Example A2 at Table 2 at pg. 13, teaching the polyester may contain trimellitic acid as a monomer; trimellitic acid is the same monomer taught by Applicants, see Applicant’s specification at para. 0028; thus, it necessarily follows that following the incorporation of this monomer in the polyester, “free” carboxy groups are present in the polyester; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); also see Komada at para. 0054, teaching the polyester may further be formed from a polybasic carboxylic acid containing a sulfonic acid group; also see Komada at para. 0054, 0141, and Example A2 at Table 2 at pg. 13, teaching the polyester may contain sodium 5-sulfoisophthalate (i.e, 5-sulfoisophthalic acid) as a monomer; sodium 5-sulfoisophthalate (i.e, 5-sulfoisophthalic acid) is the same monomer taught by Applicants, see Applicant’s specification at para. 0029; thus, it necessarily follows that following the incorporation of this monomer in the polyester, “free” sulfonic acid groups are present in the polyester; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)); accordingly, Komada necessarily teaches a polyester containing carboxy groups and a sulfonic acid group (e.g., see Example A2 of Komada)); and
• the solvent includes a polyol having a logP of -2.0 to 0.0 (see Komada at para. 0090, teaching the ink may contain a moisturizing agent, such as ethylene glycol; ethylene glycol has a logP value of -1.36, as disclosed by Applicant’s specification at para. 0054).
Regarding claim 2, see Example A2 of Komada at Table 2 at pg. 13 and para. 0141, teaching an example polyester containing 0.01 moles of trimellitic acid and 0.007 moles of SSIP, or sodium 5-sulfoisophthalate; thus, the ratio of the monomer containing the “free” carboxy group to the monomer having a sulfo group is 0.01/0.007, or 143%; this value of 143% falls within the claimed range.
Regarding claims 7-9, see claim 1 rejection above, which is incorporated herein; also see Komada at para. 0004.
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 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Komada, with evidence from ChemicalBook (“BISPHENOXYETHANOLFLUORENE.” ChemicalBook, www.chemicalbook.com/ChemicalProductProperty_EN_CB6747899.htm) (hereinafter referred to as “ChemicalBook”) as to the rejection of claim 3 only.
Regarding claim 3, Komada teaches the dispersant-containing liquid according to claim 1 outlined above, wherein the polyester includes a water-insoluble aromatic monomer having no water-soluble group but having an aromatic ring (see Komada at para. 0034, teaching the polyester may contain bisphenoxyethanol fluorene as a suitable aromatic polyhydric alcohol; bisphenoxyethanol fluorene is a water-insoluble compound, as evidenced by ChemicalBook, see the bottom of the page).
While Komada teaches the dispersant-containing liquid above, Komada fails to explicitly teach a content of the water-insoluble aromatic monomer with respect to all monomers forming the polyester to be 25 to 75 percent by mole.
However, Komada does teach an example polyester, polyester B6, which contains 1.232 total moles of monomers (0.289 + 0.096 + 0.005 + 0.093 + 0.532 + 0.183 + 0.019 + 0.015 = 1.232) (see Example B6 of Komada at Table 3 at pg. 13). Example B6 of Komada further contains 0.749 moles of polyhydric alcohol component (0.532 mol EG + 0.183 mol BPA-PO + 0.019 mol diethylene glycol + 0.015 mol pentaerythritol = 0.749 moles total of polyhydric alcohol component). Thus, Komada reasonably teaches their polyester may contain 60.1 mol% of polyhydric alcohol component (0.749 mol polyhydric alcohol component/1.232 moles total • 100 = 60.1 mol% of polyhydric alcohol component in the polyester), as exemplified in their example embodiments.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the polyhydric alcohol component, e.g., bisphenoxyethanol fluorene, in the polyester of Komada to be 60.1 mol% relative to the total amount of all the monomers, as Komada teaches an example where the polyhydric alcohol component is contained in that amount (see Example B6 of Komada at Table 3 at pg. 13).
This value of 60.1 mol% falls within the claimed range.
Regarding claim 6, see Komada at para. 0090, teaching the content of the moisturizing agent (which corresponds to the claimed “polyol”) to range from 0.1 to 30% by mass in the ink; also see Komada at para. 0016 and 0024, teaching the content ratio of the polyester resin in the composite particles to range from 50 to less than 100% by mass, and the content of the composite particles to range from 5 to 50% by mass in the ink; thus, Komada necessarily teaches the content of the polyester resin in the ink to range from 2.5% to less than 50% by mass (5% composite particle content min • 0.5 ratio of polyester resin min = 2.5% polyester resin min in ink; 50% composite particle content max • 1 ratio of polyester resin max = 50% polyester resin max in ink); thus, Komada suggests a ratio of the moisturizing agent with respect to 100 parts of the polyester to range from 0.002 to 12 (0.1% moisturizing agent content min/50% polyester resin max = 0.002 ratio min; 30% moisturizing agent content max/2.5% polyester resin min = 12 ratio max); this range of 0.002 to 12 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Komada, as applied to claim 1 above, and further in view of Sekiguchi (JP-2011225714-A), with reference to the included machine translation (hereinafter referred to as “Sekiguchi”).
Regarding claims 4-5, Komada teaches the dispersant-containing liquid according to claim 1 outlined above, wherein the liquid further comprises a monovalent inorganic base (see Komada at para. 0079, teaching the ink may contain a neutralizer, such as sodium hydroxide).
While Komada teaches the liquid above, Komada fails to explicitly teach the liquid as further containing a water-soluble organic amine, wherein the water-soluble organic amine is hydroxylamine.
However, Sekiguchi teaches an inkjet ink (see Sekiguchi at pg. 1, para. 1). Sekiguchi further teaches the ink may include an antioxidant, such as hydroxylamine compounds (see Sekiguchi at pg. 6, last paragraph).
Komada teaches their ink may include an antioxidant (see Komada at para. 0092).
In this case, hydroxylamine compounds - which includes hydroxylamine - are known to suitably be used as antioxidants in inkjet ink compositions (as exemplified by Sekiguchi at pg. 6, last paragraph).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use hydroxylamine as the antioxidant in the ink of Komada, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 7, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, and 11 of U.S. Patent Application No. 18/441,099 (hereinafter referred to as “’099”) in view of Komada.
With regard to instant claim 1, claim 1 of ‘099 claims all of the instant limitations except for the presence of the claimed polyol. However, it is well known that moisturizing agents, such as ethylene glycol, may be added to similar compositions to prevent the liquid component from evaporating (see Komada at para. 0090).
Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious to use ethylene glycol as a moisturizing agent in the liquid of ‘099, in order to prevent the liquid component from evaporating (see Komada at para. 0090).
Following the above modification, the liquid of ‘099 contains ethylene glycol, which is a polyol having a logP value of -1.36, as disclosed by Applicant’s specification at para. 0054.
With regard to instant claims 2 and 7-9, although the claims at issue are not identical, they are not patentably distinct because instant claim 2 is met by claim 3 of ‘099 (the ‘099 range of 0 to 200% overlaps the instantly claimed range of 50 to 200%); instant claim 7 is met by claim 6 of ‘099; instant claim 8 is met by claim 6 of ‘099; and instant claim 9 is met by claim 11 of ‘099.
Claims 1, 4, 5, and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-9 of U.S. Patent Application No. 18/345,456 (hereinafter referred to as “456”) in view of Komada.
With regard to instant claim 1, claim 1 of ‘456 claims all of the instant limitations except for the presence of the claimed polyol. However, it is well known that moisturizing agents, such as ethylene glycol, may be added to similar compositions to prevent the liquid component from evaporating (see Komada at para. 0090).
Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious to use ethylene glycol as a moisturizing agent in the liquid of ‘’456, in order to prevent the liquid component from evaporating (see Komada at para. 0090).
Following the above modification, the liquid of ‘456 contains ethylene glycol, which is a polyol having a logP value of -1.36, as disclosed by Applicant’s specification at para. 0054.
With regard to instant claims 4, 5, and 7-9, although the claims at issue are not identical, they are not patentably distinct because instant claim 4 is met by claim 5 of ‘456; instant claim 5 is met by claim 6 of ‘456; instant claim 7 is met by claim 7 of ‘456; instant claim 8 is met by claim 8 of ‘456; and instant claim 9 is met by claim 9 of ‘456.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Suzuki et al. (US-20220213341-A1) teach a colored resin particle dispersion (see Suzuki at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731