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 .
This communication responds to the application and amended claim set filed June 30, 2023. Claims 1-9 are currently pending.
Priority
This application claims priority to JP2022-108217 filed July 05,2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 4 is objected to because of the following informalities:
In claim 4, line 2, it is suggested that the phrase “rate of a content of the second monomer to a content of the first monomer” be replaced with “ratio of a content of the second monomer to a content of the first monomer” .
Summary of Claim 1:
A dispersant-containing liquid comprising:
a polyester functioning as a dispersant; and
water,
wherein the polyester includes, as a monomer component, a first monomer having an aromatic ring on a side chain and a second monomer having at least one selected from the group consisting of a carboxy group which forms no ester bond and a sulfo group.
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 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.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Komada (US PG Pub 2022/0055378 A1 as listed on the IDS dated 12/26/2025).
Regarding claim 1, Komada teaches that a non-crystalline polyester resin having specific acid values forms composite particles with a disperse dye, which are dispersed in an aqueous medium, thereby reading on the dispersant-containing liquid, where the polyester functions as a dispersant (abstract, [0012], [0018],[0020]). Komada further teaches the polyester includes at least one monomer derived from a polyhydric alcohol and at least one monomer derived from a polybasic carboxylic acid [0025], wherein one of the examples of the polyhydric alcohol usable for polymerization of the polyester resin includes bisphenol A alkylene oxide adducts, diols like ethylene glycol and tri or higher hydric alcohols to provide control over hydroxyl content [0014]-[0015] and crystallinity [0016]-[0017], ( [0031]-[0033],[0036]-[0037],[0041).
Additionally Komada teaches the polyester includes two or more monomers derived from a polybasic carboxylic acid [0048], wherein the preferably polybasic carboxylic acid are aromatic dicarboxylic acids such as benzyl malonic acid ([0049]-[0050]), (which correspond to the first monomer), aromatic tri or higher basic carboxylic acids [0053], and aromatic dicarboxylic acid having a sulfonic group ([0054]-[0055]), (which correspond to the second monomer having a sulfo group).
The difference between Komada and the present claims is that the examples does not disclose a polyester containing a monomer having an aromatic ring on the side chain as the monomer component.
However, Komada teaches the benzyl malonic acid can be used as a monomer to produce the polyester [0050]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used benzyl malonic acid as the aromatic dicarboxylic acids of the examples because Komada specifically teaches that this monomer can be substituted and it would be expected to have a reasonable expectation of success given that Komada teach them as potential monomers for use in the different examples. Further, it is noted that using knows polyols as taught by Komada (example A2, A6, B6, Tables 1-3), a dicarboxylic acid having a sulfonic group that provide hydrophilicity and the benzyl malonic acid that impart hydrophobic affinity with a disperse dye, it is expected to improve the stability of the inkjet composition [0019].
Regarding claims 2-4, Komada is silent on the content of the first monomer with respect to all monomers forming the polyester. Komada is further silent on the content of the second monomer with respect to all monomers forming the polyester as recited in the instant claim 3 and the rate of content of the second monomer to a content of the first monomer on a molar basis as recited in the instant claim 4.
Komada teaches 0.5 -10 mol% of tri or higher hydric alcohol based on the total of polyhydric alcohol monomers [0028]; 50-90 mol % of ethylene glycol based on the total of polyhydric alcohol monomers to provide the desire Tg and hydroxyl value [0028]- [0029]; bisphenol A alkylene oxide adducts to provide a non-crystalline polyester resin [0036], which improve hydrophobicity. Komada further teaches the polyester preferably includes 2-4 polyhydric alcohols to adjust hydroxyl value and resin properties [0030]-[0031]. Additionally, Komada teaches up to 15 mol% of a polybasic carboxylic acid with a sulfonic acid group to improve hydrophilicity and dispersion [0046]. Furthermore, the reference teaches the polyester resin includes two or more monomers derived from a polybasic carboxylic acid to adjust the acid value of the polyester resin including benzyl malonic acid [0048] –[0050], which improves hydrophobicity, non-crystallinity and affinity of the disperse dye. As such, the contents of the polyhydric alcohol, aromatic dicarboxylic acid monomers such as benzyl malonic acid and the sulfonated dicarboxylic acid will control the hydroxyl value, acid value, Tg, non-crystallinity and the hydrophilic-hydrophobic balance to obtain a polyester resin that form stable composite particles in an aqueous inkjet composition (dispersion stability). Therefore the content of the first monomer, the second monomer and the ratio of the second to the first monomer can be optimized to reach the desired stability of the ink jet composition via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. Inre Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the content of the first and the second monomer and the ratio of the second to the first monomer for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 5, Komada teaches the dispersant -containing liquid further comprises a neutralizer including ammonia water, sodium hydroxide aqueous solution and water soluble organic amine such as diethylamine among others [0079], as required by the instant claim.
Regarding claim 7, Komada teaches an inkjet ink (which correspond to the dispersion) comprising an aqueous medium, emulsified particles of a composite of a polyester resin and a disperse dye (which correspond to the dispersoid) (claim 1), wherein the polyester functions as the dispersant because it maintains the dye particles suspended and prevent them to clump together or settle in the water. The limitation of the first monomer and second monomer of the polyester has been discussed in the rejection of claim 1.
Regarding claim 8, Komada teaches the dispersoid is a disperse dye (claim 1), as required by the instant claim.
Regarding claim 9, Komada teaches the dispersion is an ink jet composition (claim 1) as required by the instant claim.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Komada (US PG Pub 2022/0055378 A1 as listed on the IDS dated 12/26/2025 ) in view of Roller et al. (WO2022/112042 A1).
Examiner will refer to the US equivalent of Roller et al., US2024/0052068.
Regarding claim 6, Komada teaches teach the dispersant containing liquid of claim 1 as set forth above and incorporated herein by reference. Komada teaches that due to the ink containing a neutralizer, the carboxy group in the polyester resin in the composite particles is ionized and the composite particles are stably emulsion dispersed [0079].
Komada is silent on the water-soluble organic amine is hydroxylamine.
However, Roller et al. teach an aqueous polymer dispersion containing carboxylic acid groups that are neutralized to form a partial or complete neutralized polymer emulsion [0098] by using sodium hydroxide, organic amine such as alkyl hydroxylamine and ammonia or combinations to form water soluble salts ([0099]). Roller et al. teach the ammonia soluble in water as a functional equivalent to the ammonia soluble in water as disclosed by Komada. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore, it would have been held that one of ordinary skill in the art could substitute the hydroxylamine of Roller et al. for the ammonia soluble in water or Komada, thereby arriving at the claimed invention.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, 2 and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-9 of copending Application No. 18/345,401 (reference application) in view of Komada (US PG Pub 2022/0055378) .
Although the claims at issue are not identical, they are not patentably distinct from each other because both claims of sets teach a dispersant- containing liquid comprising a polyester functioning as a dispersant, water, wherein the polyester has a carboxy group which form no ester bond and a sulfo group. Further, both claims of sets teach a dispersion comprising a polyester functioning as a dispersant, water and a dispersoid.
The difference between the claims of the ‘401 application and the present claims is that the polyester includes a monomer having an aromatic ring on a side chain.
However, Komada teaches a inkjet ink (which correspond to the dispersion) comprising an aqueous medium, emulsified particles of a composite of a polyester resin and a disperse dye (which correspond to the dispersoid) (claim 1), wherein the polyester functions as the dispersant because it maintains the dye particles suspended and prevent them to clump together or settle in the water. Komada further teaches the polyester includes at least one monomer derived from a polyhydric alcohol and at least one monomer derived from a polybasic carboxylic acid [0025], wherein the polycarboxylic acid monomer includes benzyl malonic acid [0050], which provides pendant aromatic groups on the polyester. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated benzyl malonic acid as one of the monomers into the polymerization process of the claims of the ‘401 application to impart hydrophobic affinity with a disperse dye, which improves the stability of a dispersion (ink jet composition) [0019].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763