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 of Group I, claims 1-6, without traverse in the reply filed on 01/06/2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2026.
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 3 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.
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Claim 2 claims the following compound of Formula 1 (labeled as “Compound A”):
[AltContent: textbox (Compound A)]
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In the above Formula 1, D1 can be
However, claim 3 claims the compound of Formula 1 may be a polyoxyethylene-1-(allyloxymethyl)alkyl ether ammonium sulfate. A polyoxyethylene-1-(allyloxymethyl)alkyl ether ammonium sulfate has a structure like the one shown below (labeled as “Compound B”):
[AltContent: textbox (Compound B)]
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In comparing the compounds, it appears that the claimed Formula 1 (Compound A) is missing a -CH2- group in the formula required by the polyoxyethylene-1-(allyloxymethyl)alkyl ether ammonium sulfate (Compound B). The missing -CH2- group is circled below:
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[AltContent: textbox (Compound A)]
[AltContent: textbox (Compound B)][AltContent: oval]
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Thus, a discrepancy exists between what is claimed in claim 2 (Compound A) and what is claimed in claim 3 (Compound B). In other words, claim 3 can never read on claim 2 given the missing -CH2- group. Accordingly, a 112(b) indefinite issue arises. For the purposes of examination, the Examiner is interpreting anything that reads on claim 3 (Compound B) to also read on claim 2 (Compound A). To correct, the Examiner suggests deleting claim 3.
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 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Miyabayashi (US-20050176877-A1) (hereinafter referred to as “Miyabayashi”) in view of Domichi et al. (JP-2006096882-A), with reference to the included machine translation (hereinafter referred to as “Domichi”).
Regarding claim 1, Miyabayashi teaches a method of preparing a coated pigment (see Miyabayashi at para. 0080, teaching a process for producing a microencapsulated pigment), the method comprising:
• preparing a pigment dispersion by mixing and dispersing first and second surfactants with a pigment in water (see Miyabayashi at para. 0080, teaching the process as including a step of adding an anionic polymerizable surfactant to an aqueous dispersion of pigment particles; also see Miyabayashi at para. 0218-0220, teaching Aqualon KH-10 as a suitable anionic polymerizable surfactant, and that Aqualon KH-10 is a mixture of two compounds having the below formula (33), where r is 9 and s is 10 in one compound, and r is 11 and s is 10 is the other compound:
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Thus, Miyabayashi teaches the mixing of two surfactants together with their pigment, given that Aqualon KH-10 is a mixture of two compounds; also see Miyabayashi at para. 0494, teaching an example process where Aqualon KH-10- is added to an aqueous dispersion of carbon black pigment particles and then mixed); and
• coating the pigment by mixing and emulsifying a monomer, a cross-linker, and a polymerizable surfactant, to and with the pigment dispersion (see Miyabayashi at para. 0080, teaching the process as including the step of adding a cationically polymerizable surfactant, a hydrophobic monomer, a crosslinkable monomer, and/or a monomer represented by a general formula (1) to the pigment dispersion, followed by mixing and polymerization; also see Miyabayashi at para. 0240, teaching trimethylolpropane triacrylate as a suitable crosslinkable monomer; also see Miyabayashi at para. 0389, teaching benzyl methacrylate as a suitable hydrophobic monomer; thus, Miyabayashi reasonably teaches the addition of a cationically polymerizable surfactant, benzyl methacrylate as a hydrophobic monomer, and trimethylolpropane triacrylate as a crosslinkable monomer to the pigment dispersion followed by mixing to achieve emulsification).
While Miyabayashi teaches the process outlined above, Miyabayashi fails to explicitly teach the polymerizable surfactant, the monomer, and the cross-linker to be added in the form of an emulsion to the pigment dispersion.
However, Domichi teaches an inkjet ink containing a polymer-coated pigment obtained by polymerizing a vinyl monomer on the surface of the pigment particles (see Domichi at pg. 3, para. 4). Domichi further teaches an example in which a pigment dispersion containing carbon black and a surfactant is first formed (see Domichi at pg. 8, last paragraph). Domichi then teaches the separate formation of a vinyl emulsion containing hydrophobic monomers (e.g., n-butyl methacrylate, methyl methacrylate) and a surfactant (e.g., Hytenol 18E) (see Domichi at pg. 8, last paragraph). Domichi then teaches the addition of the emulsion to the pigment dispersion following by polymerization to form the coated pigment (see Domichi at pg. 8, last paragraph and pg. 9, para. 1).
In this case, it is well-known in the art that similar pigment-coating processes include a step of mixing the monomers/surfactant separately into an emulsion prior to addition to the pigment dispersion (see Domichi at pg. 8, 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 mix the cationically polymerizable surfactant, the hydrophobic monomer (e.g., benzyl methacrylate), and the crosslinkable monomer (trimethylolpropane triacrylate) into an emulsion prior to addition to the pigment dispersion, as doing so in similar processes is well-known in the art (see Domichi at pg. 8, last paragraph and pg. 9, para. 1). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143. Moreover, the changing in the sequence of adding ingredients is an obvious modification. See MPEP § 2144(IV)(C)
Regarding claims 2-3, see Miyabayashi at para. 0218-020, teaching Aqualon KH-10 as a suitable anionic polymerizable surfactant, and that Aqualon KH-10 is a mixture of two compounds having the below formula (33), where r is 9 and s is 10 in one compound, and r is 11 and s is 10 is the other compound:
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Consequently, the first compound of Aqualon KH-10 (where r is 9 and s is 10) reads on the claimed “fatty alcohol polyglycol ether sulfate,” and the second compound of Aqualon KH-10 (where r is 11 and s is 10) reads on the claimed “second surfactant…represented by Formula 1;” further, the second compound of Aqualon KH-10 (where r is 11 and s is 10) is a polyoxyethylene-1-(allyloxymethyl)alkyl ether ammonium sulfate; also see the interpretation set forth in the 112(b) rejection above.
Regarding claim 6, see Miyabayashi at para. 0225, teaching diallyldimethylammonium chloride as a suitable cationic polymerizable surfactant.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Miyabayashi in view of Domichi, as applied to claim 1 above, and further in view of Miyabayashi (US-20040229974-A1) (hereinafter referred to as “Miyabayashi ‘974”).
Regarding claims 4-5, Miyabayashi teaches the process according to claim 1 outlined above, wherein the monomer is represented by Formula 2, wherein the monomer is 2,2,2-benzyl methacrylate (see Miyabayashi at para. 0389, teaching benzyl methacrylate (i.e., 2,2,2-benzyl methacrylate) as a suitable hydrophobic monomer).
While Miyabayashi teaches the process outlined above, Miyabayashi fails to explicitly teach the cross-linker as being trimethylolpropane-trimethacrylate.
However, Miyabayashi ‘974 teaches a very similar process as Miyabayashi (see MIyabayashi ‘974 at para. 0085-0087). Miyabayashi ‘974 further teaches the addition of a crosslinkable monomer, such as trimethylolpropane triacrylate or trimethylolpropane trimethacrylate (see Miyabayashi ‘974 at para. 0256).
In this case, trimethylolpropane trimethacrylate is a well-known crosslinkable monomer suitable for use in a similar process as that taught by Miyabayashi (see Miyabayashi ‘974 at para. 0085-0087 and 0256), and thus its use as the crosslinkable monomer in the process of Miyabayashi would yield a reasonable expectation of success.
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 trimethylolpropane trimethacrylate as the crosslinkable monomer in the process of Miyabayashi (i.e., instead of trimethylolpropane triacrylate), 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.
Following the above modification, the process of modified Miyabayashi contains both benzyl methacrylate (i.e., 2,2,2-benzyl methacrylate) and trimethylolpropane trimethacrylate, thus reading on the claims.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7 of U.S. Patent Application No. 18/351,918 (hereinafter referred to as ‘918) in view of Miyabayashi ‘974.
With respect to instant claims 1 and 4, claims 1 and 4 of ‘918 claim all the limitations of instant claim 1 except for the presence of a crosslinker.
However, Miyabayashi ‘974 teaches a very similar coating process as that instantly claimed (see Miyabayashi ‘974 at para. 0085-0087). Moreover, Miyabayashi ‘974 teaches the polymer coating the pigment particles to preferably include a crosslinkable monomer to improve solvent resistance and dispersion stability (see Miyabayashi ‘974 at para. 0254-0255). Miyabayashi ‘974 additionally teaches trimethylolpropane trimethacrylate as a suitable crosslinkable monomer (see Miyabayashi ‘974 at para. 0256).
Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add a crosslinker to the process of ‘918 in order to improve solvent resistance and dispersion stability of the coated pigment (see Miyabayashi ‘974 at para. 0256).
With respect to instant claims 2, 3, 5, and 6, although the claims at issue are not identical, they are not patentably distinct because instant claim 2 is met by claim 2 of ‘918; and instant claim 3 is met by claim 3 of ‘918; instant claim 5 is met by claim 5 of ‘918; and instant claim 6 is met by claim 7 of ‘918.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731