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 Office Action is in response to Applicant’s response to a Nonfinal rejection filed May 1, 2026.
Claims 1-5 are pending.
This Office Action is FINAL.
Claim Analysis
Summary of Claim 1:
An inkjet ink comprising:
an aqueous medium; and pigment particles dispersed in the aqueous medium, wherein
the pigment particles contain a pigment and a specific resin,
the specific resin includes an acid group and a first repeating unit derived from a specific monomer, and has a crosslinking structure derived from a carbodiimide crosslinking agent,
the specific resin has a neutralization rate of at least 20% and no greater than 50%,
the first repeating unit has a percentage content in the specific resin of at least 1.0% by mass and no greater than 20.0% by mass, and
the specific monomer has a morpholine structure or a pyrrolidone structure.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Aotani et al. (JP 2019038890 as listed on IDS dated June 10,2025) in view of Lee et al. (US 20110046295).
The examiner will refer to the English translation of Aotani et al. (JP 2019038890) provided by the Applicant.
Regarding claim 1 and 2, Aotani et al. teach in Example 7 a colorant dispersion formed from mixing water, colorant particles, resin particles P-3 comprising acrylic acid monomers, and a carbodiimide crosslinking agent ([0089-0090], Table 3, machine translation provided below), thereby reading on an aqueous medium, pigment particles, and a resin including an acid group and a crosslinking structure as recited in the instant claim.
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Aotani et al. is silent on if the resin P-3 has a neutralization rate as recited in the instant claim.
However, Aotani et al. teach the degree of neutralization is of the resin is preferably from 10 to 100 mol% [0054], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the volumed median particle size as taught by Aotani et al.
Aotani et al. is silent on the resin particles comprising a specific monomer as recited in instant claims 1 and 2.
Lee et al. teach a colorant dispersion comprising a colorant and a polymer resin obtained by polymerizing a composition comprising a basic monomer, a macromonomer, and a polymerizable unsaturated monomer (claim 1). Lee et al. teach the basic monomer includes N-vinyl pyrrolidone [0043], thereby reading on the specific monomer of instant claim 1 and 2. Lee et al. further teach the basic monomer is present in an amount of about 1 to about 80 parts by weight based on 100 parts by weight of the polymerizable unsaturated monomer and the amount of macromonomer is about 1 to about 100 parts by weight based on 100 parts by weight of the polymerizable unsaturated monomer (claims 8 and 9). Therefore, the equivalent amount of the first repeating unit is calculated to be 0.5% to 45% by mass based on the specific resin taught by Lee et al. and thereby overlapping with the claimed range of at least 1.0% by mass and no greater than 20.0% by mass.
Lee et al. offer the motivation that electrostatic interaction between the colorant and the basic monomer may occur and thereby reduces the amount of polymer resin in an aqueous solution and inhibits clogging of the colorant with a large particle size [0053]. Aotani et al. is also concerned about clogging due to the particle size [0028]. Therefore, it would have been obvious to one of ordinary skill in the art to add the basic monomer of Lee et al. to the resin particle of Aotani et al. with reasonable expectation that the clogging of the particles would be reduced.
Regarding claim 3, Aotani et al. teach in Example 7 the volume median particle size is 35 µm, thereby lying outside the claimed range.
However, Aotani et al. teach the volume median size of the resin particle is 20 to 100 nm (claim 3), thereby overlapping the claimed range of 80 nm to 130 nm. Therefore, it would have been obvious to one of ordinary skill in the art to select the volume median particle size as taught by Aotani et al.
Regarding claim 4, Aotani et al. teach the resin particle P-3 of Example 7 comprises the 20% of monomer A-3 having the structure shown in General Formula (1) shown below:
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Wherein R1 = methyl, R2 = ethylene, R3 = methyl, and m = 23 (see Table 1, machine translation provided below), thereby reading on the second repeating unit derived from a monomer with a polyethylene glycol structure and lying within the claimed range.
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Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Aotani et al. (JP 2019038890 as listed on IDS dated June 10,2025) in view of Lee et al. (US 20110046295) in further view of Kee et al. (US 20070155856).
The ink jet ink of claim 1 is incorporated herein by reference.
Regarding claim 5, Aotani et al. and Lee et al. is silent on the specific monomer has a morpholine structure. Kee et al. teaches a polymer resin binder of inkjet ink comprising a polymer of multiple types of functional monomer, wherein the polymer resin binder contains an amine based organic material such as morpholine (claim 3), thereby reading on the specific monomer of instant claim 5. Kee et al. further teach the amine based organic material is 0.1 to 30 weight% based on 100 weight % of the functional monomer [0023], thereby overlapping the claimed amount of the first repeating unit as recited in the instant claim. Kee et al. offer the motivation that the specific monomer improves dispersion stability [0145]. Aotani et al. is also concerned with the dispersion stability of the ink jet ink [0001]. Therefore, one of ordinary skill in the art would have found it obvious to add the morpholine monomer taught by Kee et al. to the inkjet ink of Aotani et al. in view of Lee et al. with reasonable expectation that the dispersion stability would improve.
Response to Arguments
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive.
Applicant states “By controlling the neutralization rate to a narrowly defined range ‘20-50%’ and combining it with a resin containing a specific monomer, the application successfully achieves both excellent “preservation stability” and “inhibit occurrence of nozzle clogging”.
The examiner acknowledges that the examples shown in Table 5 does appear to have unexpected results in view of the neutralization rate. However, the examples are not commensurate in scope with claim 1. Claim 1 recites “the specific resin includes an acid group and a first repeating unit derived from a specific monomer, and has a crosslinking structure derived from a carbodiimide crosslinking agent”. However, examples resins A-M only use methacrylic acid as an acid group (see Table 1). There is no evidence that all acids represented in the claim language would behave in the same manner. Therefore, the examples are not commensurate in scope with claim 1.
Furthermore, the amounts of the acid groups present in the specific resin would also have an effect on the structure of the specific resin as well. However, Applicant has only provided data for 30.7% by mass of methacrylic acid of the total composition. There is no evidence that any amount of the acid group would behave in the same manner.
The Applicant states “the present specification discusses a technical concept where the hydrophilic potential of the entire resin is prepared in advance to have a desired neutralization rate of "20-50%" (neutralized in advance) before coating the pigment, using a "theoretical value calculated from the monomer composition of the specific resin" as a management basis.”
The examiner is unconvinced and directs attention to instant claim 1, wherein the claim reads “An inkjet ink comprising”. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. (See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004); Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claims language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).) Therefore, the claim rendered obvious because Aotani et al. teach the neutralization rate.
The Applicant states “Aotani vividly demonstrates in its Comparative Example (Colorant Particle B-17) that attempting the coat the colorant using a resin that has been 100% neutralized from the beginning results in failure, thereby explicitly denying the technical concept of the present specification of neutralizing in advance.
The examiner disagrees. Comparative example B-17 referenced by the Applicant appears to teach away from a 100% neutralized resin. However, Aotani et al. do not explicitly teach away from any value less than 100% neutralized. Therefore, Aotani et al. still teaches the broad neutralization rate of 10 to 100 mol% and thereby overlaps the claimed range as rejected in claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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