CTNF 18/364,150 CTNF 86574 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-30-02 AIA 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 1-11 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. The claim recites, “wherein the particulate component comprises at least one kind selected from the group consisting of: a pigment and a resin particle,” the use of the word, “kind” so extends the scope of the expression as to render it indefinite. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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 non-obviousness. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-4, 6, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over YAMAMOTO et al. (U.S. Publication No. 2016/0215152, hereinafter YAMAMOTO) in view of SAITO et al. (U.S. Publication No. 2010/0033522, hereinafter SAITO) . Regarding claims 1, 6, 10, and 11, YAMAMOTO substantially teaches an aqueous ink, an ink cartridge, and ink jet recording method [0001]. The ink jet recording method wherein a method of ejecting the ink by a recording head of an ink jet system to record an image on a recording medium. Systems for ejecting the ink include a system in which mechanical energy is applied to the ink and a system in which mechanical energy is applied to the ink and a system in which thermal energy is applied to the ink ([0085-0087]; Figs. 2A and 2B). The aqueous ink for the ink jet include a pigment [0034], a water-soluble resin for dispersing the pigment [0038-0045], an acetyleneglycol surfactant (reads on the first surfactant), and a fluorinated surfactant (Abstract; [0008 and 0032-0033]). The acetyleneglycol surfactant has a General Formula (I) [0057-0058]]: PNG media_image1.png 314 476 media_image1.png Greyscale Specific examples of the acetyleneglycol surfactant include commercial products available under the tradenames, Acetylenol E 60 and Acetylenol E 100 manufactured by Kawaken Fine Chemicals Co.; and Surfynol 465 and Surfynol 485 manufactured by Nissin Chemical Industry Col. [0061] (which reads on the claimed general formula (1) as discussed in the present specification [0050]). The ink can be used in an ink cartridge provided with an ink and an ink storage portion storing the ink ([0083-0084]; FIG. 1). The aqueous ink further comprises additives including surfactants other than the fluorinated surfactant and the acetyleneglycol surfactant [0076-0077]. However, YAMAMOTO does not teach the aqueous ink comprising a second surfactant wherein the second surfactant comprises an acetylene glycol compound. In the same field of endeavor of an ink jet recording method using the ink set [0002], SAITO teaches the aqueous ink comprises a compound having absorptivity to the self-dispersion pigment including surfactants [0029-0030]. The surfactant includes acetylene glycol compound such as 2,4,7,9-tetramethyl-5-decyne-4,7-diol, 3,6-dimethyl-4-octyne-3,6-diol and 3,5-dimethyl-1-hexyn-3-ol [0036 and 0044] (which would read the second surfactant). The surfactant has a both hydrophobic sites and hydrophilic sites in one molecule and has an excellent effect of protecting the surface of the self-dispersed pigment particles [0043]. Given YAMAMOTO teaches additives including surfactants other than the fluorinated surfactant and the acetyleneglycol surfactant [0076-0077], it would have been obvious to a person of ordinary skill in the art to have provided the surfactant (i.e., acetylene glycol compound) of SAITO with the aqueous ink of YAMAMOTO for the benefit of protecting the surface of the self-dispersed pigment particles as taught by SAITO [0043]. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Regarding claims 2 and 3, YAMAMOTO teaches the present invention, see paragraphs 7-10 above. More specifically, YAMAMOTO teaches the aqueous ink comprises acetyleneglycol surfactant (reads on the first surfactant) in the amount of 0.10% by mass or more to 1% by mass or less based on the total of the ink [0061] and SAITO teaches the aqueous ink comprises surfactant including acetylene glycol compound (reads on the second surfactant) [0036 and 0044] in the amount of 0.18% of Acetylene E100 (Table 8-1). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch , 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer , 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). Regarding claim 4, YAMAMOTO teaches the aqueous ink comprises water-soluble organic solvent that has a dielectric constant of 20 or more to 30 or less include 1,5-pentanediol (27.0) [0062- 0063] and additional water-soluble organic solvents [0068] having a dielectric constant of 3 or more and 120 or less which include glycerol (42.3), ethylene glycol (40.4), and dimethyl sulfoxide (48.9) [0069] . 07-21-aia AIA Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over YAMAMOTO et al. (U.S. Publication No. 2016/0215152, hereinafter YAMAMOTO) in view of SAITO in further view of KAPPELE et al. (U.S. Patent No. 5,656,071, hereinafter KAPPELE) . Regarding claim 5, YAMAMOTO substantially teaches the present invention, see paragraphs 7-10 above. More specifically, YAMAMOTO teaches the aqueous ink further comprises additives including surfactants other than the fluorinated surfactant and the acetyleneglycol surfactant [0076-0077]. However, YAMAMOTO does not teach wherein the aqueous ink further comprises a compound represented by general formula (3) as claimed. In the same field of endeavor of an aqueous ink composition for ink jet printers, KAPPELE teaches the ink composition comprising a polymeric dispersant (Abstract) in the amount from about 0.1% to about 10% (Col. 2, lines 54-59). The polymeric dispersants include both hydrophobic and hydrophilic polymeric segments, the hydrophobic segments tending to bind with the pigment particles in the ink composition and the hydrophilic segments tending to be solvated by the liquid medium thereby serving to stabilize the dispersion by steric and/or ionic mechanisms (Col. 3, lines 55-61). The polymeric dispersant is a segment derived from the macromer having the formula: PNG media_image2.png 138 242 media_image2.png Greyscale Wherein n is from 2 to 16 and each R is independently a lower alkyl (C 1 -C 6 ) or siloxy (Col. 3, line 62 to Col. 4, line 21). Given YAMAMOTO teaches the aqueous ink comprises additional surfactants [0076-0077], it would have been obvious to a person of ordinary skill in the art to have provided the polymeric dispersant of KAPPELE with the aqueous ink of YAMAMOTO for the benefit of binding the pigment particles in the ink composition and stabilizing the dispersion as taught by KAPPELE. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972) . 07-21-aia AIA Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over YAMAMOTO et al. (U.S. Publication No. 2016/0215152, hereinafter YAMAMOTO) in view of SAITO in further view of KOHYAMA et al. (U.S. Publication No. 2016/0251524, hereinafter KOHYAMA) . Regarding claim 7, YAMAMOTO substantially teaches the present invention, see paragraphs 7-10 above. More specifically, YAMAMOTO teaches the aqueous ink comprises water soluble resin (resin dispersant) (Abstract; [0038-0045]). The water-soluble resin is a resin having a hydrophilic unit and a hydrophobic unit as constituent units. The water-soluble resin is a water-soluble acrylic resin at least having a unit that has a (meth)acrylic structure derived from (meth)acrylic acid or a (meth)acrylate ester [0039]. However, YAMAMOTO does not teach wherein the particulate component comprises the resin particle, and wherein the resin particle includes a core formed only of a unit having no acid group and shell formed so as to include a unit having an acid group, and at least one of the unit for forming the core and the unit for forming the shell includes a unite derived from a (meth)acrylic acid ester. In the same field of aqueous ink jet recording inks [0179], KOHYAMA teaches the ink composition comprises a pigment dispersant and an aqueous resin dispersion containing the pigment dispersant [0001]. Core-shell fine polymer particles can be used as a pigment dispersant [0013]. The core-shell polymer particles have a particle size ranging from 4 to 30 nm [0146]. The core-shell polymer particles containing a block copolymer P in which a hydrophobic polymer block A and a hydrophilic polymer block B containing an anionic group are linked to each other [0019, 0021-0024, and 0054]. The polymer block A of the block polymer P include a methyl group, an ethyl group, and butyl group [0047]. The block copolymer P is a vinyl polymer is a vinyl monomer include (meth)acrylate monomers such as (meth)acrylic acid [0048]. The polymer has a clear interface between the lyophobic surface of a pigment and the lyophilic parts and thus can stably exist which is serves as a good pigment dispersant [0144]. Given YAMAMOTO teaches in the aqueous ink comprises water-soluble resin as a pigment dispersant, it would have been obvious to a person of ordinary skill in the art to have substituted the water-soluble pigment dispersant of YAMOMOTO for the core-shell fine polymer particles (pigment dispersant) of KOHYAMA for the benefit of providing an interface between the lyophobic surface of a pigment and the lyophilic parts as taught by KOHYAMA. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972) . 07-21-aia AIA Claim s 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over YAMAMOTO et al. (U.S. Publication No. 2016/0215152, hereinafter YAMAMOTO) in view of SAITO in further view of SHIIBA et al. (U.S. Publication No. 2018/0258298, hereinafter SHIIBA) . Regarding claims 8 and 9, YAMAMOTO substantially teaches the present invention, see paragraphs 7-10 above. However, YAMAMOTO does not teach wherein the aqueous ink further comprises a urethane resin has a unit derived from a polyisocyanate, a unit derived from a polyol having no acid group and a unit derived from a polyol having an acid group. In the same field of endeavor of an aqueous ink for ink jet recording of an image, SHIIBA teaches the aqueous ink for ink jet includes a pigment and a urethane resin. The urethane resin has a unit derived from a polyisocyanate, a unit derived from a polyol having no acid group and a unit derived from a polyol having an acid group, the proportion of a unit derived from the polyol having an acid group present at the molecular terminal relative to the whole unit derived from the polyol having an acid group is 30% or less (Abstract; [0021-0022; 0037-0038]). The aqueous ink for ink jet enabling the recording of an image having excellent character quality and excellent highlighter resistance immediately after the recording [0005 and 0007]. It would have been obvious to a person of ordinary skill in the art to have provided the urethane resin of SHIIBA with the aqueous ink of YAMAMOTO for the benefit of obtaining an image having excellent character quality and excellent highlighter resistance immediately after the recording as taught by SHIIBA [0005 and 0007]. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. DEVE V. HALL Primary Examiner Art Unit 1763 /DEVE V HALL/Primary Examiner, Art Unit 1763 Application/Control Number: 18/364,150 Page 2 Art Unit: 1763 Application/Control Number: 18/364,150 Page 3 Art Unit: 1763 Application/Control Number: 18/364,150 Page 4 Art Unit: 1763 Application/Control Number: 18/364,150 Page 5 Art Unit: 1763 Application/Control Number: 18/364,150 Page 6 Art Unit: 1763 Application/Control Number: 18/364,150 Page 7 Art Unit: 1763 Application/Control Number: 18/364,150 Page 8 Art Unit: 1763 Application/Control Number: 18/364,150 Page 9 Art Unit: 1763