DETAILED ACTION
Response to Amendments
In response to the amendment received on 03/27/2026:
• Claims 1, 2, and 4-21 are currently pending. Claim 3 is canceled. Claims 12-13 are withdrawn for being directed to a non-elected invention(s). The objections to claims 2, 5, 7, and 18 are withdrawn in light of the amendments to the claims. The rejection of claims 1-11, 14-18, and 20 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims. The rejection of claim 19 under 35 U.S.C. 112(b) is maintained (see 112(b) rejection below). All nonstatutory double patenting rejections are withdrawn in light of the terminal disclaimers filed by Applicant.
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 Interpretation
It is noted that all explicit definitions mentioned in the non-final mailed 12/29/2025 are incorporated herein and treated as set forth previously.
Claim Objections
Claim 16 is objected to because of the following informalities:
In claim 16, line 2, the word “Water” should be amended to “water” (i.e., the capital “W” should be changed to a lowercase “w”).
Appropriate correction is required.
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 19 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.
In claim 19, the phrase “the at least one additive” lacks sufficient antecedent basis. It is unclear whether the claimed additive and its concentration is intended to be present in the writing composition of claim 1 or the erasing medium composition. For instance, claim 15 suggests the erasing medium may contain polyethylene glycol polymers; however, claim 1 is the only previous mention of an additive for claim 19. Consequently, confusion arises. To correct, the Examiner suggests amending claim 19 to specify which composition is being referred to (e.g., “[[the]] at least one additive, wherein the at least one additive of the erasing medium comprises polyethylene glycol polymers…”).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 5-10, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara (JP-2013010812-A), with reference to the previously included machine translation (hereinafter referred to as “Kurihara”), in view of Ishihara et al. (JP-2008115222-A), with reference to the included machine translation (hereinafter referred to as “Ishihara”).
Regarding claim 1, Kurihara teaches a writing composition (see Kurihara at pg. 1, para. 1, teaching a thermochromic ink composition; also see Kurihara at pg. 8, para. 4, teaching the thermochromic ink may be used in a writing instrument) comprising:
• a phenolic compound (see Kurihara at pg. 2, para. 3 and pg. 4, para. 4, teaching the composition as containing an electron-accepting compound; also see Kurihara at pg. 4, para. 6, teaching the electron-accepting compound may be a phenol, such as a phenol resin);
• a reaction medium comprising one or more of fatty acids, waxes, alkanes, or alkenes (see Kurihara at pg. 6, para. 1, teaching the composition as further containing a color change temperature adjusting agent; also see Kurihara at pg. 6, para. 8, teaching the color change temperature adjusting agent can include paraffin wax; the color change temperature adjusting agent corresponds to the claimed “reaction medium”);
• at least one leuco dye (see Kurihara at pg. 2, para. 5, teaching the composition as containing an electron-donating compound, such as a leuco dye); and
• optionally at least one additive (see Kurihara at pg. 5, para. 6, teaching the composition as containing a decolorizer (i.e., a color erasing agent); the decolorizer of Kurihara corresponds to the claimed “additive”).
While Kurihara teaches the writing composition outlined above, Kurihara fails to explicitly teach the writing composition as comprising an inert miner filler comprising calcined clay.
However, Ishihara teaches a color-developing ink that can visualize invisible information by scratching (see Ishihara at para. 0007). Ishihara further teaches the color-developing ink to contain an electron-donating dye precursor and an electron-accepting compound (see Ishihara at para. 0007). Moreover, Ishihara teaches the developer (i.e., the electron-accepting compound) may include phenolic compounds and the dye (i.e., the electron-donator) may include leuco compounds (see Ishihara at para. 0013, 0015, and 0023). Additionally, Ishihara teaches the ink may include a pigment such as calcined clay or titanium oxide (see Ishihara at para. 0035).
Kurihara teaches their thermochromic composition may contain a non-thermochromic colorant, such as inorganic pigment like titanium oxide (see Kurihara at pg. 7, para. 4-5).
In this case, calcined clay is a known material suitable for use as a pigment in a color-developing ink composition (as exemplified by Ishihara at para. 0035), and thus its use as the non-thermochromic colorant in the ink of Kurihara 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 calcined clay as the non-thermochromic colorant in the ink of Kurihahra, 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 ink of modified Kurihara contains calcined clay as a non-thermochromic colorant. It necessarily follows that the calcined clay functions as an “inert mineral filler” as claimed. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Regarding claims 2 and 5, Kurihara as modified by Ishihara teaches the writing composition according to claim 1 outlined above, wherein:
• the phenolic compound is present in an amount between about 0.1 wt% and 10 wt% (see Kurihara at pg. 5, para. 4, teaching the electron-accepting compound to be present in the ink in an amount of from 0.01 to 60 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• the reaction medium comprises paraffin wax (see Kurihara at pg. 6, para. 8, teaching the color change temperature adjusting agent can include paraffin wax),
• the at least one leuco dye is present in an amount between about 0.1 wt% and 6 wt% (see Kurihara at pg. 4, para. 2, teaching the electron donating compound (i.e., the leuco dye) to range from 0.01 to 50 wt% in the ink, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• the inert mineral filler is present in an amount between about 1 wt% and 10 wt% (see Kurihara at pg. 7, para. 7, teaching the non-thermochromic colorant (i.e., calcined clay, which corresponds to the claimed “mineral filler”) to range from 0.001 to 30 wt% in the composition, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• the optional at least one additive is present in an amount between about 0.1 wt% and 1 wt% (see Kurihara at pg. 5, para. 9, teaching the content of the decolorizer (which corresponds to the claimed “additive”) in the ink to range from 0.1 to 20 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
While modified Kurihara teaches the composition outlined above, modified Kurihara fails to explicitly teach the reaction medium as additionally comprising stearic acid, wherein the stearic acid is present in an amount between about 35 wt% and 50 wt% (35 wt% and 45 wt%, regarding claim 5), and the paraffin wax is present in an amount between about 35 wt% and 50 wt% (35 wt% and 45 wt%, regarding claim 5).
However, Kurihara does teach their color change temperature adjusting agent may include stearic acid and paraffin wax, and further teaches that a plurality of color change temperature adjusting compounds may be used (see Kurihara at pg. 6, para. 2, 8, and 9).
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 both stearic acid and paraffin wax as the color change temperature adjusting agent in the composition of modified Kurihara, as Kurihara teaches both as suitable agents and further teaches that a plurality of agents may be used in combination (see Kurihara at pg. 6, para. 2, 8, and 9). Combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
In this case, Kurihara fails to provide explicit guidance as to the mixing ratio when two or more color change temperature adjusting agents are used in combination; however, in general, it would have been common sense that when faced with a mixture that is undefined, one of ordinary skill in the art would be motivated to select a 1:1 ratio, absent any teaching to do otherwise. The MPEP supports the position that a patent examiner may rely on "common knowledge and common sense of [a] person of ordinary skill in the art without any specific hint or suggestion in a particular reference.” See MPEP § 2143(I)(E).
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 ratio of stearic acid to paraffin wax in the composition of modified Kurihara to be 50:50, since a 1:1 ratio is the most common starting point when mixing two components.
Kurihara teaches the content of the color change temperature adjusting agent in the composition to range from 1 to 70 wt% (see Kurihara at pg. 7, para. 3). Thus, following the above modification, the content of stearic acid necessarily ranges from 0.5 to 35 wt%, and the content of paraffin wax necessarily ranges from 0.5 to 35 wt% (a 1:1 ratio would split the concentration range in half for each component; 1/2 = 0.5%; 70/2 = 35 wt%). These ranges overlap the respective claimed ranges for stearic acid and paraffin wax, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 6, see modified Kurihara above, teaching the ink of modified Kurihara as containing calcined clay as a non-thermochromic colorant; given that calcined clay functions as both a pigment AND an inert mineral filler, it necessarily follows that the ink of modified Kurihara contains both a pigment and an inert mineral filler; in other words, one can readily imagine a portion of the calcined clay in the ink of modified Kurihara functioning as the claimed “pigment,” while the other portion functions as the claimed “inert mineral filler.”
Regarding claim 7, Kurihara as modified by Ishihara teaches the writing composition according to claim 6 outlined above, wherein:
• the phenolic compound is present in an amount between about 0.1 wt% and 10 wt% (see Kurihara at pg. 5, para. 4, teaching the electron-accepting compound to be present in the ink in an amount of from 0.01 to 60 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• the reaction medium comprises stearyl alcohol (see Kurihara at pg. 6, para. 3, teaching the color change temperature adjusting agent can include stearyl alcohol; note that for the claim 7 rejection, stearyl alcohol corresponds to the reaction medium instead of the paraffin wax used in the claim 1 rejection above),
• the at least one leuco dye is present in an amount between about 0.1 wt% and 6 wt% (see Kurihara at pg. 4, para. 2, teaching the electron donating compound (i.e., the leuco dye) to range from 0.01 to 50 wt% in the ink, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• the inert mineral filler is present in an amount between about 1 wt% and 10 wt%; the at least one of a pigment or a non-leuco dye is present in an amount between about 1 wt% and 8 wt% (see Kurihara at pg. 7, para. 7, teaching the non-thermochromic colorant (i.e., calcined clay) to range from 0.001 to 30 wt% in the composition; given that calcined clay functions as both a pigment and an inert mineral filler, it necessarily follows that the claimed range of 0.001 to 30 wt% overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05; for example, one can readily imagine a content of, e.g., 16 wt%, of calcined clay (which falls within the broad range of 0.001 to 30 wt% taught by Kurihara), to be readily split into 8 wt% of calcined clay as a pigment and 8 wt% of calcined clay as an inert mineral filler, which each fall within the respective claimed ranges for the pigment and the inert mineral filler); and
• the optional at least one additive is present in an amount between about 0.1 wt% and 1 wt% (see Kurihara at pg. 5, para. 9, teaching the content of the decolorizer (which corresponds to the claimed “additive”) in the ink to range from 0.1 to 20 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
While modified Kurihara teaches the composition outlined above, modified Kurihara fails to explicitly teach the reaction medium as additionally comprising stearic acid, wherein the stearic acid is present in an amount between about 35 wt% and 45 wt%, and the stearyl alcohol is present in an amount between about 35 wt% and 45 wt%.
However, Kurihara does teach their color change temperature adjusting agent may include stearic acid and stearyl alcohol, and further teaches that a plurality of color change temperature adjusting compounds may be used (see Kurihara at pg. 6, para. 2-3 and 9).
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 both stearic acid and stearyl alcohol as the color change temperature adjusting agent in the composition of modified Kurihara, as Kurihara teaches both as suitable agents and further teaches that a plurality of agents may be used in combination (see Kurihara at pg. 6, para. 2, 8, and 9). Combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
In this case, Kurihara fails to provide explicit guidance as to the mixing ratio when two or more color change temperature adjusting agents are used in combination; however, in general, it would have been common sense that when faced with a mixture that is undefined, one of ordinary skill in the art would be motivated to select a 1:1 ratio, absent any teaching to do otherwise. The MPEP supports the position that a patent examiner may rely on "common knowledge and common sense of [a] person of ordinary skill in the art without any specific hint or suggestion in a particular reference.” See MPEP § 2143(I)(E).
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 ratio of stearic acid to stearyl alcohol in the composition of modified Kurihara to be 50:50, since a 1:1 ratio is the most common starting point when mixing two components.
Kurihara teaches the content of the color change temperature adjusting agent in the composition to range from 1 to 70 wt% (see Kurihara at pg. 7, para. 3). Thus, following the above modification, the content of stearic acid necessarily ranges from 0.5 to 35 wt%, and the content of stearyl alcohol necessarily ranges from 0.5 to 35 wt% (a 1:1 ratio would split the concentration range in half for each component; 1/2 = 0.5%; 70/2 = 35 wt%). These ranges overlap the respective claimed ranges for stearic acid and stearyl alcohol, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 8, see Kurihara at pg. 8, para. 2, teaching the composition may include a surfactant.
Regarding claims 9-10, see Kurihara at pg. 8, para. 4, teaching the thermochromic ink may be used in a writing instrument. It is noted that the limitation “wherein the writing instrument is produced via injection molding or extrusion" is considered a product-by-process limitation. It is the examiner's position that the recited limitation does not impart any distinct structural characteristics to the claimed composition. Consequently, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). see MPEP § 2113.
Regarding claim 20, see Kurihara at pg. 4, para. 6, teaching the electron-accepting compound may include a phenol resin.
Regarding claim 21, see Kurihara at pg. 4, para. 6, teaching the electron-accepting compound may include dodecylphenol, which is a non-resinous phenolic compound.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kurihara in view of Ishihara, as applied to claim 1 above, and further in view of Mizoguchi et al. (JP-2004149601-A), with reference to the previously included machine translation (hereinafter referred to as “Mizoguchi”).
Regarding claims 4, while Kurihara as modified by Ishihara teaches the writing composition according to claim 1 outlined above, modified Kurihara fails to explicitly teach the inert mineral filler as further comprising one or more of wollastonite, talc, kaolin clay, mica, bentonite, or calcium carbonate.
However, Mizoguchi teaches an erasable ink composition for a writing instrument (see Mizoguchi at pg. 1, para. 1). Mizoguchi further teaches the writing composition in the ink composition to include a resin and/or clay mineral, such as bentonite, to be used as a film-forming agent, a fixing agent, or a viscosity adjusting agent (see Mizoguchi at pg. 4, para. 4 and 6). Moreover, Mizoguchi teaches the content of the resin and/or clay mineral to range from 0.5 to 50 wt%, and that if the content is less than 0.5%, further film-forming action, sticking (i.e., fixing) action, and viscosity adjustment cannot be exhibited, and it the content exceeds 50%, the effect will not be exhibited, and the outflow property will deteriorate (see Mizoguchi at pg. 4, para. 8-9).
Kurihara teaches their composition may contain additives (see Kurihara at pg. 7, para. 8 and pg. 9, para. 2).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add bentonite in the ink of modified Kurihara in an amount ranging from 0.5 to 50 wt%. One of ordinary skill in the art would have been motivated to do so in order to exhibit a desired effect, e.g., film-forming action, sticking (i.e., fixing) action, and viscosity adjustment, as well as to prevent outflow property from deteriorating (see Mizoguchi at pg. 4, para. 8-9).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kurihara in view of Ishihara, as applied to claim 9 above, and further in view of Furukawa et al. (JP-2005199510-A), with reference to the previously included machine translation (hereinafter referred to as “Furukawa”).
Regarding claim 11, while Kurihara as modified by Ishihara teaches the writing instrument according to claim 9 outlined above, modified Kurihara fails to explicitly teach the writing instrument as being encased within a sheath or covered in a protective coating layer.
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However, Furukawa teaches a writing instrument equipped with a hollow outer sheath barrel 1, a storage barrel 20 which is inserted into the barrel 1, and a tube body 30 which is inserted into the storage barrel 20 so as to supply ink (see Furukawa at Abstract and Fig. 1 below):
Moreover, Furukawa teaches the ink may be a water-based ink (see Furukawa at pg. 4, second to last paragraph). Kurihara teaches their ink may be used in a writing instrument, and further that their ink may be water-based (see Kurihara at pg. 8, para. 3-4).
In this case, the writing instrument of Furukawa is a known writing suitable for use with water-based inks in the art (as exemplified by Furukawa at pg. 4, second to last paragraph, and Abstract0,) and thus its use with the ink of modified Kurihara 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 the ink of modified Kurihara with the writing instrument of Furukawa, as 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.
The writing instrument of Furukawa is encased within a sheath or covered in a protective coating layer, via the hollow outer sheath barrel 1 (see Furukawa at Abstract and Fig. 1).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kurihara in view of Ishihara, as applied to claim 1 above, and further in view of Takasu et al. (JP-2010018695-A), with reference to the previously included machine translation (hereinafter referred to as “Takasu”) and Wang (US-5649999-A) (hereinafter referred to as “Wang”).
Regarding claim 14, while Kurihara as modified by Ishihara teaches the composition according to claim 1 outlined above, modified Kurihara fails to teach the composition as being used in a writing system with an erasing medium, wherein the erasing medium comprises water, at least one pH adjuster, at least one surfactant, and at least one additive.
However, Takasu teaches an ink capable of changing colors by applying a temperature change and/or a color-changing liquid (see Takasu at pg. 2, para. 3). Takasu further teaches the ink to contain an electron-donating compound, an electron-accepting compound, and a reaction medium (see Takasu at pg. 2, para. 4 and pg. 4, para. 4). Moreover, Takasu teaches the ink may contain an additional dye that changes color or disappears with the reducing agent, such as a basic dye (see Takasu at pg. 6, para. 11 and pg. 7, para. 1). Additionally, Takasu teaches a reducing agent may be added to a separate color-change liquid, which is applied to the ink to cause the dye to become decolored (see Takasu at pg. 9, para. 11). Takasu further teaches an example color change solution, which contains sodium sulfite as a reducing agent, carboxylic acid as a preservative, glycerin, and water (see Takasu at pg. 11, para. 10). Moreover, Takasu teaches their ink to have handwriting rich in variations of color change that changes color to different colors by heating or application of a color changing liquid (see Takasu at pg. 2, para. 9).
Kurihara teaches a similar ink as Takasu, which contains a thermochromic component as well as a non-thermochromic dye, such as a basic dye (see Kurihara at pg. 7, para. 5; also see claim 1 rejection above).
One of ordinary skill in the art would readily recognize that by including a color-changing liquid like that taught by Takasu together with the ink of Kurihara, the gamut of possible colors produced by the ink of Kurihara could be expanded. For example, the ink would start as a mixed color of the thermochromic component + the non-thermochromic basic dye, and that by heating, the contribution from the thermochromic component would disappear, leaving only the color of the non-thermochromic dye; and that alternatively, by applying the color-change liquid (i.e., erasing medium), the contribution from the non-thermochromic basic dye would disappear, leaving only the color of the thermochromic component. Consequently, the number of color variations would become “richer” (see Takasu at pg. 2, para. 9).
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 a color-change liquid like that taught by Takasu with the ink of modified Kurihara. One of ordinary skill in the art would have been motivated to do so in order to eliminate the color contribution of the non-thermochromic dye, thus expanding (making “rich”) the gamut of possible colors that may be produced by the ink (see Takasu at pg. 2, para. 9).
Following the above modification, the erasing medium (i.e., color-change liquid) of modified Kurihara contains sodium sulfite, carboxylic acid, glycerin, and water (see Takasu at pg. 11, para. 10). The carboxylic acid corresponds to the claimed “pH adjuster,” and glycerin corresponds to the claimed “additive.”
While Kurihara as modified by Ishihara and Takasu teaches the system outlined above, modified Kurihara fails to teach the erasing medium (i.e., color-change liquid) to further comprise a surfactant.
However, Wang teaches an eradicatable aqueous ink and an aqueous eradicator fluid, where the eradicatable ink contains a dye that can be converted to a colorless form after contact with a sulfite reducing agent or a basic nitrogen compound in the eradicator fluid (see Wang at col. 1, lines 9-18 and 27-30). Wang further teaches the eradicator fluid may contain a surfactant to adjust the surface tension, and that if the surface tension of the eradicator fluid is too high, it may not penetrate into the paper as far, or at least as quickly, as the applied ink, thus leading to incomplete eradication or an extended eradication time (see Wang at col. 3, lines 61-3 and col. 4, lines 2-10).
Kurihara teaches their ink to preferably be applied on paper (see Kurihara at pg. 9, para. 5).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include a surfactant in the erasing medium (i.e., color-change liquid) of modified Kurihara. One of ordinary skill in the art would have been motivated to do so in order to adjust the surface tension, thus reducing incomplete eradication or an extended eradication time (see Wang at col. 3, lines 61-3 and col. 4, lines 2-10).
Allowable Subject Matter
Claims 15-18 are allowed.
With respect to claim 15, the prior art fails to reasonably teach or suggest a writing system comprising:
a writing composition comprising: a phenolic compound; a reaction medium comprising one or more of fatty acids, waxes, alkanes, or alkenes; at least one leuco dye; optionally at least one additive; and an inert mineral filler comprising calcined clay; and
an erasing medium, the erasing medium comprising: water, at least one pH adjuster, at least one surfactant, and at least one additive, wherein water of the erasing medium is present in an amount between about 4 wt% and 14 wt%; the at least one pH adjuster of the erasing medium comprises citric acid and triisopropylamine, wherein citric acid is present in an amount between about 0.1 wt% and 0.9 wt% and triisopropylamine is present in an amount between about 20 wt% and 30 wt%; the at least one surfactant of the erasing medium is present in an amount between about 0.1 wt% and 0.9 wt%; and the at least one additive of the erasing medium comprises polyethylene glycol (PEG) present in an amount between about 50 wt% and 60 wt%.
The closest prior art includes Kurihara (JP-2013010812-A), Takasu (JP-2010018695-A), and Wang (US-5649999-A). While Kurihara, Takasu, and Wang teach most of the limitations of claim 15 (see claim 1 and 14 rejections above), Kurihara, Takasu, and Wang fail to teach the erasing medium wherein water is present in an amount between about 4 wt% and 14 wt%; the at least one pH adjuster comprises citric acid and triisopropylamine, wherein citric acid is present in an amount between about 0.1 wt% and 0.9 wt% and triisopropylamine is present in an amount between about 20 wt% and 30 wt%; the at least one surfactant is present in an amount between about 0.1 wt% and 0.9 wt%; and the at least one additive comprises polyethylene glycol (PEG) present in an amount between about 50 wt% and 60 wt%.
There is no teaching or suggestion in the prior art of using triisopropylamine together with citric acid in the claimed amounts in an erasing medium like that claimed. The prior art fails to teach the use of triisopropylamine in an erasing medium. Further, even if triisopropylamine was used in an erasing medium, there is no teaching or suggestion to include citric acid together with the triisopropylamine. Citric acid would be included in an erasing medium with a large amount of base potentially as either (1) a buffer or (2) a reacting agent. Regarding (1), citric acid would not function as a suitable buffer in the claimed alkaline composition, given citric acid has a pKa that falls in the acidic range of 2-6 (see US-20050093949-A1 at para. 0022). Further, regarding (2), there is no reason to include both an acid and base as reacting agents to render the dye colorless, as only one would generally be expected to suitably render the dye colorless in the ink. Consequently, one of ordinary skill would not be drawn to including citric acid in a small amount (0.1 to 0.9 wt%) together with triisopropylamine in a relatively high amount (20 to 30 wt%) in an erasing medium like that claimed.
Additionally, basic pH adjusters are generally used in small amounts of 10% or less in erasing mediums (e.g., see US-5352282-A at col. 7, lines 36-44), and not in large amounts of 20-30% like claimed. There is no teaching or suggestion to raise the concentration of base used as a pH adjuster, particularly together with citric acid. Consequently, claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 16-18 are allowed for the same reasons given above.
Claim 19 would also be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, for the same reasons given for claim 15 above.
Response to Arguments
Applicant’s arguments filed 03/27/2026 have been considered. The Examiner agrees with Applicants that the amended claims overcome the previous prior art grounds of rejection (see Applicant’s Remarks at pg. 9-10). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections above.
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 extension fee 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 date of this final action.
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.
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, 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.
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.
/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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