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 .
Claim Rejections - 35 USC § 112
Claims 1-12 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.
In claim 1, line 1, the recitation “dispersant-containing liquid” is indefinite in that it is unclear which claimed component constitutes the dispersant.
In claim 1, line 4, given the plural “polyalkylene glycols”, it is unclear whether more than one polyalkylene glycol is required.
In claim 6, line 5, given the plural “polyalkylene glycols”, it is unclear whether more than one polyalkylene glycol is required.
In claim 6, it is unclear what is meant by a “disperse” dye.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 and 3 are rejected under 35 U.S.C. 102(a1) and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2019/0233665 (Chopra).
Chopra discloses an aqueous ink composition comprising:
a water-soluble sodium sulfonated polyester (meets Applicants’ water-soluble polyester containing a sulfonate);
silver nanoparticles;
water (meets Applicant’s water);
an optional co-solvent inclusive of polyalkylene glycols and derivatives thereof [0063]/[0066] (meets Applicants’ polyalkylene glycol);
an optional colorant; and
an optional surfactant inclusive of block copolymers of polyethylene oxide and propylene oxide [0073] (also meets Applicants’ polyalkylene glycol) (e.g., abstract, [0014-0016], [0063], [0068-0071], [0073], [0083], Example 7).
As to claim 1, Chopra expressly set forth in Example 7 an ink composition (meets Applicants’ liquid) comprising, inter alia:
a branched sulfonated polyester resin (BSPE-1) comprised of terephthalate, sodium 5-sulfoisophthalic acid, 1,2-propanediol and diethylene glycol (meets Applicants’ water-soluble polyester containing a sulfonate);
diethylene glycol (meets Applicants’ polyalkylene glycol);
polyethylene oxide (PEO) (also meets Applicants’ polyalkylene glycol); and
water (meets Applicants’ water).
As to claim 3, given that Chopra’s water-soluble polyester is produced from similar reactants, it is reasonably believed that such inherently contains the same proportion of monomer having an aromatic ring structure per feature (2), the same molar ratio of carboxylate to sulfonate content per feature (3) and same pH solubility. Notably, Chopra further includes the basic substance triethanolamine in Example 7.
Chopra anticipates the above-rejected claims in that it is reasonably believed that the polyester used in Example 7 is water-soluble (per title and [0100]). In the alternative, it would have been obvious to one having ordinary skill in the art to use any of the other water-soluble polyesters disclosed by Chopra in Example 7 for its expected additive effect and with the reasonable expectation of success.
Claim Rejections - 35 USC § 103
Claims 2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0233665 (Chopra) described hereinabove as evidenced by WO 2018/078078 (Namutebl)
As to claims 2 and 7, Chopra’s Example 7 does not appear to comprise a polyalkylene glycol meeting the presently claimed formula (1). However, it is within the purview of Chopra’s inventive disclosure to use “a block copolymer of polyethylene oxide and polypropylene oxide”, e.g., SYNPERONIC surfactant, as a viable surfactant [0074]. Thus, it would have been obvious to one having ordinary skill in the art to replace the surfactants used in Chopra’s Example 7 with a block copolymer of polyethylene oxide and polypropylene oxide, e.g., a SYNPERONIC surfactant which as evidenced by Namutebl (page 46:31-36) is a triblock copolymer consisting of a central polypropylene glycol block flanked by two polyethylene glycol blocks (meets Applicants’ formula (1)).
As to claims 4 and 9, it would be expected that Chopra’s block copolymer of polyethylene oxide and polypropylene oxide, e.g., SYNPERONIC surfactant, would have the same clouding point. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II).
As to claims 5 and 10, Chopra discloses that the surfactant can be present in amounts of from about 0.01 to about 5 wt.% of the ink composition [0074]. Thus, it would have been obvious to one having ordinary skill in the art to use minor amounts of the block copolymer of polyethylene oxide and polypropylene oxide surfactant relative to the water-soluble polyester (inclusive of amounts presently claimed) for its expected additive effect and with the reasonable expectation of success.
As to claim 6, it is within the purview of Chopra’s inventive disclosure, and obvious to one having ordinary skill in the art, to further include an organic colorant (pigment or dye) [0070-0071] in the ink composition per Example 7 for its expected additive effect and with the reasonable expectation of success.
As to claim 8, given that Chopra’s water-soluble polyester is produced from similar reactants, it is reasonably believed that such would necessarily contain the same proportion of monomer having an aromatic ring structure per feature (2), the same molar ratio of carboxylate to sulfonate content per feature (3) and same pH solubility. Notably, Chopra further includes the basic substance triethanolamine in Example 7.
As to claim 11, Chopra renders obvious the production of ink jet compositions [106].
As to claim 12, Chopra’s Example 7 comprises diethylene glycol, which is described in the present specification [0154] as a moisturizer. Moreover, Chopra’s Example 7 comprises surfactants (i.e., surface tension adjusters).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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