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
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/31/2025.
Response to Arguments
Applicant's arguments filed 11/6/2025 have been fully considered but they are not persuasive.
Applicant contends that Mizutaki teaches that the amount of pigment can be 1 to 10 wt%, and that Butler teaches that the amount of metal alkali can range between 0.0005 to 0.5 wt%. Applicant concludes, then, that the teachings of Mizutaki and Butler teach a composition ratio of 20 (10 wt% pigment / 0.5 wt% metal alkali) that falls outside the claimed range. While Examiner appreciates that a composition ratio of 20 is certainly within the range of obviousness, Examiner notes that the relevant teachings disclose more than those ranges mentioned in the arguments.
In particular, Mizutaki teaches that the amount of pigment is “preferably 0.1 to 20 percent by mass, more preferably 1 to 20 percent by mass, and further preferably 1 to 10 percent by mass” (paragraph 22). Mizutaki teaches that such a range ensures color development while avoiding problems with increased viscosity (paragraph 22). Moreover, Mizutaki provides various ink examples in which the amount of pigment is within the preferred content range (6 wt% in examples 1-4; 3 wt% in example 5).
Further, Butler et al. teach that the amount of self-dispersible black pigment is about 2 wt% to about 8 wt%, or from about 3 to 5 wt%, or from about 4 to about 5 wt% (paragraph 12), and that a content of the metal alkali is from 0.005 to 0.5 wt%, from 0.01 to 0.3 wt%, from 0.1 to 0.3 wt%, from 0.02 to 0.2 wt%, or from 0.02 to 0.1 wt% of the total ink composition (paragraphs 6, 23).
In one viewpoint, an artisan would have found it obvious to include an amount of metal alkali into Mizutaki’s ink according to the ranges taught by Butler, without also considering the amount of pigment taught by Butler. Given Mizutaki’s reasoning for the preferred pigment ranges, an artisan would have found it obvious that any pigment content amount within Mizutaki’s especially preferred range of 1-10% would be proper. An artisan would have also found it obvious to include the metal alkali in an amount that falls within one of Butler’s disclosed ranges. Based on the above teachings, then, an artisan would have found it obvious to include e.g. 5wt% pigment and e.g. 0.2wt% metal alkali, which produces a ratio of 25.
Alternately, an artisan would have found it obvious to include an amount of metal alkali into Mizutaki’s ink according to the ranges taught by Butler, while also considering the amount of pigment taught by Butler. Because all of Butler’s example pigment amounts also fall within the ranges especially desired by Mizutaki, an artisan would have found it obvious to include the self-dispersible black pigment in an amount within one of Butler’s disclosed ranges. Based on the above teachings, then, an artisan would have found it obvious to include e.g. 5 wt% pigment and e.g. 2 wt% metal alkali, which produces a ratio of 25. Alternatively, an artisan would have found it obvious to include e.g. 8 wt% pigment and e.g. 0.3 wt% metal alkali, which produces a ratio of 26.7.
Regardless, then, of whether an artisan consult’s only Mizutaki’s teachings for pigment content, or whether an artisan consults both Mizutaki and Butler’s teachings for pigment content, an artisan would have found it obvious to produce an ink having the claimed pigment to metal alkali composition ratio.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizutaki et al. (US 2020/0362184 A1) in view of Butler et al. (US 2021/0009836 A1).
Regarding claim 1:
Mizutaki et al. disclose a pigment printing ink jet ink composition comprising:
a self-dispersible black pigment (paragraphs 16, 20) having a specific surface area of 50 m2/g or more calculated from a measurement by a pulse NMR at 30°C (paragraphs 18, 64-67),
a water-soluble organic solvent (paragraphs 28-29); and
water (paragraph 16),
wherein the water-soluble organic solvent includes a compound having an SP value of 11 or more (any of e.g. ethylene glycol, propylene glycol, glycerin, 1,2-hexanediol, etc.: paragraphs 28-31), and
wherein the water-soluble organic solvent includes no compound having an SP value of less than 11 at a content of more than 0.3 mass% with respect to a total mass of the ink composition (paragraphs 28-31).
Mizutaki et al. do not expressly disclose that the ink composition comprises a metal alkali, and thus does not disclose that a content of the self-dispersible black pigment with respect to a content of the metal alkali is 13 to 40 in terms of a composition ratio.
However, Mizutaki et al. do also disclose that a content of the self-dispersible black pigment is preferably 1 to 10 wt% with respect to a total mass of the ink composition (paragraph 22).
Further, Butler et al. disclose a pigment printing ink jet ink composition comprising a self-dispersible black pigment (paragraph 6) and a metal alkali (paragraphs 6, 23-25), wherein a content of the self-dispersible black pigment is about 2 wt% to about 8 wt%, or from about 3 to 5 wt%, or from about 4 to about 5 wt% (paragraph 12) and a content of the metal alkali is from 0.005 to 0.5 wt%, from 0.01 to 0.3 wt%, from 0.1 to 0.3 wt%, from 0.02 to 0.2 wt%, or from 0.02 to 0.1 wt% of the total ink composition (paragraphs 6, 23), such that a content of the self-dispersible black pigment with respect to a content of the metal alkali is 22 to 28 in terms of composition ratio (e.g. 5 wt% pigment / 0.2 wt% metal alkali = 25: paragraphs 6, 12, 23). Butler et al. teach that the addition of such metal alkali improves decap control (paragraphs 21, 24).
Therefore, at the time of filing, it would have been obvious to a person of ordinary skill in the art to include a metal alkali into Mizutaki et al.’s ink composition in the manner taught by Butler et al., so as to improve decap control of the ink.
Regarding claim 2:
Mizutaki et al.’s modified ink composition comprises all the limitations of claim 1, and Mizutaki et al. also disclose that the content of the self-dispersible black pigment with respect to the total mass of the ink composition is 3 to 10 mass% (paragraph 22). Butler et al. also disclose that a content of the self-dispersible black pigment with respect to the total mass of the ink composition is 3 to 10 mass% (paragraph 12).
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizutaki et al. as modified by Butler et al., as applied to claim 1 above, and further in view of Chidate et al. (US 2019/0249021 A1).
Regarding claim 3:
Mizutaki et al.’s modified ink composition comprises all the limitations of claim 1, but does not expressly comprise a urethane fixing resin having a polycarbonate skeleton.
However, Mizutaki et al. do also disclose that the ink composition may further comprise a fixing resin (“resin binder”: paragraph 42).
Further, Chidate et al. disclose a pigment printing ink jet ink composition comprising a urethane resin (“resin particle”) having a polycarbonate skeleton (paragraph 62) that acts as a fixing resin that improves fixability and fastness of an image to be formed (“resin particle”: paragraph 60).
Therefore, at the time of filing, it would have been obvious to a person of ordinary skill in the art to incorporate a fixing resin, such as that taught by Chidate et al., into Mizutaki et al.’s ink composition.
Regarding claim 4:
Mizutaki et al.’s modified ink composition comprises all the limitations of claim 1, and Chidate et al. also disclose that the fixing resin may be a reactive urethane resin having a block isocyanate (paragraph 63).
Regarding claim 5:
Mizutaki et al.’s modified ink composition comprises all the limitations of claim 1, and Chidate et al. also disclose that a content of the fixing resin with respect to the total mass of the ink composition is 3 to 10 mass% (paragraph 97 & TABLES 1-2, exemplified by Takelac WS-5100).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Deardurff et al. (US 2019/0249023 A1) disclose a pigment printing ink jet ink composition comprising a self-dispersible black pigment (paragraph 17) and a metal alkali to generate improved color saturation or black optical density (paragraphs 22-25, 38), wherein a content of the self-dispersible black pigment is about 2 wt% to about 7 wt% (paragraph 10) and a content of the metal alkali may be present in the ink at from 0.1 to 0.75 wt%, from 0.2 to 0.6wt%, from 0.25 to 0.6wt%, from 0.3 to 0.5wt%, or from 0.3 to 0.4wt% (paragraph 23). Deardurff et al. also disclose that a lithium may also be present in the ink from 0.00005 to 0.5wt%, from 0.0001 to 0.3 wt%, from 0.0001 to 0.1 wt%, etc. (paragraph 38) for the purpose of improving decap performance (paragraph 37).
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.
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shelby L Fidler whose telephone number is (571)272-8455. The examiner can normally be reached Monday-Friday, 8:30am - 5pm 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, Douglas Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHELBY L. FIDLER
Primary Examiner
Art Unit 2853
/SHELBY L FIDLER/Primary Examiner, Art Unit 2853