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 Status
Claims 1-21 are pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 20 and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 20 does not purport to claim a process, machine, manufacture, or composition of matter. Claim 21 is reject under 35 U.S.C. 101 as being dependent on claim 20.
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.
Claims 12, 15, 18, 20 and 21 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.
Regarding claims 12 and 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 15, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). In this context, the phrase “optionally” appears to indicate that the printing ink is preferably an inkjet ink, therefore rendering the claim indefinite.
Regarding claim 20; Claim 20 is indefinite because it merely recites a method of use without any active, positive steps for how this use is actually practiced. See MPEP 2173.05(Q). Claim 21 rejected under 35 U.S.C. 112(b) as being dependent on claim 20, as well as for reciting ‘the polyurethane resin pigment dispersant is the polyurethane resin pigment dispersant’. It is unclear what applicants intended to claim as the subject matter of the invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim is 21 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 21; Claim 20 recites ‘wherein the polyurethane resin is a polyurethane resin pigment dispersant.’ Claim 21 recites ‘the polyurethane resin pigment dispersant is the polyurethane resin pigment dispersant,’ and therefore fails to further limit claim 20.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 nonobviousness.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valentini et al (herein ‘Valentini’; US 2003/0184629 A1).
Valentini is directed towards inkjet inks, in particular to smear resistant inkjet inks, and even more particularly to smear resistant pigmented aqueous inkjet inks comprising polyurethane dispersion binders and self-dispersing pigments [abstract].
Valentini discloses the aqueous polyurethane dispersions are typically prepared by a multi-step process in which an isocyanate (NCO) prepolymer is initially formed and subsequently chain extended in the aqueous phase [p. 0037]. Typically, in the first stage of prepolymer formation, a diisocyanate is reacted with a compound containing one or more isocyanate-reactive groups and at least one acid or acid salt group to form an intermediate product [p. 0038]. Valentini teaches the most preferred acid group compound is dimethylol propionic acid (DMPA) and salts thereof, wherein suitable counterions include amines, alkali metal cations, and ammonia [p. 0049, 0077][see claims 10 and 11]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the polyurethane of Valentini with DMPA, a diol having an acid group.
Valentini teaches suitable diisocyanates for reacting with the isocyanate-reactive compound containing ionic groups (or groups which can be rendered ionic via, for example, neutralization) are those which contain either aromatic, cycloaliphatic or aliphatic-bound isocyanate groups [p. 0041] The preferred isocyanate is bound to a cycloaliphatic or aliphatic group, and 1,6-hexamethylene diisocyanate is especially preferred. Also preferred is isophorone diisocyanate, reading over a polyisocyanate with an intramolecular ring structure [p. 0078]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the polyurethane of Valentini with hexamethylene diisocyanate as well as suitable diisocyanate with an intramolecular branched or ring structure, such as isophorone diisocyanate [see claims 1, 2, and 6].
After reaction of the diisocyanates with the isocyanate-reactive compounds containing acid groups, the resulting intermediate product is reacted with a high molecular weight polyol to prepare the NCO prepolymer [p. 0051]. Suitable higher molecular weight polyols containing at least two hydroxy groups, which may be reacted with the pre-adducts to prepare the NCO prepolymers, are those having a molecular weight of about 400 to about 6000 Da, wherein polyester polyols, polyether polyols and polyhydroxy polycarbonates are preferred [see claims 1, 5, 9] [p. 0052]. The high molecular weight polyols are generally present in the polyurethanes in an amount of at least about 5%, preferably at least about 10% by weight, based on the weight of the polyurethane. The maximum amount of these polyols is generally about 85%, and preferably about 75% by weight, based on the weight of the polyurethane [p. 0058]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a polyurethane comprising less than 50% of the units derived from a polyether polyol having no acid groups, wherein the polyether polyol has a number average molecular weight of about 400 to 6000 Da [see claims 1 and 4]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Valentini teaches optional compounds include isocyanate-reactive compounds for incorporating lateral hydrophilic ethylene oxide units into the polyurethane prepolymer [p. 0061-0062] Valentini teaches they may contain either one or two isocyanate-reactive groups, preferably hydroxy groups. Preferred hydrophilic components are the monohydroxy polyethers having terminal hydrophilic chains containing ethylene oxide units [p. 0062]. A skilled artisan would appreciate embodiments of Valentini wherein lateral poly(ethylene oxide) is incorporated into the NCO prepolymer obviously embrace the polyurethane polymer with pendant PEG groups [see claim 1].
Regarding claim 3; Valentini teaches the high molecular weight polyols are present in the polyurethane in an amount of 10 to 75% by weight of the polyurethane [p. 0058]. The content of hydrophilic ethylene oxide units (when present) may be up to about 10% by weight, and most preferably about 2 to about 6%, by weight, based on the weight of the polyurethane[p. 0061]. Valentini teaches the amount of chain extender to be used in accordance with the present invention is dependent upon the number of terminal isocyanate groups in the prepolymer [p. 0070]. Embodiments of Valentini appear to comprise about 50% by mass of the polyurethane [p. 0148]. In light of this, a person having ordinary skill in the art would appreciate embodiments of Valentini are obviously capable of satisfying the claimed range (10-80% pbw).
Regarding claims 7 and 8; Instant claim 5 is presented as list of alternatives of polyether polyol species. Instant claims 7 and 8 fail to further limit the (poly)alkylene glycol polyether polyol of instant claim 5.
Regarding claim 12; Valentini teaches the polyurethanes are typical prepared by chain extending these NCO prepolymers, wherein preferred chain extenders are polyamine chain extenders, such as ethylene diamine, diethylene triamine, triethylene tetramine, tetraethylene pentaamine, pentaethylene and hydrazine [p. 0066, 0069]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to chain extend NCO prepolymers of Valentini with an amine species, such as ethylene diamine.
Regarding claim 13; Suitable polyurethane binders can be mixed with water or in the aqueous solution that the polyurethane was prepared and will form a dispersion [p. 0074]. Combinations of two or more polyurethane dispersions may also be utilized. Polyurethanes dispersions may be used in combination with other binders, such as polyacrylate/polymethacrylates [p. 0085]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the dispersion of Valentini with an additional binders, such as acrylates.
Regarding claim 14; Valentini teaches biocides may be used to inhibit growth of microorganisms [p. 0089]. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the polyurethane dispersion with a biocide component in order to inhibit the growth of microorganisms.
Regarding claims 16 and 17; Valentini teaches, in order to have a stable dispersion, a sufficient amount of the acid groups must be neutralized so that the resulting polyurethane will remain stably dispersed in the aqueous medium. Generally, at least about 75%, preferably at least about 90%, of the acid groups are neutralized to the corresponding carboxylate salt groups [p. 0076]. A skilled artisan would appreciate the process of Valentini obviously embraces embodiments wherein the polyurethane has been partially neutralized and is ionic, as well as embodiments wherein the polyurethane is non-ionic.
Regarding claim 18; Valentini teaches an ink can be made using 5% magenta SDP (PR 122 and 123 magenta)and 3% Mace 85-302-1 polyurethane dispersion [p. 0028, 0100]. PR 122 and 123 magenta are recognized in the art as quinacridone magenta inks, and, in light of the teachings of Valentini, would have been obvious to use in the ink dispersion at the time the invention was filed.
Regarding claim 19; Valentini exemplifies the preparation of a pigment dispersion comprising glycerine [p. 0019]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the dispersion of Valentini with glycerine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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