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 .
The rejections set forth under 35 USC 102 and 103 in the office action mailed 2/24/26 are withdrawn in light of the evidence submitted by applicant regarding the CR-90 pigment, and the accompanying amendments to the specification. New grounds of rejection are set forth below and the office action is made non-final. The rejection set forth under 35 USC 112(b) in the office action mailed 2/24/26 is withdrawn in light of the amendment to claim 6 filed 5/12/26 and the double patenting rejection set forth in the office action mailed 2/24/26 is withdrawn in light of the approved terminal disclaimer filed 5/12/26.
Claim Rejections - 35 USC § 103
Claims 1, 3-4, 6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (JP 2019-035057 A) in view of Takahashi (U.S. PG Pub. No. 2016/0060472).
An English-language equivalent of Sato, U.S. PG Pub. No. 2021/0047531, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language reference.
In paragraph 6 Sato discloses a white inkjet ink composition comprising a white pigment, a water-dispersible resin, and water, all as recited in claim 1. It is noted that the “comprising” language of claim 1 allows for the claimed composition to comprise additional unrecited components. In paragraph 43 Sato discloses that the pigment can be a titanium oxide whose surface has been treated with alumina, silica, or other materials. In paragraph 44 Sato discloses that the white pigment is present in an amount of 1.0 to 20.0% by weight of the composition, within the range recited in claim 1. In paragraphs 54-58 Sato discloses that the composition can further comprise a pigment dispersant, where the pigment dispersant can be an acrylic acid/lauryl acrylate/styrene copolymer, meeting the limitations of the alkali-soluble resin of claim 1, and that the pigment dispersant is preferably present in an amount of 5 to 60 parts by weight of 100 parts by weight of the pigment, within the range recited in claim 1.
In paragraph 79 Sato discloses that the acrylic acid/lauryl acrylate/styrene copolymer can have a weight-average molecular weight of 30,000 and an acid value of 185 mg KOH/g, within the ranges recited in claim 3.
In paragraph 6 Sato discloses that the ink is an inkjet ink, and is therefore capable of performing the intended use of claim 6 as an ink for inkjet printing.
The differences between Sato and the currently presented claims are:
i) Sato does not disclose the specific titanium oxide pigment recited in claims 1 and 8.
ii) Sato does not specifically disclose a water-dispersible resin content within the range recited in claim 4.
With respect to i), in paragraph 1 Takahashi discloses a white inkjet ink, and in paragraph 22 Takahashi discloses that the ink comprises a titanium dioxide pigment. In paragraphs 27-29 Takahashi discloses that the titanium dioxide can be surface treated with inorganic agents such as alumina and silica, as well as organic agents. In paragraph 31 Takahashi discloses that specific suitable pigments include PF-690 and PF-691, which the currently amended specification acknowledges as pigments within the scope of the claimed pigments, and in Table 1 (following paragraph 113) Takahashi discloses that PF-690 is treated with aluminum, silica, and polyalcohol and has a particle diameter of 0.21 µm, within the range recited in claim 8. Takahashi teaches more generally in paragraph 31 that the pigment has a particle diameter in a range within the range recited in claim 8. The use of the PF-690 or PF-691 pigment of Takahashi as the titanium dioxide pigment in the ink composition of Sato therefore meets the limitations of claims 1, 3, 6, and 8.
It would have been obvious to one of ordinary skill in the art to use the PF-690 or PF-691 pigment of Takahashi as the titanium dioxide pigment in the composition of Sato, as Takahashi teaches that it is a preferred pigment for use in a white inkjet ink.
With respect to ii), In paragraph 19 Sato discloses that the water-dispersible resin is present in 1.0 to 3.0 parts by mass relative to 1 part by mass of the pigment. As discussed in paragraph 6 above, Sato discloses that the pigment is present in an amount of 1.0 to 20.0% by weight of the composition, leading to a water-dispersible resin content of 1.0 to 60.0% by weight, overlapping the range recited in claim 4. See MPEP 2144.05(I): “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 light of the above, claims 1, 3-4, 6, and 8 are rendered obvious by Sato in view of Takahashi.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Takahashi in light of the evidence provided by ISK (“Titanium dioxide in chloride process (Rutile Type)”, retrieved from the internet at <https://www.iskweb.co.jp/eng/products/spec/spec02_3.html> on 8/5/26).
The discussion of Sato in view of Takahashi in paragraph 3 above is incorporated here by reference. Sato and Takahashi disclose a composition meeting the limitations of claim 1, where the pigment can be PF-690 or PF-691, but do not disclose the titanium oxide percentage in the pigment.
ISK discloses that PF-690 has a titanium oxide concentration of 93% and PF-691 has a titanium oxide concentration of 94%, both within the range recited in claim 7.
Claim 7 is therefore rendered obvious by Sato in view of Takahashi in light of the evidence provided by ISK.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Takahashi as applied to claims 1, 3-4, 6, and 8 above, and further in view of Moriyasu (WO 2018/123739 A1).
The discussions of Sato in paragraphs 6 and 9 above are incorporated here by reference. Sato discloses a white ink composition meeting the limitations of claim 1, and comprising a styrene/lauryl acrylate/acrylic acid copolymer having a molecular weight within the range recited in claim 2. Lauryl acrylate is an alkyl ester of a radical polymerizable unsaturated carboxylic acid with 8 or more carbon atoms, meeting the limitations of the middle monomer of claim 2. Sato does not specifically disclose the weight ratio of the monomers in the copolymer.
An English-language machine translation of Moriyasu, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation. In paragraph 7 Moriyasu discloses an aqueous inkjet composition comprising a pigment, and in paragraph 18 discloses that the pigment can be titanium oxide. In paragraphs 19 and 29-32 Moriyasu discloses that the composition can further comprise an alkali-soluble resin, which can be a styrene/lauryl acrylate/acrylic acid copolymer having the same weight-average molecular weight and acid value as that disclosed by Sato. Moriyasu discloses that the styrene is present in 45% by weight, the lauryl acrylate in 30% by weight, and acrylic acid in an amount of 25% by weight, all within the ranges recited in claim 2.
It would have been obvious to one of ordinary skill in the art to prepare the styrene/lauryl acrylate/acrylic acid copolymer of Sato with monomers in the proportions taught by Moriyasu, since Moriyasu teaches that they are suitable proportions for preparing styrene/lauryl acrylate/acrylic acid copolymers useful in inkjet inks and having properties matching those of Sato.
Allowable Subject Matter
Claim 5 would be allowable if the double patenting rejection were overcome and the claim were rewritten in independent form. The prior art, as exemplified by the references discussed above, do not disclose the inclusion of the specific water-dispersible resins of claim 5. Nakashima (WO 2020/121628 A1), an English-language equivalent of which is U.S. PG Pub. No. 2022/0025198, discloses an electron beam curable water-based inkjet ink composition comprising a colorant, a resin emulsion, and water, where the resin emulsion can be a polyurethane-based resin emulsion, as disclosed by Sato, an acrylic-based resin, as recited in claim 5, or a styrene-acrylic-based resin emulsion, which meets the limitations of both the acrylic-based and styrene-based resin emulsion of claim 5. In paragraph 68 of the English-language equivalent Nakashima discloses that A-1125, which is an anionic acrylic emulsion, is a suitable acrylic-based resin emulsion, meeting the desire of Sato (paragraph 11 of Sato) that the water-dispersible have anionic groups and be reactive with cationic compounds. However, A-1125 has an acid value of 157 mgKOH/g, far outside the range recited in claim 5. One of ordinary skill in the art would have no motivation to include an acrylic-based or styrene acrylic-based resin having the claimed acid value in the composition of Sato and Takahashi.
Response to Arguments
Applicant’s arguments filed 5/12/26 have been fully considered. In light of the evidence provided by applicant that CR-90 does not meet the limitations of the claimed titanium oxide pigment, the rejections set forth in the office action mailed 2/24/26 have been withdrawn. However, the newly applied Takahashi reference provides motivation for one of ordinary skill in the art to use PF-690 or PF-691 as the titanium oxide pigment of Sato.
Applicant also argues that the claimed compositions provide unexpectedly superior results, pointing to the data provided in the specification. In order to successfully overcome a prima facie case of obviousness through a showing of unexpected results, applicant must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). In this case all the inventive examples comprise the same amount of the same pigment (CR-90-2) and water-dispersible resin (M6963), and the same amount of a limited number of alkali-soluble resins, while the claims recite compositions comprising broad classes of compounds in broad or unlimited concentration ranges. One of ordinary skill in the art would not be able to determine from the data provided by applicant that superior results would be maintained across the full scope of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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