DETAILED ACTION
Applicant’s response filed on 07/24/2026 has been fully considered. Claims 1-6 and 8-21 are pending. Claims 1-6 and 8-17 are amended. Claim 7 is canceled. Claims 18-21 are new.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-6 and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Asada (WO 2019/208603 A1, US 2021/0253886 A1 is English language equivalent and is used for citation) in view of Becker et al. (US 2018/0327616 A1).
Regarding claims 1-3, Asada teaches a marking pen incorporating an oil-based ink composition for a writing board [0015], which reads on a marking pen, comprising an oil-based ink composition filled into the marking pen as claimed. Asada teaches that the oil-based ink composition for a writing board comprises a pigment, an organic solvent, and a resin [0012], wherein the pigment includes a metallic luster pigment having a transparent or colored transparent film formed with a metal vapor deposition film of aluminum or the like, or a metal pigment having a thickness of 0.01 to 0.1 µm obtained by releasing a vapor deposited metal film such as aluminum formed on a substrate such a film [0032], wherein the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], wherein the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms [0037], wherein the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], where in addition, another solvent can be used in combination with the organic solvent [0039], wherein the other solvents that can be used in combination include ethyl lactate, diethylene glycol, propylene glycol, benzyl glycol, benzyl alcohol, and γ-butyrolactone [0039], wherein the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], which reads on wherein the oil-based ink composition comprises optionally propylene glycol monomethyl ether, a resin, optionally a hydroxy acid ester having a boiling point of 150°C or higher, an auxiliary solvent, and a pigment, wherein the auxiliary solvent can dissolve the resin, and optionally wherein the auxiliary solvent has a higher boiling point than the hydroxy acid ester.
Asada does not teach a specific embodiment wherein the oil-based ink composition further comprises propylene glycol monomethyl ether. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s glycol ether-based solvent in Asada’s organic solvent in Asada’s oil-based ink composition to be propylene glycol monomethyl ether. The proposed modification would read on wherein the oil-based ink composition further comprises propylene glycol monomethyl ether as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], that among the organic solvents, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol are particularly preferable because they have high handwriting dryness and have good compatibility with the ink composition [0038], and that the resin can be applied without particular limitation as long as it is soluble in the organic solvents [0040], which means that Asada’s propylene glycol monomethyl ether would have been beneficial for modifying an extent to which Asada’s organic solvent dissolves Asada’s resin, for modifying handwriting dryness of Asada’s organic solvent, and for modifying compatibility of Asada’s organic solvent with Asada’s ink composition.
Asada does not teach a specific embodiment wherein the oil-based ink composition further comprises a hydroxy acid ester having a boiling point of 150°C or higher and does not teach a specific embodiment wherein the auxiliary solvent has a higher boiling point than the hydroxy acid ester, wherein the hydroxy acid ester is a lactic acid ester, wherein the hydroxy acid ester is ethyl lactate. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s other solvent in Asada’s oil-based ink composition to be Asada’s ethyl lactate and Asada’s diethylene glycol, propylene glycol, benzyl glycol, benzyl alcohol, or γ-butyrolactone. The proposed modification would read on wherein the oil-based ink composition further comprises a hydroxy acid ester having a boiling point of 150°C or higher, wherein the auxiliary solvent has a higher boiling point than the hydroxy acid ester as claimed, wherein the hydroxy acid ester is a lactic acid ester as claimed, wherein the hydroxy acid ester is ethyl lactate as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that another solvent can be used in combination with the organic solvent [0039], that the other solvents that can be used in combination include ethyl lactate, diethylene glycol, propylene glycol, benzyl glycol, benzyl alcohol, and γ-butyrolactone [0039], and that the resin can be applied without particular limitation as long as it is soluble in the organic solvents [0040], which means that Asada’s ethyl lactate and Asada’s diethylene glycol, propylene glycol, benzyl glycol, benzyl alcohol, or γ-butyrolactone would have been beneficial for modifying an extent to which Asada’s solvents dissolve Asada’s resin.
Asada does not teach that the oil-based ink composition further comprises a leafing-type vapor-deposited aluminum pigment. However, Becker teaches platelet-shaped aluminum pigments that are produced by PVD methods and that are coated at least partly with a leafing additive [0011], wherein PVD is vapor deposition [0112], wherein the leafing additive generates a leafing effect [0062], wherein the platelet-shaped aluminum pigments are present in an offset printing ink [0011]. Asada and Becker are analogous art because both references are in the same field of endeavor of an ink composition optionally comprising an aluminum pigment. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Becker’s platelet-shaped aluminum pigments that are produced by PVD methods and that are coated at least partly with a leafing additive, wherein PVD is vapor deposition, wherein the leafing additive generates a leafing effect, to substitute for Asada’s pigment in Asada’s oil-based ink composition. The proposed modification would read on wherein the oil-based ink composition further comprises a leafing-type vapor-deposited aluminum pigment as claimed. One of ordinary skill in the art would have been motivated to do so because Becker teaches that the platelet-shaped aluminum pigments that are produced by PVD methods and that are coated at least partly with a leafing additive [0011], wherein PVD is vapor deposition [0112], wherein the leafing additive generates a leafing effect [0062], are beneficial for being useful in an offset printing ink [0011], for having a metallic effect [0001], and for the resulting offset printing ink having high specular gloss [0001], which would have been desirable for Asada’s pigment in Asada’s oil-based ink composition because Asada teaches that the oil-based ink composition for a writing board comprises a pigment [0012], and that the pigment includes a metallic luster pigment having a transparent or colored transparent film formed with a metal vapor deposition film of aluminum or the like, or a metal pigment having a thickness of 0.01 to 0.1 µm obtained by releasing a vapor deposited metal film such as aluminum formed on a substrate such a film [0032].
Regarding claims 4, 9, and 10, Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], that the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms, such as methyl alcohol, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol [0037], which optionally reads on the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C as claimed.
Asada does not teach a specific embodiment of the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to selected Asada’s lower aliphatic alcohol-based solvent in Asada’s organic solvent in Asada’s oil-based ink composition to be Asada’s methyl alcohol, ethyl alcohol, n-propyl alcohol, or isopropyl alcohol. The proposed modification would read on the marking pen of claims 1-3 further comprising an alcohol having a boiling point of lower than 100°C as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], that the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms, such as methyl alcohol, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol [0037], that among the organic solvents, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol are particularly preferable because they have high handwriting dryness and have good compatibility with the ink composition [0038], and that the resin can be applied without particular limitation as long as it is soluble in the organic solvents [0040], which means that Asada’s methyl alcohol, ethyl alcohol, n-propyl alcohol, or isopropyl alcohol would have been beneficial for modifying an extent to which Asada’s organic solvent dissolves Asada’s resin, for modifying handwriting dryness of Asada’s organic solvent, and for modifying compatibility of Asada’s organic solvent with Asada’s ink composition.
Regarding claim 5, Asada teaches that the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], and that the resin includes ketone resins, rosin-modified resins, and rosin-modified phenol resins [0041], which optionally reads on wherein the resin is at least one selected from the group consisting of rosin and ketone resins as claimed.
Asada does not teach a specific embodiment wherein the resin is at least one selected from the group consisting of rosin and ketone resins. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s resin in Asada’s oil-based ink composition to be Asada’s ketone resins, rosin-modified resins, and/or rosin-modified phenol resins. The proposed modification would read on wherein the resin is at least one selected from the group consisting of rosin and ketone resins as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], and that the resin includes ketone resins, rosin-modified resins, and rosin-modified phenol resins [0041], which means that Asada’s ketone resins, rosin-modified resins, and/or rosin-modified phenol resins would have been beneficial for modifying pigment dispersibility, suppression of blurring of handwriting, fixability, and robustness of Asada’s oil-based ink composition and for modifying an extent of solubility of Asada’s resin in Asada’s organic solvent.
Regarding claims 6 and 15-17, Asada teaches that another solvent can be used in combination with the organic solvent [0039], and that the other solvents that can be used in combination include ethyl lactate and benzyl alcohol [0039], which optionally reads on wherein the auxiliary solvent is benzyl alcohol as claimed, wherein the hydroxy acid ester is a lactic acid ester, and wherein the auxiliary solvent is benzyl alcohol as claimed, wherein the hydroxy acid ester is ethyl lactate, and wherein the auxiliary solvent is benzyl alcohol as claimed, wherein the auxiliary solvent is benzyl alcohol as claimed.
Asada does not teach a specific embodiment wherein the auxiliary solvent is benzyl alcohol, wherein the hydroxy acid ester is a lactic acid ester, and wherein the auxiliary solvent is benzyl alcohol, wherein the hydroxy acid ester is ethyl lactate, and wherein the auxiliary solvent is benzyl alcohol, wherein the auxiliary solvent is benzyl alcohol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s other solvent in Asada’s oil-based ink composition to be Asada’s ethyl lactate and Asada’s benzyl alcohol. The proposed modification would read on wherein the auxiliary solvent is benzyl alcohol as claimed, wherein the hydroxy acid ester is a lactic acid ester, and wherein the auxiliary solvent is benzyl alcohol as claimed, wherein the hydroxy acid ester is ethyl lactate, and wherein the auxiliary solvent is benzyl alcohol as claimed, wherein the auxiliary solvent is benzyl alcohol as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that another solvent can be used in combination with the organic solvent [0039], that the other solvents that can be used in combination include ethyl lactate and benzyl alcohol [0039], and that the resin can be applied without particular limitation as long as it is soluble in the organic solvents [0040], which means that Asada’s ethyl lactate and Asada’s benzyl alcohol would have been beneficial for modifying an extent to which Asada’s solvents dissolve Asada’s resin.
Regarding claims 11 and 13, Asada teaches that the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], and that the resin includes rosin-modified resins, and rosin-modified phenol resins [0041], which optionally reads on wherein the resin comprises a rosin as claimed.
Asada does not teach a specific embodiment wherein the resin comprises a rosin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s resin in Asada’s oil-based ink composition to be Asada’s rosin-modified resins and/or rosin-modified phenol resins. The proposed modification would read on wherein the resin comprises a rosin as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], and that the resin includes rosin-modified resins and rosin-modified phenol resins [0041], which means that Asada’s rosin-modified resins and/or rosin-modified phenol resins would have been beneficial for modifying pigment dispersibility, suppression of blurring of handwriting, fixability, and robustness of Asada’s oil-based ink composition and for modifying an extent of solubility of Asada’s resin in Asada’s organic solvent.
Regarding claims 12 and 14, Asada teaches that the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], and that the resin includes ketone resins [0041], which optionally reads on wherein the resin comprises a ketone resin as claimed.
Asada does not teach a specific embodiment wherein the resin comprises a ketone resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s resin in Asada’s oil-based ink composition to be Asada’s ketone resins. The proposed modification would read on wherein the resin comprises a ketone resin as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that the resin can be applied without particular limitation as long as it is soluble in the organic solvent, and can be added to the ink for the purpose of improving the pigment dispersibility, suppressing the blurring of handwriting, improving the fixability, imparting robustness, and the like [0040], and that the resin includes ketone resins [0041], which means that Asada’s ketone resins would have been beneficial for modifying pigment dispersibility, suppression of blurring of handwriting, fixability, and robustness of Asada’s oil-based ink composition and for modifying an extent of solubility of Asada’s resin in Asada’s organic solvent.
Regarding claim 18, Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], that the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms, such as methyl alcohol, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol [0037], which optionally reads on the marking pent of claim 1 further comprising an alcohol having a boiling point of lower than 100°C as claimed. Asada teaches that another solvent can be used in combination with the organic solvent [0039], and that the other solvents that can be used in combination include ethyl lactate and benzyl alcohol [0039], which optionally reads on wherein the hydroxy acid ester comprises a lactic acid ester, and wherein the auxiliary solvent comprises benzyl alcohol as claimed.
Asada does not teach a specific embodiment of the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to selected Asada’s lower aliphatic alcohol-based solvent in Asada’s organic solvent in Asada’s oil-based ink composition to be Asada’s methyl alcohol, ethyl alcohol, n-propyl alcohol, or isopropyl alcohol. The proposed modification would read on the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], that the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms, such as methyl alcohol, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol [0037], that among the organic solvents, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol are particularly preferable because they have high handwriting dryness and have good compatibility with the ink composition [0038], and that the resin can be applied without particular limitation as long as it is soluble in the organic solvents [0040], which means that Asada’s methyl alcohol, ethyl alcohol, n-propyl alcohol, or isopropyl alcohol would have been beneficial for modifying an extent to which Asada’s organic solvent dissolves Asada’s resin, for modifying handwriting dryness of Asada’s organic solvent, and for modifying compatibility of Asada’s organic solvent with Asada’s ink composition.
Asada does not teach a specific embodiment wherein the hydroxy acid ester comprises a lactic acid ester, and wherein the auxiliary solvent comprises benzyl alcohol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Asada’s other solvent in Asada’s oil-based ink composition to be Asada’s ethyl lactate and Asada’s benzyl alcohol. The proposed modification would read on wherein the hydroxy acid ester comprises a lactic acid ester, and wherein the auxiliary solvent comprises benzyl alcohol as claimed. One of ordinary skill in the art would have been motivated to do so because Asada teaches that another solvent can be used in combination with the organic solvent [0039], that the other solvents that can be used in combination include ethyl lactate and benzyl alcohol [0039], and that the resin can be applied without particular limitation as long as it is soluble in the organic solvents [0040], which means that Asada’s ethyl lactate and Asada’s benzyl alcohol would have been beneficial for modifying an extent to which Asada’s solvents dissolve Asada’s resin.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Asada (WO 2019/208603 A1, US 2021/0253886 A1 is English language equivalent and is used for citation) in view of Becker et al. (US 2018/0327616 A1) as applied to claim 1, and further in view of Igai (JP 2019-189671 A, cited in IDS, machine translation in English used for citation).
Regarding claim 8, Asada in view of Becker renders obvious the marking pen of claim 1 as explained above.
Asada does not teach an airbrush unit, comprising the marking pen of claim 1, and an airbrush, wherein the airbrush unit is configured to scatter the oil-based link composition of the marking pen by way of air blown from the airbrush. However, Igai teaches an airbrush unit comprising an airbrush and a writing instrument, wherein a water-based ink composition is sprayed via air ejected from the airbrush, wherein the writing instrument contains the water-based ink composition [0012], wherein the writing instrument is preferably a marking pen from the viewpoint of ensuring good ink ejection by an airbrush [0026], wherein the water-based ink composition contains a pigment [0012]. Asada and Igai are analogous art because both references are in the same field of endeavor of a marking pen comprising an ink composition filled into the marking pen, wherein the ink composition comprises a solvent and a pigment. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to prepare Igai’s airbrush unit comprising Igai’s airbrush and Asada’s marking pen, wherein Asada’s oil-based ink composition is sprayed via air ejected from Igai’s airbrush, wherein Asada’s marking pen contains Asada’s oil-based ink composition, as suggested by Igai. The proposed modification would read on an airbrush unit, comprising the marking pen of claim 1, and an airbrush, wherein the airbrush unit is configured to scatter the oil-based ink composition of the marking pen by way of air blow from airbrush as claimed. One of ordinary skill in the art would have been motivated to do so because Igai teaches that using a marking pen as the writing instrument [0026] in an airbrush unit [0012] is preferably from the viewpoint of ensuring good ink ejection by an airbrush [0026], that the airbrush is beneficial for spraying a water-based ink composition via air ejected from the airbrush, wherein the writing instrument contains the water-based ink composition [0012], wherein the water-based ink composition contains a pigment [0012], and because the proposed modification would have been beneficial for modifying the ability of Asada’s marking pen to enable writing and/or marking, which would have been desirable because Asada teaches that the marking pen incorporating the oil-based ink composition is for a writing board [0015].
Allowable Subject Matter
Claims 19-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 19, Asada (WO 2019/208603 A1, US 2021/0253886 A1 is English language equivalent and is used for citation) in view of Becker et al. (US 2018/0327616 A1) renders obvious the marking pen of claim 1 as explained above. Asada teaches that the organic solvent includes the lower aliphatic alcohol-based solvent and the glycol ether-based solvent, which is preferably used as a main solvent, occupying 50% by weight or more of the entire solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], that in examples, the amount of solvent is 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass ([0050], TABLE 1), which suggests the marking pent of claim 1, comprising the propylene glycol monomethyl ether in up to 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass, based on a total mass of the oil-based ink composition. Asada teaches that in addition, another solvent can be used in combination with the organic solvent [0039], and that the other solvents that can be used in combination include ethyl lactate, diethylene glycol, propylene glycol, benzyl glycol, benzyl alcohol, and γ-butyrolactone [0039], which optionally reads on wherein a difference in boiling point between the auxiliary solvent and the hydroxy acid ester is in a range of from 37.2 to 105°C. The difference in boiling point is based on the calculations 205.3-151=54.3, 245-151=94, 188.2-151=37.2, 256-151=105, and 204-151=53.
Asada does not teach a specific embodiment of the marking pen of claim 1, comprising the propylene glycol monomethyl ether in 40 mass % or more, based on a total mass of the oil-based ink composition, and wherein a difference in boiling point between the auxiliary solvent and the hydroxy acid ester is in a range of from 20 to 130°C. Although Asada teaches that in addition, another solvent can be used in combination with the organic solvent [0039], that the other solvents that can be used in combination include ethyl lactate, diethylene glycol, propylene glycol, benzyl glycol, benzyl alcohol, and γ-butyrolactone [0039], that the organic solvent includes the lower aliphatic alcohol-based solvent and the glycol ether-based solvent, which is preferably used as a main solvent, occupying 50% by weight or more of the entire solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], and that in examples, the amount of solvent is 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass ([0050], TABLE 1), which suggests wherein a difference in boiling point between the auxiliary solvent and the hydroxy acid ester is in a range of from 37.2 to 105°C, Asada does not teach or suggest selecting Asada’s propylene glycol monomethyl ether to be present in 40 mass % or more, based on a total mass of the oil-based ink composition.
Regarding claim 20, Asada (WO 2019/208603 A1, US 2021/0253886 A1 is English language equivalent and is used for citation) in view of Becker et al. (US 2018/0327616 A1) renders obvious the marking pen of claim 1 as explained above. Asada teaches that the organic solvent includes the lower aliphatic alcohol-based solvent and the glycol ether-based solvent, which is preferably used as a main solvent, occupying 50% by weight or more of the entire solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], that in examples, the amount of solvent is 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass ([0050], TABLE 1), which suggests the marking pent of claim 1, comprising the propylene glycol monomethyl ether in up to 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass, based on a total mass of the oil-based ink composition. Asada teaches that in addition, another solvent can be used in combination with the organic solvent [0039], and that the other solvents that can be used in combination include ethyl lactate, diethylene glycol, benzyl alcohol, and γ-butyrolactone [0039], which optionally reads on wherein a difference in boiling point between the auxiliary solvent and the hydroxy acid ester is in a range of from 53 to 94°C. The difference in boiling point is based on the calculations 205.3-151=54.3, 245-151=94, and 204-151=53.
Asada does not teach a specific embodiment of the marking pen of claim 1, comprising the propylene glycol monomethyl ether in a range of from 55 to 90 mass % or more, based on a total mass of the oil-based ink composition, and wherein a difference in boiling point between the auxiliary solvent and the hydroxy acid ester is in a range of from 40 to 100°C. Although Asada teaches that in addition, another solvent can be used in combination with the organic solvent [0039], that the other solvents that can be used in combination include ethyl lactate, diethylene glycol, benzyl alcohol, and γ-butyrolactone [0039], that the organic solvent includes the lower aliphatic alcohol-based solvent and the glycol ether-based solvent, which is preferably used as a main solvent, occupying 50% by weight or more of the entire solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], and that in examples, the amount of solvent is 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass ([0050], TABLE 1), which suggests wherein a difference in boiling point between the auxiliary solvent and the hydroxy acid ester is in a range of from 53 to 94°C, Asada does not teach or suggest selecting Asada’s propylene glycol monomethyl ether to be present in a range of from 55 to 90 mass %, based on a total mass of the oil-based ink composition.
Regarding claim 21, Asada (WO 2019/208603 A1, US 2021/0253886 A1 is English language equivalent and is used for citation) in view of Becker et al. (US 2018/0327616 A1) renders obvious the marking pen of claim 1 as explained above. Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], and that the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms, such as methyl alcohol, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol [0037], which optionally reads on the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C as claimed. Asada teaches that another solvent can be used in combination with the organic solvent [0039], and that the other solvents that can be used in combination include ethyl lactate and benzyl alcohol [0039], which optionally reads on wherein the hydroxy acid ester comprises a lactic acid ester, wherein the auxiliary solvent comprises benzyl alcohol as claimed. Asada teaches that the organic solvent includes the lower aliphatic alcohol-based solvent and the glycol ether-based solvent, which is preferably used as a main solvent, occupying 50% by weight or more of the entire solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], and that in examples, the amount of solvent is 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass ([0050], TABLE 1), which suggests wherein the propylene glycol monomethyl ether in up to 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass, based on a total mass of the oil-based ink composition.
Asada does not teach a specific embodiment of the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C, wherein the hydroxy acid ester comprises a lactic acid ester, wherein the auxiliary solvent comprises benzyl alcohol, and wherein the propylene glycol monomethyl ether is 60 mass % or more, based on a total mass of the oil-based ink composition. Although Asada teaches that the organic solvent includes a lower aliphatic alcohol-based solvent and a glycol ether-based solvent [0036], that the lower aliphatic alcohol-based solvent includes aliphatic alcohol-based solvents having 2 to 4 carbon atoms, such as methyl alcohol, ethyl alcohol, n-propyl alcohol, and isopropyl alcohol [0037], that another solvent can be used in combination with the organic solvent [0039], that the other solvents that can be used in combination include ethyl lactate and benzyl alcohol [0039], that the organic solvent includes the lower aliphatic alcohol-based solvent and the glycol ether-based solvent, which is preferably used as a main solvent, occupying 50% by weight or more of the entire solvent [0036], that the glycol ether-based solvent includes glycol ether-based solvents having 4 to 6 carbon atoms, such as propylene glycol monomethyl ether [0037], and that in examples, the amount of solvent is 81.0%, 80.8%, 78.8%, 79.8%, or 77.8% by mass ([0050], TABLE 1), which suggests the marking pen of claim 1 further comprising an alcohol having a boiling point of lower than 100°C, wherein the hydroxy acid ester comprises a lactic acid ester, wherein the auxiliary solvent comprises benzyl alcohol as claimed, Asada does not teach or suggest selecting Asada’s propylene glycol monomethyl ether to be present in 60 mass % or more, based on a total mass of the oil-based ink composition.
Response to Arguments
Applicant’s arguments, see p. 5-9, field 07/24/2026, with respect to the rejection of claims 1-6 and 9-17 under 35 U.S.C. 103 as being unpatentable over Kimura et al. (JP 2018-035334 A, machine translation in English) in view of Becker et al. (US 2018/0327616 A1 have been considered and are responded to by the new grounds of rejection in this Office action.
Applicant’s arguments, see p. 5-9, field 07/24/2026, with respect to the rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Kimura et al. (JP 2018-035334 A, machine translation in English) in view of Becker et al. (US 2018/0327616 A1) as applied to claim 7, and further in view of Tritt et al. (US 2019/0151882 A1) have been considered and are responded to by the new grounds of rejection in this Office action.
Applicant’s arguments, see p. 5-9, field 07/24/2026, with respect to new claim 18 have been considered and are responded to by the new grounds of rejection in this Office action.
Applicant’s arguments, see p. 5-9, field 07/24/2026, with respect to new claims 19-21 have been considered and are responded to by the objection to claims 19-21 as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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