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
Applicant's election with traverse of Group I, claims 1-6 and 10-13, in the reply filed on 04/28/2026 is acknowledged.
Applicant has elected to elect with traverse. Applicant argues no indication was provided that the content of the claims interpreted in light of the description was considered in making the assertion of a lack of unity (see Applicant’s Remarks at pg. 3). Additionally, Applicant argues there is a unity of invention, pointing to 37 CFR 1.475(b) given the relationship between the independent claims (see Applicant’s Remarks at pg. 4). Moreover, Applicant argues there is no search burden on the Examiner, and that the International Searching Authority searched all of the claims together (see Applicant’s Remarks at pg. 4).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
37 CFR 1.475(b) does not preclude an a posteriori unity of invention analysis like presently applied. Furthermore, all the categories of inventions in 37 CFR § 1.475(b) include a process, which the instant invention does not claim. Consequently, even if 37 CFR 1.475(b) applied in the present case, the claims as presented do not satisfy any of the listed combinations of categories. In this case, the technical feature exists in the prior art, as demonstrated in the Restriction Requirement dated 03/05/2026, and thus a proper lack of unity of invention analysis is provided.
Furthermore, the establishment of a search burden is used to determine whether the Office may require restriction in national applications filed under 35 U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT). In other words, the requirement regarding a serious search burden does not apply to national stage applications submitted under 35 U.S.C. 371.
Additionally, Applicants have not pointed to any specific teachings in the description or specification detailing how such teachings would alter the prior lack of unity analysis. The Examiner has properly identified the technical feature between the claims, and demonstrated the teaching of this technical feature in the prior art in Hosoda. Accordingly, a lack of unity exists and a proper a posteriori unity of invention analysis has been made. Therefore, the restriction/election requirement is still deemed proper and is made final.
Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 7-9 are directed to a non-elected invention. Applicant timely traversed the restriction requirement in the reply filed on 04/28/2026.
Claim Objections
Claim 1 is objected to because of the following informality:
• In claim 1, the phrase “based on total solid component mass of the oil-based ink” is slightly disjointed. To correct, the Examiner suggests amending the phrase as follows: “based on a total solid component mass of the oil-based ink.”
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hosoda et al. (JP-2010196046-A), with reference to the included machine translation (hereinafter referred to as “Hosoda”).
Regarding claim 1, Hosoda teaches an oil-based ink composition suitable for a writing instrument (see Hosoda at pg. 1, para. 1, teaching an oil-based ink that may be used in a marking pen; also see example 3 at last page of Hosoda), the composition comprising:
• a pigment; a binder resin; an organic solvent; and fluorine-based resin particles (see example 3 at last page of Hosoda, teaching an example ink containing titanium oxide and monoazo red (pigment), an acrylic acid modified resin and a decylphenol resin (binder; also see Applicant’s specification at para. 0023, teaching phenol resins and rosins as suitable binder resins), methylcyclohexane and n-octane (solvent), and a fluororesin modified ethylene resin (fluorine-based resin particles));
• wherein a total content ratio of the pigment and the fluorine-based resin particles is in a range of from 35 to 70 mass%, based on total solid component mass of the oil-based ink composition (see example 3 at last page of Hosoda, teaching an example ink containing 20% of methylcyclohexane and 17% of n-octane; given these are the only non-solid components in example 3 of Hosoda, example 3 of Hosoda necessarily contains 63% of total solid component (100% total – 20% methylcyclohexane – 17% n-octane = 63% solid component total); example 3 also contains 20% of titanium oxide pigment, 5% of monoazo red pigment, and 3% of fluororesin modified ethylene resin; thus, the claimed content ratio in example 3 of Hosoda is 44.4% ((20% + 5% + 3%)/63% • 100 = 44.4%), which falls within the claimed range); and
• wherein a mass ratio of the fluorine-based resin particles with respect to a total mass of the pigment and the fluorine-based resin particles is in a range of from 0.10 to 0.45 (see example 3 at last page of Hosoda, which contains 20% of titanium oxide pigment, 5% of monozao red pigment, and 3% of fluororesin modified ethylene resin; thus, the claimed mass ratio in example 3 of Hosoda is 0.107 (3%/(20% + 5% + 3%) = 0.107), which falls within the claimed range).
Regarding claims 2-3, see example 3 at last page of Hosoda, teaching the ink as containing 20% of titanium oxide.
Regarding claim 5, see example 2 at last page of Hosoda, teaching an example ink containing carbon black (pigment), a nonylphenol resin and rosin glycerin ester (binder), ethylcyclohexane and n-hexane (solvent), and fluorine resin particles and fluororesin modified ethylene resin particles (fluorine-based resin particles); further, example 2 contains 31% of ethylcyclohexane and 20% of n-hexane; given these are the only non-solid components in example 2 of Hosoda, example 2 of Hosoda necessarily contains 49% of total solid component (100% total – 31% ethylcyclohexane – 20% n-hexane = 49% solid component total); example 2 also contains 16% of carbon black pigment and 4% total of fluorine-based resin particles (3% of fluorine resin particles + 1% of fluororesin modified ethylene resin = 4% total); thus, the claimed content ratio of the pigment and fluorine-based resin particles in example 2 of Hosoda with respect to the total solid component is 40.8% ((4% + 16%)/49% • 100 = 40.8%), which falls within the claimed range; moreover, the claimed mass ratio of the fluorine-based resin particles with respect to a total mass of the pigment and the fluorine-based resin particles in example 2 of Hosoda is 0.2 (4%/(4% + 16%) = 0.2), which falls within the claimed range; additionally, carbon black is a carbon-based pigment; thus, example 2 of Hosoda meets claim 5; it is noted that example 2 of Hosada is relied upon for the claim 5 analysis instead of example 3 of Hosoda, which was relied upon in the claim 1 analysis above.
Claim Rejections - 35 USC § 103
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.
Claims 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda.
Regarding claims 4 and 10, while Hosoda teaches the ink according to claim 2 or 3 outlined above, Hosoda fails to explicitly teach an average particle size ratio of the metal oxide-based pigment with respect to the fluorine-based resin particles to be in a range of from 0.2 to 4.0 as measured by a dynamic light scattering method.
However, Hosoda teaches the average particle diameter of the colorant in their ink composition to range from 10 µm or less (see Hosoda at pg. 2, para. 3).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the average particle diameter of the titanium oxide pigment in example 3 of Hosoda to range from 10 µm as less, because Hosoda broadly teaches as such for their colorant (see Hosoda at pg. 2, para. 3).
Following the above modification, the ink of example 3 of Hosoda contains a titanium oxide pigment with an average particle diameter of 10 µm or less, as well as a fluororesin modified ethylene resin having an average particle diameter of 6 µm (see example 3 at the last page of Hosoda). Thus, the ratio of the average particle sizes ranges from 1.67 or less (10/6 = 1.67). This range of 1.67 or less overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
It is noted that the particle sizes of Hosoda necessarily would remain the same regardless of the specific method of measurement. Accordingly, it necessarily follows that the particle sizes of Hosoda would be the same if measured by a “dynamic light scattering method” limitation. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hosoda, as applied to claim 1 above, and further in view of Haruhara (JP-2019011401-A), with reference to the patent family member US-20210147699-A1 as a translation of Haruhara (hereinafter referred to as “Haruhara”).
Regarding claim 6, while Hosoda teaches the ink according to claim 1 outlined above, Hosoda fails to explicitly teach the fluorine-based resin particles to be polytetrafluoroethylene particles.
However, Haruhara teaches an oil-based ink composition for writing instruments containing a colorant, a resin, an organic solvent, and fluorine-based resin particles (see Haruhara at para. 0008). Haruhara further teaches the fluorine-based resin particles to preferably be polytetrafluoroethylene resin particles (PTFE) from the perspective of chemical stability, cost, and the like (see Haruhara at para. 0043).
Hosoda teaches their ink may contain fluororesin particles, and further teaches examples containing fluorine resin particles (see Hosoda at pg. 2, last paragraph; also see example 2 at last page of Hosoda, which contains fluorine resin particles).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use polytetrafluoroethylene resin as the fluorine resin particles in the ink of Hosoda (e.g., example 2 of Hosoda). One of ordinary skill in the art would have been motivated to do so from the perspective of chemical stability, cost, and the like (see Haruhara at para. 0043).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda, as applied to claims 2, 3, or 4 above, and further in view of Morimoto et al. (JP-2016124894-A), with reference to the included machine translation (hereinafter referred to as “Morimoto”).
Regarding claims 11-13, while Hosoda teaches the ink according to claims 2, 3, or 4 outlined above, Hosoda fails to explicitly teach the pigment as comprising a carbon-based pigment in addition to the metal oxide-based pigment.
However, Morimoto teaches an aqueous ink composition for a ballpoint pen containing at least a high specific gravity pigment and resin particles (see Morimoto at Abstract). Morimoto further teaches the high specific gravity pigment may include titanium oxide (see Morimoto at pg. 2, para. 5). Moreover, Morimoto teaches that other pigments may be used in combination with the high specific gravity pigment for the purpose of providing color effects such as vividness, pastel tone, and handwriting fastness (see Morimoto at pg. 4, para. 4). Additionally, Morimoto teaches carbon black may be used as an additional pigment (see Morimoto at pg. 4, para. 4).
Hosoda teaches their coloring agent may include pigments such as titanium oxide or carbon black (see Hosoda at pg. 2, para. 3).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use carbon black in combination with titanium oxide (e.g., using carbon black instead of monoazo red in example 3 of Hosoda) in the ink of Hosoda. One of ordinary skill in the art would have been motivated to do so for the purpose of providing color effects such as vividness, pastel tone, and handwriting fastness (see Morimoto at pg. 4, para. 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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