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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Newly submitted claims 19-20 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 1-18 are directed toward a composition of matter, whereas claims 19-20 are directed toward an article of manufacture containing said composition.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The groups of claims 1-18 and claims 19-20 lack unity of invention because even though the inventions of these groups require the technical feature of the composition of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art, as set forth in the rejection below.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 19-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
The amendments filed on July 6, 2026 have been entered. Claims 1-20 are pending in the application. Claims 19-20 are withdrawn from consideration.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Totsuka et al (JP 2019/189802 A, using the machine translation for the citations below) in view of Ito et al (JP 2006/035694 A, using the machine translation for the citations below), as evidenced by Kao Chemicals Global (Emulgen A-60 Product Specification, Webpage, Accessed 2026-03-30).
Regarding Claims 1, 3-5, 7-14, and 16-17: Totsuka teaches an aqueous ink composition {para. 0001) for use in ballpoint pens (para. 0091), wherein the composition comprises a colorant (para. 0027), a polyoxyethylene polycyclic phenyl-based surfactant (para. 0036, chemical formula 1), and a water-soluble solvent (para. 0052). Totsuka further teaches that the surfactant may be Emulgen A-60 (para. 0038), which Kao Chemicals Global teaches is a polyoxyethylene distyrenated phenyl ether (p.1, Chemical Name). Totsuka teaches 0.1-10 wt% of the polyoxyethylene polycyclic phenyl-based surfactant, or preferably 0.5-5wt% (para. 0046).
However, Totsuka is silent to the fine particles having a new Mohs harness of 3 or greater and a particle size of 30 µm or less.
Ito teaches an aqueous ink composition for use in ballpoint pens (para. 0005) comprising fine particles having a new Mohs hardness of 4 or greater, wherein the particles suppress wear of the ball receiving seat (para. 0004), and a particle size of 0.1-30 µm, wherein the particle size being lower than 30 µm prevents problems related to the size of the ink flow path of the pen (para. 0010). Ito teaches 0.001-10 mass% of the fine particles in relation to the total amount of the ink composition, which achieves good wear suppression and prevents clogging of the pen tip (para. 0011). Ito further teaches a working example containing 1wt% of alumina particles having a particle size of 0.6 µm and a new Mohs hardness of 12 (para. 0023). Ito and Totsuka are analogous art because they are directed toward the same field of endeavor, namely aqueous inks for use in ballpoint pens. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.001-10 mass% of fine particles having a Mohs hardness of 4 or greater and a particle size of 0.1-30 µm to the ink composition taught by Totsuka in order to suppress wear of the ball receiving seat in a ballpoint pen.
Based on calculations, the Mfp/Ms ratio taught by the combination of Totsuka and Ito is from 0.0002-20. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping mass ratio of the fine particles to the surfactant, and they would have been motivated to do so in order to prevent clogging of the ballpoint tip and prevent wearing of the ball bearing seat (Ito, para. 0011), as well as suppressing aggregation of SAN particles, ensuring uniform coloring, and preventing foaming of the ink (Totsuka, para. 0046).
Regarding Claims 2 and 15: Ito does not specify an upper limit of the new Mohs hardness of the fine particles; however, according to para. 0016 of the instant specification, the highest possible new Mohs hardness value is 15. Based on calculations, the numerical value obtained by multiplying the new Mohs hardness by the average particle size of the fine particles is from 0.04-450. In the working example containing alumina having a new Mohs hardness of 12 and a particle size of 0.6 µm (Ito, para. 0023), this numerical value is 7.2.
Regarding Claim 5: Totsuka teaches 0.1-10 wt%, or preferably 0.5-5wt%, of the polyoxyethylene polycyclic phenyl-based surfactant (para. 0046). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the polycyclic phenyl-based surfactant, and they would have been motivated to do so on the low end of the range to prevent foaming and bubbles in the ink (para. 0046).
Regarding Claims 6 and 18: Not disclosed is the viscosity measured at 1rpm. However, Totsuka and Ito teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a viscosity of 100-1000 mPa·s at 25°C and 1rpm, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Response to Arguments
Applicant's arguments filed on July 6, 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no expectation of success in combining Ito and Totsuka: This argument attacks the references individually, which, as noted above, is not an indication of nonobviousness. The teachings of Ito provide sufficient motivation to combine the inventions to arrive at the claimed invention, as set forth above. In addition, because Totsuka and Ito are in the same field of endeavor and do not teach away from each other, there is a reasonable expectation of success in combining them.
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 CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
