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 .
DETAILED ACTION
This action is in response to papers filed February 4, 2026. Applicant’s reply to the restriction/election requirement of December 4, 2025 has been entered. Claims 6-18 have been amended; claims 1-5 have been canceled; and claims 19 and 20 have been newly added. Claims 6-20 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/JP2022/014224, filed March 25, 2022 under 35 U.S.C. 365(c), is acknowledged.
Acknowledgment is also made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copies of Japanese Patent Application Nos. JP 2021-102596 and JP 2021-120846, filed in the Kingdom of Japan on June 21, 2021 and July 21, 2021, respectively, have been received as required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group II, claims 6-10, is acknowledged. Applicant’s elections of i) “n-butyl methacrylate” as the species of methacrylate monomer of formula (I), ii) “3-iodo-2-propynylcarbamate”*** as the species of antimicrobial compound, iii) “cyclohexyl methacrylate” as the species of additional monomer, iv) “styrene” as the species of hydrophobic vinyl monomer, and v) “glycerin monomethacrylate” as the species of aqueous monomer are all also acknowledged. The Examiner has determined that claims 6-12 and 17 read on the elected subject matter. Claims 13-16, 19, and 20 read on Group III subject matter.
***The elected species of antimicrobial compound, i.e. ““3-iodo-2-propynylcarbamate”, in light of the specification, is understood to be iodopropynyl butyl carbamate, i.e. IPBC.
The traversal is on the following grounds:
1. Unity of invention does exist between Groups I to III because there is a technical relationship that involves the same special technical feature.
2. Regarding the species election requirement, the Office Action does not show a search burden and a search has been conducted, and that a search of all the claims would not impose a serious burden.
These grounds for traversal are not found persuasive because:
1. The identified Groups I-III lack unity a posteriori. Applicant has not even attempted to establish that the cited Oshima et al. prior art document does not disclose the special technical feature common to Groups I-III.
2. As expressly pointed out in the restriction letter, there is an examination and search burden for the identified species due to their mutually exclusive characteristics.
Accordingly, claims 13-16 and 18-20 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected subject matter, there being no allowable generic or linking claim. The restriction/election requirement is still deemed proper, maintained, and is therefore made FINAL.
Applicant timely traversed the restriction (election) requirement in the reply filed on February 4, 2026. Claims 6-12 and 17 are under examination.
Abstract
The abstract of the disclosure is objected to because of the following:
1. Two different abstracts were filed on October 30, 2023. There is no clear indication which abstract is the amended version and which abstract has been replaced. There are various and unique grammatical and other typographical errors in both abstract versions.
2. The abstract should be a concise summary of the key technical aspects of the invention which are new to the art to which the invention pertains. If the invention is a composition, the abstract should recite the key requisite ingredients. If the invention is a method, the abstract should recite the key requisite active steps.
3. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art. However, this is precisely what the abstract does.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112(b)
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 7, 8, and 17 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.
Claim 7, which depends from claim 6, stipulates in a wherein clause that the (meth)acrylate monomer is present in the recited amount “based on a total polymer component mass of the antimicrobial particle dispersion”. There appears to be insufficient antecedent basis for the presence of any required polymer in the antimicrobial particle dispersion.
Claim 8, which depends from claim 6, stipulates in a wherein clause that the antimicrobial component is present in the recited amount “based on a total polymer component mass of the antimicrobial particles”. There appears to be insufficient antecedent basis for the presence of any required polymer in the antimicrobial particles.
Claim 17 stipulates in a wherein clause that the iodopropargyl compound comprises one of those recited, “or the mixture thereof”. First, there is insufficient antecedent basis for the mixture. Further, one of ordinary skill in the art cannot definitively ascertain whether “the mixture” is strictly limited to the mixture of all the recited elements, or rather “the mixture” could be any mixture of two or more of the recited elements.
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.
Claims 6-12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Haga et al. (U.S. Patent Application Pub. No. 2018/0079920), in view of Heinzel (U.S. Patent Application Pub. No. 2003/0166483).
Applicant Claims
Applicant’s elected subject matter is directed to an aqueous ink composition comprising n-butyl methacrylate, iodopropynyl butyl carbamate (IPBC), water, and a water-soluble organic solvent; wherein the n-butyl methacrylate is present in the amount of 30-95 mass%; and wherein the IPBC is in the form of particles with size 10-800 nm and is present in the amount of 0.1-50 mass%.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Haga et al. disclose an aqueous ink composition comprising e.g. n-butyl methacrylate, a preservative or fungicide, water, and a water-soluble organic solvent; wherein the n-butyl methacrylate is present in the amount of e.g. 40 mass% (abstract; paragraphs 0001, 0011, 0021, 0022, 0040, 0041, 0051, 0054, 0055, 0057, 0064).
Heinzel discloses that iodopropynyl butyl carbamate (IPBC) in the form of particles with size e.g. 10-150 nm and present in the amount of e.g. 0.1-5 wt% of a composition serves as a suitable preservative and a fungicide (abstract; paragraphs 0004, 0005, 0015, 0027-0029, 0051, 0060, 0062).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Haga et al. do not explicitly disclose that the preservative and fungicide agent is IPBC. This deficiency is cured by the teachings of Heinzel.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Haga et al. and Heinzel, outlined supra, to devise Applicant’s claimed composition.
Haga et al. disclose an aqueous ink composition comprising e.g. n-butyl methacrylate, a preservative or fungicide, water, and a water-soluble organic solvent; wherein the n-butyl methacrylate is present in the amount of e.g. 40 mass%, wherein the aqueous ink composition is suited to writing instruments such as felt-tip pens. Since Heinzel discloses that iodopropynyl butyl carbamate (IPBC) in the form of particles with size e.g. 10-150 nm and present in the amount of e.g. 0.1-5 wt% of a composition serves as a suitable preservative and a fungicide for use with e.g. textiles, one of ordinary skill in the art would thus be motivated to employ IPBC as the preservative and fungicide agent in the Haga et al. aqueous ink composition, with the reasonable expectation that the resulting composition will successfully be suited to writing instruments such as felt-tip pens.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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