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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/26/2026 has been entered.
Information Disclosure Statement
3. Acknowledgment is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. These IDS have been considered.
Priority
4. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Response to Arguments
5. Applicant’s arguments, see the remarks filed on 12/29/2025, with respect to the rejection of independent claim 1 under 35 U.S.C. 103 have been fully considered, but they are not persuasive.
On page 4 of the remarks, Applicant argued that both Nagahama and Asahina et al. heavily relate to alicyclic ring structures while the ring structure as presently claimed is an aromatic ring structure. The Examiner respectfully disagrees.
Asahina et al. disclosed in [0035], line 1, that examples of the polyisocyanate that can be used include aromatic polyisocyanate compounds. Furthermore, alicyclic compounds combine cyclic structure with aliphatic properties. Lastly, aliphatic compounds can be linear, branched or cyclic. The disclosure in [0035], lines 15-18 to preferably use either an aliphatic polyisocyanate compound or an alicyclic polyisocyanate compound does not therefore exclude the use of a polyisocyanate compound having an aromatic ring structure.
Nagahama was only relied upon to show that it is known in the art to use urethane resin having the disclosed mass-average molecular weight.
Applicant also argued on the same page that the claimed invention exhibits excellent anti-blocking property and rubbing resistance; however, Asahina et al. also disclosed similar properties with their pigment dispersion in paragraph [0005].
Applicant is encouraged to amend the claim language to provide specific amounts or further characteristics of the compounds in the pigment dispersion in order to better distinguish the instant application from the prior art.
Claim Rejections - 35 USC § 103
6. 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 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.
7. 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 of this title, 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.
8. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Asahina et al. (JP 2017-088839), in view of Nagahama (US Pub. Nº 2012/0164400).
9. Regarding independent claim 1: Asahina et al. disclosed a pigment dispersion ([0054], lines 3-5) for ink jet ink ([0004], lines 2-3), comprising a binder (A) ([0006], line 2), a pigment (B) ([0054], line 5), and an aqueous medium (C) ([0054], line 5),
wherein the binder (A) is a binder containing a urethane resin (A1) ([0028], line 4) that is a reaction product of polyol (a1) ([0032], line 1), containing polyol (a1-1) having an acid group ([0019], lines 1-4) and polyester polyol (a1-2) ([0032], line 2) other than the polyol (a1-1) ([0032], lines 1-4), with polyisocyanate (a2) containing polyisocyanate (a2-1) ([0028], lines 2-7) having an aromatic ring structure ([0035], lines 1-18);
the acid groups possessed by the urethane resin (A1) are partially or entirely neutralized ([0018], lines 3-5); and
the glass transition temperature of the urethane resin (A1) is 70°C or less ([0024], lines 1-2).
Asahina et al. are silent about the urethane resin (A1) having a mass-average molecular weight within a range of 35,000 to 100,000.
Nagahama disclosed a pigment dispersion ([0171], line 3) for an ink jet ink composition ([0012], line 1), comprising a pigment ([0090], lines 1-2), a binder ([0014], line 1) resulting from a reaction between a polyol and a polyisocyanate ([0011], lines 1-5), and an aqueous medium ([0016], lines 1-2), wherein the binder is a urethane resin having a mass-average molecular weight within a range of 35,000 to 100,000 ([0015], lines 5-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Nagahama with those of Asahina et al. by using a binder having the appropriate molecular weight in order to achieve excellent abrasion resistance and alkali resistance as disclosed by Nagahama in paragraph [0015].
10. Regarding claim 2: The combination of Asahina et al. and Nagahama disclosed the pigment dispersion for ink jet ink according to Claim 1, wherein the acid value of the urethane resin (Al) is 10 to 40 mgKOH/g (Asahina et al. [0023], lines 1-2).
11. Regarding claim 3: The combination of Asahina et al. and Nagahama disclosed the pigment dispersion for ink jet ink according to Claim 1, wherein the content of the binder (A) is 5% to 30% by mass in the total amount of the pigment dispersion (Asahina et al. [0026], lines 1-3).
12. Regarding claim 4: The combination of Asahina et al. and Nagahama disclosed the pigment dispersion for ink jet ink according to Claim 1, the pigment dispersion being used for printing on a plastic substrate (Asahina et al. [0065], lines 2-3).
13. Regarding claim 5: The combination of Asahina et al. and Nagahama disclosed an ink jet ink comprising the pigment dispersion for ink jet ink according to Claim 1 (Asahina et al. [0054], lines 2-6 and [0068], lines 2-3).
14. Regarding claim 6: The combination of Asahina et al. and Nagahama disclosed a printed matter printed with the ink jet ink according to Claim 5 (Asahina et al. [0066], lines 1-3).
15. Regarding claim 7: The combination of Asahina et al. and Nagahama disclosed the pigment dispersion for ink jet ink according to Claim 2, wherein the minimum film- forming temperature (MFT) of the urethane resin (A1) is 40°C or less (Nagahama [0163], lines 1-3; the urethane resin forms a film at room temperature which is 40°C or less).
16. Regarding claim 8: The combination of Asahina et al. and Nagahama disclosed the pigment dispersion for ink jet ink according to Claim 7.
Asahina et al. are silent about wherein the urethane resin (A1) contains a ring structure in an amount of 500 to 5,000 mmol/kg based on the entire urethane resin (A1).
Nagahama disclosed wherein the urethane resin (A1) contains a ring structure in an amount of 500 to 5,000 mmol/kg based on the entire urethane resin (A1) ([0016], lines 4-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Nagahama with those of Asahina et al. by using urethane resin comprising an appropriate amount of ring structure in the in order to achieve excellent abrasion resistance and alkali resistance as disclosed by Nagahama in paragraph [0015].
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
18. Japanese Patent application publication number 2004-175918 to Fujii et al. also disclosed a similar invention in the abstract and in paragraphs [0001], [0028], [0033] and [0048].
Conclusion
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAOVI M. AMEH whose telephone number is (571)272-4578. The examiner can normally be reached M-F: 9:00 AM - 6:00 PM.
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21. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHEN MEIER can be reached at (571)272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAOVI M AMEH/Primary Examiner, Art Unit 2853