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 1-7, in the reply filed on 07/29/2026 is acknowledged. The traversal is on the grounds that an undue burden would not be placed upon the Examiner (see Applicant’s Remarks at pg. 1). However, this is not found to be persuasive as the two inventions are related to different categories of invention that would require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries), thereby resulting in a serious burden. Therefore, the restriction/election requirement is still deemed proper and is made final.
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/29/2026.
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.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto (US-20050057631-A1) (hereinafter referred to as “Morimoto”).
Regarding claims 1-4, Morimoto teaches an aqueous ink jet ink composition (see Morimoto at para. 0022 and 0031, teaching an aqueous ink-jet ink) and comprising:
• a water-insoluble colorant (see Morimoto at para. 0061 and 0066, teaching the ink to include a disperse dye, such as disperse red 60; disperse red 60 is a water-insoluble colorant, see Table 1 of Applicant’s specification at pg. 41-42);
• a lignosulfonate salt (see Morimoto at para. 0099, teaching the ink may include a dispersing agent, such as a ligninsulfonate like Vanilex RN; also see Morimoto at para. 0123-0124, teaching Vanilex RN as being a sodium ligninsulfonate, i.e., a lignosulfonate salt); and
• at least one element A selected from the group consisting of Ca, Mg, Mn, Fe, Al, and Si, wherein a total content of the element A is 5 to 120 mass ppm (wherein a total content of the Ca and the Mg is 4 to 100 mass ppm, regarding claim 2) (wherein a total content of the Mn and the Fe is 1 to 50 mass ppm, regarding claim 3) (wherein a total content of the Al and the Si is 25 ppm or less, regarding claim 4) (see Morimoto at para. 0010-0011, teaching the ink to contain a polyvalent metal such as Ca, Mg, Al, and Fe, and that the content of the polyvalent metal preferably ranges from 10 to 1,000 ppm; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see Example 28 of Morimoto at Table 6, teaching an example ink containing calcium and iron each with concentrations of 50 ppm, which falls within the claim 2 and 3 ranges; furthermore, Morimoto does not necessitate the presence of a silicon-containing compound in their composition).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto, as applied to claim 1 above, and further in view of Hanazato et al. (WO-2022224945-A1), with reference to the included machine translation (hereinafter referred to as “Hanazato”).
Regarding claims 6-7, while Morimoto teaches the ink according to claim 1 outlined above, Morimoto fails to explicitly teach the lignosulfonate salt as including a refined lignosulfonate salt refined using a chelating agent (regarding claim 6), wherein the chelating agent includes an aminocarboxylic acid-based chelating agent (regarding claim 7).
However, Hanazato teaches a coloring dispersion (see Hanazato at Abstract). Hanazato further teaches the colored dispersion may include a dispersant, such as a lignosulfonic acid, preferably Vanilex RN or Vanilex N (see Hanazato at pg. 5, para. 2).
Morimoto teaches their ink may contain a ligninsulfonate dispersing agent, such as Vnilex RN (see Morimoto at para. 0099).
In this case, both Vanilex RN and Vanilex N are functional equivalents, i.e., both are lignosulfonic acids suitable as dispersing agents for coloring compositions (see Hanazato at pg. 5, para. 2).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Vanilex RN of Morimoto with a Vanilex N like that disclosed by Hanazato, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Vanilex N meets the claimed limitations, as disclosed by Applicants specification at pg. 37.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer et al. (US-20220348782-A1) (hereinafter referred to as “Palmer”) in view of Ichizawa et al. (US-5900899-A) (hereinafter referred to as “Ichizawa”), with evidence from Niu et al. (WO-2026124443-A1), with reference to the included machine translation (hereinafter referred to as “Niu”), as to the rejection of claims 1-7 only.
Regarding claims 1-4, Palmer teaches an aqueous ink jet ink composition (see Palmer at para. 0003 and 0060-0061, teaching a black pigment dispersion which may contain water as a milling fluid; also see Palmer at para. 0191, teaching the pigment dispersion is suitable for inkjet printing; the pigment dispersion of Palmer corresponds to the claimed “aqueous ink jet ink composition”) and comprising:
• a water-insoluble colorant (see Palmer at para. 0003, teaching the pigment dispersion as containing a wood biochar; biochar is a non-water-soluble powder, as evidenced by Niu at pg. 4, para. 4; further, biochar is a black colorant);
• a lignosulfonate salt (see Palmer at para. 0109, teaching the dispersion may include a sodium lignosulfonate).
While Palmer teaches the composition outlined above, Palmer fails to explicitly teach the composition as comprising at least one element A selected from the group consisting of Ca, Mg, Mn, Fe, Al, and Si, wherein a total content of the element A is 5 to 120 mass ppm (wherein a total content of the Ca and the Mg is 4 to 100 mass ppm, regarding claim 2) (wherein a total content of the Mn and the Fe is 1 to 50 mass ppm, regarding claim 3) (wherein a total content of the Al and the Si is 25 ppm or less, regarding claim 4).
However, Ichizawa teaches a color pigment dispersed ink containing water, a pigment, and a polymeric dispersant (see Ichizawa at col. 2, lines 48-55). Ichizawa further teaches the content of inorganic impurities in the ink be minimal because they adversely affect nozzle clogging, kogation, storage stability, recording reliability, and the like (see Ichizawa at col. 9, lines 5-12). Moreover, Ichizawa teaches it is desirable that the content of polyvalent metal cations, Si-based compounds, and P-based compounds be equal to or lower than 100 ppm (see Ichizawa at col. 9, lines 5-12).
Palmer teaches their pigment dispersion may be used as an ink for inkjet printing (see Palmer at para. 0191).
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 content of polyvalent metal cations, Si-based compounds, and P-based compounds in the ink of Palmer to range from 100 ppm or less. One of ordinary skill in the art would have been motivated to do so in order to prevent adverse effects on nozzle clogging, kogation, storage stability, recording reliability, and the like (see Ichizawa at col. 9, lines 5-12).
Following the above modification, the composition of modified Palmer contains 100 ppm or less of polyvalent metal cations (which includes Ca, Mg, Mn, Fe, and Al) and Si-based compounds (which include Si). Consequently, modified Palmer necessarily contains 100 ppm or less of the claimed element A. This range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 5, see Palmer at para. 0003, teaching the biochar may be a wood biochar; thus, the biochar pigment of Palmer necessarily is a natural-derived colorant.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Ichizawa, as applied to claim 1 above, and further in view of Hanazato.
Regarding claims 6-7, while Palmer as modified by Ichizawa teaches the ink according to claim 1 outlined above, modified Palmer fails to explicitly teach the lignosulfonate salt as including a refined lignosulfonate salt refined using a chelating agent (regarding claim 6), wherein the chelating agent includes an aminocarboxylic acid-based chelating agent (regarding claim 7).
However, Hanazato teaches a coloring dispersion (see Hanazato at Abstract). Hanazato further teaches the colored dispersion may include a dispersant, such as a lignosulfonic acid, preferably Vanilex N (see Hanazato at pg. 5, para. 2).
Palmer teaches their composition may contain a dispersant, such as a lignosulfonate (see Palmer at para. 0107).
In this case, Vanilex N is a known lignosulfonate material suitable for use as a dispersant in a coloring composition, and thus its use as the lignosulfonate in the composition of modified Palmer would yield a reasonable expectation of success.
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 Vanilex N as the lignosulfonate dispersant in the composition of modified Palmer, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Vanilex N meets the claimed limitations, as disclosed by Applicant’s specification at pg. 37.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-6 of U.S. Patent No. US-12312485-B2 (hereinafter referred to as “’485”).
With respect to instant claims 1-5, although the claims at issue are not identical, they are not patentably distinct because instant claim 1 is met by claim 1 of ‘485 (black charcoal is a water-insoluble colorant, see Applicant’s specification at para. 0022-0023); instant claim 2 is met by claim 4 of ‘485; instant claim 3 is met by claim 5 of ‘485; instant claim 4 is met by claim 6 of ‘485; and instant claim 5 is met by claim 1 of ‘485.
Claims 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘485, as applied to instant claim 1 above, and further in view of Hanazato.
Regarding claims 6-7, ‘485 fails to explicitly claim the lignosulfonate salt as including a refined lignosulfonate salt refined using a chelating agent (regarding claim 6), wherein the chelating agent includes an aminocarboxylic acid-based chelating agent (regarding claim 7). However, such a limitation is obvious over Hanazato, for the same reasons mentioned above (see claims 6-7 rejections over Palmer above; also see claim 1 of ‘485, claiming the ink to include a lignosulfonate salt).
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent Application No. 18/591,221 (see claim set dated 09/02/2026) (hereinafter referred to as “’221”) in view of Ichizawa.
With respect to instant claims 1-5, while claims 1 and 3 of ‘221 claim most of the instantly claimed limitations (note that charcoal derived from vegetable oil is water-insoluble, as disclosed by Applicant’s specification at para. 0022-0023), ‘221 fails to claim the at least one element A selected from the group consisting of Ca, Mg, Mn, Fe, Al, and Si, wherein a total content of the element A is 5 to 120 mass ppm (wherein a total content of the Ca and the Mg is 4 to 100 mass ppm, regarding instant claim 2) (wherein a total content of the Mn and the Fe is 1 to 50 mass ppm, regarding instant claim 3) (wherein a total content of the Al and the Si is 25 ppm or less, regarding instant claim 4). However, such limitations are obvious over Ichizawa, for the same reasons as previously mentioned above (see claims 1-4 rejection over Ichizawa above).
Claims 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘221 in view of Ichizawa, as applied to instant claim 1 above, and further in view of Hanazato.
Regarding claims 6-7, ‘221 fails to explicitly claim the lignosulfonate salt as including a refined lignosulfonate salt refined using a chelating agent (regarding claim 6), wherein the chelating agent includes an aminocarboxylic acid-based chelating agent (regarding claim 7). However, such a limitation is obvious over Hanazato, for the same reasons mentioned above (see claims 6-7 rejections over Palmer above; also see claim 3 of ‘221, claiming the ink to include a lignin sulfonate).
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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