DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-5, and 14 are examined herein.
Claims 6-13 are withdrawn (see restriction/election below).
Priority
This application is filed 2/27/2024 and claims are the benefit of domestic priority as below:
PNG
media_image1.png
166
746
media_image1.png
Greyscale
Information Disclosure Statements
Three IDS(s) received on 2/27/2024, and 7/02/2024 have been considered unless marked with a strikethrough. One of IDSs has been crossed out due to duplicate references.
Election/Restrictions
Applicant elects Group I (claims 1-5 and 14) is drawn to quinacridone solid solution pigment, with traverse in the reply field on 05/29/2026 is acknowledged. Claim 6 (Group II), claim 7-12 (Group III), and claim 13 (Group IV) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of use, there being no allowable generic or linking claim.
Applicant argues that the restriction requirement is improper because the claims of Groups I through IV are based on a common inventive concept and are not patentably distinct from each other. This argument is not persuasive because the assertion is conclusory and does not distinctly and specifically identify any error in the restriction requirement. To preserve a traverse of a restriction requirement, Applicant must distinctly and specifically point out the supposed errors in the requirement. (see MPEP 818.01(c) and 821) Applicant has not shown that the identified groups or species are patentably indistinct, nor has Applicant explained why the different claimed inventions would not require materially different searches.
Applicant further argues that all of the claims could be searched by one Examiner without undue effort. This argument is not persuasive because the issue is not merely whether one Examiner could theoretically review all claims, but whether examination of all claimed inventions and species would impose a serious search and/or examination burden. (see MPEP 803, 808, and 817) Here, such a burden exists because the claimed subject matter includes multiple chemical compositions and process inventions, is classified in various subclasses of classes 514, 544, 546 and/or 548, and each nonelected species may require a separate search based on specific structures, component identities of components, final products, reagents, and reaction steps. In addition, a complete examination of all species would require separate consideration of different chemical structures, different component identities, different pigment compositions, different dispersion systems, different reagents, and different process or reaction steps. These differences would require differences would require different search queries, different combinations of chemical structures and component identities, and potentially different prior art fields. (see MPEP 808, and 817)
Applicant’s arguments regarding prosecution economy and uniform prosecution quality are likewise unpersuasive. Although compact prosecution is desirable, prosecution economy does not require withdrawal of an otherwise proper restriction or election requirement where distinct inventions and/or species are claimed and examination of all claims would impose a serious search and/or examination burden under MPEP 803, 808, and 817.
Accordingly, the restriction requirement is deemed proper and is made FINAL.
Applicant elects (i) Unsubstituted quinacridone, which is quinacridone free of any substituent (molecular formula: C20H12N2O2), referred to as "C.I. Pigment Violet 19"; and (ii) 2,9-dialkylquinacridone, which is 2,9-dimethylquinacridone (molecular formula: C22H16N2O2), referred to as "C.I. Pigment Red 122, as the elected species in the reply filed on 5/29/2026 is acknowledged.
Claims 1-5, and 14 are readable on the elected species and will be examined on their merits.
If the elected species is not identified in the prior arts, the elected species would be allowable if an independent claim were drafted to that species alone, and the Examiner would expand the search to additional species of the genus as appropriate. (see MPEP 802.03)
The elected species were identified in the prior art. Accordingly, with respect to the elected species, the claims are rejected under 35 USC 112 and 103 below.
Claim Interpretation
Claims are interpreted in accordance with the broadest reasonable interpretation (BRI) standard
consistent with the specification (See MPEP 2111).
Regarding with claims 1 and 14, claims are read as being directed to a quinacridone solid solution pigment comprising unsubstituted quinacridone and 2,9-dialkylquinacridone, and to an ink comprising such pigment. The recited “T2/(T1+T2)≤0.13” limitation is read as a measurable XRPD property of the resulting quinacridone solid solution pigment, where T1 is the diffraction peak intensity at 2Ɵ = 5.9o±0.2o and T2 is the diffraction peak intensity at 2Ɵ = 6.4o±0.2o. The ratio is read as a solid state characteristic of the resulting pigment, rather than as a separate process step, additional component, additive, or separately controlled process parameter.
In addition, consistent with the specification (i.e., paragraph [0021]), the diffraction peak intensity at 2Ɵ = 6.4o±0.2o is interpreted not as an inherent diffraction peak of the quinacridone solid solution pigment, but as a diffraction feature associated with unsubstituted quinacridone as same. (see MPEP 2111.01; in re morris, 127 F.3d 1048 (Fed. Cir. 1997); and in re Smith Int’l Inc., 871 F.3d 1375 (Fed. Cir. 2017) Accordingly, its presence or intensity may vary depending on the crystal state and composition, and it should not be regarded as an inevitable peak in every composition containing the same quinacridone components.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by applicants. (see MPEP 2163.02)
An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed. (Emphasis added)
Further, the MPEP states that for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. (see MPEP 2161.01)
For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
As set forth in the en banc decision in Ariad Pharmaceuticals Inc. v. Eli Lilly and Company, 94 USPQ2d 1161 (Fed. Cir. 2010) at 1171, the court stated as follows:
We held that a sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. At 1568-69. We explained that an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials. Id. At 1568 (quoting Fiers v. Revel, 984 F.2d 1164, 1171 [25 USPQ2d 1601] (Fed. Cir. 1993)). We have also held that functional claim language can meet the written description requirement when the art has established a correlation between structure and function. See Enzo, 323 F.3d at 964 (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.
With respect to claims 1 and 14, the claims recite a quinacridone solid solution pigment comprising at least two kinds of quinacridone based pigments including unsubstituted quinacridone and “2,9-dialkylquinacridone”. The term “2,9-dialkylquinacridone” defines a genus of compounds in which the alkyl substituents may vary in identity, size, symmetry, branching, and steric demand. The claims further require that the quinacridone solid solution pigment satisfy a specific X-ray diffraction peak intensity ratio, namely “T2/(T1+T2)≤0.13”, where T1 is the diffraction peak intensity at 2Ɵ = 5.9o±0.2o and T2 is the diffraction peak intensity at 2Ɵ = 6.4o ±0.2o.
However, the specification does not reasonably convey possession of the full scope of quinacridone solid solution pigments comprising unsubstituted quinacridone and the full genus of 2,9-dialkylquinacridone while also satisfying the claimed X-ray diffraction peak intensity. The working examples appears to be directed primarily to C.I. Pigment Red 122 (PR122), i.e., 2,9-dimethylquinacridone, in combination with C.I. Pigment Violet 19 (PV19), i.e., unsubstituted quinacridone (paragraph [0027]-[0029] in the specification). The specification does not provide a representative number of species across the full scope of 2,9-dialkylquinacridone, nor does it provide sufficient structural guidance showing that other 2,9-dialkylquinacridones, having different alkyl substituents, would form the claimed solid solution pigment and satisfy the specified X-ray diffraction peak intensity ratio.
This deficiency is particularly significant because the claimed invention is not merely directed to the presence of unsubstituted quinacridone and 2,9-dialkylquinacridone. Rather, the claims require a particular solid state X-ray diffraction signature, including the relative suppression of a diffraction peak intensity at 2Ɵ = 6.4o±0.2o. The specification identifies the peak at 2Ɵ = 5.9o±0.2o as a diffraction peak inherent to the quinacridone solid solution pigment, while describing the peak at 2Ɵ = 6.4o±0.2o as a peak also possessed by unsubstituted quinacridone (paragraph [0021]). Thus, the claimed ratio depends on the particular crystal packing, solid solution state, degree of incorporation of the unsubstituted quinacridone component, residual unsubstituted quinacridone contribution, polymorphic state, and crystal growth characteristics of the pigment.
The specification does not establish that the claimed 6.4o±0.2o diffraction feature, or the required suppression of that feature relative to the 5.9o±0.2o feature, is common to the full genus of solid solution pigments made from unsubstituted quinacridone and any 2,9-dialkylquinacridone. Possession of a dimethyl species, namely 2,9-dimethylquinacridone, does not by itself reasonably convey possession of solid solution pigments containing other 2,9-dialkylquinacridone, such as ethyl, propyl, butyl, pentyl, hexyl, branched alkyl, or other dialkyl substituted quinacridone, while also satisfying the claimed T2/(T1+T2)≤0.13 requirement. Small changes in substituent identity, size, symmetry, and steric demand may materially affect molecular packing, intermolecular, hydrogen bonding, π-π stacking, polymorphism, solid solution formation, X-ray diffraction peak position, X-ray diffraction peak intensity, morphology, and pigment performance. For example, Sonina et al. (Crystal packing control of a trifluoromethyl-substituted furan/phenylene co-oligomer, Acta Crystallogr. B Struct. Sci. Cryst. Eng. Mater., 74(Pt 5), 450-457, pub’d 10/01/2018) reports that a trifluoromethyl substituted furan/phenylene co-oligomer can exhibit different polymorphic forms depending on crystal growth method and solvent, with difference characterized by X-ray diffraction and associated with crystal packing and optical property (abstract, introduction, and conclusion section). Although, Sonina concerns organic crystalline materials other than quinacridone pigments, Sonina illustrates the general solid state principle that substituent structure, substituent position, crystallization conditions, and molecular packing can materially affect XRPD characteristics.
The quinacridone solid solution pigment likewise treats X-ray diffraction patterns as material evidence of the particular solid state form. For example, Urban et al. (US5989333A, pub’d 11/23/1999) describes quinacridone mixed crystal pigments and provides X-ray diffraction spectra for a quinacridone mixed crystal, unsubstituted quinacridone polymorphs, a mechanical mixture, and 2,9-dimethylquinacridone (Figs 1-5). Urban explains that the X-ray diffraction diagram of a mixed crystal differs from the X-ray diffraction diagram of the corresponding mechanical mixture (Table 1 and examples). Urban confirms that, in the quinacridone pigment field, XRPD patterns are used to distinguish solid state forms and mixed crystal behavior, and that possession of a broad XRPD defined pigment genus cannot be inferred merely from disclosure of one specific dimethyl containing example.
Therefore, because different alkyl substituents may affect crystal packing, solid solution formation, X-ray diffraction pattern, diffraction peak intensity ratio, particle size, particle shape, and pigment performance, possession of a dimethyl species does not reasonably convey possession of the full claimed genus of 2,9-dialkylquinacridone containing solid solution pigments satisfying the claimed XRD defined limitation.
Separately, the instant claims rely on a ratio formula, T2/(T1+T2)≤0.13, based on peak intensities at 2Ɵ = 5.9o±0.2o and 2Ɵ = 6.4o±0.2o. However, XRPD characterization is typically reported by peak positions, relative intensities, d-spacings, and/or full diffraction patterns. The specification does not adequately establish that the particular claimed ratio formula is a generally recognized or conventionally applied XRPD parameter for defining quinacridone solid solution pigments across the broad claimed genus. Nor does the specification show that this ratio, especially the 6.4o±0.2o component, is a genus wide structural feature shared by quinacridone solid solution pigments containing unsubstituted quinacridone and 2,9-dialkylquinacridone generally. In addition, instant specification does not describe that how the alleged 5.9o±0.2o and 6.4o±0.2o diffraction features (i.e., 0.1o difference at their closest boundaries and 0.5o difference at their normal centers) are to be distinguished from each other in the low angle region; 2) any fitting, peak separation, or deconvolution method for resolving the closed diffraction features analysis; 3) whether a Gaussian, Lorentzian, pseudo-Voigt, or other peak shape function is used; or 4) whether overlapping peaks are fitted as separate components. These points are supported by the general powder diffraction analysis literature. Cheary et al. (Fundamental Parameters Line Profile Fitting in Laboratory Diffractometers, J. Res. Natl. Inst. Stand. Technol., 109(1), 1-25, pub’d 02/01/2004) reports that laboratory X-ray diffraction profiles must account for instrumental contributions through defined line profile fitting procedures (abstract and introduction). Similarly, David (Powder Diffraction: Least-Squares and Beyond, J. Res. Natl. Inst. Stand. Technol., 109(1), 107-123, pub’d 02/01/2004) emphasized that powder diffraction analysis relies on least squares refinement and its underlying statistical assumptions, rather than direct extraction of values from raw or tabulated peak positions (introduction, and section 4.1).
Therefore, the disclosure does not show possession of a structurally defined XRPD feature at 6.4o±0.2o across the claimed genus. Rather, the disclosure appears to rely on an applicant selected numerical parameter derived from undisclosed XRPD data-processing choices. Because the claimed ratio depends critically on a closely spaced and potentially overlapping low angle feature, the absence of raw diffraction patterns and a defined method for distinguishing and quantifying T2 further supports the conclusion that the specification does not reasonably convey possession of the full scope of claims 1-5, and 14.
With respect to claims 2-5, claims depend from claim 1 and therefore include the same unsupported genus of quinacridone solid solution pigments comprising unsubstituted quinacridone and 2,9-dialkylquinacridone, and their further limitations do not cure the lack of written description support for the full scope of the claimed pigment genus.
As set forth in the en banc decision in Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010), to satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor actually invented the claimed invention at the time of filing. Id.; Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. (see MPEP 2161.01).
Accordingly, in view of the breadth of the claimed combinations, the lack of representative examples, and the unpredictability of the art as discussed above, the specification does not reasonably convey to those skilled in the art that the inventors are in possession of the full scope of claimed combination therapies at the time of filing.
Claim Rejections - 35 USC § 112
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.
The rejections under this section are made when the scope of the claimed subject matter is not clear. (See MPEP 2173)
Claims 1-5, and 14 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.
Regarding claims 1, and 14, the phrase "when a diffraction peak intensity at a diffraction angle
2Ɵ of 5.9o+0.2o and a diffraction peak intensity at a diffraction angle 2Ɵ of 6.4o+0.2o, which are obtained by X-ray diffractometry, are represented by T1 and T2, respectively, T1 and T2 satisfy T2/(T1+T2)≤0.13" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. The claims do not clearly define how the “diffraction peak intensity” is determined. It is unclear whether the recited intensity refers to peak height, integrated peak area, maximum intensity within the recited ± 0.2o window, intensity at the nominal peak position, or an intensity determined after baseline correction or background substation. Because different methods of determining peak intensity may yield different T1 and T2 values, the scope of the claimed ratio T2/(T1+T2)≤0.13 is not reasonably certain.
Claims 2-4 depend directly from claim 1 and are indefinite for the same reason.
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.
This 35 USC 103 rejection is a new alternative ground of rejection based on the disclosure in the specification and claim interpretation, and does not incorporate the previous states 35 USC 112 rejections.
Claim(s) 1-2, 4-5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamata
et al. (US 11,926,741 B2, PCT filing date 03/30/2018, hereinafter '741), in view of Kamata et. al. (US 20200062965 A1, pub’d 02/27/2020, hereinafter '965).
With respect to independent claim 1, the claim recites that a quinacridone solid solution pigment comprising at least two kinds of quinacridone-based pigments including unsubstituted quinacridone and 2,9-dialkylquinacridone, wherein when a diffraction peak intensity at a diffraction angle 2Ɵ of 5.9o±0.2o and a diffraction peak intensity at a diffraction angle 2Ɵ of 6.4o±0.2o, which are obtained by X-ray diffractometry, are represented by T1 and T2, respectively, T1 and T2 satisfy T2/(T1+T2)≤0.13.
‘741 discloses a method for producing a quinacridone solid solution pigment, a pigment dispersion and an inkjet-ink (abstract). ‘741 teaches unsubstituted quinacridone and 2,9-dialkylquinacridone (claim 1), and explains that the solid solution is not a physical mixture, but a uniform solid phase in which multiple quinacridone pigment molecules are dissolved with one another (column 5 lines 49-57), and states that the unsubstituted quinacridone singly corresponds to C.I. Pigment Violet 19 (PV19), and the 2,9-dialkylquinacridone singly corresponds to C.I. Pigment Red 122 (PR122) that are the same quinacridone solid solution pigment species as instant application (column 5 lines 49-62 of ‘741, and paragraph [0027]-[0029] of instant specification). ‘741 further teaches the preparation of a crude quinacridone solid solution in which the mass ratio of unsubstituted quinacridone to 2,9-dialkylquinacridone is 6:4, followed by pigmentation to obtain quinacridone solid solution pigment 4 (example 4). The pigment of Example 4 has powder X-ray diffraction peaks at 2Ɵ=27.4o, 13.8o, and 5.9o. The 5.9o peak corresponds to the T1 peak (i.e., 5.90±0.20) in instant claim 1.In addition, the pigment of Example 3 has the mass ratio of unsubstituted quinacridone to 2,9-dialkylquinacridone is 8:2, and powder X-ray diffraction peaks at 2Ɵ=27.6o, 13.8o, and 6.1o. The 6.1o peak corresponds to the T1 peak (i.e., 5.90±0.20) in instant claim 1.
‘741 fails to teach the numerical value of T2 and T2/(T1+T2)≤0.13.
However, ‘741 teaches the same quinacridone solid solution pigment platform, the same PV19/PR122 pigment components, the same mass ratio range, the same inkjet-ink application, and the same characteristic low angle XRD peak near 5.9o as discussed above. Thus, ‘741 provides the base quinacridone solid solution pigment from which the claimed pigment differs, if at all, only in the resulting solid state degree of the 6.4o±0.2o feature. ‘965 teaches quinacridone pigment compositions and aqueous inkjet-ink compositions (claims 1 and 10). ‘965 further teaches that quinacridone pigments such as PV19/PR122, and solid solution thereof are suitable for aqueous inkjet-ink use (paragraph [0016] and [0096]). Moreover, ‘965 teaches that pigment treatment, particle control, and post-treatment conditions can be adjusted to improve ink properties, including viscosity stability, saturation of printed matter, ejection performance, particle size stability, and reduction of coarse particles (abstract, paragraph [0010] and [0036], and table 4).
Moreover, consistent with the claim interpretation, the numerical value of T2 and T2/(T1+T2)≤0.13 ratio are an XRPD property of the resulting quinacridone solid solution pigment. The instant specification itself explains that the 5.9o±0.2o peak is characteristic of the quinacridone solid solution pigment and that the 6.4o±0.2o peak is also possessed by unsubstituted quinacridone (paragraph [0021]). The instant specification further links a lower T2/(T1+T2) ratio to improved color developability and higher solid solution purity. Thus, the relative intensity of the 6.4o±0.2o feature reflects the resulting crystal phase, solid solution quality, and residual unsubstituted quinacridone contribution of the pigment.
It would have been prima facie obvious to one of ordinary skill in the art to modify or further process the quinacridone solid solution pigment of ‘741 in view of the ‘965 to improve the solid solution pigment and inkjet-ink properties. ‘741 already teaches the same quinacridone solid solution pigment platform including PV19/PR122 quinacridone pigments, the same mass ratio range, the same inkjet-ink application, and the same characteristic low angle XRD peak near 5.9o. ‘965 teaches that quinacridone pigment compositions and aqueous inkjet-ink compositions, including PV19/PR122 quinacridone pigments and solid solutions thereof, and further teaches that pigment treatment, particle control, and post-treatment inkjet-ink properties such as viscosity stability, saturation of printed matter, ejection performance, particle size stability, and reduction of coarse particles. The motivation to apply the pigment treatment and particle control teachings of ‘965 to the quinacridone solid solution pigment of ‘741 to improve the performance of the corresponding aqueous inkjet-ink. Separately, the claimed T2 value and T2/(T1+T2) ratio are result effective XRPD parameters of the resulting quinacridone solid solution pigment, as discussed above. Accordingly, the claimed pigment would have been obvious because ‘741 provides the same base quinacridone solid solution pigment, ‘965 supplies an express motivation to improve the pigment and inkjet-ink properties through treatment and particle control, and the claimed T2 value and T2/(T1+T2) ratio limitations merely reflects optimization of the resulting crystal state and solid solution purity of that known pigment. (see 2144 and 2144.05)
The references is directed to the same field of endeavor and address related to the application. The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Applying KSR example rationale (A) and (D) in the independent claim 1, it would have been prima facie obvious to combine the known quinacridone solid solution pigment taught by ‘741, and known pigment treatment and particle control techniques taught by ‘965 for improving quinacridone based inkjet-inks, and to apply those techniques to the ‘741 pigment with a reasonable expectation of improving ink properties. Further, the claimed T2 value and T2/(T1+T2) limitations are result effective XRPD parameters reflecting crystal state, solid solution quality, and residual unsubstituted quinacridone contribution. Reducing the relative 6.4o peak intensity therefore would have been routine optimization of the known pigment, not a patentably distinct composition. (see MPEP 2141)
With respect to claim 2, claim recites that a mass proportion of the unsubstituted quinacridone to the 2,9-dialkylquinacridone is from 80:20 to 60:40.
Examples 3 and 4 of ‘741 teaches a mass proportion of the unsubstituted quinacridone to the 2,9-dialkylquinacridone is 8:2 and 6:4, respectively.
With respect to claim 4, the claim recites that the quinacridone solid solution pigment has an aspect ratio (major-axis particle diameter/minor-axis particle diameter) of 1.1 or more and 1.7 or less.
The combination teachings of ‘741 and ‘965 fail to teach claimed particle diameter ratio for the quinacridone solid solution pigment.
However, the aspect ratio of pigment particles is a result effective variable because pigment morphology directly affects inkjet-ink performance. A person of ordinary skill in the art would have been motivated to control particle morphology of ‘741 to improve the solid solution pigment and inkjet-ink properties taught by ‘965 as discussed with respect to independent claim 1. Therefore, it would have been prima facie obvious to optimize the aspect ratio of the quinacridone solid solution pigment to a workable range, including 1.1 to 1.7, the claimed aspect ratio range does not produce a shown critical effect or unexpected results. (see 2144 and 2144.05)
With respect to claim 5, the claim recites that the quinacridone solid solution pigment is used in an inkjet-ink.
‘741 teaches the inkjet-ink of the present invention contains a quinacridone solid solution pigment that allows a colored product produced therewith (column 9 lines 39-42).
With respect to claim 14, the claim recites that an ink comprising a quinacridone solid solution pigment, wherein the quinacridone solid solution pigment includes at least two kinds of quinacridone-based pigments including unsubstituted quinacridone and 2,9-dialkylquinacridone, and wherein when a diffraction peak intensity a diffraction angle 2Ɵ of 5.9o±0.2o and a diffraction peak intensity at a diffraction angle 2Ɵ of 6.4o±0.2o, which are obtained by X-ray diffractometry, are represented by T1 and T2, respectively, T1 and T2 satisfy T2/(T1+T2)≤0.13.
‘741 teaches an inkjet-ink comprising a quinacridone solid solution pigment of unsubstituted quinacridone and 2,9-dialkylquinacridone (column 9 lines 19-54, and claim 2). Example 4 discloses a quinacridone solid solution pigment in which the mass ratio of unsubstituted quinacridone to 2,9-dialkylquinacridone is 6:4, and the pigment has an XRD peak at 2Ɵ of 5.9o. As discussed above with regarding to claim 1, the pigment of Example 4 is the same or substantially the same quinacridone solid solution pigment as recited in claim 14, and the XRD intensity ratio and T2/(T1+T2)≤0.13 ratio are an inherent property determined by the crystal phase and purity of that pigment.
It would have been prima facie obvious one of ordinary skill in the art to use the modified or processed quinacridone solid solution pigment discussed above with respect to claim 1 in the inkjet-ink of ‘741, in view of the ‘965, in order to obtain an ink composition having improved the solid solution pigment and inkjet-ink properties. For the same reason reasons discussed with respect to claim 1, the claimed intensity of the 6.4o±0.2o feature and T2/(T1+T2) ratio would be result effective XRPD parameters reflecting crystal state, solid solution quality, and residual unsubstituted quinacridone contribution. Reducing the relative 6.4o peak intensity therefore would have been routine optimization of the known pigment, not a patentably distinct composition.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamata et al. (US 11,926,741 B2, PCT filing date 03/30/2018, hereinafter '741), in view of Kamata et. al. (US 20200062965 A1, pub’d 02/27/2020, hereinafter '965), as applied to claim 1 above, and further in view of Shiono et al. (US 8,038,783 B2, pub'd 10/18/2011, hereinafter '783).
With respect to claim 3, claim 3 depends form claim 1, and further recites that the quinacridone solid solution pigment has an arithmetic average particle diameter (volume average) of 90 nm or more and 140 nm or less.
As discussed above with respect to independent claim 1, ‘741 in view of ‘965 teaches and suggests the limitations of claim 1.
The combination teachings fail to teach the quinacridone solid solution pigment has an arithmetic average of 90 nm or more and 140 nm or less.
‘783 teaches a quinacridone solid solution pigment formed of at least two selected from the group consisting of C.I. pigment violet 19, C.I. pigment red 122, C.I. pigment red 202, and C.I. pigment red 209 (claim 2), and in the quinacridone solid solution pigment of the invention, the average particle diameter of the solid solution pigment is preferably in a range of 10 to 200 nm and more preferably 50 to 150 nm (column 4, lines 42-45). The claimed range of 90 nm to 140 nm falls within the particle size range taught by ‘783. Although, ‘783 does not use the identical phrase “arithmetic average particle diameter (volume average)”, ‘783 teaches the same type of pigment as a quinacridone solid solution pigment, and teaches an average particle diameter range that encompasses the claimed range.
It would have been obvious to one of ordinary skill in the art to use a quinacridone pigment having an average particle diameter within the overlapping particle size range taught by ‘783, including the claimed range of 90 nm to 140 nm, because a prima facie case of obviousness exist where the claimed range overlaps or falls within a range disclosed in the prior art. (see 2144 and 2144.05)
Conclusion
Claims 1-5, and 14 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEONG JONG KIM whose telephone number is (571)272-6918. The examiner can normally be reached 7:00am-3:30pm.
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, Clinton A. Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEONG JONG KIM/ Examiner, Art Unit 1621
/CLINTON A BROOKS/ Supervisory Patent Examiner, Art Unit 1621
Prosecution Insights