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 .
Claim Status
Claims 1-7 are pending. Claim 1 is amended with support from original claims 3 and 5, as well as p. 0038 and 0044 of the specification as filed.
Response to Arguments
Applicant’s arguments, see p. 5-10, filed 08/03/2026, with respect to the rejection(s) of claim(s) 1-7 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kofuji and Miyamoto under 35 U.S.C. 103.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 3, and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations of claims 2, 3, and 5 appear in claim 1 and therefore fail to further limit the subject matter of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 over Kofuji et al (herein ‘Kofuji’; JP 2013249401 A/ JP 6136121 B2; all citations are drawn to the English machine translation).
Kofuji is directed toward the preparation of a water-based printer ink comprising a polyurethane binder [p. 0008]. In synthesis example 1 [p. 0049], Kofuji discloses the preparation of a urethane resin comprising polyethylene glycol and polytetramethylene glycol (a1), isophorone diisocyanate (b), 2-hydroxyethylethylenediamine, isophorone diamine (c2-2), monoethanolamine (c2-1), wherein polyethers (a1) comprises 60 mass % of the composition. Kofuji teaches the isophorone diamine (c2-2) may be replaced with or used in combination with other diamine species including ethylenediamine, propylenediamine, and hexamethylenediamine [p. 0024]. Furthermore, Kofuji teanches the monoamine can be used alone or in combination of two or more [p. 0025].
The chain capping of the exemplary prepolymer proceeds in an aqueous solution of ammonia. However, Kofuji discloses inorganic alkalis, such as sodium hyrdroxide or potassium hydroxide, as suitable alternatives for the neutralization of the aqueous polyurethane solution [p. 0034]. Kofuji discloses the aqueous printing ink composition can be printed on a plastic film by a known gravure printing, method, a flexographic printing method, an ink jet printing method or the like [p. 0045].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the printer ink of Kofuji wherein the polyurethane binder comprises greater than 25 mass % polyether polyols (a1), an alicyclic diisocyanate (b1), a linear diamine (c1-1), a monoamine (c2-1), and an alicyclic diamine (c2-2).
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 over Miyamoto (US 5656701 A).
Miyamoto is directed toward the preparation of polyurethane-based binders for water-based printer inks. Miyamoto discloses the preparation of a polyurethane resin (I) comprising polybutylene glycol (a1), isophorone diisocyanate (b1), ethylenediamine (c1-1) and hydrazine hydrate (c1-2), and triethylamine (emulsifier) [example 10]. The polyether polyol (a1) comprises about 76 mass % of the composition. Miyamoto discloses suitable chain terminators include monoethanolamine (c2-1) [c. 6, ll. 5-10]. Miyamoto discloses alkali metal hydroxides (II) are in the aqueous solution for dispersion in aqueous media [c. 2, ll. 35-40; c. 7, ll. 50-55]. Miyamoto discloses a method of lamination using the aqueous ink composition [c.9, ll. 40-45].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the aqueous printer ink of Miyamoto wherein the polyurethane binder comprises greater than 25 mass % polyether polyols (a1), an alicyclic diisocyanate (b1), a linear diamine (c1-1) and/or a hydrazine compound (c1-2), and a monoamine (c2-1).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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, Randy Gulakowski can be reached at (571) 272-1302. 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.
/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
Prosecution Insights