DETAILED ACTION
Final
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 .
Response to Amendment
The amendment filed on 03/13/2026 is entered and acknowledged by the Examiner. Claims 1-15 have been amended. New claims 16-20 have been added. Claims 1-20 are currently pending in the instant application.
The rejection of claims 1, 3, and 5 under 35 U.S.C. 102(a)(1) as being anticipated by the article to Zhang is maintained.
The rejection of claims 2, 4, 6, 8, 9, and 11-15 under 35 U.S.C. 103 as being unpatentable over the article to Zhang in view of (Hisato) Haga (JP 2018193531 A) is maintained.
The rejection of claim 7 under 35 U.S.C. 103 as being unpatentable over the article to Zhang in view of Zhong (WO 2012006959 A1) is maintained.
The rejection of claim 10 under 35 U.S.C. 103 as being unpatentable over the article to Zhang in view of Vic (US 2006/0078522 A1) is maintained.
Response to Arguments
Applicant's arguments filed on 03/13/2026 have been fully considered but they are not persuasive.
The amendment to include the feature of “an aqueous ink composition” in the preamble of the claims are noted.
Applicant main argument is Zhang does not disclose the feature of an aqueous ink. In response to applicant's arguments, the recitation of “an aqueous ink composition” is not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Moreover, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable, In re Best, 562 F.2d 1252,1254,195 USPQ 430,433 (CCPA 1977). See also MPEP 2112 I.
Based on this rationale, the rejection over Zhang is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2, 4, 6, 8, 9, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over the article to Zhang in view of Haga (JP 2018193531 A).
Claims 2, 4, 6, 8, 9, and 11-15 are rejected for the reasons of record.
Regarding claims 16 and 17, Haga discloses an antioxidant including tannic acid (See [0008] and [0025]). The tannic acid of Haga fulfills the claimed preservative component.
Claims 10 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over the article to Zhang in view of Vic (JP 2018193531 A).
Claims 10 is rejected for the reasons of record.
Regarding claims 18-20, Vic discloses a cyanoacrylate monomer having a formula (II) with group -COXR’3 with X including O and R’3 is C1 to C10 carbon atoms (See [0061] and [0069]). The R’3 of C2 to C10 carbon atoms fulfills the instant claimed R group.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
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