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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 July 2024 has been considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
- In line 5, the limitation ends with a period, but then the claim continues in line 6. The period should be replaced by a semicolon, or the claim should be amended in any other way that clarifies that Formula (1) and the following limitation relating to it are part of the claim.
- In line 6, "[Chem. 1]" should be replaced by – [Formula (1)] – so that it is consistent with the rest of the claim.
- The last limitation (in lines 8-13) starts and ends in a parenthesis, which should be eliminated and replaced with - wherein, in Formula (1) -
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 9-15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Koike et al. (US 2016/0115330 – hereinafter Koike.)
Regarding claim 1,
Koike discloses a non-aqueous ink composition [paragraph 0025] to be ejected by an inkjet method, the composition comprising: a pigment [C.I. Pigment Orange 43; “PO-43”; Table 2], a pigment dispersant [paragraph 0083], an organic solvent [paragraph 0024], and a resin [paragraph 0098; also, see Table 2 for all components], wherein
the pigment comprises a pigment A represented by Formula (1) [C.I. Pigment Orange 43 has a chemical formula that corresponds to Formula (1)], and
a content of the pigment dispersant [4.0 in Examples 6 and 7 (Table 2)] is smaller than a content of the pigment [6.0 and 7.0 in Examples 6 and 7 (Table 2).]
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(in Formula (1), X1 to X12 each independently represent a hydrogen atom, a halogen atom, an optionally branched alkyl group having 1 to 5 carbon atoms, or an aromatic hydrocarbon group in which a hydrogen atom may be substituted, a cyano group, a nitro group, an amino group, -OH, -COOH, -COO-M+, -SO3H, -SO3-M+, a phthalimido group in which a hydrogen atom may be substituted, a phthalimidomethyl group, or a heterocyclic compound, and M+ represents a cation.)
Regarding claim 3,
Koike further discloses wherein the content of the pigment is 1.0 mass% or more [as seen in Table 2.]
Regarding claim 9,
Koike further discloses wherein the content of the pigment A is 0.1 mass% or more and 8.0 mass% or less of a total mass of the non-aqueous ink composition [as seen in Table 2.]
Regarding claim 10,
Koike further discloses wherein a content of water in the non-aqueous ink composition is 0.5 mass% or less [paragraph 0025; “Water content of the non-aqueous ink composition is (…) further preferably 0.5% by mass or less, and yet further preferably 0.1% by mass or less.”]
Regarding claim 11,
Koike further discloses a recording method, comprising ejecting the non-aqueous ink composition according to claim 1 [see rejection above] onto a surface of a base material [“vinyl chloride-based recording medium”] using an inkjet method [paragraphs 0078 and 0080.]
Regarding claim 12,
Koike further discloses a method of producing a recorded matter, comprising ejecting the non-aqueous ink composition according to claim 1 [see rejection above] onto a surface of a base material [“vinyl chloride-based recording medium”] using an inkjet method [paragraphs 0078 and 0081.]
Regarding claim 13,
Koike further discloses an ink set comprising at least the non-aqueous ink composition according to claim 1 [see rejection above; paragraph 0025.]
Regarding claim 14,
Koike further discloses a recorded matter comprising a print layer of the non- aqueous ink composition according to claim 1 [see rejection above] formed on a surface of a base material [paragraphs 0079 and 0081.]
Regarding claim 15,
Koike further discloses an inkjet recording device comprising a storage container filled with the non-aqueous ink composition according to claim 1 [implicit from paragraphs 0043 and 0060, which recite storage stability.]
Claims 1-2, 4-6, and 16-19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Oka et al. (WO 2021/201149 – hereinafter Oka; corresponding to US 2023/0111531, which has a later publication date but is used for its translation of ‘149, since machine translations did not include Tables used in the rejection.)
Regarding claim 1,
Oka discloses a non-aqueous ink composition to be ejected by an inkjet method [paragraph 0001], the composition comprising: a pigment [paragraphs 0043-0045], a pigment dispersant [paragraph 0037], an organic solvent [paragraph 0038], and a resin [paragraph 0024], wherein
the pigment comprises a pigment A represented by Formula (1) [C.I. Pigment Orange 43 (P.O.43) has a chemical formula that corresponds to Formula (1)], and
a content of the pigment dispersant [1.5 in Example 23 (Table 4)] is smaller than a content of the pigment [3.0 in Example 23 (Table 4).]
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(in Formula (1), X1 to X12 each independently represent a hydrogen atom, a halogen atom, an optionally branched alkyl group having 1 to 5 carbon atoms, or an aromatic hydrocarbon group in which a hydrogen atom may be substituted, a cyano group, a nitro group, an amino group, -OH, -COOH, -COO-M+, -SO3H, -SO3-M+, a phthalimido group in which a hydrogen atom may be substituted, a phthalimidomethyl group, or a heterocyclic compound, and M+ represents a cation.)
Regarding claim 2,
Oka further discloses wherein a content of the resin (4.5 + 1.5 = 6.0 in Example 23 (Table 4)] is larger than a content of the pigment [3.0 in Example 23 (Table 4)].
Regarding claims 4 and 17,
Oka further discloses wherein the content of the resin [6.0 in Example 23 (Table 4)] is larger than a content of the pigment dispersant [1.5 in Example 23 (Table 4).]
Regarding claims 5 and 18,
Oka further discloses wherein (content of the pigment dispersant)/(content of the resin) is less than 0.8 [1.5 / 6.0 = 0.25.]
Regarding claims 6 and 19,
Oka further discloses wherein the content of the resin is larger than a total content of the pigment and the pigment dispersant [6 ˃ (3.0+1.5).]
Regarding claim 16,
Oka further discloses wherein the content of the pigment is 1.0 mass% or more [3.0 in Example 23 (Table 4).]
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.
Claims 7-8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Koike.
Regarding claims 7 and 20,
Koike discloses the claimed limitations as set forth above and further teaches the ink composition further including a surfactant [paragraphs 0049-0050], but fails to expressly disclose wherein the content of the resin is larger than a total content of the pigment, the pigment dispersant, and the surfactant.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the content of the resin be larger than a total content of the pigment, the pigment dispersant, and the surfactant, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). One would have been motivated to optimize the content of the resin for the purpose of having an ink composition that has enhanced durability, resistance, and print quality.
Regarding claim 8,
Koike discloses the claimed limitations as set forth above but fails to expressly disclose wherein (total content of the pigment dispersant and the surfactant)/(content of the resin) is 0.3 or more and less than 1.0.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a (total content of the pigment dispersant and the surfactant)/(content of the resin) be between 0.3 and 1.0 , since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. One would have been motivated to optimize the contents in order to achieve optimal overall quality and performance of the ink, balance for pigment stabilization, and viscosity control.
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANNELLE M LEBRON whose telephone number is (571) 272-2729. The examiner can normally be reached Monday-Friday: 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas X Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANNELLE M LEBRON/Primary Examiner, Art Unit 2853