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 .
Summary
The Applicant’s arguments and claim amendments received on January 23, 2026 are entered into the file. Currently, claims 1-3 are amended; claim 4 is withdrawn; claims 5-8 are new; resulting in claims 1-3 and 5-8 pending for examination.
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 1-3 and 5-8 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.
Regarding claim 1, the newly added limitation reciting “the binder comprises a resin having units derived from acrylamide” is considered new matter that is not supported by the original disclosure. Although the instant specification describes a specific embodiment in which the binder comprises a styrene-acrylic acid resin having units derived from acrylamide, the specification does not provide adequate support for the generic limitation in which the resin encompasses any resin that has units derived from acrylamide. See MPEP 2163.05(I).
On page 7 of the remarks filed January 23, 2026, the Applicant points to paragraph [0100], [0134], and the working examples as support for the amendments. Paragraph [0100] of the as-filed specification states that a resin such as an acrylic-based, a polyurethane resin, or the like can be used as the binder. In particular, an acrylic-based resin, such as a polymer of styrene and (meth)acrylic acid is more preferably used as the binder [0100]. Paragraph [0134] discloses an exemplary composition of the aqueous binder solution (styrene-acrylic acid resin solution), where an acrylic-based aqueous solution is said to be produced by reacting a mixture containing the following reagents:
60 parts by mass of 2-ethylhexyl acrylate;
100 parts by mass of styrene;
27 parts by mass of methyl methacrylate;
3 parts by mass of acrylamide; and
6 parts by mass of methacrylic acid.
The only disclosure in the instant specification of a binder comprising a resin having units derived from acrylamide is in paragraph [0134] in the context of the above-described styrene-acrylic acid resin solution.
The current language of the claim which omits the styrene-acrylic acid resin is broader than the instant disclosure because the claim encompasses embodiments for which the inventor has not shown possession (e.g., in which the resin is a polyacrylamide polymer, an acrylamide-modified epoxy, etc.). Given that the specification only describes a generic acrylic-based resin, polyurethane resin, or polyolefin resin being used as the binder ([0100]-[0101]), or a single specific styrene-acrylic acid resin comprising units derived from acrylamide as the binder ([0134]), the specification does not provide sufficient description of a representative number of species of the claimed genus (i.e., any resin having units derived from acrylamide) to satisfy the written description requirement.
In order to overcome this rejection, the Applicant could consider amending the aforementioned limitation to recite --the binder comprises a styrene-acrylic acid resin having units derived from acrylamide--, consistent with the disclosure in [0134].
Regarding claims 5-7, the newly added limitations reciting “wherein the binder further comprises a resin having units derived from” 2-ethylhexyl acrylate and/or styrene are considered new matter that is not supported by the specification. In particular, the current language of the claims appears to indicate that the binder comprises a first resin that contains acrylamide units and either a second resin that contains 2-ethylhexyl acrylate units and/or a third resin that contains styrene units, whereas the instant specification only describes the binder containing a single resin that comprises units derived from acrylamide, 2-ethylhexyl acrylate, and styrene.
As explained with respect to claim 1 above, the exemplary binder composition described in paragraph [0134] comprises a styrene-acrylic acid resin which is produced by reacting a mixture of 2-ethylhexyl acrylate, styrene, methyl methacrylate, acrylamide, and methacrylic acid. As described in paragraph [0134], these reagents are all added to the same flask and reacted to produce an acrylic resin aqueous solution.
Therefore, the binder does not contain multiple resins having units derived from the monomers set forth in claims 1 and 5-7; rather, the binder contains a single resin having units derived from the claimed monomers. In order to overcome this rejection, the Applicant could consider amending the phrase “wherein the binder further comprises a resin having units derived from” in claims 5-7 to --wherein the resin has units derived from--, or --wherein the resin further comprises units derived from--, in order to clarify that the additional monomer units recited in claims 5-7 are part of the same resin set forth in claim 1. Absent further clarification from the Applicant, the claims will be interpreted as such for the purpose of applying prior art.
Regarding claims 2, 3, and 8, the claims are rejected based on their dependency on claims 1 and 5.
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.
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hayamizu et al. (WO 2022/118519, machine translation previously provided) in view of Kinoshita et al. (JP 2010-280830, machine translation via EPO provided).
Regarding claims 1 and 5-7, Hayamizu et al. teaches a black inkjet ink comprising water (aqueous medium), a pigment, an organic solvent, and a wax, wherein the pigment includes a self-dispersing pigment and a resin-dispersing pigment [0011]. By using a self-dispersed pigment and a resin-dispersed pigment in combination, it is possible to achieve good print density on both high-absorbency and low-absorbency recording media [0030]. The resin-dispersed pigment is a pigment that has at least a portion of its surface coated with a pigment-dispersing resin ([0044]), thus corresponding to the claimed dispersion (A) which contains a pigment (a) and a dispersing resin for pigment. The self-dispersing pigment corresponds to the claimed dispersion (B) which contains a self-dispersed pigment (b).
The volume-based average particle diameter of the self-dispersing pigment is 30 nm to 200 nm, preferably 50 to 170 nm ([0042]), which overlaps the claimed range of 160 nm or more and 210 nm or less. The volume-based average particle diameter of the resin-dispersed pigment is 40 to 500 nm, preferably 60 to 300 nm ([0077]), which overlaps the claimed range of 70 nm to 90 nm. The compounding ratio of the self-dispersible pigment to the resin-dispersible pigment is preferably in the range of 40:60 to 20:80 ([0080]), thus corresponding to a mass ratio of dispersion (A)/dispersion (B) of 1.5 to 4 (i.e., 60/40 to 80/20), which falls within the claimed range of 1.5 to 9. Hayamizu et al. therefore teaches ranges for the particle diameter of dispersion (A), particle diameter of dispersion (B), and mass ratio between dispersion (A) and dispersion (B) that overlap or fall within the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Hayamizu et al. teaches that the inkjet ink may further include a water-soluble resin and/or water-dispersible resin particles as a binder resin, wherein the water-soluble resin and the water-dispersible resin particles may each be a styrene-acrylic resin ([0116], [0119], [0122]), the reference does not specifically teach that the binder resin includes units derived from acrylamide, 2-ethylhexyl acrylate, and styrene.
Kinoshita et al. teaches a binder resin composition for aqueous inkjet inks, wherein the binder resin can be used to obtain aqueous inkjet inks that have excellent abrasion resistance and fixation properties and can withstand rubbing between printed objects during printing and contact with water and solvents ([0001], [0008]). Kinoshita et al. teaches that the binder resin comprises resin particles which can be obtained by emulsion polymerization of an ethylenically unsaturated monomer (A) containing at least one monomer selected from an amide group-containing ethylenically unsaturated monomer (a), a hydroxyl group-containing ethylenically unsaturated monomer (b), and a carboxyl group-containing ethylenically unsaturated monomer (c), wherein appropriate selection of the monomers ensures storage stability of the ink and mechanical properties such as tensile strength of the printed ink ([0018]-[0019]). In particular, Kinoshita et al. teaches an exemplary embodiment in which the binder resin composition is an aqueous dispersion of resin particles obtained by reacting 2-ethylhexyl acrylate, methyl methacrylate, styrene, dimethylacrylamide, and methacrylic acid (Example 1, [0094]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the inkjet ink of Hayamizu et al. by using a binder resin composition comprising resin particles having units derived from acrylamide, 2-ethylhexyl acrylate, and styrene, as taught by Kinoshita et al., in order to provide the inkjet ink composition with excellent abrasion resistance, fixation properties, storage stability, and tensile strength.
Regarding claims 2 and 8, Hayamizu et al. in view of Kinoshita et al. teaches all of the limitations of claims 1 and 5 above. Hayamizu et al. further teaches that the total amount of self-dispersed pigment and resin-dispersed pigment is 5 to 15 mass% of the total amount of ink, preferably 7 to 9 mass% ([0079]), which falls squarely within the claimed range of 5% to 12% by mass. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 3, Hayamizu et al. in view of Kinoshita et al. teaches all of the limitations of claim 1 above. Hayamizu et al. further teaches that the content of the resin particles constituting the binder resin is preferably 1 to 10% by mass relative to the total amount of the ink ([0120]), which overlaps the claimed range of 0.4% to 3% by mass. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I). Hayamizu et al. teaches that by setting the amount of resin particles within the above range, it is possible to obtain an ink that provides excellent abrasion resistance and print density of printed matter without reducing dispersion stability or ejection stability [0120].
Hayamizu et al. further teaches that the self-dispersing pigment and the resin-dispersed pigment may each contain carbon black ([0036], [0045]).
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2020/0165476, cited on IDS and ISR) in view of Kinoshita et al. (JP 2010-280830, machine translation via EPO provided).
Regarding claims 1 and 5-7, Kobayashi et al. teaches an ink for inkjet recording obtained using an aqueous pigment dispersion comprising an aqueous medium, a dispersion (A), and a dispersion (B), wherein the dispersion (A) contains a pigment (a) and a pigment dispersant resin, and wherein the dispersion (B) contains a self-dispersing pigment (b) (Abstract). Kobayashi et al. teaches an exemplary embodiment of an aqueous ink comprising 60 parts by mass of a dispersion liquid (A-3) and 40 parts by mass of a dispersion liquid (B-3) (Example 15; [0143]), such that the mass ratio between dispersion (A) and dispersion (B) is 1.5.
Kobayashi et al. teaches that the dispersion liquid (A-3) has a volume average particle diameter of 69 nm, and dispersion liquid (B-3) has a volume-average particle diameter of 170 nm ([0111], [0125]). The volume-average particle diameter of dispersion (B) falls squarely within the range of 160 nm to 210 nm, while the volume-average particle diameter of dispersion (A) is close to the claimed range of 70 nm to 90 nm. It is well settled that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, and in the case where the claimed ranges or amounts do not overlap with the prior art but are so close than one skilled in the art would have expected them to have the same properties. See MPEP 2144.05(I). Absent any evidence that the lower endpoint of the claimed range of 70 nm to 90 nm has criticality relative to the prior art disclosure of 69 nm for the volume-average particle diameter of dispersion (A), the difference between the claimed range and the prior art is prima facie obvious.
Although Kobayashi et al. teaches that the ink can be produced by mixing an aqueous pigment dispersion with a solvent, a resin such as an acrylic resin or a polyurethane resin as a binder, and an additive, if necessary ([0090]), the reference does not expressly teach that the binder comprises a resin having units derived from acrylamide, 2-ethylhexyl acrylate, and styrene.
Kinoshita et al. teaches a binder resin composition for aqueous inkjet inks, wherein the binder resin can be used to obtain aqueous inkjet inks that have excellent abrasion resistance and fixation properties and can withstand rubbing between printed objects during printing and contact with water and solvents ([0001], [0008]). Kinoshita et al. teaches that the binder resin comprises resin particles which can be obtained by emulsion polymerization of an ethylenically unsaturated monomer (A) containing at least one monomer selected from an amide group-containing ethylenically unsaturated monomer (a), a hydroxyl group-containing ethylenically unsaturated monomer (b), and a carboxyl group-containing ethylenically unsaturated monomer (c), wherein appropriate selection of the monomers ensures storage stability of the ink and mechanical properties such as tensile strength of the printed ink ([0018]-[0019]). In particular, Kinoshita et al. teaches an exemplary embodiment in which the binder resin composition is an aqueous dispersion of resin particles obtained by reacting 2-ethylhexyl acrylate, methyl methacrylate, styrene, dimethylacrylamide, and methacrylic acid (Example 1, [0094]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the inkjet ink of Kobayashi et al. by using a binder resin composition comprising resin particles having units derived from acrylamide, 2-ethylhexyl acrylate, and styrene, as taught by Kinoshita et al., in order to provide the inkjet ink composition with excellent abrasion resistance, fixation properties, storage stability, and tensile strength.
Regarding claims 2 and 8, Kobayashi et al. in view of Kinoshita et al. teaches all of the limitations of claims 1 and 5 above, and Kobayashi et al. further teaches that when the ink is used in an ink jet recording system, it is preferable that the concentration of pigment with respect to the total amount of the ink is 1% by mass to 10% by mass ([0089]), which overlaps the claimed range of 5% to 12% by mass. In particular, Kobayashi et al. teaches that the aqueous ink of Example 15 has a pigment concentration of 6% by mass ([0111], [0125], [0128]-[0129], [0143]), which falls squarely within the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 3, Kobayashi et al. in view of Kinoshita et al. teaches all of the limitations of claim 1 above. Kobayashi et al. further teaches that the pigment (a) and self-dispersing pigment (b) each contain carbon black ([0018], [0051], [0111], [0126]). Although Kobayashi et al. teaches that the ink contains a binder resin ([0090]), the reference does not expressly teach a content of the binder relative to the total amount of the ink jet printing ink.
However, Kinoshita et al. further teaches that the inkjet ink preferably contains the binder resin composition in an amount of 1 to 20% by weight, where if the binder resin composition is less than 1% by weight, the pigment particles on the substrate cannot be completely covered, and abrasion resistance and water resistance may decrease, while if the binder resin composition exceeds 20% by weight, the viscosity of the inkjet ink increases, such that adverse effects on the ejection performance may occur [0083].
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the inkjet ink of Kobayashi et al. in view of Kinoshita et al. by setting an amount of binder within the claimed range, as taught by Kinoshita et al., in order to ensure that the printed ink can obtain good abrasion and water resistance, and to prevent poor ejection performance of the ink. Moreover, Kinoshita et al. teaches a range for the content of binder relative to the total amount of the inkjet ink which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Response to Arguments
Response-Specification
The declaration under 37 CFR 1.132 filed January 23, 2026 is sufficient to overcome the previous objection to the specification. The Applicant explains on pages 1-2 of the declaration and on page 7 of the remarks filed January 23, 2026 that the amendments to paragraphs [0127]-[0131], [0135], and [0148] of the instant specification are made to correct clerical errors in the disclosure and do not introduce new matter.
Response-Claim Rejections - 35 USC § 112
The previous rejection of claim 2 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are overcome by the Applicant’s amendment to the claim in the response filed January 23, 2026.
However, in light of the amendments to the claims, new issues under 35 U.S.C. 112(a) are presented in the office action above.
Response-Double Patenting
The previous provisional nonstatutory double patenting rejection over copending Application No. 16/618,878 is withdrawn in light of the amendments to claim 1 specifying that the binder comprises a resin having units derived from acrylamide.
Response-Claim Rejections - 35 USC § 103
Applicant’s arguments, see pages 9-12 of the remarks filed January 23, 2026, have been considered but are moot because they do not address the new combination of references being used in the rejections above. In light of the amendments to claim 1, Kinoshita et al. is used as a secondary reference in combination with primary references to Hayamizu et al. and Kobayashi et al. in order to address the new limitations directed to the binder comprising a resin having units derived from acrylamide.
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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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, Mark Ruthkosky can be reached at (571) 272-1291. 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.
/Rebecca L Grusby/Examiner, Art Unit 1785