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 .
Election/Restrictions
2. This application contains claims directed to the following patentably distinct species:
Species I: Disclosed in claims 1-5 and 7-11.
Species II: Disclosed in claim 6.
3. The species are independent or distinct because the claims to the different species recite the mutually exclusive characteristics of such species, all of the different species are different embodiments of a dispersion composition. In addition, these species are not obvious variants of each other based on the current record.
4. Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
5. Currently, none of the claims is generic.
6. There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
The species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification; and/or
the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
7. Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
8. The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
9. Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
10. Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
11. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
12. During a telephone conversation with Shintaro YAMADA on 01/08/2026 a provisional election was made without traverse to prosecute the invention of species I, disclosed in claims 1-5 and 7-11. Affirmation of this election must be made by applicant in replying to this Office action. Claim 6 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
13. Acknowledgment is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. These IDS have been considered.
Priority
14. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
15. The examiner contends that the drawings submitted on 07/18/2024 are acceptable for examination proceedings.
Claim Rejections - 35 USC § 102
16. 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.
17. 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.
18. Claims 1-2, 4 and 7-11 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Kaga et al. (JP 2009-263447).
19. Regarding independent claim 1: Kaga et al. disclosed a pigment dispersion composition ([0067], lines 1-7 and [0069], line 1) comprising:
a pigment ([0067], line 2);
a dispersant ([0067], line 3); and
a dispersion medium ([0070], lines 1-2), wherein,
the pigment includes a sulfo group or a sulfonic acid derivative group ([0074], lines 1-6), and
the dispersant is polyallylamine including an alkyl ester side chain ([0070], lines 2-11).
20. Regarding claim 2: Kaga et al. disclosed the pigment dispersion composition according to claim 1, wherein the dispersion medium is acrylate or methacrylate ([0070], line 7).
21. Regarding claim 4: Kaga et al. disclosed the pigment dispersion composition according to claim 2, wherein the acrylate or methacrylate includes a repeating structure derived from ethylene oxide or propylene oxide ([0015], lines 1-2).
22. Regarding claim 7: Kaga et al. disclosed an active energy ray curable ink composition comprising ([0003], lines 7-9): the pigment dispersion composition according to claim 1 (see the rejection of claim 1).
23. Regarding claim 8: Kaga et al. disclosed the active energy ray curable ink composition according to claim 7, further containing a gelling agent ([0048], lines 1-2; the binder as an example of gelling agent).
24. Regarding claim 9: Kaga et al. disclosed a manufacturing method ([0075], lines 1-2; [0099], lines 1-3) of an active energy ray curable ink composition ([0003], lines 7-9) for manufacturing the active energy ray curable ink composition according to claim 7 (see the rejection of claim 7), the method comprising: preparing a pigment dispersion composition ([0067], lines 1-7 and [0069], line 1).
25. Regarding claim 10: Kaga et al. disclosed a printing method comprising: the active energy ray curable ink composition according to claim 7 ([0021], lines 1-2).
26. Regarding claim 11: Kaga et al. disclosed a printing system ([0085], lines 1-4) comprising: the active energy ray curable ink composition according to claim 7 (see the rejection of claim 7).
Claim Rejections - 35 USC § 103
27. 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.
28. 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 of this title, 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.
29. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kaga et al. (JP 2009-263447), in view of Hamada et al. (WO 2021/171876).
30. Regarding claim 3: Kaga et al. disclosed the pigment dispersion composition according to claim 1.
Kaga et al. are silent about wherein a 1-octanol/water partition coefficient CLogP value, which is a predicted value, of the dispersion medium is in a range of 2.0 to 2.4.
Hamada et al. disclosed a pigment dispersion comprising a dispersant and a pigment including a sulfo group or a sulfonic acid derivative group (Page 7, lines 31-41) and a dispersion medium, wherein a 1-octanol/water partition coefficient CLogP value, which is a predicted value, of the dispersion medium is in a range of 2.0 to 2.4 (Page 7, lines 28-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Hamada et al. with those of Kaga et al. by using a dispersion medium having the above disclosed CLogP value in order to improve the ejection properties of the pigment dispersion as disclosed by Hamada et al. on page 4.
31. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kaga et al. (JP 2009-263447), in view of Kawashima (WO 2009/123008).
32. Regarding claim 5: Kaga et al. disclosed the pigment dispersion composition according to claim 1.
Kaga et al. are silent about wherein the dispersant includes a repeating structure represented by a following general formula (1): [formula 1]
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276
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(In general formula (1), m represents an integer within a range of 2 to 100, and n represents an integer within a range of 2 to 20.)
Kawashima disclosed a pigment dispersion (Page 11, line 3), comprising a pigment (Page 10, lines 39-40) that includes a sulfonic acid derivative group (Page 10, lines 21-23), a dispersant (Page 10, line 40), wherein the dispersant includes a repeating structure represented by a following general formula (1) above, (In general formula (1), m represents an integer within a range of 2 to 100, and n represents an integer within a range of 2 to 20.) (Page 3, lines 15-16; Page 7, lines 11-12 and 19-24; also see the very last page for formula (2)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kawashima with those of Kaga et al. by using commercially available polymer dispersants in order to reduce production costs.
Conclusion
33. Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAOVI M. AMEH whose telephone number is (571)272-4578. The examiner can normally be reached M-F: 9:00 AM - 6:00 PM.
34. 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.
35. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHEN MEIER can be reached at (571)272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAOVI M AMEH/Primary Examiner, Art Unit 2853