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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/06/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/25/2026 was filed after the mailing date of the Final Rejection on 07/09/2025 and at the same day as Request for Continued Examination (RCE). The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
In response to the amendment received on 01/06/2026:
claims 1-18 are currently pending;
claims 15-18 are withdrawn; and
all prior art grounds of rejection are withdrawn in light of the Affidavit submitted on 01/06/2026 that demonstrates that one or two surfactants, or three surfactants with two anionic plus one nonionic are not sufficient to disperse the water-only colorant compositions into an oil-based paint or stain… it was surprising and unexpected that three surfactants, when using two nonionic surfactants and one anionic surfactant, were able to disperse the water-only colorant compositions into a solvent-borne base paint or stain when a synergist was added… a person of ordinary skill in the art would not have found guidance in Doi to prepare a water-only colorant that would successfully disperse into an oil-based base paint or stain… Doi does not suggest that three surfactants need to be used… a specific selection of two nonionic surfactants and one anionic surfactant is needed to prepare a water-only colorant that can be dispersed into a solvent-borne base paint or stain with a synergist (see Affidavit at bullet 7), which is persuasive. However, new grounds of rejection are outlined below.
Oath/Declaration
The affidavit under 37 CFR 1.132 filed 01/06/2026 is sufficient to overcome the prior art grounds of rejection of claims 1-14 based upon Doi.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 lines 9-10 reciting “suitable to disperse into a water-based base paint or stain… not suitable to disperse into a solvent-borne base paint or stain”, which is indefinite because the claimed “suitable” is not clearly delineated and the scope is unclear. What does "suitable" mean in terms of how much the liquid colorant is dispersed?
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 14 reciting “wherein one or more colorants” is indefinite because it is not clear if the “one or more colorants” in claim 14 is the same or different from the claimed water-only liquid colorant in claim 1.
Examiner will treat the recitation as the same colorant.
Claims 2-13 are rejected due to their dependency on independent claim 1.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hoshi et al. (US 2004/0226477 A1) (“Hoshi” hereinafter) in view of Doi (US 2006/0197814 A1) (“Doi” hereinafter); as evidenced by Sigma-Aldrich (“Polyoxyethylene (5) nonylphenylether, branched”, 2022) (“Sigma” hereinafter) with respect to claims 1-15.
Regarding claim 1, Hoshi teaches a water-only liquid colorant (see Hoshi at [0011] teaching a water base ink for ink-jet), which is taken to meet the claimed water-only liquid colorant based on the structure as outlined below, comprising
at least three-component surfactant package (see Hoshi at [0014]-[0015] teaching at least one anionic surfactant… at least one nonionic surfactant… following formula (3) and a mixed surfactant). One of ordinary skill in the art would appreciate that there are at least three surfactants,
wherein the surfactant package comprises at least two nonionic surfactants (see Hoshi at [0015] teaching at least one nonionic surfactant which is selected from a surfactant represented by the following formula (3) and a mixed surfactant containing a surfactant represented by the following formula (4) and a surfactant represented by the following formula (5)), and
at least one anionic surfactant (see Hoshi at [0014] teaching at least one anionic surfactant), and
wherein the nonionic surfactants include a hydrophilic alkylene oxide portion and a hydrophobic portion, with the hydrophobic portion of at least one of the nonionic surfactants containing a… linear… chain aliphatic group (see Hoshi at [0015] teaching at least one nonionic surfactant which is selected from a surfactant represented by the following formula (3), see Hoshi at [0018] teaching in the formula (3), shown with Examiner annotation below, each of R3 to R8 represents hydrogen or an alkyl group of C=18, and a+b+c+d+e+f represents an integer of 30 to 80).
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Hoshi does not explicitly teach that the hydrophobic portion of at least another of the nonionic surfactants containing one or more aromatic rings.
Like Hoshi, Doi teaches a water base ink for ink-jet (see Doi at [0009] teaching the inkjet ink… includes at… at least two types of surfactant, and water). Doi also teaches at least one type of nonionic surfactant (see Doi at [0039])… example of the nonionic surfactants includes… polyoxyethylene nonylphenyl ether (see Doi at [0080]). Polyoxyethylene nonylphenyl ether is taken to meet the claimed “hydrophobic portion of at least another of the nonionic surfactants containing… one… aromatic rings”, as evidenced by Sigma (see Sigma at page 1, shown below with Examiner annotation.)
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Doi also teaches that in general, the permeability of an inkjet ink on a recording medium is controlled by adjusting the surface tension of the inkjet ink… for this purpose, surfactants and the like are principally used, and particularly, nonionic surfactants and the like are used… a nonionic surfactant having a high hydrophobic property has the effect of increasing permeability, but has low solubility in water, often lowering the reliability of the resulting ink… on the other hand, it is known that although a nonionic surfactant having a high hydrophilic property has improved suitability in water thus increasing the reliability of the resulting ink, its permeability tends to decrease, so that the drying time of the ink increases (see Doi at [0040]).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that polyoxyethylene nonylphenyl ether is suitable for its intended use.
As such, one of ordinary skill in the art would appreciate that Doi teaches that nonionic surfactant having a high hydrophobic property has the effect of increasing permeability, while having a high hydrophilic property has improved suitability in water thus increasing the reliability of the resulting ink, and adjusts the surface tension of the inkjet ink, and seek those advantages by using polyoxyethylene nonylphenyl ether as taught by Doi in the water base ink as taught by Hoshi.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use polyoxyethylene nonylphenyl ether as taught by Doi in the water base ink as taught by Hoshi because nonionic surfactant having a high hydrophobic property has the effect of increasing permeability, while having a high hydrophilic property has improved suitability in water thus increasing the reliability of the resulting ink, and adjusts the surface tension of the inkjet ink. Additionally, polyoxyethylene nonylphenyl ether is suitable for its intended use.
With respect to the claimed wherein the liquid colorant is formulated to be dispensed from a colorant dispenser and is suitable to disperse into a water-based base paint or stain without a synergist; and wherein the liquid colorant is not suitable to disperse into a solvent-borne base paint or stain without a synergist (see 112 rejection, this recitation is alluding to state a purpose, or intended use of the plurality of structures, or a method of using the water base ink, which is a different statutory category from the claimed water-only liquid colorant (or product/manufacture) (see MPEP § 2106.03.I), and does not add to the structure of the claimed water-only liquid colorant. As such, this recitation is not given patentable weight. Alternatively, since the water base ink as taught by Hoshi in view of Doi and the claimed method employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., the wherein the liquid colorant is formulated to be dispensed from a colorant dispenser and is suitable to disperse into a water-based base paint or stain without a synergist; and wherein the liquid colorant is not suitable to disperse into a solvent-borne base paint or stain without a synergist) would have naturally flowed following the teaching of Hoshi in view of Doi (see MPEP 2112.01)).
Regarding claims 2-4, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Hoshi further teaches wherein the nonionic surfactant hydrophilic alkylene oxide portion contains a plurality of -CH2CH2O- groups (claim 2), wherein the… linear… chain aliphatic group includes an alkyl group (claim 3), and wherein each nonionic surfactant includes a… linear… chain alkyl group… (claim 4) (see Hoshi at [0015] teaching at least one nonionic surfactant which is selected from a surfactant represented by the following formula (3), see Hoshi at [0018] teaching in the formula (3), shown with Examiner annotation above, each of R3 to R8 represents hydrogen or an alkyl group of C=18, and a+b+c+d+e+f represents an integer of 30 to 80).
Regarding claim 5, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Doi further teaches wherein the aromatic ring each have… 1 carbon atom (see Doi at [0080] teaching an example of the nonionic surfactants includes… polyoxyethylene nonylphenyl ether, as evidenced by Sigma). One of ordinary skill in the art would appreciate that the phenyl or aromatic group of polyoxyethylene nonylphenyl ether comprises 1 carbon atom.
Regarding claims 6-7 and 9, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Hoshi further teaches wherein the at least one anionic surfactant includes a hydrophilic alkylene oxide portion and a hydrophobic portion including… a sulfur group (claim 6), wherein the anionic surfactant hydrophilic alkylene oxide portion includes a plurality of -CH2CH2O- groups (claim 7), and wherein the anionic surfactant hydrophobic portion includes… sulfonate group (claim 9) (see Hoshi at [0014] teaching at least one anionic surfactant which is selected from a surfactant represented by the following formula (1), shown below with Examiner’s annotation, see Hoshi at [0016] teaching in the formula (1), R1 represents an alkyl group having carbon atoms of a number of 12 to 15, X is 0 to 4, see Hoshi at [0025] teaching the surfactant represented by the formula (1) is the anionic surfactant composed of polyoxyethylene alkyl ether sulfate salt).
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Regarding claim 8, Hoshi in view of Doi teach the limitations as applied to claims 1 and 6-7 above, and Hoshi further teaches wherein the anionic surfactant hydrophobic portion includes a phosphate ester group (see claim 6 rejection, wherein the claimed phosphate ester group is met by a sulfur group (see MPEP 2111.04.II)).
Regarding claim 10, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Doi further teaches wherein the surfactants in the surfactant package each have a number average molecular weight less than 2,000 g/mol (see Doi at [0039] teaching the nonionic surfactant has a weight-average molecular weight of 1000 or less… the at least one of an anionic surfactant… has a weight-average molecular weight of from 175 to 1500) (see MPEP 2144.05(I)).
Regarding claim 11, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Hoshi further teaches wherein the colorant contains at least about 0.5 and up to about 20 wt. % of the surfactant package (see Hoshi at [0032] teaching the total amount of the contents of the anionic surfactant and the nonionic surfactant is 0.1 to 0.5% by weight) (see MPEP 2144.05(I)).
Regarding claim 12, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Hoshi further teaches wherein the colorant further comprises at least about 2 and up to about 90 weight percent of… one… pigments (see Hoshi at [0013] teaching self-dispersing type carbon black, see Hoshi at [0033] teaching the content of the self-dispersing type carbon black is 0.1 to 20% by weight with respect to the total amount of the water base ink for ink-jet recording of the present disclosure) (see MPEP 2144.05(I)).
Regarding claim 13, Hoshi in view of Doi teach the limitations as applied to claim 1 above, and Hoshi further teaches wherein the colorant contains at least about 0.5 weight percent and at most about 80 weight percent combined weight of pigment, extender, inert pigment and filler (see Hoshi at [0013] teaching self-dispersing type carbon black, see Hoshi at [0033] teaching the content of the self-dispersing type carbon black is 0.1 to 20% by weight with respect to the total amount of the water base ink for ink-jet recording of the present disclosure) (see MPEP 2144.05(I)). Applicant has not shown that there is unexpected results between liquid colorant composition comprising extender, inert pigment and filler as claimed, and the water base ink as taught by Hoshi in view of Doi. As such, the self-dispersing type carbon black is 0.1 to 20% by weight (see Hoshi at [0033]) meets the claimed limitations.
Alternatively, it would have been obvious in the absence of new or unexpected results to one of ordinary skill in the art that the water base ink as taught by Hoshi in view of Doi would comprise a pigment, extender, inert pigment and filler as claimed, within a range of from 0.1% by mass to 50% by mass with respect to the total mass of the ink.
Regarding claim 14, Doi teaches the limitations as applied to claim 1 above, and Doi further teaches wherein… one… colorant contain at least about 0.1 weight percent and at most about 5 weight percent pigment dispersing agent (see Hoshi at [0013] teaching self-dispersing type carbon black, see Hoshi at [0033] teaching the content of the self-dispersing type carbon black is 0.1 to 20% by weight with respect to the total amount of the water base ink for ink-jet recording of the present disclosure) (see MPEP 2144.05(I)). The self-dispersing type carbon black is taken to meet the claimed pigment dispersing agent because it is self-dispersing.
Response to Arguments
Applicant’s arguments with respect to claim(s) 01/06/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731