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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/18/2026 has been entered.
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.
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.
Claim(s) 1-5 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Breton et al. (US 2015/0077501) in view of Kito et al. (JP 2013076005A), Miwa et al. (US 2017/0203581), and further in view of Hall et al. (US 2019/0085188). Regarding claim 1, Breton et al. disclose “a white ink composition (title), comprising: an ink vehicle comprising at least one compound chosen from acrylate monomers, methacrylate monomers, acrylate oligomers and methacrylate oligomers (paragraphs 39 and 43); least one photoinitiator (paragraph 43); at least one white colorant (abstract, paragraph 43); at least one stabilizer (paragraph 43: hindered amine light stabilizer); and the at least one white colorant is a pigment (claim 2), the pigment being at a concentration ranging from about 45% to about 65% by weight, relative to the total weight of the ink composition (claim 5).” Breton et al. fail to disclose that the at least one stabilizer is 4-hydroxy-1-oxy-2,2,6,6-tetramethylpiperidine, but do teach that the stabilizer is a hindered amine light stabilizer, and further exemplify TINUVIN 292. Kito et al. disclose that 4-hydroxy-1-oxy-2,2,6,6-tetramethylpiperidine (TEMPOL) and TINUVIN 292 are known hindered amine stabilizers for ink compositions (paragraph 74). It has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Additionally, it has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to: a) use TEMPOL as the stabilizer of Breton et al. because it has been shown in the art to be suitable as a hindered amine stabilizer in ink compositions; and/or b) substitute TEMPOL for the TINUVIN 292 of Breton et al. because they have been shown in the art to be equivalent amine stabilizers in ink compositions. Breton et al. fail to disclose “at least one polyol adhesive resin that is solid at 25°C” or “the at least one polyol adhesive resin has a concentration ranging from about 15% to about 20% by weight, relative to the total weight of the ink composition.” However, Miwa et al. disclose adding a polyol to a radiation curable ink composition in an amount of 15% by mass (paragraph 201) in order to enhance the adhesion property of the ink layer (paragraphs 193-194). Miwa et al. exemplify Variplus SK (paragraph 199) which is the same component used by Applicant (see paragraph 25 of Applicant’s specification). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to add Variplus SK to the ink composition of Breton et al. in an amount of 15% by mass of the total mass of the ink in order to enhance the adhesion properties with the recording medium. Variplus SK is a solid at 25°C. Breton et al. also fail to disclose “wherein the at least one photoinitiator comprises 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide,” but do disclose that the photoinitiator can comprise bis(2,4,6 trimethylbenzoyl) phenylphosphine oxide (paragraph 43). Hall et al. disclose that 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide and bis(2,4,6 trimethylbenzoyl) phenylphosphine oxide are equivalent acylphosphine oxide photoinitiators (paragraph 49). It has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide instead of bis(2,4,6 trimethylbenzoyl) phenylphosphine oxide because it was recognized in the art as being equivalent for the same purpose. Regarding the limitation that “the white ink composition is not miscible with water,” since the colorant is a pigment, especially a TiO2 pigment (paragraph 43 of Breton et al.), the pigment is not soluble in water, and therefore the white ink as a whole is not miscible in water. In addition, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established. See MPEP §2112.01. In this instance, since the ink composition of Breton et al., as modified, is at least substantially identical to that claimed, the property that the white ink composition not be miscible with water is presumed to be inherent. Similarly, the limitation that the white ink composition have “a mean tack over a 10 minute measurement period of from about 45 g-m to about 65 g-m” is likewise presumed to be inherent. Assuming, arguendo, that the tack property is not presumed inherent, tack is a temperature-dependent property. Therefore, Examiner asserts that the tack property limitation amounts to an intended use of the ink, and there is a temperature at which the tack value would be as recited, if it does not already inherently have the tack value recited. Regarding the final limitation that “and the composition is UV LED curable such that, upon exposure to radiation at a wavelength of about 395 nm, an intensity of about 1 W/cm2, and an energy dose of about 35 mJ/cm2, prints are tack-free to the touch, and, when printed on a substrate and UV LED cured, the print exhibits an opacity of at least about 85%,” since the ink composition of Breton et al. is at least substantially identical to that claimed, the recited property is presumed inherent. See MPEP §2112.01 Regarding claim 2, Breton et al. further disclose “wherein the ink vehicle comprises the acrylate oligomer and the acrylate monomer (paragraphs 39 and 43).” Regarding claim 3, Breton et al. further disclose “wherein the acrylate monomer is a propoxylated trimethylolpropane triacrylate monomer (paragraph 43, Table 1: SR454).” Regarding claim 4, Breton et al. further disclose “wherein the acrylate monomer is a tetrafunctional polyester acrylate oligomer (paragraph 43: Sartomer CN294E).” Regarding claim 5, Miwa et al. further disclose “wherein the at least one polyol adhesive resin has a Tg of about 80°C to about 150°C (Variplus SK).” Regarding claim 7, Breton et al. further disclose “wherein the at least one photoinitiator comprises a plurality of different photoinitiators (paragraph 43).” Regarding claim 8, Breton et al. further disclose “further comprising at least one in-can stabilizer (paragraph 43: amine light stabilizer).” Regarding claim 9, Breton et al. further disclose “further comprising at least one polymeric dispersant (paragraphs 41 and 43).” Regarding claim 10, Breton et al. further disclose “further comprising at least one additional ingredient chosen from thermal stabilizers, viscosity modifiers, fillers and combinations thereof (paragraphs 39 and 43).”
Claim(s) 12-16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Breton et al. (US 2015/0077501) in view of Kito et al. (JP 2013076005A), Miwa et al. (US 2017/0203581), Hall et al. (US 2019/0085188), and further in view of Mochizuki et al. (US 8673431). Regarding claim 12, Breton et al. further disclose “a method for variable lithographic printing (abstract, claim 1), comprising: applying a dampening fluid to an imaging member surface (abstract); forming a latent image by removing the dampening fluid from selective locations on the imaging member surface to form hydrophobic non-image areas and hydrophilic image areas (abstract, paragraph 29); developing the latent image by applying a white ink composition to the hydrophilic image areas (abstract); and transferring the developed latent image to a receiving substrate (abstract), the white ink composition comprising: an ink vehicle comprising at least one compound chosen from acrylate monomers, methacrylate monomers, acrylate oligomers and methacrylate oligomers (paragraphs 39 and 43); at least one photoinitiator (paragraph 43); at least one white colorant (abstract, paragraph 43); at least one stabilizer (paragraph 43: hindered amine light stabilizer); and the white colorant is a pigment (claim 2), the pigment being at a concentration ranging from about 40% to about 65% by weight, relative to the total weight of the ink composition (claim 5).” Breton et al. fail to disclose that the at least one stabilizer is 4-hydroxy-1-oxy-2,2,6,6-tetramethylpiperidine, but do teach that the stabilizer is a hindered amine light stabilizer, and further exemplify TINUVIN 292. Kito et al. disclose that 4-hydroxy-1-oxy-2,2,6,6-tetramethylpiperidine (TEMPOL) and TINUVIN 292 are known hindered amine stabilizers for ink compositions (paragraph 74). It has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Additionally, it has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to: a) use TEMPOL as the stabilizer of Breton et al. because it has been shown in the art to be suitable as a hindered amine stabilizer in ink compositions; and/or b) substitute TEMPOL for the TINUVIN 292 of Breton et al. because they have been shown in the art to be equivalent amine stabilizers in ink compositions. Breton et al. fail to disclose “at least one polyol adhesive resin that is solid at 25°C” or “the at least one polyol adhesive resin has a concentration ranging from about 15% to about 20% by weight, relative to the total weight of the ink composition.” However, Miwa et al. disclose adding a polyol to a radiation curable ink composition in an amount of 15% by mass (paragraph 201) in order to enhance the adhesion property of the ink layer (paragraphs 193-194). Miwa et al. exemplify Variplus SK (paragraph 199) which is the same component used by Applicant (see paragraph 25 of Applicant’s specification). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to add Variplus SK to the ink composition of Breton et al. in an amount of 15% by mass of the total mass of the ink in order to enhance the adhesion properties with the recording medium. Variplus SK is a solid at 25°C. Breton et al. also fail to disclose “wherein the at least one photoinitiator comprises 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide,” but do disclose that the photoinitiator can comprise bis(2,4,6 trimethylbenzoyl) phenylphosphine oxide (paragraph 43). Hall et al. disclose that 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide and bis(2,4,6 trimethylbenzoyl) phenylphosphine oxide are equivalent acylphosphine oxide photoinitiators (paragraph 49). It has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide instead of bis(2,4,6 trimethylbenzoyl) phenylphosphine oxide because it was recognized in the art as being equivalent for the same purpose. Regarding the limitation that “the white ink composition is not miscible with water,” since the colorant is a pigment, especially a TiO2 pigment (paragraph 43 of Breton et al.), the pigment is not soluble in water, and therefore the white ink composition as a whole is not miscible in water. In addition, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established. See MPEP §2112.01.
In this instance, since the ink composition of Breton et al., as modified, is at least substantially identical to that claimed, the property that the white ink composition not be miscible with water is presumed to be inherent. Similarly, the limitation that the white ink composition have “a mean tack over a 10 minute measurement period of from about 45 g-m to about 65 g-m” is likewise presumed to be inherent. Assuming, arguendo, that the tack property is not presumed inherent, tack is a temperature-dependent property. Therefore, Examiner asserts that the final limitation amounts to an intended use of the ink, and there is a temperature at which the tack value would be as recited, if it does not already inherently have the tack value recited. Furthermore, the limitation that “wherein transferring the developed latent image to the receiving substrate achieves a transfer efficiency of at least about 90% by weight of the latent ink image” is also presumed inherent. Finally, Breton et al. further disclose “performing a final cure by exposing the ink image on the receiving substrate” to UV radiation (claim 19, claims 9 and 10), but fail to disclose using “UV LED radiation at a wavelength of about 395 nm, an intensity of about 1 W/cm2, and an energy dose of about 35 mJ/cm2.” However, Mochizuki et al. disclose a similar ink (abstract, Examples) comprising the same photoinitiators (column 57, lines 15-17), and disclose that the ink should be cured with a light intensity of between 800 and 1,600 mW/cm2, for a time period of from 0.01 to 2 seconds (column 55, lines 7-19). This range corresponds to an energy dose of 8 mJ/cm2 to 3,200 mJ/cm2. As a specific Example, Mochizuki et al. use a UV LED with a wavelength of 385 nm, and an exposure with an intensity of 0.8 W/cm2 or 1,200 mW/cm2 with an energy dose of a10 mJ/cm2 or 30 mJ/cm2, respectively (column 57, lines 40-60. Examiner notes that the value of ‘1,200 W/cm2’ is clearly a typographical error, as the value is 1000 times larger than the range expected based on the rest of the disclosure).
It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. Furthermore, it has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. In this instance, Mochizuki et al. clearly disclose that an exposure system that is a UV LED with a wavelength of 385 nm is suitable for exposing similar inks with similar components, including the initiator system used, and further disclose the general conditions for exposure. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use a UV LED with a wavelength of 385 nm (Examiner interprets 385 nm to be about 395 nm) because it has been shown in the art to be suitable for the intended purpose. Furthermore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to expose the inks at an intensity of about 1 W/cm2 with an energy dose of about 35 mJ/cm2 in order to determine the optimal or working exposure conditions for the modified inks in the modified method of Breton et al. Regarding claim 13, Breton et al. further disclose “wherein the ink vehicle comprises the acrylate oligomer and the acrylate monomer (paragraphs 39 and 43).” Regarding claim 14, Breton et al. further disclose “wherein the acrylate monomer is a propoxylated trimethylolpropane triacrylate monomer (paragraph 43, Table 1: SR454).” Regarding claim 15, Breton et al. further disclose “wherein the acrylate monomer is a tetrafunctional polyester acrylate oligomer (paragraph 43: Sartomer CN294E).” Regarding claim 16, Miwa et al. further disclose “wherein the at least one polyol adhesive resin has a Tg of about 80°C to about 150°C (Variplus SK).” Regarding claim 18, Breton et al. further disclose “further comprising at least one in-can stabilizer (paragraph 43: amine light stabilizer).” Regarding claim 19, Breton et al. further disclose “further comprising at least one polymeric dispersant (paragraphs 41 and 43).”
Response to Arguments
Applicant's arguments filed 02/18/2026 have been fully considered but they are moot in view of the new grounds of rejection.
Conclusion
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853