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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 7/01/2026 has been entered.
Election/Restrictions
Applicants’ election of Group I claims 1-4, in the reply filed on 4/25/2024 is acknowledged. Because applicants did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/25/2024.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract filed 9/18/2024 is accepted.
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, 3, 4, 8, and 9 (all pending claims) 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. Said claim is held to be indefinite because the test method associated with the claimed “peel strength of at least 50g/15mm)” is not claimed with sufficient detail to render the claim obvious. Specifically, the peel strength is known to vary based upon a number of parameters (e.g. composition of adjacent layers including the adhesive layer and sealant layer compositions, the peel speed, humidity, lamination conditions, the specifics of the discharge treatment, etc.) which are not described in the claims. Thus, said limitation is understood to be indefinite because it would be unclear to the skilled artisan how said property is measured and if/when an aqueous inkjet composition meets said limitation.
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, 4, 8, and 9 (all pending claims) 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. There is no support in the original disclosure for the newly claimed “wherein the aqueous inkjet ink composition forms a laminate with a base film, an adhesive film, and a sealant film the laminate has a peel strength of at least 50 g/15 mm measured by a T-peel of sample of the laminate having a width of 15mm and aged at 40C for three days, in which the aqueous ink jet composition is present in the laminate on the base film that is primer treated polyethylene terephthalate (PET) or corona discharge treated and primed biaxially oriented polypropylene (OPP).” The examiner notes the specification teaches the composition preferably has peel strength of 50g/15mm or more (0141 of published application; note: the base film is not specified) and contains examples of compositions exhibiting peel strengths of at least 50 g/15 mm when present in a lamination on a base film that is primer treated and corona discharged treated polyethylene terephthalate (PET) or corona discharge treated and primed biaxially oriented polypropylene (OPP) (See examples; note: the examples fall within the claimed range but the claimed range is not explicitly or implicitly disclosed). Neither teaching is directed to the peel strength of the laminate; rather, the teachings are to the peel strength between the base film and a sealant film whereas the claims are directed to a peel strength of a film comprising a base film, sealant film, an adhesive film, and the ink jet composition but fails to disclose the lamination order or specify the interface at which the laminate peels.
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.
Claim(s) 1, 3, 4, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al (US 2011/0143040) in view of WO2019/015904 (effective filing date of 11-2017; herein referred to as Bertels).
Yamasaki teaches an ink jet composition that contains a pigment (herein understood to read on the claimed colorant), and a polyurethane polymer derived from polyisocyanate, a polyol, and a compound having a carboxy group (herein understood to read on the claimed acid group containing diol) (abstract). The amount of polyurethane resin relative to the total mass of the ink jet composition is preferably less than 2.0% by mass, more preferably 0.1% or more but less than 2.0% by mass (0053). The polyol may comprise polyester polyols (0027). The composition may be in an aqueous medium (0057). The compound having a carboxy group may be dimethylolpropionic acid, dimethylolbutanoic acid or dimethylolacetic acid (0032)-herein understood to rea don the claimed formula 2. The composition may further comprise a surfactant (0058). The pigment may be present in amounts of 0.1-15% by mass (0055). The aqueous medium may be a mixed solvent of water and water soluble organic solvent (0057).
Yamasaki is relied upon as above but does not teach the polyester diol should be selected from the polyester polyol compounds represented by formula 1. However, Bertels teaches that aqueous dispersible polyurethane for treatment of ink jet printing preferably comprises polyester diols obtained by reacting terephthalic acid (0021)with non-branched or branched aliphatic diols (0025-0027; herein understood to be sufficiently specific to render obvious the use of the diol from which the claimed X is derived) . Said polyurethanes exhibit improved properties such a water dispersibility, storage stability, adhesion, waterproof characteristics, and solvent resistance (0013). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the polyester diols disclosed in Bertels as the polyol component of Yamasaki. The motivation for doing so would have been the resulting polyurethanes exhibit improved properties such a water dispersibility, storage stability, adhesion, waterproof characteristics, and solvent resistance
With regards to the limitation requiring the claimed laminate has a “peel strength of at least 50 g/15 mm…on the base film that is primer treated polyethylene terephthalate (PET) or corona discharge treated and primed biaxially oriented polypropylene (OPP)”, the examiner takes the position that the composition rendered obvious by Yamasaki in view of Bertels will necessarily exhibit the claimed peel strength since said composition is compositionally identical to the claimed invention. Alternatively, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select primer, treatment conditions, and lamination conditions in order to optimize the peel strength of the composition to the adjacent substrate.
With regards to claim 3, Yamasaki teaches the polyurethan should have an average molecular weight of 100,000-60,000 (0054).
With regards to claim 4, Yamasaki teaches the polyurethan resin should have an acid value of 20-100mg KOH/g (abstract).
With regards to claim 8, the claim defines the adhesive layer used in the peel strength test of claim 1 but does not require the adhesive be present.
With regards to claim 9, the claim defines the sealant layer used in the peel strength test of claim 1 but does not require the sealant layer to be present.
Response to Arguments
Applicant's arguments filed on 7/1/2026 have been fully considered but they are not fully persuasive.
Claim Rejections - 35 U.S.C. § 112
With regards to the rejection of claims 1, 3, and 4 under 35 U.S.C. § 112(b) as being indefinite because it is unclear for not specifying a test method associated with the claimed peel strength, applicant argues claim 1 has been amended to recite that the peel strength is measured by a T-peel
test of a sample of the laminate having a width of 15 mm and aged at 40°C for three days. Said argument is noted but is not persuasive for the reasons noted in the rejection above.
With regards to the rejection of claims 1, 3, and 4 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement, because there is no support in the original disclosure for the peel strength features of claim 1 (see Office Action, page 3). Applicant respectfully disagrees and asserts the Specification supports the peel strength range of a laminate of at least 50 g/15 mm that the aqueous inkjet ink composition provides in the general statement and further in the Examples measured when the aqueous inkjet ink composition is present in a laminate on a base film that is primer treated PET or corona discharge treated and primed OPP, as recited in claim 1 (based upon Table 1 and 0076 of the application). The examiner respectfully disagrees for the reasons set forth in the rejection above.
Claim Rejections - 35 U.S.C. § 103
With regards to the rejection of claims under 35 U.S.C. § 103 as being unpatentable over Yamasaki et al. (U.S. Application Pub. 2011/0143040) in view of Bertels (WO 2019/105904), Applicant respectfully traverses this rejection arguing the claimed combination of reagents of hexamethylene diisocyanate, a polyester diol compound represented by the formula 1, and an acid group-containing diol compound represented by the formula 2 allows for the claimed aqueous inkjet ink composition to have a high adhesion with plastic films. In contrast, applicant contends Comparative Example 2 in the Specification demonstrates aqueous inkjet compositions containing a polyester polyurethane resin that is not formed of the claimed combination of reagents had an inferior peel strength. Applicant argues nothing in Bertels and/or Yamasaki teaches or suggests the claimed combination of hexamethylene diisocyanate, a polyester diol compound represented by the formula 1, and an acid group-containing diol compound represented by the formula 2 being able to provide a polyurethane resin having an advantageous lamination strength for a broad range of plastic films. Said argument is noted but is not persuasive; said argument fails to rebut the examiner’s position of record that the composition rendered obvious by Yamasaki in view of Bertels will necessarily exhibit the claimed peel strength since said composition is compositionally identical to the claimed invention. The examiner’s position acknowledges that the references do not explicitly teach the claimed peel strength limitation. Said argument also fails to address the examiner’s alternative position that it would have been obvious to one of ordinary skill in the art at the time the invention was made to select primer, treatment conditions, and lamination conditions in order to optimize the peel strength of the composition to the adjacent substrate. Thus, said argument is noted but is not persuasive.
Applicant further notes that the examiner has previously taken the position that applicant's arguments attempting to patentably distinguish the claimed invention based upon secondary considerations are not persuasive because (1) applicant has not compared the claimed invention to the closest composition disclosed in Yamasaki; (2) applicant has not shown the results would be unexpected in view of the prior art and (3) that said showing is commensurate in scope with the pending claims. Applicant’s arguments with respect to the first point are discussed below. The examiner notes, however, that applicant has not addressed the examiner’s other two arguments.
With regards to the examiner’ s position that applicant has not compared the claimed invention to the closest composition disclosed in Yamasaki, applicant argues comparative example 2 of the Specification is a suitable representative example of the closest composition disclosed in Yamasaki. Specifically, applicant notes example PU-7 of Yamasaki is produced utilizing the phthalic-acid-based polyester polyol (PEPO), isophorone diisocyanate (IPDI), dimethylolpropionic acid (DMPA), 2-aminoethanesulfonic acid (2-AES), and ethylenediamine (EDA) (see Table 1 on pages 7 and 8) and Comparative Example 2 in the Specification contains a polyurethane resin produced from phthalic-acid-based polyester polyol (a polyester diol formed from a phthalic acid), IPDI, DMPA, and a polyvalent amine (triethylamine). Comparative Example 2 in the Specification does not contain the 2- aminoethanesulfonic acid (i.e., the compound having a sulfo group) of example PU-7 of Yamasaki. Said argument is noted but is not persuasive. The examiner notes that comparative example 2 exhibits good adhesion to OPP and would, thus, read on the claimed invention which requires “the laminate has a peel strength of at least 50 g/15 mm measured by a T-peel of sample of the laminate having a width of 15 mm and aged at 40°C for three days, in which [[when]] the aqueous inkjet ink composition is present in a the laminate on the base film that is primer treated polyethylene terephthalate (PET) or corona discharge treated and primed biaxially oriented polypropylene (OPP).” Furthermore, as noted in the Final Rejection, the claims now explicitly recite a peel strength of at least 50g/15mm. Since applicant is not arguing “unexpected results”, it is unclear how an example representative of the closest prior art is germane to patentability.
With regards to Bertels, applicant agues Bertels is cited for the disclosure of polyester diol recited in claim 1 (see page 5 of the Office Action). Applicant notes Bertel discusses "adhesion" with respect to adhesion of its polyurethane resin to the substrate to which its being applied but applicant argues “Nothing in Yamasaki and/or Bertels teaches or suggests that the claimed combination of reactant products in the claimed ranges would achieve an alkali-soluble or self- emulsifying aqueous polyurethane resin with an improved peel strength when the inkjet composition in a lamination.” The examiner respectfully disagrees as Bertels teaches the skilled artisan would have expected an improvement in adhesion between the composition and the base layer. Thus, the rejections are maintained for the reasons set forth above in the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 2012-250416 and JP4-178418 are each cited on the internal search report and by multiple foreign patent offices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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