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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2026 has been entered.
Claim Objections
Claim 15 is objected to because of the following informalities: “claim13” should be “claim 13”. Appropriate correction is required.
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 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) 1-2, 6, 8-10, 13, 14, 18, 19, 22, and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bellotti et al. (US2017/0334098). Regarding claims 1, 24, and 25, Bellotti et al. disclose “an actinic radiation curable composition (title, Table 2, example 4) comprising, by weight: about 35% to about 45% of a carboxylated acrylate (Ebecryl 770), about 15% to about 40% of a urethane acrylate (Ebecryl 8602),” 24% of a monomer (Ebecryl 350 + Ebecryl 168 + HDDA), and 6% of a photoinitiator (see the multiple photoinitiators in example 4), “wherein the carboxylated acrylate has an acid value of about 100 mg KOH/g to about 300 mg KOH/g (Ebecryl 770).” Regarding the limitation that there be “no more than 22% of a total monomer content,” and that there be “at least 8% of a photoinitiator,” it has been held that when the claimed ranges do not overlap with the prior art, but are merely close, absent a showing of unexpected results or criticality, a prima facie case of obviousness exists. See MPEP §2144.05(I). In this instance, Example 4 of Bellotti et al. discloses 24% total monomer, and 6% of photoinitiator, which Examiner asserts are substantially and sufficiently close to 22% and 8%, respectively, that one having ordinary skill in the art would reasonably expect that the compositions would be the same properties. Furthermore, Applicant has not shown any unexpected results or criticality of the values in question. Similarly, with respect to the limitation in claim 24 that there be no more than 20% of a total monomer content, Examiner asserts that the value is sufficiently close to the 24% disclosed by Bellotti et al. such that the compositions would have substantially the same properties. Regarding the remainder of the claim: “wherein the composition, when applied onto a surface and cured, (1) maintains at least 80% adhesion to the surface in a tape adhesion test and (2) is at least 80% removed from the surface by a caustic wash,” it has been held that when 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 actinic radiation curable composition of Choi et al. is substantially identical to that which is claimed, the recited properties are presumed inherent. Similarly regarding claim 2, since the composition of Bellotti et al. is substantially identical to the claimed composition, the recited property of “wherein the composition has a viscosity of about 200 cps to about 1000 cps at 25 °C” is presumed inherent. Regarding claim 6, Bellotti et al. further disclose “wherein the urethane acrylate is an aromatic urethane acrylate, an aliphatic urethane acrylate, or a combination thereof (Table 1).” Regarding claim 8, Bellotti et al. further disclose “wherein the monomer is a monofunctional monomer, a difunctional monomer, a trifunctional monomer, a tetrafunctional monomer, or a combination thereof (Table 1).” Regarding claim 9, Bellotti et al. further disclose “comprising about 5% to about 15% by weight the photoinitiator (Table 2).” Regarding claim 10, Bellotti et al. further disclose “wherein the photoinitiator is 2,4,6-trimethylbenzoyldiphenyl phosphine oxide, 2- hydroxy-2-methyl -1-phenyl-1-propanone, 1-hydroxycyclohexyl phenyl ketone, or a combination thereof (paragraph 39).” Regarding claims 13 and 14, Bellotti et al. disclose all that is claimed, as in claim 1 above, including “applying the actinic radiation curable composition of claim 1 onto a surface of a substrate (paragraph 16)” and “curing the applied composition (paragraph 17).” Bellotti et al. fail to disclose a method of printing that includes applying ink on the cured composition. However, Examiner takes Official Notice that, at the time of the filing of the application, it was known to print radiation curable ink on outer surfaces and then cure the ink in order to provide readable information (such as text for type or model) or decorative effects on coated substrates. 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 the further step of applying an ink and then curing said ink to the cured substrate of Bellotti et al. in order to provide readable information such as a manufacturer or model information on the substrate. Since Applicant did not traverse that which was asserted as being common knowledge, that which was taken to be common knowledge is now considered to be admitted prior art. See MPEP §2144.03(c).
Regarding claim 18, Bellotti et al. disclose all that is claimed, as in claim 13 above, except “wherein the composition is applied by a flexographic process,” instead disclosing application with a digital printing machine (paragraph 63). However, Examiner takes Official Notice that, at the time of the filing of the invention, flexographic printing was a known alternative to digital printing machines. 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 a flexographic printing method instead of the digital printing method of Bellotti et al. because they were recognized in the art as being known for the same purpose. Regarding claim 19, Bellotti et al. further disclose “wherein the applied composition forms a film having a thickness of about 2 µm to about 25µm (paragraph 64). Regarding claim 22, Bellotti et al. further disclose “comprising about 40% to about 45% of a carboxylated acrylate (table 2: Examiner interprets 35 to be ‘about 40’).”
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bellotti et al. in view of Alfani et al. (US 20140216533). Regarding claims 15-17, Bellotti et al. disclose all that is claimed, as in claim 13 above, but fail to disclose the specifics of the surface of the substrate. Alfani et al. disclose using a die for making tiles wherein the surface of a mold is coated with plastics or materials such as PET in order to achieve desired surface characteristics (paragraph 5). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to coat the mold surface of Bellotti et al. with a plastic or PET in order to achieve desired surface characteristics.
Further regarding claim 17, Examiner notes that PET is “crystallizable.”
Allowable Subject Matter
Claims 11, 20, and 23 are allowed.
Response to Arguments
Applicant’s arguments filed 07/01/2025 have been fully considered but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853
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