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 .
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, 8-11, 13, 14, 18-20, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bellotti et al. (US2017/0334098). Regarding claim 1, 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), about 5% to about 20% of a monomer (Ebecryl 350), and 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).” Bellotti et al. fail to specifically disclose in a single embodiment that the amount of the photoinitiator is “at least 8%,” but do teach that the amount of photoinitiator is preferably from 3 to 10% (paragraph 15). 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 at least 8% photoinitiator because Bellotti et al. explicitly teach that using between 3 and 10% is a preferred amount of photoinitiator. Upon modifying the amount of photoinitiator from 6% to 8%, the effective amounts of the other components would be marginally changed, and would not cause their amounts to fall out of the recited ranges. For example, even if all 2% were removed from the carboxylated acrylate, the new amount (33%) could still be interpreted to be “about 35%” as recited. 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 claim 11, Bellotti et al. disclose “an actinic radiation curable composition (title, Table 2, example 4) comprising, by weight: about 35% to about 55% of a carboxylated acrylate (Ebecryl 770), about 15% to about 45% of a urethane acrylate (Ebecryl 8602), about 5% to no more than 10% of a monomer (Ebecryl 350), an adhesion promoter (paragraph 50), and about 5% to about 15% of a photoinitiator (Esacure), wherein the carboxylated acrylate has an acid value of about 100 mg KOH/g to about 300 mg KOH/g (Ebecryl 770).” Bellotti et al. fail to disclose the amount of the adhesion promoter is “about 2% to about 10%.” 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, the amount of adhesion promoter affects how well the composition adheres to the substrate. Furthermore, Bellotti et al. describe adhesion promoters as being known in the art, and one having ordinary skill in the art would know the amount of adhesion promoter to be a minor component compared to the major components. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to set the amount of adhesion promoter to from about 2% to about 10% to determine the optimum or workable amount for desired adhesion to the substrate. Regarding the remainder of the claim, 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 composition of Bellotti et al., as modified, is at least substantially identical to that claimed, the recited properties of “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.” Regarding claims 13, 14, and 20, Bellotti et al. disclose all that is claimed, as in claims 1 and 11 above, including “applying the actinic radiation curable composition of claim 1 (or claim 11) 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’).” Regarding claim 23, Bellotti et al. further disclose “comprising about 40% to about 55% 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.”
Response to Arguments
Applicant’s arguments filed 06/12/2025 have been fully considered but are moot in view of the new grounds of rejection. To the extent that Applicant’s arguments are applicable to the instant rejection, they are not persuasive.
Applicant’s argument that Bellotti et al. disclose more than 10% monomer is not persuasive. Applicant argues that when adding the monomers together, Bellotti et al. actually teach “the monomer is present at 24% by weight.” However, this limitation is not in the claims. The claims only require a specific amount of “a monomer,” not that the total amount of ALL monomers be within a specific range.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853
Prosecution Insights