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 .
Election/Restriction
CREQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-10 and 102-108, drawn to a primer composition.
Group II, claim(s) 11, drawn to a process of preparing an object for printing.
Group III, claim(s) 13, drawn to a method of preparing a cylindrical object.
Group IV, claim(s) 33, drawn to a method of decorating a cylindrical object.
Group V, claim(s) 35, drawn to a cylindrical object.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The claims lack unity of invention because, even though the inventions of the above groups require the technical feature of the primer composition, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the prior art cited below.
During a telephone conversation with Gareth M. Sampson on 5/29/26, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-10 and 102-108. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11, 13, 33 and 35 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 5 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation wherein the copolymer is of Formula (II), and the claim also recites wherein the copolymer is of Formula (III), which is the narrower statement of the same limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 8, and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Usui et al. (EP 1142918).
In ¶’s 11, 13 and 15, Usui et al. teach a primer comprising 40 to 99 parts by weight of polyolefin resin grafted with 1 to 60 parts by weight of ethylenic compound-unsaturated carboxylic acid copolymer, wherein the modified polyolefin resin composition may comprise additives such as pigment and inorganic filler.(See ¶ 23)
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1-7 and 108 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (JP 2018127570).
In the abstract, Hayashi et al. teach a coating composition comprising a polymer (A) with an unsaturated dibasic structural unit, exemplified by maleic anhydride, and a 6-18 alpha-olefin structural unit, resulting in the presently claimed amphiphilic copolymers, wherein the unsaturated dibasic structural unit comprises 35 to 65% and the olefin structural unit comprises 45-55% of the copolymer; the coating composition further comprising additives such as waxes.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1-9, 102, 103 and 105-108 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ron et al. (US 2020/0081364).
In ¶’s 92-96, Ron et al. teach a second primer comprising a second primer resin, such as copolymers of alkylene monomers and acrylic or methacrylic acid monomers, a hydrocarbon non-polar carrier liquid, and a solid polar compound, such as styrene maleic anhydride copolymers, and up to 1 wt% solids of colorant/pigment.
The second primer may include a polyethylene wax. (See ¶ 112).
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
Claim(s) 1-9, 102, 103 and 105-108 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Malhotra et al. (USPN 5,908,723).
In Col. 8, line 63 to Col. 9, line 35, Malhotra et al. teach a coating comprising a binder polymer exemplified by alkylene-maleic anhydride copolymers, such as ethylene-maleic anhydride copolymer #2308.
The coating is taught to also comprise a pigment or filler, such as calcium carbonate or silica in an amount of from about 1 part by weight to about 50 parts by weight, and a solvent such as toluene. (Col. 7, lines 2-7 and Col. 14, lines 10-16).
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
Claim(s) 1-9, 102, 103 and 105-108 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yano et al. (US 2015/0315400).
In ¶’s 10, Yano et al. teach a primer including an acid-modified polyolefin resin and a medium, wherein the acid-modified polyolefin resin is a copolymer including an olefin unit and an unsaturated carboxylic acid unit as copolymerization components; wherein the content of the unsaturated carboxylic acid unit is 0.1 to 10 parts by mass in relation to 100 parts by mass of the total amount of the olefin unit; and wherein examples of the usable unsaturated carboxylic acid unit include maleic anhydride. (see ¶ 32).
In ¶ 54, Yano et al. teach specific examples of the medium to include hydrocarbon compounds such as hexane, heptane and pentane.
In ¶’s 80 and 82, Yano et al. teach that the acid-modified polyolefin resin may be dispersed in aqueous medium with nonvolatile dispersing aids such as modified waxes.
In ¶ 98, Yano et al. teach that a pigment may be added to the primer.
In ¶119, Yano et al. teach that inorganic particles such as calcium carbonate and silica may be added to the primer.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met
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) 10 and 104 is/are rejected under 35 U.S.C. 103 as being unpatentable over Usui et al., Ron et al. or Yano et al. in view of Dietze et al. (US 2017/0226382) or Schuemann et al. (DE 102011077510).
Usui et al., Ron et al. or Yano et al., above, differ from the claimed invention in that the optical brightener is not disclosed. However, it is known in the art to add optical brighteners to primer compositions, for the purpose of identification of a primed substrate. Without optical identification, it is often difficult to distinguish a primed surface from a non-primed surface, since the application rate of a primer is usually very thin and thus optically barely visible, such as taught by Dietze et al. (¶ 77) or Schuemann et al. (¶ 46).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to include the claimed amounts of optical brighteners to the primer compositions of Usui et al., Ron et al. or Yano et al., in order to obtain the advantages taught by Dietze et al. or Schuemann et al., motivated by a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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