DETAILED ACTION
Response to Amendments
In response to the amendment received on 09/24/2025:
• Claims 1 and 3-20 are currently pending. Claim 2 is canceled. Claims 11-15 are withdrawn for being directed to a non-elected invention(s). The objection to claim 9 is withdrawn in light of the amendments to the claims. The rejection of claims 1-10 and 16-20 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
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 Interpretation
For the purposes of examination, the Examiner is interpreting the term “about” as used throughout the claims to refer to values within +/- 5% of the indicated value, as disclosed in Applicant’s specification at para. 021.
For the purposes of examination, the Examiner is interpreting any ink that contains metal driers in an amount of 1 wt% or less as being “substantially free” of metal driers. Such an interpretation is supported in the prior art, see Contractor et al. (US-20190382602-A1) at para. 0070.
Claim Rejections - 35 USC § 112(a)
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, 3-10, and 16-20 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.
Claim 1 is amended to recite “wherein the radiation curable intaglio ink is substantially free from metal driers”, which is not supported by the original disclosure. There is no mention in the original disclosure at all of a metal drier. “Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.” See MPEP § 2173.05(i). The examples pointed to by Applicants (see Applicant’s Remarks at pg. 6), which do not contain a metal drier, are not sufficient to provide broad support for the claimed limitation. Moreover, the phrase “substantially free” suggests a small portion of metal driers may still be present in the ink, which the original disclosure further provides no support for. Consequently, a new matter issue arises. Claims 3-10 and 16-20 are also rejected by virtue of their dependency on claim 1. To correct, the Examiner suggests deleting the limitation “wherein the radiation curable intaglio ink is substantially free from metal driers.”
The Examiner notes that the claims are examined with the amendments as currently presented, regardless of the new matter issues. See MPEP § 2163.06(I).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 4, 6-9, 16, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Magnin et al. (US-20100181753-A1) (hereinafter referred to as “Magnin”) in view of Amao et al. (US-20150210876-A1) (hereinafter referred to as “Amao”), and in the alternative, further in view of Fukuura.
Regarding claims 1 and 16, Magnin teaches a radiation curable intaglio ink (see Magnin at para. 0024, teaching an intaglio printing ink; also see Magnin at para. 0024 and 0031, teaching the ink as containing a UV-curable component, thus making the ink “radiation curable”) comprising:
a. from about 10 wt-% to about 60 wt-% of one or more radiation curable compounds, wherein at least one of said one or more radiation curable compounds is a fatty acid polyester (meth)acrylate oligomer (acrylate oligomer, regarding claim 16) (see Magnin at para. 0038, teaching the UV-curable component may include polyester acrylates; also see Magnin at para. 0050 and Table 1, teaching Ebecryl 450 as a suitable polyester acrylate; Ebecryl 450 is a fatty acid polyester acrylate oligomer, as disclosed by Applicants at para. 035 and Table 1A of their specification; also see Magnin at para. 0052, teaching the UV-curable component to range from 2 to 15 wt% in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
b. from about 5 wt-% to about 20 wt-% of one or more photoinitiators (see Magnin at para. 0040, teaching the ink may include a photoinitiator in an amount of up to 5 wt%; this range overlaps the claimed range (claim 1 claims a range of “about” 5 wt%, and thus, the “about” necessarily allows for values that overlap the range taught by Magnin, see the claim interpretation section above), establishing a prima facie case of obviousness, see MPEP § 2144.05);
c. an alkylarene sulfonic acid surfactant (see Magnin at para. 0086-0087, teaching an example ink containing sodium dodecylbenzene sulfonate as a surfactant; thus, Magnin reasonably suggests embodiments in which their ink contains sodium dodecylbenzene sulfonate as a surfactant, as exemplified in their examples; sodium dodecylbenzene sulfonate is an alkylarene sulfonic acid surfactant).
d. from about 10 wt-% to about 55 wt-% of one or more fillers or extenders (see Magnin at para. 0059-0060, teaching the ink may contain fillers in an amount ranging from 5 to 50 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05), and
• wherein the radiation curable intaglio ink is substantially free from metal driers (see Magnin at para. 0049, teaching the content of drier in the ink to be present in amounts of up to 5%, preferably 0.5 to 5 wt%; this range encompasses values that fall within the term “substantially free,” see the claim interpretation section above; for example, a metal drier content of 0.5 wt% falls within the range of “1 wt% or less” for “substantially free,” as set forth in the interpretation earlier above).
While Magnin teaches the ink outlined above, Magnin fails to explicitly teach the ink as (1.) containing from about 5 wt-% to about 12 wt-% of the alkylarene sulfonic acid surfactant and (2.) having a viscosity between about 10 and about 50 Pas at 40 °C and 200 s-1.
Regarding (1.), Amao teaches a curable composition which may be used as an ink (see Amao at para. 0040). Amao further teaches the curable composition may contain a surfactant, including an anionic surfactant, and that the content may be appropriately adjusted so that an appropriate surface tension is obtained, in consideration of applications of an ink, or the like (see Amao at para. 0223-0224). Moreover, Amao teaches the content of the surfactant to preferably range from 1 to 10% by mass, and that the ink may be used in intaglio printing (see Amao at para. 0225 and 0259).
In this case, a preferable content range of 1 to 10% by mass for an anionic surfactant in a curable intaglio ink is known in the art (as exemplified by Amao at para. 0255 and 0259), and thus the use of such an amount in the ink of Magnin would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the sodium dodecylbenzene sulfonate surfactant (which is an anionic surfactant) in the ink of Magnin to range from 1 to 10% by mass, as such a content range is taught as “preferable” in a similar composition in the art (see Amao at para. 0225). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Regarding (2.), Magnin teaches their ink to have a viscosity of 1 to 40 Pa-s at 40 °C at a shear rate of 1000 s-1 (see Magnin at para. 0062). This temperature of 40 °C is identical to the claimed temperature; however, the shear rates are different: 200 s-1 as claimed versus 1000 s-1 as taught by Magnin (see Magnin at para. 0062).
The viscosity of a composition at a specific shear rate is notably a property of that composition. In general, when the reference discloses all of the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference necessarily or inherently possesses properties which anticipate or render obvious the claimed invention, the Examiner has a basis for shifting the burden of proof to the Applicant. See In re Fitzgerald. See MPEP § 2112-2112.02. In other words, burden of proof shifts to Applicants to demonstrate the ink of modified Magnin as not meeting the claimed viscosity range at the claimed temperature value of 40 °C and shear rate value of 200 s-1.
In the alternative, Fukuura teaches an ultraviolet curable intaglio printing ink (see Fukuura at para. 0024). Moreover, Fukuura teaches the viscosity of the ultraviolet curable composition at 30 °C to range from 0.5 to 4.0 Pa-s, and that when the viscosity is less than 0.5 Pa-s, the ink transfer between the rollers becomes defective, and that when the viscosity is greater than 4.0 Pa-s, wiping residue is likely to occur on the plate surface, leading to printed matter contamination (see Fukuura at para. 0044).
Since Fukuura teaches that the viscosity of an intaglio printing ink impacts effective ink transfer between rollers as well as printed matter contamination (see Fukuura at para. 0044), the viscosity of an intaglio printing ink is a result effective variable. For example, one of ordinary skill would increase the viscosity to improve ink transfer between the rollers, but not so high so that printed matter contamination occurs. Accordingly, one of ordinary skill in the art would have adjusted, by routine experimentation, the viscosity of the ink of modified Magnin at a shear rate of 200 s-1 to fall within the claimed range in order to optimize effective ink transfer between rollers as well as to optimize a reduction in printed matter contamination. See MPEP § 2144.05 (“Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation").
Regarding claims 3, 4, and 17, the Ebecryl 450 taught by Magnin is a fatty acid polyester hexaacrylate oligomer containing saturated fatty acid residues having 14 to 20 carbon atoms (see Magnin at para. 0050 and Table 1; also see Applicant’s specification at Table 1A at pg. 30, showing Ebecryl 450 as containing stearic/palmitic acid residues).
Regarding claim 6, modified Magnin fails to explicitly teach one or more another radiation curable compounds of the one or more radiation curable compounds as being selected from the group consisting of urethane (meth)acrylate oligomers, epoxy (meth)acrylate oligomers and mixtures thereof.
However, Magnin teaches their UV-curable component can be selected from the group of acrylate monomers, oligomers or polymers, such as…polyester acrylates, urethane acrylates… as well as mixtures thereof (emphasis added; see Magnin at para. 0038).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use both a urethane acrylate and polyester acrylate (Ebecryl 450) in combination in the ink of Magnin, as Magnin teaches both as suitable curable materials and further that mixtures may be used in their ink (see Magnin at para. 0038). Combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Regarding claim 7, sodium dodecylbenzene sulfonate taught by Magnin has 12 carbon atoms in the alkyl group (dodecyl = 12 carbon atoms) (see Magnin at para. 0086-0087).
Regarding claim 8 and 19, see Magnin at para. 0043, teaching the ink may contain a carnauba wax in an amount ranging from 1 to 10 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 9, see Magnin at para. 0045, teaching the ink may include a pigment.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Magnin in view of Amao, and alternatively Fukuura, as applied to claim 1 above, and further in view of Leonard et al. (US-20070179211-A1) (hereinafter referred to as “Leonard”).
Regarding claim 5, modified Magnin fails to explicitly teach the one or more radiation curable compounds as further containing (meth)acrylate monomer reactive diluents selected from the group consisting of mono(meth)acrylate monomers, di(meth)acrylate monomers, tri(meth)acrylate monomers, tetra(meth)acrylate monomers and mixtures thereof.
However, Leonard teaches a similar intaglio ink as Magnin (see Leonard at para. 0020). Leonard further teaches that because of the high viscosity of most oligomers, diluents are often required to reduce the overall viscosity of the energy curing ink or coating formulation, so as to assist in handling and application, and that suitable diluents include multifunctional acrylates (see Lenoard at para. 0066).
Magnin teaches the UV-curable material can be selected from acrylate monomers, oligomers, or polymers…as well as mixtures thereof (emphasis added; see Magnin at para. 0038). Magnin further teaches TMPTA (trimethylolpropane triacrylate) as a suitable acrylate monomer (see Magnin at para. 0050 at Table 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include a multifunctional acrylate, like TMPTA, as a reactive diluent in combination with the polyester acrylate (Ebecryl 450) in the ink of modified Magnin. One of ordinary skill in the art would have been motivated to do so in order to reduce the overall viscosity of the energy curing ink or coating formulation, so as to assist in handling and application (see Leonard at para. 0066). Moreover, combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Magnin in view of Amao, and alternatively Fukuura, as applied to claim 1 above, and further in view of Iftime et al. (US-20100086701-A1) (hereinafter referred to as “Iftime”).
Regarding claims 10 and 20, modified Magnin fails to explicitly teach the presence of a machine-readable material in their ink, wherein the one or more machine readable materials are selected from the group consisting of magnetic materials, luminescent materials, electrically conductive materials, infrared-absorbing materials and mixtures thereof.
However, in general, it is well-known that fluorescent components may be used in curable ink compositions as a security feature, i.e., as a means for detecting the authenticity of an object (see Iftime at para. 0044 and 0050).
Magnin teaches their ink may contain special additives and/or markers for security or forensic purposes (see Magnin at para. 0045).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add a fluorescent component/marker (i.e., luminescent material) to the ink of Magnin, as fluorescent components are one of the most well-known markers for curable security inks (see Iftime at para. 0044 and 0050). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Magnin in view of Amao, and alternatively Fukuura, as applied to claim 1 above, and further in view of Osumi et al. (US-6280513-B1) (hereinafter referred to as “Osumi”).
Regarding claim 18, while modified Magnin teaches the ink according to claim 1 outlined above, modified Magnin fails to explicitly teach the alkylarene sulfonic acid surfactant as being an ammonium salt or alkyl substituted ammonium salt of (C4- C14-alkyl)-arene sulfonic acid.
However, Osumi teaches an ink composition (see Osumi at col. 1, lines 13-15). Osumi further teaches the ink may include dodecylbenzene sulfonate (sodium salt, potassium salt, ammonium salt, or the like) as a surfactant (see Osumi at col. 12, lines 22-27).
In this case, both a sodium and ammonium salt of dodecylbenzene sulfonate are functional equivalents, i.e., both are suitable surfactants for use in an ink composition (see Osumi at col. 12, lines 22-27).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the sodium salt dodecylbenzene sulfonate surfactant of modified Magnin with an ammonium salt dodecylbenzene sulfonate surfactant like that disclosed by Osumi, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Dodecylbenzene sulfonate is a C12 alkyl-arene sulfonic acid surfactant (dodecyl = 12 carbon atoms).
Response to Arguments
Applicant's arguments filed 09/24/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, the amendments to the claims overcome the previous rejection over Leonard (US-20070179211-A1) in view of Lefebvre (US-20160009075-A1); such references are no longer relied upon in the current grounds of rejection. Thus, Applicants arguments surrounding Leonard and Lefebvre (see Applicant’s Remarks at pg. 8-10) are moot.
Next, Applicants argue Magnin teaches oxidatively-curing inks, which are different from UV-curing inks, and that alkyds bearing unsaturated fatty-acid residues will behave/react differently between the inks (see Applicant’s Remarks at pg. 11). Applicants further argue their amended limitation of “substantially free from metal driers” distinguishes from Magnin, and that Magnin fails to teach the claimed alkyds (see Applicant’s Remarks at pg. 11).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The claims do not necessitate the presence of an alkyd resin like that claimed. The use of the term “and/or” indicates the alkyd resin may be present OR an alkylarene sulfonic acid surfactant may be present. Magnin teaches the presence of the latter, as outlined in the claim 1 rejection above. Thus, Applicants arguments surrounding the chemical reactivity of the alkyd resin in different types of inks does not relate to the current rejection as presented, given that Magnin does not teach an alkyd surfactant.
Moreover, as demonstrated in the claim 1 rejection above, Magnin teaches an ink “substantially free” from metal driers, given that Magnin teaches the metal drier concentration may include values less than 1 wt% (e.g., 0.5 wt%) (see Magnin at para. 0049; also see the claim interpretation section above, setting forth “substantially free” as being interpreted to include values of 1 wt% or less). Thus, Magnin teaches the claimed ink, regardless of whether the ink is oxidatively-curing or not.
Lastly, Magnin teaches their ink may include a UV-curing component; thus, the ink necessarily is “radiation-curable” as claimed, regardless of whether the ink is predominantly oxidatively-curing.
Next, Applicants argue Amao discloses an oxidatively-curing ink, as well as the inclusion of “macromolecular hydrophilic surface active…substances being the salts of carboxylic or sulfonic acid groups” (see Applicant’s Remarks at pg. 12). Applicants further argue Amao states a molecular weight for these surfactants of 1,000 to 150,000 Da, which is different from typical alkylarene sulfonic acids that have molecular weights typically far below 1,000 Da (see Applicant’s Remarks at pg. 12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Amao teaches a radiation-curable composition, and not an oxidatively-curing composition (see Amao at para. 0032). Further, Amao does not contain the cited quote of “macromolecular hydrophilic surface active…substances being the salts of carboxylic or sulfonic acid groups.” It is believed Applicants may have been referring to an alternative reference. Amao teaches that “as a surfactant, any of an anionic surfactant, a cationic surfactant, an amphoteric surfactant, a nonionic surfactant, and a betaine-based surfactant can be used” (see Amao at para. 0223). Thus, given that Amao allows for anionic surfactants in their ink, Amao does not necessarily teach away from the claimed surfactant.
Lastly, Applicants argue their ink shows good shelf-stability, good detergeability, and resistance to crumpling after printing and curing (see Applicant’s Remarks at pg. 8).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A showing of unexpected results must be based on evidence, not argument
or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997).
See MPEP § 2145. Applicants merely state the unexpected results of their ink as a conclusory statement; however, no data or evidence is provided to support this statement. A mere conclusion that Applicant’s claimed ink has “good shelf-stability, good detergeability, and resistance to crumpling after printing and curing” is not enough to show nonobviousness. See MPEP § 716.02.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a potential amendment to overcome the current grounds of rejection. It is noted that this amendment is suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendment won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if such amendment is added (i.e., allowability is NOT guaranteed following the incorporation of such amendment). Lastly, Applicants may use all or none of such suggestion – it is merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendment further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion:
“…and conjugated fatty acid sunflower oil
…40°C and 200 s-1
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Contractor et al. (US-20190382602-A1) teach a radiation curable ink composition (see Contractor at Abstract).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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, Amber R Orlando can be reached on 571-270-3149. 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.
/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731