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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Please see the newly cited Umebayashi, who discloses a UV curable inkjet composition comprising both monofunctional (meth)acrylates and N-vinyl amides.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hall et al. (WO 2016/179213 A1).
The absence of a claim rejection under this heading should not be viewed as an admission of allowability over the cited prior art.
Regarding claim 1:
Budden et al. disclose a UV curable inkjet composition comprising:
at least 20 wt%, by weight of the composition, of one or more monofunctional acrylate monomers (paragraphs 35-38);
between 2.5 and 7 wt%, by weight of the composition, of one or more photoinitiators selected from the group consisting of acylphosphine oxide photoinitiators, thioxanthone photoinitiators, and combinations thereof (paragraphs 45-50 & TABLES 1-3);
one or more acrylated amine(s) (paragraphs 29-34); and
one or more N-vinyl amides selected from the group consisting of N-vinylcaprolactam, N-vinylpyrollidone, diacetone acerylamide, N-vinyl carbazole, N-acryloxyoxyethylcyclohexanediicarboximide, N-vinyl imidazole, N-vinyl-N-methylacetamide, and acryloyl morpholine (paragraph 43).
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1, 10, 13, 21-23, 27, 32-36, 38-39, and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chopra et al. (US 10577515 B1) in view of Umebayashi (US 2018/0282559 A1).
Regarding claim 1:
Chopra et al. disclose a UV curable inkjet composition comprising:
at least 20 wt%, by weight of the composition, of one or more monofunctional acrylate monomers (col. 3, lines 18-33 & col. 5, lines 13-38);
between 2.5 and 7 wt%, by weight of the composition, of one or more photoinitiators selected from the group consisting of acylphosphine oxide photoinitiators, thioxanthone photoinitiators, and combinations thereof (col. 9, line 18 – col. 10, line 61); and
one or more acrylated amine(s) (col. 8, line 12 – col. 9, line 16).
Chopra et al. do not expressly disclose the incorporation of one or more N-vinyl amides.
However, Umebayashi discloses a UV curable inkjet composition in which N-vinyl amides and N-(meth)acryloylamines may be used in the same manner as monofunctional (meth)acrylates (paragraph 254), the N-vinyl amides being selected from the group consisting of N-vinylcaprolactam, N-vinylpyrollidone, diacetone acerylamide, N-vinyl carbazole, N-acryloxyoxyethylcyclohexanediicarboximide, N-vinyl imidazole, N-vinyl-N-methylacetamide, and acryloyl morpholine (paragraph 254).
Therefore, at the time of filing, it would have been obvious to a person of ordinary skill in the art to incorporate N-vinyl amides into Chopra et al.’s UV-curable inkjet composition, as suggested by Umebayashi.
Regarding claim 10:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the photoinitiator blend comprises one or more type II photoinitiators (at least the thioxanthones: col. 9, lines 18-67).
Regarding claim 13:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the composition comprises greater than or equal to 4 wt% of any blend of alkanolamine derived acrylated amines (col. 9, lines 8-16).
Regarding claim 21:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the blend of monofunctional monomers is included in at least 30 wt% by weight of the composition (col. 3, lines 18-33 & col. 5, lines 13-38).
Regarding claim 22:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that a blend of multifunctional monomers is included in at most 40% by weight of the composition (e.g. col. 4, lines 9-17).
Regarding claim 23:
Chopra et al.’s inkjet composition comprises all the limitations of claim 22, and Chopra et al. also disclose that the multifunctional monomer comprises a polyester acrylate and/or an epoxy acrylate wherein the epoxy acrylate (col. 6, lines 1-18).
Regarding claim 27:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the composition comprises one or more colorants (col. 11, lines 14-19).
Regarding claim 32:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the composition can be cured by exposure to two or more separate UV irradiations (“passes of UV LED light source”: col. 12, lines 45-54), where the sum total of all the separate UV exposures is greater than or equal to 100 mJ/cm2 (col. 17, lines 66-67).
Regarding claim 33:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the composition is suitable for application by UV-curable inkjet printing (col. 12, lines 20-44).
Regarding claim 34:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose a process of printing and curing the composition onto a substrate and curing (col. 12, lines 20-44).
Regarding claim 35:
Chopra et al.’s inkjet composition comprises all the limitations of claim 34, and Chopra et al. also disclose that the application method is inkjet printing (col. 12, lines 32-40).
Regarding claim 36:
Chopra et al.’s inkjet composition comprises all the limitations of claim 34, and Chopra et al. also disclose that curing is performed by exposure to two or more separate UV irradiations (“passes of a UV LED light source”: col. 12, lines 45-54).
Regarding claim 38:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose a method of providing a printed article, comprising inkjet printing the inkjet composition onto a substrate and curing the composition by exposure to two or more separate UV irradiations (col. 12, lines 20-44), wherein the sum total of all the separate UV exposures is greater than 100 mJ/cm2 (col. 17, lines 66-67).
Regarding claim 39:
Chopra et al.’s modified method comprises all the limitations of claim 38, and also that the total dose from all the UV expsoures is less than 1000 mJ/cm2 (e.g. 576 mJ/cm2: col. 17, lines 66-67).
Regarding claim 47:
Chopra et al.’s inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose a printed article comprising the composition according to claim 1 (col. 12, lines 20-44).
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as obvious over Chopra et al. as modified by Umebayashi, as applied to claim 1 above, and further in view of Poelmans et al. (US 2023/0151222 A1).
Regarding claims 12-15:
Chopra et al.’s modified inkjet composition comprises all the limitations of claim 1, and Chopra et al. also disclose that the composition comprises greater than or equal to 4 wt% of any blend of acrylated amines (col. 9, lines 8-16).
Chopra et al.’s modified inkjet composition does not expressly comprise acrylated amines are derived in a particular manner.
In these inkjet composition claims, the determination of patentability is based on the inkjet composition itself. The patentability of the inkjet composition does not depend on its method of production.
Regardless, Poelmans et al. disclose a method of deriving acrylated amines suitable for UV curable coatings and inks (paragraph 1), the acrylated amines being derived using a Michael reaction (paragraph 97) of ethanolamine or diethanolamine (as the B2 amino compound: paragraphs 72-74, 78) with a multifunctional acrylate selected from the group of hexanediol diacrylate, 3-methylpentanediol diacrylate, ethoxylated trimethylolpropane triacrylate, glycerol propoxylate triacrylate, or combinations thereof (as the (meth)acrylated compound A: paragraphs 40-41, 44).
Therefore, at the time of filing, it would have been at least obvious to a person of ordinary skill in the art to derive Chopra et al.’s acrylated amines using the teachings of Poelmans et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hall et al. (US 2019/0085188 A1) disclose a UV curable inkjet composition comprising more than 20 wt% of monofunctional acrylate monomers (paragraphs 37-40), between 2.5-7 wt% of photoinitiators selected from the group of acylphosphine oxide and thioxanthone (paragraph 47-52), one or more acrylated amines (paragraphs 31-36), and one or more N-vinyl amides (paragraph 45).
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.
Communication with the USPTO
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shelby L Fidler whose telephone number is (571)272-8455. The examiner can normally be reached Monday-Friday, 8:30am - 5pm EST.
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, Douglas Rodriguez can be reached on (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHELBY L. FIDLER
Primary Examiner
Art Unit 2853
/SHELBY L FIDLER/Primary Examiner, Art Unit 2853