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 filed 5/22/2026 have been fully considered, and will be addressed individually.
Regarding the rejection of claims 52-58 and 65-67 under 35 USC 112(b)
Examiner appreciates Applicant’s responsiveness in clarifying various issues. However some issues remain. Specifically, the claim term “stray light viscosity change” still fails to be sufficiently defined. Examiner acknowledges paragraph 108 of the instant PGPub. However, a mere statement that a POSITA would understand the scope has no merit without supportive commensurate evidence. The instant disclosure remains insufficient to clarify the “change” that is identified by the claimed “stray light viscosity change.” Please see the rejection(s) under 35 USC 112(b) below.
Regarding the rejection of claims 49-56 and 58-66 under 35 USC 103
Applicant contends that Poelmans et al. “do not teach or suggest: (i) low photointiator loadings suitable for inkjet ink printing; (ii) resistance to viscosity increases under ambient or stray light exposure; or (iii) compatibility with lose-dose, multi-pass UV-LED curing processes” (page 3 of remarks). However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Chopra et al. and/or other cited prior art identifies those claimed features.
Applicant also contends that neither Chopra et al. nor Poelmans et al. recognize increase in stray-light induced viscosity as a problem in inkjet inks. Applicant feels that, because of this, a person of ordinary skill in the art would not have been motivated to utilized Michael-derived alkonalamine adducts over conventional amine synergists (page 4 of remarks). However, Poelmans et al. have already identified such amine synergists as being especially useful for UV curable coatings and inks. Especially because Chopra et al. do not identify the method by which the amine synergists are derived, a person of ordinary skill in the art would have been fully motivated to look to the teachings of Poelmans et al.
Applicant also contends that Chopra et al. teaches away from the claimed photoinitiator content because many of Chopra et al.’s example inks utilize a photoinitiator content higher than that claimed (page 4 of remarks). This argument is not based in fact. Chopra et al. do, in fact, disclose example inks in which the total amount of photoinitiators is less than or equal to 6% w/w (i.e. Ex. 9 and 11). Moreover, Examiner notes that the claimed limitation specifically requires that “any blend of photoinitiators” is less than or equal to 6% w/w. To this end, please note that Chopra et al. disclose various example inks that have a blend of photoinitiators that amounts to less than or equal to the claimed 6%. For example, each of example inks 4, 9, 11, 12, 14-20, and 24 comprise the blend of Igracure 819 and Darocur ITX photoinitiators within the claimed range. Even assuming, arguendo, that Chopra et al.’s example inks fail to disclose a photoinitiator blend within the claimed range, Chopra et al.’s disclosure as a whole certainly discloses ranges for the various photoinitiators that fall within the claimed range (see col. 9, line 18 – col. 10, line 61). Contrary to Applicant’s argument, at no point does Chopra et al. teach away from the claimed photoinitiator blend content.
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.
Claims 49-68 are 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.
In view of the questions of scope, Examiner has applied prior art rejections as best understood.
Regarding claim 49:
This claim is directed towards a UV-curable inkjet composition. The newly amended subject matter requires that this inkjet composition “exhibits reduced stray light viscosity …” as measured in a particular manner. However, the scope of this claim is unclear because the claim fails to provide a reference from which the stray light viscosity is “reduced.” Specifically, what is the point of reference from which the stray light viscosity is “reduced”? Is the stray light viscosity reduced in comparison to a different composition’s stray light viscosity? Is the stray light viscosity reduced in comparison to the stray light viscosity of the same composition in a different setting (what setting)? Because the claims fail to provide a point of reference, an artisan would not be able to determine whether a given composition’s stray light viscosity is “reduced,” so as to avoid infringement over the claimed composition.
Further regarding claim 57:
This claim recites the limitation “the stray having the stray light viscosity change …” appears incomplete. Examiner assumes this limitation should read “the stray light viscosity change is measured after exposure …” (as in similar claim 67).
Further regarding claims 57 and 67 (as best understood):
These claims set forth “stray light viscosity change” ranges for each of a plurality of process inks. However, the meaning of the term “stray light viscosity change” is not clear in light of the specification. It seems clear that the “stray light viscosity” indicates the viscosity of the composition after exposure to ambient light as taught. The claimed term “stray light viscosity change,” then, would suggest changes to the stray light viscosity. According to the underlying disclosure, Applicant performs four viscosity measurements over the course of testing, three of which are performed after exposure to the ambient light for 48 hours (see page 20 of original written description). However, the disclosure fails to connect the testing process o the resulting “stray light viscosity changes” in a manner that indicates which measurements are used to determine the claimed stray light viscosity changes. For example, the process cyan ink is claimed to have a “stray light viscosity change of ≤ 10%” (per claim 67). However, neither the claims nor the underlying disclosure teach or suggest which measurements are used to determine this change in stray light viscosity. Is the “stray light viscosity change” indicative of the viscosity change between one week and two weeks? Is it indicative of the viscosity change between 48 hours and two weeks?
Moreover, even though the term “stray light viscosity change” strongly suggests changes to values of the stray light viscosity, Examiner also recognizes that Applicant may have intended to instead identify the differences in viscosity between the inkjet composition exposed to stray light, and the viscosity of an equal composition unexposed to stray light, especially because the sample stored in the dark is used “as a reference point.” Even in this case, however, it remains unclear which viscosity measurements are compared to each other to determine the ≤ 10% change in viscosity.
In light of the above, an artisan would not be able to identify whether a particular inkjet composition infringes on the claimed invention.
Regarding claims 50-66:
These claims fail to remedy the deficiencies of claim 49, and therefore also fail to meet the requirements of this statute.
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) 49-56 and 58-66 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chopra et al. (US 10577515 B1) in view of Poelmans et al. (US 2023/0151222 A1).
Regarding claim 49:
Chopra et al. disclose a UV curable inkjet composition comprising:
≥ 20 wt% of one or more monofunctional acrylate monomers (col. 3, lines 18-33 & col. 5, lines 13-38);
≤ 6 wt% of any blend of photoinitiators (col. 9, line 18 – col. 10, line 61); and
one or more acrylated amine(s) (col. 8, line 12 – col. 9, line 16),
wherein the composition exhibits reduced stray light viscosity as measured using a Brookfield DVIII Viscometer at 50°C and Spindle 18 at 100 rpm (Chopra et al.’s inks exhibits stray light viscosities that are reduced as compared to e.g. an equivalent inkjet composition with much higher photoinitiator blend contents).
Chopra et al. do not expressly disclose that the one or more acrylated amines is derived from the Micahel reaction of one or more multifunctional acrylate monomer(s) or oligomer(s) with one or more alkanolamines.
However, 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 one or more multifunctional acrylate monomer(s) or oligomer(s) (as compound A: paragraphs 38-44) with one or more alkanolamines (as compounds B2: paragraphs 72-74, 78).
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, used in a UV curable ink, according to the teachings of Poelmans et al.
Regarding claim 50:
Chopra et al.’s modified composition comprises all the limitations of claim 49, and Chopra et al. also disclose that
the composition comprises 2.5 - 6 wt% of any blend of photoinitiators (col. 9, lines 51-59 and/or col. 10, lines 19-27 and/or col. 10, lines 47-61);
the photoinitiator blend comprises an acylphosphine oxide photoinitiator, a thioxanthone photoinitiator, or a combination thereof (col. 9, line 18 – col. 10, line 61);
the photoinitiator blend comprises an acylphosphine oxide photoinitiator (col. 10, lines 29-46); and/or
the photoinitiator blend comprises a thioxanthone photoinitiator (col. 9, lines 18-67).
Regarding claim 51:
Chopra et al.’s modified composition comprises all the limitations of claim 50, and Chopra et al. also disclose that
the thioxanthone photoinitiator is selected from the group consisting of isopropyl thioxanthone, diethylthioxanthone (DETX), chloropropylthioxanthone, chlorothioxanthone, any multifunctional thioxanthone, polymerizable thioxanthone, or polymeric thioxanthone, and combinations thereof (col. 9, lines 40-50).
Regarding claim 52:
Chopra et al.’s modified composition comprises all the limitations of claim 51, and Chopra et al. also disclose that the photoinitiator blend comprises one or more type II photoinitiators (col. 9, lines 40-50).
Regarding claim 53:
Chopra et al.’s modified composition comprises all the limitations of claim 52, and Chopra et al. also disclose that the acrylated amine is derived from the Michael reaction of diethanolamine (paragraphs 72-74, 78) with any blend of difunctional, trifunctional, tetrafunctional, or higher functional acrylate monomers or oligomers (paragraphs 40-41, 44).
Regarding claim 54:
Chopra et al.’s modified composition comprises all the limitations of claim 53, and Chopra et al. also disclose that the acrylated amine is derived from the reaction of ethanolamine (paragraph 72, 78) with any blend of polyethylene glycol diacrylates and polypropylene glycol diacrylates (paragraph 43).
Regarding claim 55:
Chopra et al.’s modified composition comprises all the limitations of claim 54, and Chopra et al. also disclose that the composition is an inkjet ink composition (col. 2, lines 64-65).
Regarding claim 56:
Chopra et al.’s modified composition comprises all the limitations of claim 55, and Chopra et al. also disclose that the composition further comprises one or more colorants (col. 11, lines 14-19).
Regarding claim 58:
Chopra et al.’s modified composition comprises all the limitations of claim 55, 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 59:
Chopra et al.’s modified composition comprises all the limitations of claim 49, and Chopra et al. also disclose a method of processing and curing an ink composition, the process comprising the step of applying the composition onto a substrate and curing the composition by exposure to two or more separate UV irradiations (col. 12, lines 20-44) and/or wherein the sum total of all the separate UV exposures is ≥ 100 mJ/cm2 (col. 17, lines 66-67).
Regarding claim 60:
Chopra et al.’s modified process comprises all the limitations of claim 59, and Chopra et al. also disclose 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 61:
Chopra et al.’s modified process comprises all the limitations of claim 60, and Chopra et al. also disclose that at least one of the separate UV irradiations is provided by a UV-LED light source (col. 17, lines 63-64).
Regarding claim 62:
Chopra et al.’s modified process comprises all the limitations of claim 61, and Chopra et al. also disclose that the ink composition is cured via a multi-pass inkjet printing process or which is cured by a single pass inkjet printing process (col. 12, lines 45-49).
Regarding claim 63:
Chopra et al.’s modified composition comprises all the limitations of claim 49, and Chopra et al. also disclose that that composition is comprised in a printed article (col. 12, lines 20-44).
Regarding claim 64:
Chopra et al.’s modified composition comprises all the limitations of claim 51, and Chopra et al. also disclose that the acylphposphine oxide photoinitiator is present in ≤ 3 wt% (col. 10, lines 19-27).
Regarding claim 65:
Chopra et al.’s modified composition comprises all the limitations of claim 52, and Chopra et al. also disclose that the composition comprises ≥ 3% of one or more acrylated amine(s) (col. 9, lines 8-17) and Poelmans et al. also disclose that the multifunctional acrylate is selected from the group consisting of hexanediol diacrylate, 3-methylpentanediol diacrylate, ethoxylated trimethylolpropane triacrylate, glycerol propoxylate triacrylate, and combinations thereof (esp. paragraph 44).
Regarding claim 66:
Chopra et al.’s modified composition comprises all the limitations of claim 55, and Chopra et al. also disclose that the composition comprises ≥ 40 wt% of any blend of monofunctional monomers (e.g. col. 4, lines 9-21).
Claim(s) 68 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chopra as modified by Poelmans et al., as applied to claim 60 above, and further in view of Fukumoto et al. (US 2015/0210087 A1).
Regarding claim 68:
Chopra et al.’s modified process comprises all the limitations of claim 60, but does not expressly disclose that the total dose from all the UV exposure is ≤ 200 mJ/cm2.
However, Fukumoto et al. teach that the tendency of tack is suppressed and internal curability is improved by keeping the total dose from all UV exposures to be ≤ 200 mJ/cm2 (paragraph 95).
Therefore, at the time of filing, it would have been obvious to a person of ordinary skill in the art to modify Chopra et al.’s process such that the total dose is in the range taught by Fukumoto et al.
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.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas Rodriguez can be reached at (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
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