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/Restrictions
Applicant's traversal of the Restriction Requirement dated 7/18/2025 is persuasive, for at least “ground (i)” described on page 1 of Applicant’s response dated 11/8/2025. The restriction requirement of 7/18/2025 has been withdrawn.
With regards to “ground (ii),” please note that, should the subject matter of the claimed composition and process sufficiently diverge during the course of prosecution, the divergence may establish burden of examination regardless of the number of actions already received.
Claim Objections
Claim 62 is objected to because of informalities. Appropriate correction is required.
Regarding claim 62:
This claim attempts to further define the process as one “which is cured via a multi-pass inkjet printing process or which is cured via a single pass inkjet printing process.” Please amend to clarify the object being cured (e.g. “wherein the ink composition is cured via …”). The currently claim presents the process itself as being cured.
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 52-58 and 65-67 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.
Regarding claim 52:
This claim appears to present features (a) thru (d) in series. However, the claim merely presents the series of features without explaining how the features serve to specify the claimed composition. Specifically, the claim generically states “The composition: feature (a); feature (b); feature (c); feature (d).” Therefore, it is not clear how the features are meant to further limit the composition of parent claim 51. Are each of features (a) thru (d) required for infringement (i.e. features (a), (b), (c) and (d))? Is only one of the features required (i.e. features (a), (b), (c), or (d))? Examiner humbly recommends alternate language such as, e.g. “The composition according to claim 51, wherein the composition is further characterized by: feature (a); feature (b); feature (c); or feature (d).”
Moreover, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Specifically, must the type II photoinitiator be diethylthioxanthone (DETX)?
Regarding claims 53-58 and 65-67:
These claims fail to remedy the deficiencies of parent claim 52, and therefore also fail to meet the requirements of this statute.
Further regarding claim 54:
This claim attempts to place something in parentheses. Please amend the phrase “polyethylene glycol) diacrylates” (last line of the claim).
Further regarding claims 57 and 67:
This claim defines the composition as a process ink “having a stray light viscosity change” of a certain percentage. However, Applicant fails to explain/define the “stray light” conditions under which the viscosity changes should (not) occur. An artisan would be unable to determine what ink property is required by this claim.
Specifically, neither the written description nor the claims explain how a “stray light viscosity change” is determined. While an artisan might be able to understand that the viscosity changes should remain within the required percentages, it is not clear what conditions the viscosity changes occur in. Is the stray light of a particular wavelength/wavelength range? Does the stray light impinge the ink for a certain amount of time? Does it impinge at a certain intensity?
Because Applicant’s disclosure fails to guide an artisan in performing a “stray light” viscosity change test, an artisan would not be able to determine whether an ink infringes on the claims.
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).
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 (as best understood):
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 (as best understood):
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 (as best understood):
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 (as best understood):
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 (as best understood):
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 (as best understood):
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.
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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