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 .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 December 2025 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 5, line 26, filed 16 December 2025, with respect to the rejection of Claims 11-25 under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (United States Patent Publication No. US 2005/0003285 A1), hereinafter Hayashi; have been fully considered but they are not persuasive. Applicant argues that allyl methacrylate is not a vinyl ester. Whether or not allyl methacrylate is a vinyl ester, the present application in Paragraph [0058] names allyl methacrylate as comprising the hydrophobic grafts. Therein: “More preferably, the hydrophobic grafts contain repeating units derived from the monomers selected from alkylacrylates wherein the alkyl group has more than one carbon atom such as for example . . . allyl methacrylate.” Now, as is the case with styrene, Applicant argues that a repeating unit monomer of one type of repeating unit monomer is not within the scope of the claimed limitation (in dependent claims 12 and 18) and the description in Paragraph [0058] of the present application of repeating unit monomer derived of said type of repeating unit monomer, i.e. an allyl methacrylate or styrene repeating unit monomer is not within the scope of a repeating unit monomer derived from either allyl methacrylate or styrene. Applicant supports this argument by incorrectly stating:
Indeed, as described at paragraph 0056 of the present application, the term "graft" in polymer chemistry typically refers to an oligomeric or polymeric side chain of a polymer arising from the polymerization of a monomer or obtained via post polymerization modification using reactive telomers. The hydrophobic pendant grafts of the present application are schematically illustrated at, for example, specification paragraphs 0070-0072.
That is not an accurate restatement of Paragraph [0056] of the present application. Paragraph [0056] of the present application reads, in full:
The term “graft” in the context of the present invention refers to a side chain of a polymer which has a molecular weight of at least 350 g/mol. Such graft can be attached to a (co)polymer, for example, by (co) polymerizing monomers and/or macromers or can be obtained via post polymerization modification using reactive telomers. The hydrophobic grafts are preferably not water soluble.
Thus, for example, Paragraph [0056] of the present application does not state that the term "graft" in polymer chemistry typically or necessarily refers to an oligomeric or polymeric side chain. No mention or limitation in said paragraph is made to limit the side chain itself to being polymeric or oligomeric. Indeed, the second stated example of how said graft can be attached to a (co)polymer of the present application is by “(co)polymerizing . . . macromers.” Paragraph [0120] of Hayashi states: “In the coating formulations for the following Examples 11-14 and Comparative Example 19, Copolymer 2 is used in addition to Copolymers 1 and 3-7 as a crosslinkable binder.” Thus, Experimental Examples 11-14 of Hayashi, comprising Copolymers 1, 4, 5, and 6, respectively, as well as Copolymer 2 of Hayashi, which acts as a hydrophobic pendant graft, meets all limitations of the claim. Furthermore, Applicant argues that the further limitation to the claim wherein “each [hydrophobic pendant graft] having a molecular weight of at least 350 g/mol” overcomes the rejection of record. This is not persuasive. Applicant appears to be confused as to what element is being limited by the amendment to having a molecular weight of at least 350 g/mol, as Applicant appears to state that this limitation limits the hydrophobic pendant groups, i.e. the side groups of individual repeating units, but both that’s not how the claim is written, which limits the graft and Paragraph [0057] of the present application states: “The hydrophobic grafts are polymeric chains which contain repeating units preferably derived from the monomers selected from acrylates, methacrylates, acrylamides, methacrylamides, vinyl esters, vinyl ethers, styrene, styrene derivatives, and/or combinations thereof.” As previously stated, in Experimental Examples 11-14 of Hayashi, comprising Copolymers 1, 4, 5, and 6, respectively, as well as Copolymer 2 of Hayashi, which acts as a hydrophobic pendant graft. Copolymer 2 has a molecular weight of 44,887 Daltons, which equates to 44,887 g/mol.
3. Applicant further argues that the present application present unexpected results. The claims permit an exponential number of possibilities in any amount of polymerizable compound or photoinitiator or any other compound, as the composition is open-ended, i.e. states that the comprises the compounds which limit it. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02. Applicant has not shown that the claimed unexpected result remains true for any and all photoinitiators or polymerizable compounds in any amount, to say nothing of the unlimited other components which may comprise the composition. Thus, Applicant’s argument is not persuasive and the rejection of record is maintained.
Claim Rejections - 35 USC § 102
4. 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 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.
5. 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:
6. 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.
7. Claims 11-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (United States Patent Publication No. US 2005/0003285 A1), hereinafter Hayashi.
8. Regarding Claims 11-25, Hayashi teaches (Claim 1, Paragraphs [0099-0154]) a support, therein a lithographic substrate. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) a coating, therein an imageable layer. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) a polymerisable compound, therein a radically polymerizable component. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) a photoinitiator, therein an initiator system. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) discrete particles, therein a polymeric binder. Hayashi teaches (Claim 1, Paragraphs [0099-0154])
Hayashi teaches (Claim 1, Paragraphs [0099-0154]) discrete particles comprising a crosslinked hydrophobic polymer backbone. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) discrete particles comprising a plurality of hydrophobic pendant grafts. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) the hydrophobic pendant grafts each have a molecular weight of at least 350 g/mol. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) the hydrophobic pendant grafts contain repeating units derived from the monomers selected from acrylates, and styrene and repeating units comprising a segment including an ester and urethane. Hayashi teaches (Claim 1, Paragraphs [0146-0147 and 0150-0151]) the repeating units derived from acrylates, methacrylates, acrylamides, or methacrylamides are represented by the structures of Claim 13 of the present application. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) the hydrophobic pendant grafts contain repeating units derived from the monomers of styrene. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) the hydrophobic grafts include at least one repeating unit having more than one heteroatom and wherein the ratio of the atomic weight of the carbon atoms and the sum of the atomic weights of oxygen, sulfur and/or nitrogen [C/(O+S+N)] in the repeating unit is > 1.4 and < 10.0, for example the monomer of acrylonitrile which has 1 nitrogen atom, 2 carbon atoms, and zero sulfur atoms or oxygen atoms and thus a [C/(O+S+N)] value of 1.7. Hayashi teaches (Table 1) the discrete particles have a particle size of at least 20 nm and up to and including 500 nm. Hayashi teaches (Paragraph [0041]) the size of the discrete particles is smaller than the thickness of the coating. Hayashi teaches (Claim 1, Paragraphs [0099-0154]) the hydrophobic polymer backbone contains repeating units derived from the monomers selected from alkyl(meth)acrylates, styrene, (meth)acrylate-styrene, and repeating units comprising a segment including ethers, esters, and urethanes. Hayashi teaches (Claim 1, Paragraphs [0146-0147 and 0150-0151]) the hydrophobic polymer backbone contains repeating units derived from alkyl(meth)acrylates. Hayashi teaches (Paragraphs [0009, 0093, and 0096]) the coating is capable of being developed on-press with dampening liquid and/or ink. Hayashi teaches (Paragraphs [0136-0154]) applying on a support a coating including a photopolymerisable layer. Hayashi teaches (Paragraphs [0136-0154]) drying the precursor. Hayashi teaches (Claim 57, Paragraphs [0093-0098]) image-wise exposing the printing plate precursor to light. Hayashi teaches (Claim 57, Paragraphs [0093-0098]) developing the precursor. Hayashi teaches (Claim 57-59, Paragraphs [0009, 0093, and 0096]) the developing step is carried out on press by mounting the exposed precursor on a plate cylinder of a lithographic printing press. Hayashi teaches (Claim 57-59, Paragraphs [0009, 0093, and 0096]) rotating the plate cylinder while feeding dampening liquid and/or ink to the coating. Hayashi teaches (Claim 1, Paragraphs [0146-0147 and 0150-0151]) copolymerisation of olefinic terminated macromers by radical polymerization. Hayashi teaches (Claim 1, Paragraphs [0146-0147 and 0150-0151]) copolymerisation of reactive macromers in condensation polymerization or ring- opening polymerization. Hayashi teaches (Claim 1, Paragraphs [0146-0147 and 0150-0151]) post polymerisation modification by reacting polymers having a reactive end group with reactive telomers. Hayashi teaches (Claim 1, Paragraphs [0146-0147 and 0150-0151]) the macromers and reactive telomers are water insoluble.
Conclusion
9. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
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/RICHARD DAVID CHAMPION/Examiner, Art Unit 1737