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 .
Examiner’s Note
1. Applicant has added new Claims 29-32 which limit the moiety “X” of the chemical formulae of Claim 11. Claim 11 does not limit the repeating units of said claim wherein they must consist of repeating units of the formulae comprising moiety “X” of Claim 11. Instead, the formulae of Claim 11 only further limits repeating units derived from acrylates, methacrylates, acrylamides, and methacrylamides are represented by said formulae. Thus, the further limitations of moiety “X” of the chemical formulae of Claim 11 of the new Claims 29-32 are limitations of an optional component and therefore, the repeating units of Claim 11 could be a different type within the scope of the claim but not an acrylate, methacrylate, acrylamide, or methacrylamide and still read on these new claims.
Response to Arguments
2. Applicant’s arguments, see page 9, line 8, filed 26 March 2026, 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 “Hayashi et al. does not disclose or reasonably suggest a plurality of hydrophobic pendant grants as defined by the pending claims.” Applicant has amended the independent Claim 11 to incorporate limitations of the now-cancelled Claims 12 and 13. Paragraph #8 of the prior Office Action, in rejecting the limitation of the now-cancelled Claim 13, states: “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.” The cited paragraphs of Hayashi teach a copolymer of Copolymer 2 with Copolymer 7. Copolymer 2 of Hayashi comprises allyl methacrylate and Copolymer 7 of Hayashi which comprises styrene. Applicant has not addressed this teaching of Hayashi, but instead seems to be focused narrowly on Copolymer 2 of Hayashi, i.e. the crosslinkable binder therein. Indeed, while the prior Office Action both cites the sections of the prior art wherein there is a teaching of styrene and focuses much of the response to arguments on the teaching of styrene in the copolymers comprising both Copolymer 2 of Hayashi as well as Copolymer 7 of Hayashi, there is no mention of that in Applicant’s present arguments. As such, the prior response to arguments is maintained and this argument is not persuasive.
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 and 14-32 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 and 14-32, 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], particularly Paragraphs [0119-0120 and 0146-0147]) discrete particles comprising a crosslinked hydrophobic polymer backbone. Hayashi teaches (Claim 1, Paragraphs [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) discrete particles comprising a plurality of hydrophobic pendant grafts. Hayashi teaches (Claim 1, Paragraphs [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) 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 [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) the hydrophobic pendant grafts contain repeating units derived from the monomers of styrene. Hayashi teaches (Claim 1, Paragraphs [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) 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], particularly Paragraphs [0119-0120 and 0146-0147]) 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 [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) 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 [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) copolymerisation of olefinic terminated macromers by radical polymerization. Hayashi teaches (Claim 1, Paragraphs [0099-0154], particularly Paragraphs [0119-0120 and 0146-0147]) 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 [0099-0154], particularly Paragraphs [0146-0147]) the macromers and reactive telomers are water insoluble.
Conclusion
9. 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).
10. 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.
11. 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.
12. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
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