CTFR 17/790,449 CTFR 85567 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Comments Applicants’ response filed on 2/24/2026 has been fully considered. Claims 1-21 are pending. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim s 1-16 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Brandstein et al (EP 2 703 459 A1) in view of Lin et al (US 2005/0282928 A1) . Regarding claim 1, Brandstein discloses an aqueous energy curable inkjet ink ( photo-curable ink composition printed by ink-jet printing ; paragraphs [0012] and [0061]) comprising an emulsified water-insoluble photopolymerizable compound ( hydrophobic radiation-curable monomers ; paragraph [0026]); a resin which may be a photopolymerizable resin ( a water-dispersible methacrylated polyurethane ; paragraph [0022]); and at least 25 wt. % water based on a total weight of the aqueous energy curable inkjet ( water in an amount from about 30% to about 70% by total weight of the photo-curable ink composition ; paragraph [0012] and 0060). Brandstein does not disclose the aqueous energy curable inkjet ink comprising component C being a polyether macromer-modified poly(meth)acrylate. However, Lin discloses an aqueous ink jet ink (paragraph [0014]) comprising a polyether macromer-modified poly(meth)acrylate ( dispersant of a graft copolymer comprising a backbone of polymerized acrylates and side chains including macromonomer comprising poly(ethylene glycol) alkyl ether ; paragraphs [0075], [0084] and [0089]). It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein to include the dispersant of Lin in the photocurable ink composition of Brandstein because having the required dispersant allows for the pigment to be uniformly dispersed in the ink (paragraph [0085] of Lin). Brandstein does not disclose the aqueous energy curable inkjet ink comprising component C being a comb copolymer formed from a poly(methacrylate) backbone and one or more polyether macromer side chains attached to the poly(meth)acrylate backbone where the polyether macromer-modified poly(meth)acrylate does not contain a silicone macromer side chain. However, Lin discloses an aqueous ink jet ink (paragraph [0014]) comprising a comb copolymer formed from a poly(methacrylate) backbone and one or more polyether macromer side chains attached to the poly(meth)acrylate backbone where the polyether macromer-modified poly(meth)acrylate does not contain a silicone macromer side chain ( dispersant of a graft copolymer comprising a backbone of polymerized acrylates and side chains including macromonomer comprising poly(ethylene glycol) alkyl ether ; paragraphs [0075], [0084] and [0089]). It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein to include the dispersant of Lin in the photocurable ink composition of Brandstein because having the required dispersant allows for the pigment to be uniformly dispersed in the ink (paragraph [0085] of Lin). Regarding claim 2, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein and Lin do not disclose the aqueous energy curable inkjet ink comprising the emulsified water-insoluble photopolymerizable compound present in an amount of 10 to 40 wt. %, based on the total weight of the aqueous energy curable inkjet ink. However, Brandstein discloses a photo-curable ink composition comprising the hydrophobic radiation-curable monomers in an amount from 1% to about 15% by weight based on the total weight of the photo-curable ink composition (paragraph [0026]). The amount of hydrophobic radiation-curable monomers overlaps the claimed range for the emulsified water-insoluble photopolymerizable compound. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide the desired binding of components for the photo-curable ink composition while not using excess monomers as a means for reducing cost as amount less than 1% by weight would not provide the desired binding of components and an amount more than 15% by weight would result in a photo-curable ink composition that is expensive to manufacture. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding claim 3, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising the emulsified water-insoluble photopolymerizable compound being an emulsified water-insoluble photopolymerizable monomer ( photo-curable ink composition comprising the hydrophobic radiation-curable monomers being emulsified ; paragraph [0026]). Regarding claim 4, Brandstein and Lin discloses the aqueous energy curable inkjet ink of claim 3 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising the emulsified water-insoluble photopolymerizable monomer being present, and the water- insoluble photopolymerizable monomer being a water-insoluble photopolymerizable mono-ethylenically unsaturated monomer ( photo-curable ink composition comprising the hydrophobic radiation-curable monomers comprising hydrophobic monofunctional radiation-curable monomers ; paragraph [0027]). Regarding claim 5, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein and Lin do not disclose the aqueous energy curable inkjet ink being substantially free of a water-soluble photopolymerizable monomer However, Brandstein discloses the photo-curable ink composition comprising one or more water-soluble radiation curable monomers in an amount from about 1% to about 15% by weight based on the total weight of the photo-curable ink composition (paragraph [0033]). The limitation “substantially free” as defined in pg. 9 of Applicant’s Specification is less than 1% by weight based on the total weight of the aqueous energy curable inkjet ink. The endpoint of 1% for the one or more water-soluble radiation curable monomers is sufficiently close to the endpoint of less than 1% that it would meet the limitation of substantially free of water-soluble photopolymerizable monomer. The only deficiency of Brandstein is that Brandstein discloses 1% by weight of water-soluble radiation curable monomer, while the present claims require substantially free or less than 1% by weight of water-soluble photopolymerizable monomer. It is apparent, however, that the instantly claimed amount of 1% by weight of water-soluble radiation curable monomer and that taught by Brandstein are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner , 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”. In light of the case law cited above and given that there is only a “slight” difference between the amount of 1% by weight of water-soluble radiation curable monomer disclosed by Brandstein and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of less than 1% by weight, it therefore would have been obvious to one of ordinary skill in the art that the amount of substantially free or less than 1% by weight disclosed in the present claims is but an obvious variant of the amounts disclosed in Brandstein, and thereby one of ordinary skill in the art would have arrived at the claimed invention. Regarding claim 6, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein and Lin do not disclose the aqueous energy curable inkjet ink comprising the resin present in an amount of 0.1 to 10 wt. % based on the total weight of the aqueous energy curable inkjet ink. However, Brandstein discloses the photo-curable ink composition comprising polyurethane polymer particles in an amount from about 1 wt.% to about 25 wt.% based on the total weight of the photo-curable ink composition (paragraph [0015]). The amount of polyurethane polymer particles overlaps the claimed range for the amount of resin. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide a film that is glossy and hard yet flexible (paragraph [0014] of Brandstein). An amount of polyurethane polymer particles less than 1 wt.% would result in too flexible to the point that the film is not glossy or hard and an amount of polyurethane polymer particles more than 25 wt.% would result in a film that is too hard such that it becomes brittle. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding claim 7, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising the resin being a photopolymerizable resin ( photo-curable ink composition comprising a water-dispersible (meth)acrylated polyurethane ; paragraph [0023]). Regarding claim 8, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 7 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising the photopolymerizable resin being a (meth)acrylated polyurethane dispersion ( photo-curable ink composition comprising a water-dispersible (meth)acrylated polyurethane ; paragraph [0023]). Regarding claim 9, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising the resin being a non-photopolymerizable resin ( photo-curable ink composition comprising a water-dispersible (meth)acrylated polyurethane ; paragraph [0023]). Regarding claim 10, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 9 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising the non-photopolymerizable resin being a polyurethane-poly(meth)acrylate hybrid dispersion ( photo-curable ink composition comprising a water-dispersible (meth)acrylated polyurethane ; paragraph [0023]). Regarding claim 11, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein does not disclose the aqueous energy curable inkjet ink comprising the polyether macromer-modified poly(meth)acrylate present in an amount of 2 to 8 wt. %, based on the total weight of the aqueous energy curable inkjet ink. However, Lin discloses a coating composition (col. 3, line 61-col. 4, line 67) comprising an additive of a (meth)acrylic copolymer comprising a (meth)acrylic backbone and one or more polyether-polysiloxane side chains attached (col. 3, line 61-col. 4, line 67) and wherein the (meth)acrylic copolymer is present in an amount of from 0.1 to 10 wt% based on the total solids content of the coating composition (col. 4, lines 45-52). The amount of (meth)acrylic copolymer overlaps the claimed range for the amount of polyether macromer-modified poly(meth)acrylate. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide high surface energy surfaces with good recoatability/overcoatability (col. 3, lines 19-61 of Lin). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein to include the dispersant of Lin in the photocurable ink composition of Brandstein because having the required dispersant allows for the pigment to be uniformly dispersed in the ink (paragraph [0085] of Lin). Regarding claim 12, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein do not disclose the aqueous energy curable inkjet ink comprising the polyether macromer-modified poly(meth)acrylate being a poly(meth)acrylate modified with only polyether macromer side chains. However, Lin discloses an aqueous ink jet ink (paragraph [0014]) comprising a polyether macromer-modified poly(meth)acrylate being a poly(meth)acrylate modified with only polyether macromer side chains ( dispersant of a graft copolymer comprising a backbone of polymerized acrylates and side chains including macromonomer comprising poly(ethylene glycol) alkyl ether ; paragraphs [0075], [0084] and [0089]). It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein to include the dispersant of Lin in the photocurable ink composition of Brandstein because having the required dispersant allows for the pigment to be uniformly dispersed in the ink (paragraph [0085] of Lin). Regarding claim 13, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising an organic solvent ( photo-curable ink composition comprising an organic solvent ; paragraph [0049]). Regarding claim 14, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising a pigment ( photo-curable ink composition comprising a colorant comprising a pigment ; paragraph [0044]). Regarding claim 15, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above and Brandstein further discloses the aqueous energy curable inkjet ink comprising a photo-initiator ( photo-curable ink composition comprising a photo-initiator ; paragraph [0039]). Regarding claim 16, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein and Lin do not disclose the aqueous energy curable inkjet ink being substantially free of photo-initiator. However, Brandstein discloses the photo-curable ink composition comprising a photo-initiator in an amount from 0.01 to about 10 wt.% based on the total weight of the photo-curable ink composition (paragraph [0039]). The limitation “substantially free” as defined in pg. 9 of Applicant’s Specification is less than 1% by weight based on the total weight of the aqueous energy curable inkjet ink. The amount of photo-initiator overlaps the range of “substantially free” for the claimed photoinitiator. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired curing of the photo-curable ink composition while not using excess photo-initiator as a means for reducing cost. An amount of photo-initiator too low would not provide the desired curing of the photo-curable ink and an amount of photo-initiator too high would provide a photo-curable ink composition that is expensive to manufacture. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding claim 19, Brandstein discloses a printed article comprising a substrate ( media substrate ; paragraph [0057]) and a dried and cured form of the aqueous energy curable inkjet ink disposed on the substrate ( photo-curable ink composition dried and cured on the media substrate after being printed ; paragraphs [0064] and [0066]); and wherein the aqueous energy curable inkjet ink of claim 1 is met by Brandstein and Lin as disclosed above. Regarding claim 20, Brandstein discloses a method of forming a printed image on a substrate comprising applying the aqueous energy curable inkjet ink onto the substrate with an inkjet printhead ( jetting a photo-curable ink composition onto a media substrate ; paragraph [0057]), drying ( drying the photo-curable ink composition ; paragraph [0064]) and curing the aqueous energy curable inkjet ink ( curing the photo-curable ink composition ; paragraph [0066]) and wherein the aqueous energy curable inkjet ink of claim 1 is met by Brandstein and Lin as disclosed above. Regarding claim 21, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein does not disclose the aqueous energy curable inkjet ink comprising component C is capable of emulsifying a water-insoluble photopolymerizable compound to produce a fast drying and curing ink as a stable emulsion with appropriate viscosity for inkjet printing. However, Lin discloses an aqueous ink jet ink (paragraph [0014]) comprising a polyether macromer-modified poly(meth)acrylate ( dispersant of a graft copolymer comprising a backbone of polymerized acrylates and side chains including macromonomer comprising poly(ethylene glycol) alkyl ether ; paragraphs [0075], [0084] and [0089]). Since the structure of the dispersant of a graft copolymer comprising a backbone of polymerized acrylates and side chains including macromonomer comprising poly(ethylene glycol) alkyl ether of Lin is the same as the structure of the claimed component C being a comb copolymer formed from a poly(methacrylate) backbone and one or more polyether macromer side chains attached to the poly(meth)acrylate backbone; the dispersant of a graft copolymer comprising a backbone of polymerized acrylates and side chains including macromonomer comprising poly(ethylene glycol) alkyl ether would inherently be capable of emulsifying a water-insoluble photopolymerizable compound to produce a fast drying and curing ink as a stable emulsion with appropriate viscosity for inkjet printing. It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein to include the dispersant of Lin in the photocurable ink composition of Brandstein because having the required dispersant allows for the pigment to be uniformly dispersed in the ink (paragraph [0085] of Lin) . 07-21-aia AIA Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Brandstein et al (EP 2 703 459 A1) in view of Lin et al (US 10,035,870 B2) in further view of Turgis et al (US 2004/0157959 A1) . Regarding claim 17, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein and Lin do not disclose the aqueous energy curable inkjet ink comprising a wax. However, Turgis discloses an aqueous energy curable printing ink comprising an adjuvant further comprising a wax (paragraph [0075]). It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein and Lin to include the wax of Turgis in the photo-curable ink composition of Brandstein because having the required adjuvant of a wax adjusts the flow, surface tension and gloss for the cured printing ink (paragraph [0075] of Turgis) . 07-21-aia AIA Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Brandstein et al (EP 2 703 459 A1) in view of Loccufier (US 2018/0298219 A1) . Regarding claim 18, Brandstein and Lin disclose the aqueous energy curable inkjet ink of claim 1 as disclosed above. Brandstein and Lin do not disclose the aqueous energy curable inkjet ink further comprising a silane. However, Loccufier discloses an aqueous UV curable inkjet ink comprising a silane based thiol molecule (paragraph [0110]). It would have been obvious to one of ordinary skill in the art to modify the aqueous energy curable inkjet ink of Brandstein and Lin to include the silane based thiol molecule of Loccufier in the photo-curable ink composition of Brandstein because having the required silane based thiol molecule in an aqueous UV curable inkjet ink provides improved mechanical properties and reduces an odour problem (paragraph [0110] of Loccufier). 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. Applicants argue that Jaunky does not disclose the comb copolymer not having silicone macromer side chains. This argument is moot as Jaunky does not disclose the comb copolymer not having silicone macromer side chains. Therefore, the previous rejections have been withdrawn. However, new grounds of rejection have been noted above. Conclusion 07-40 AIA 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM 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, Mark Ruthkosky can be reached at (571)-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SATHAVARAM I REDDY/Examiner, Art Unit 1785 Application/Control Number: 17/790,449 Page 2 Art Unit: 1785 Application/Control Number: 17/790,449 Page 3 Art Unit: 1785 Application/Control Number: 17/790,449 Page 4 Art Unit: 1785 Application/Control Number: 17/790,449 Page 5 Art Unit: 1785 Application/Control Number: 17/790,449 Page 6 Art Unit: 1785 Application/Control Number: 17/790,449 Page 7 Art Unit: 1785 Application/Control Number: 17/790,449 Page 8 Art Unit: 1785 Application/Control Number: 17/790,449 Page 9 Art Unit: 1785 Application/Control Number: 17/790,449 Page 10 Art Unit: 1785 Application/Control Number: 17/790,449 Page 11 Art Unit: 1785 Application/Control Number: 17/790,449 Page 12 Art Unit: 1785 Application/Control Number: 17/790,449 Page 13 Art Unit: 1785 Application/Control Number: 17/790,449 Page 14 Art Unit: 1785 Application/Control Number: 17/790,449 Page 15 Art Unit: 1785 Application/Control Number: 17/790,449 Page 16 Art Unit: 1785 Application/Control Number: 17/790,449 Page 17 Art Unit: 1785 Application/Control Number: 17/790,449 Page 18 Art Unit: 1785
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