DETAILED ACTION
Response to Amendments
In response to the amendment received on 11/10/2025:
• Claims 1-16 are currently pending. Claims 13-15 are withdrawn for being directed to a non-elected invention(s). The objection to claim 3 is withdrawn in light of the amendments to the claims. The rejection of claims 3-5, 8, 11, and 12 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Harries et al. (US-20220073767-A1) (hereinafter referred to as “Harries”).
Regarding claims 1, 5, and 10, Harries teaches an inkjet ink (see Harries at para. 0015) comprising:
• 10-50% by weight of one or more monomers each having a logPoctanol/water value of 5.0 or more, based on the total weight of the ink (15 to 40% by weight, regarding claim 10) (see Harries at para. 0054, teaching the ink as comprising “additional monofunctional monomers”; also see Harries at para. 0059, teaching lauryl acrylate as a suitable additional monofunctional monomer; also see Harries at para. 0062-0063, teaching the additional monofunctional monomers may be present in an amount ranging from 0.1 to 30 wt%; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• a photoinitiator package comprising one or more photoinitiators each having a logPoctanol/water value of less than 4.0, and one or more photoinitiators selected from the claimed group (see Harries at para. 0041, teaching the ink as containing a phosphine oxide initiator; also see Harries at para. 0049 and 0223, teaching the phosphine oxide initiator may be Omnirad TPO-L; Omnirad TPO-L reads on the second compound in the claimed group, as disclosed by Applicants’ specification at pg. 17, lines 7-14; also see Harries at para. 0066, teaching the ink may comprises additional initiators; also see Harries at para. 0070, teaching the chemical compound having CAS number 71868-15-0 as a suitable additional initiator; the compound with CAS number 71868-15-0 is Esacure KIP 160, as disclosed by Applicants in their specification at pg. 14, lines 4-10; Esacure KIP 160 has a logPoctanol/water of 3.0, as disclosed by Applicants’ specification at pg. 14, line 10; also see ink Example 1 of Harries at Table 3 at para. 0242, teaching an ink containing both Esacure KIP 160 and Omnirad TPO-L);
• wherein the one or more photoinitiators each having a logPoctanol/water value of less than 4.0 are present in the ink in an amount of 0.5-4.5% by weight, based on the total weight of the ink (see Harries at para. 0073-0074, teaching the content of the additional initiators (i.e., Esacure KIP 160) to range from 3 to 20 wt% in the ink; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• wherein the photoinitiator package is present in the ink in 10-30% by weight, based on the total weight of the ink (15-20% by weight, regarding claim 5) (see Harries at para. 0050-0051, teaching the content of the phosphine oxide initiator (i.e., Omnirad TPO-L) to range from 0.1 to 20 wt%; also see Harries at para. 0073-0074, teaching the content of the additional initiator (i.e., Esacure KIP 160) to range from 3 to 20 wt%; thus, Harries necessarily teaches the total content of the initiators in the ink to range from 3.1 to 40 wt% (0.1 + 3 = 3.1; 20 + 20 = 40); this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see ink Example 1 of Harries at Table 3 at para. 0242, teaching a total initiator content of 14.9% (3.8% Omnirad 819 + 1.6% Esacure 1001M + 5.5% Esacure KIP160 + 3% Omnirad TPO-L + 1% Omnipol BL728 = 14.9% total); thus, Harries reasonably suggests via their example embodiments to select a total photoinitiator content that falls within the claim 1 range); wherein
• the one or more monomers each having a logPoctanol/water value of 5.0 or more comprise one or more monofunctional monomers (see Harries at para. 0059, teaching lauryl acrylate as a suitable additional monofunctional monomer; lauryl acrylate is a monofunctional monomer).
Regarding claim 3, Harries teaches the content of the phosphine oxide initiator (i.e., Omnirad TPO-L) to range from 0.1 to 20 wt% (see Harries at para. 0050-0051), which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 4, Harries teaches the content of the additional initiator (i.e., Esacure KIP 160) to range from 3 to 20 wt% (see Harries at para. 0073-0074), which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 6-7, Harries teaches the phosphine oxide initiator may be a mixture of phenylbis(2,4,6-trimethylbenzoyl)phosphine oxide (i.e., Omnirad 819) and ethyl (2,4,6-trimethylbenzoyl) phenylphosphinate (i.e., Omnirad TPO-L) (see Harries at para. 0048-0049); also see ink Example 1 of Harries at Table 3 at para. 0242, teaching an example ink containing both Omnirad 819 and Omnirad TPO-L; Omnirad 819 corresponds to the claimed “additional photoinitiator”, as disclosed by Applicants’ specification at pg. 21, lines 20-21.
Regarding claims 8-9, Harries teaches lauryl acrylate as a suitable monomer, which is a monofunctional (meth)acrylate monomer (see Harries at para. 0059).
Regarding claim 11, Harries teaches the ink may comprise multifunctional monomers, which correspond to the claimed “additional monomer” (see Harries at para. 0077).
Regarding claim 12, Harries teaches the multifunctional monomers may be present from 20 to 70 wt% in the ink (see Harries at para. 0084-0085); this range falls completely within the claimed range.
Regarding claim 16, Harries teaches hexanediol diacrylate as a suitable multi-functional acrylate (see Harries at para. 0081).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Harries, as applied to claim 1 above, and further in view of Hayata (EP-2832804-A1) (hereinafter referred to as “Hayata”) and Chakraborty (US-20210186820-A1) (hereinafter referred to as “Chakraborty”).
Regarding claim 2, while Harries teaches the ink according to claim 1 outlined above, Harrie fails to explicitly teach the ink as comprising the claimed compound.
However, Hayata teaches an active ray curable ink-jet ink composition containing a polymerization initiator (see Hayata at para. 0006 and 0060). Moreover, Hayata teaches Omnipol 910 as a suitable α-aminoketone initiator (see Hayata at para. 0072). In general, Omnipol 910 is a well-known α-amino acetophenone photoinitiator (see Hayata at para. 0072 and Chakraborty at para. 0160).
Harries teaches their ink may contain additional initiators, and that the additional initiator may include α-amino acetophenones (see Harries at para. 0066 and 0068).
In this case, Omnipol 910 is a known α-amino acetophenone suitable for use as a photoinitiator in an ink (as exemplified by Hayata at para. 0072 and Chakraborty at para. 0160), and thus its use in the ink of Harries would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use Omnipol 910 as the α-amino acetophenone additional initiator in the ink of Harries, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Omnipol 910 reads on the claimed compound, as disclosed by Applicants’ specification at pg. 17, lines 3-6.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Illsley et al. (US-20210009738-A1) (hereinafter referred to as “Illsley”), with evidence from Seguchi et al. (US-20230347663-A1) (hereinafter referred to as “Seguchi”) as to the rejection of claim 7 only.
Regarding claims 1 and 10, Illsley teaches an inkjet ink (see Illsley at para. 0025, 0035, 0071 and Table 7 at para. 0118, teaching an inkjet ink or coating composition) comprising:
• 10-50% by weight of one or more monomers each having a logPoctanol/water value of 5.0 or more, based on the total weight of the ink (15 to 40% by weight, regarding claim 10) (see Illsley at para. 0063, teaching the composition may include one or more additional free radical polymerizable monomers and oligomers; also see Illsley at para. 0063-0064, teaching the composition may include lauryl acrylate as a monomer; lauryl acrylate has a logPoctanol/water value of 5.0 or more, as disclosed by Applicant’s specification at pg. 6, line 9; also see Illsley at para. 0071, teaching the amount of energy curable monomers, oligomers, polymers, etc. may be present in an amount of greater than 25 wt% in the ink, which overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• a photoinitiator package comprising one or more photoinitiators each having a logPoctanol/water value of less than 4.0, and one or more photoinitiators selected from the claimed group, wherein the one or more photoinitiators each having a logPoctanol/water value of less than 4.0 are present in the ink in an amount of 0.5-4.5% by weight, based on the total weight of the ink (see Table 7 of Illsley at para. 0118, teaching an example ink formulation for inkjet printing containing 2 wt% of KIP160, i.e., Esacure KIP 160, and 1.5 wt% of Omnipol TX; Esacure KIP 160 has a logP value of 3.0, as disclosed by Applicant’s specification at pg. 14, line 10; this value of 2 wt% falls within the claimed range; moreover, Omnipol TX reads on the fifth claimed compound in the claimed group, as disclosed by Applicant’s specification at pg. 18, line 14; consequently, Illsley reasonably suggests to one of skill in the art to choose the claimed photoinitiators, e.g., Esacure KIP 160 and Omnipol TX, in the claimed content range for their ink, like exemplified in the example embodiments);
• wherein the photoinitiator package is present in the ink in 10-30% by weight, based on the total weight of the ink (see Illsley at para. 0082, teaching the photoinitiator may be present in the ink in an amount up to about 10 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); wherein
• the one or more monomers each having a logPoctanol/water value of 5.0 or more comprise one or more monofunctional monomers (see Illsley at para. 0063-0064, teaching the composition may include lauryl acrylate as a monomer; lauryl acrylate is a monofunctional monomer).
Regarding claim 2, while Illsley teaches the ink outlined above, Illsley fails to explicitly teach the ink as comprising the claimed compound.
However, Illsley does teach both Omnipol TX and Omnipol 910 as suitable photoinitiators (see Illsley at para. 0090).
In this case, both Omnipol TX and Omnipol 910 are functional equivalents, i.e., both are suitable photoinitiators for use in the curable ink of Illsley (see Illsley at para. 0090).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Omnipol TX with Omnipol 910 like that disclosed by Illsley, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Omnipol 910 reads on the claimed compound, as disclosed by Applicants’ specification at pg. 17, lines 3-6.
Regarding claims 3-4, see Table 7 of Illsley at para. 0118, teaching an example ink containing 1.5 wt% of Omnipol TX and 2 wt% of Esacure KIP 160; the value of 1.5 wt% falls within the claim 3 range, and the value of 2 wt% falls within the claim 4 range; thus, Illsley reasonably suggests to select values within the claimed ranges as exemplified in the example embodiments.
Regarding claims 6-7, see Illsley at Table 7 at para. 0118, teaching an example ink containing Irgacure 819 in additional to KIP 160 and Omnipol TX; thus, Illsley reasonably suggests to include an additional photoinitiator (i.e., Irgacure 819) in the ink via their example embodiments; Irgacure 819 is equivalent to Omnirad 819, as evidenced by Seguchi at Table 1 at pg. 9, see footnotes; Omnirad 819 (i.e., Irgacure 819) corresponds to the second claimed “additional photoinitiator,” as disclosed by Applicants’ specification at pg. 21, lines 20-21.
Regarding claims 8-9, see Illsley at para. 0063, teaching lauryl acrylate as a suitable monomer, which is a monofunctional (meth)acrylate monomer.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue that their claimed ink formulation provides unexpected results in terms of maintaining full ink stability and print reliability while preserving high cure speed and water resistance, and that the prior art fails to teach this (see Applicant’s Remarks at pg. 10-11).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). See MPEP § 2145. Applicants merely point to their conclusory statements in their specification at pg. 14-15, and do not point to any specific data or results that demonstrate the indicated benefits. A mere conclusion that Applicant’s claimed ink maintains full ink stability and print reliability while preserving high cure speed and water resistance is not enough to show nonobviousness. See MPEP § 716.02.
Next, Applicants argue that the Office Action combines separate disclosures within Harries to reconstruct the claimed ink, that Harries provides boilerplate listings of potential ink components typical of inkjet formulations, and that nowhere does Harries teach or suggest the specific compositional balance required by the present claims (see Applicant’s Remarks at pg. 11). Applicants then argue that the Office Action relies on hindsight reasoning of unrelated disclosures, and that Harries does not provide a motivation to combine like outlined in KSR Int’ Co. v. Teleflex Inc (see Applicant’s Remarks at pg. 11).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
"[A]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Harries explicitly teaches an ink composition which may comprise an additional monofunctional monomer, such as lauryl acrylate, in an amount of 0.1 to 30 wt% (see Harries at para. 0054, 0059, and 0062-0063). Moreover, Harries teaches their ink may contain a phosphine oxide initiator, such as Omnirad TPO-L (see Harries at para. 0039, 0041, and 0223). Additionally, Harries teaches their ink may comprise an additional initiator, such as Esacure KIP 160, in an amount ranging from 3 to 20 wt% (see Harries at para. 0066, 0070, and 0073-0074). Thus, Harries explicitly teaches embodiments which meet the claimed ink. Such teachings were available to one of ordinary skill at the time of the claimed invention. Furthermore, Applicants have provided no specific reason why the teachings relied upon in Harries would be uncombinable – in fact, Harries suggests the components are in fact combinable by virtue of their very teaching in the broad disclosure of Harries. Consequently, Harries reads on the claims.
Additionally, though the combination is picked from a multitude of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, and also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
Next, Applicants argue that the Office Action refers to Example 1 of Harries, and that Example 1 of Harries does not teach the claimed photoinitiator concentration of 0.5 to 4.5 wt%, and further that Example 1 lacks any monomer having a logP ≥ 5.0. Thus, Applicants argue there is no teaching in Harries to select the claimed features to achieve improved performance characteristics (see Applicant’s Remarks at pg. 12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123(I). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). Example 1 of Harries is merely referenced to show Harries teaches embodiments where both Esacure KIP 160 and Omnirad TPO-L are both used in their ink. The fact that Example 1 does not teach certain features of the claimed ink does not detract from the broad teachings of Harries which do teach the claimed ink.
Next, Applicants argue there is no motivation or reasonable expectation of success that would lead a skilled artisan to combine the teachings of Harries and Chakraborty, and that the proposed combination is based on hindsight reconstruction (see Applicant’s Remarks at pg. 12). Applicants further argue that Chakraborty does not address the underlying problem of balancing water resistance, cure speed, and stability in food packaging inks (see Applicant’s Remarks at pg. 12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Applicants have not pointed to any specific reason as to why the modification involving Chakraborty would be nonobvious. Applicants merely generically indicate there would be “no reasonable expectation of success.” However, the Examiner has in fact provided a “reasonable expectation of success,” namely, that Harries teaches their ink may contain alpha-amino acetophenones, and that the Omnipol 910 taught by Chakraborty is a known alpha-amino acetophenone used in similar curable ink compositions (see Non-Final Rejection dated 07/10/2025 at pg. 8-9). Thus, all the teachings were available to one of ordinary skill at the time of the claimed invention, and a proper prima facie case of obviousness is established, absent any rebuttal to the specific modification presented. Moreover, Chakraborty is in the same field of endeavor, namely, curable ink compositions, as Harries, and thus would reasonably be analogous art to the claimed invention. The fact that Chakraborty may or may not address the problem of balancing water resistance, cure speed, and stability in food packaging inks does not alter the resulting analysis.
Next, Applicants argue the example relied upon by the Examiner in Illsley does not contain any monomer having a logP ≥ 5.0, such as lauryl acrylate (see Applicant’s Remarks at pg. 13).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123(I). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). Example 7 of Illsley is merely referenced to show Illsley as teaching the claimed photoinitiator package in their examples, and that accordingly, Illsley reasonably teaches such a photoinitiator package broadly for their ink. The fact that Example 7 does not teach certain features of the claimed ink does not detract from the broad teachings of Illsley which do teach the claimed ink.
Next, Applicants argue lauryl acrylate is merely one of numerous possible radiation-curable monomers, and that the reference provides no indication to select lauryl acrylate specifically over other monomers (see Applicant’s Remarks at pg. 13). Further, Applicants argue the disclosure of Illsley at para. 0071 relates to the total amount of all energy-curable monomers, oligomers, and polymers combined, and not lauryl acrylate specifically (see Applicant’s Remarks at pg. 13).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123(I). The fact that lauryl acrylate is taught amongst numerous possibilities does not detract and/or teach away from lauryl acrylate as a suitable monomer for use in the composition of Illsley. Moreover, Illsley reasonably suggests their composition may comprise one radical polymerizable monomer (see Illsley at para. 0063, teaching the composition may include “one or more” monomers and oligomers, as pointed out by the Examiner in the Non-Final Rejection dated 07/10/2025 at pg. 9). Accordingly, the concentration at para. 0071 of Illsley may reasonably be read to include the concentration of lauryl acrylate (i.e., the “one” monomer) in the composition.
It is noted that upon closer inspection, the Examiner has withdrawn the rejection of claim 11 (and thus, claim 12) over Illsley, given that the addition of another monomer would alter the resulting concentration (see paragraph above); however, the Examiner notes that a future rejection may incorporate the other teachings in Illsley at para. 0069 and 0071 regarding the monofunctional and difunctional monomer content to reject claim 11.
Next, Applicants argue Illsley teaches that for food packaging applications, the total amount of monofunctional monomer should be less than 10 wt%, which teaches away from the claimed concentration of 10 to 50 wt% (see Applicant’s Remarks at pg. 13).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Illsley teaches the amount specifically to be “less than about 10 wt% of the composition” (see Illsley at para. 0071). The term “about” necessarily encompasses the claimed range. Accordingly, Illsley does not necessarily teach away from the full claimed range. Moreover, Illsley does not necessitate their ink be used for food packaging specifically. Consequently, the limitation of “less than about 10 wt%” for the monofunctional monomer of Illsley may necessarily apply to embodiments for the ink outside of food packaging.
Lastly, Applicants argue that even if lauryl acrylate were selected in Illsley, there is no teaching or suggestion to combine lauryl acrylate with the specific photoinitiators to achieve the claimed synergistic balance of water resistance, cure speed, and stability (see Applicant’s Remarks at pg. 13).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Illsley does teach the use of lauryl acrylate with the claimed photoinitiators, see the claim 1 rejection over Illsley above. Moreover, as mentioned previously, Applicants have not pointed to any data demonstrating the benefits in terms of balance of water resistance, cure speed, and stability, and the claims do not mention anything related to such. Consequently, Illsley reads on the claims.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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, Amber R Orlando can be reached on 571-270-3149. 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.
/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731