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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/22/2025 has been entered.
Response to Amendment
Applicant’s claim amendments and remarks filed 12/22/2025 are entered and have
been fully considered. Applicant has cancelled claims 37 and 43, and amended claim 6 to overcome the 112d issue, therefore it is withdrawn.
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 4 and 6 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.
Claims 4 and 6 recite the limitation "(C)" in lines 4 and 2 respectively. There is insufficient antecedent basis for this limitation in the claim. Claim 1 uses the notation (C’) for the polyalkylene glycol.
Claim Rejections - 35 USC § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 non-obviousness.
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.
Claims 1-2, 4-7, 11, 13-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Matsunami et al, JP2003201331A.
Regarding claims 1-2, and 4-7, Matsunami teaches a composition comprising an oligomer made from a self-emulsifying polyisocyanate derivative ¶¶[0001, 0008]. The polyisocyanate derivative is made from reacting a polyisocyanate (a1) selected from trimers thereof ¶[0013] (reads on claim 5), a polyalkylene glycol derivative (a2) selected from those of formula (1) H-(O-X)n-O-Y, see page 2 of original document, where Y is (meth)acryloyl, or allyl, or acyl, ¶¶[0018-0021], and a hydroxyl group-containing (meth)acrylate (a3) that can be selected as pentaerythritol tri(meth)acrylate, which has three polymerizable unsaturated groups. The compounds (a1), (a2), and (a3) of Matsunami satisfy the compounds of (A), (C’), and (B’), respectively, of instant claims 1 and 2.
Matsunami does not explicitly say the composition is water-based, but teaches that the polyisocyanate derivative is self-emulsifying and forms stable emulsions, ¶[0001], which means it is emulsified in water, and explains the invention is to address the demand for aqueous systems such as water dispersible types ¶[0004]. The polyisocyanate derivative is curable by active energy ray, or UV light ¶¶[0008, 0042], is useful as an ink ¶[0049], and can further be mixed with pigments ¶[0044].
Matsunami teaches that the isocyanate groups in the polyisocyanate compound (a1) form urethane bonds with the hydroxyl groups of the polyalkylene glycol derivative (a2) and the hydroxyl groups of the hydroxyl group-containing (meth)acrylate (a3), respectively ¶[0025], which reads on claim 4.
Matsunami teaches that the polyalkylene glycol (a2) can be selected from polyethylene glycol mono(meth)acrylate ¶[0019], polyethylene glycol monoallyl ether ¶[0020], or polyethylene glycol monolaurate ¶[0021], satisfying instant claim 6.
Matsunami disperses the polyisocyanate derivative in water, forming an emulsion, ¶[0058], satisfying instant claim 7, option (1).
In the examples, Matsunami produces emulsion compositions with about 35 wt.% of the polyisocyanate derivative (oligomer), ¶¶[0059, 0064], and also teaches in example 2 that the amount of polyisocyanate derivative (oligomer) relative to the total solids is about 84.5 wt.%, which reads on the claimed 30-90% oligomer content relative to the total solids in the composition. This is calculated from the 35 parts resin (oligomer) content plus the 1.4 parts initiator plus 5 parts triacrylate monomer, ¶[0064] and 35/41.4 = 84.5%.
It is further taught in ¶[0003] that urethane (meth)acrylates are diluted with an organic solvent to adjust viscosity. This reasonably suggests the amount of solvent (water for aqueous systems) is used to control the viscosity of the resulting composition. While Matsunami does not explicitly teach the amount of water to be used nor the required resulting viscosity, this teaching establishes the amount of solvent can be used to adjust the viscosity of the composition as desired. As such, it would have been obvious to add more solvent (water or aqueous solution) to the exemplified composition of Matsunami to adjust its viscosity as appropriate. This would have led one of ordinary skill in the art at the time the invention was filed to the amount of urethane (meth)acrylate in the total composition of less than 35 wt % which overlaps with the recited range. Applicant presents no comparative data on the effect of amount of oligomer with respect to the total composition on their results.
Regarding claim 11, Matsunami further teaches adding polymerization initiators, and emulsifiers (which are a type of surfactant) ¶¶[0011, 0044]. Matsunami also lists the initiators in ¶[0033] which includes thioxanthone, a hydrophobic initiator that is also a preferred initiator by applicant, ¶[0159] of the instant specification, and applicant further notes that thioxanthone is fat soluble, which leads this type of initiator to be contained (encompassed) inside the particles of the oligomer, ¶¶[0160, 0163] of the instant specification. Although Matsunami does not explicitly teach this limitation, it is inherent to the composition because Matsunami emulsifies the initiator with the oligomer, and it is the same hydrophobic fat-soluble initiators and the same urethane (meth)acrylate oligomer that applicant uses in the claimed composition.
Regarding claim 13, Matsunami teaches the composition is applied to an object and then cured by irradiating with active energy rays (UV rays) ¶¶[0046-0047].
Regarding claims 14-15, 17, Matsunami teaches an emulsion composition comprising a UV curable polyisocyanate derivative, polymerization initiators, and emulsifiers ¶¶[0001, 0008, 0011, 0044], which also reads on claim 17 option (1). The polyisocyanate derivative is made from reacting a polyisocyanate (a1) selected from trimers thereof ¶[0013], a polyalkylene glycol derivative (a2) selected from those of formula (1) H-(O-X)n-O-Y, see page 2 of original document, where Y is (meth)acryloyl, or allyl, or acyl, ¶¶[0018-0021], and a hydroxyl group-containing (meth)acrylate (a3) that can be selected as pentaerythritol tri(meth)acrylate, which has three polymerizable unsaturated groups, and reads on claim 15. The compounds (a1), (a2), and (a3) of Matsunami satisfy the compounds of (A), (C’), and (B’), respectively, of instant claim 14.
In the examples, Matsunami produces emulsion compositions with about 35 wt.% of the polyisocyanate derivative (oligomer), ¶¶[0059, 0064], and also teaches in example 2 that the amount of polyisocyanate derivative (oligomer) relative to the total solids is about 84.5 wt.%, which reads on the claimed 30-90% oligomer content relative to the total solids in the composition. This is calculated from the 35 parts resin content plus the 1.4 parts initiator plus 5 parts triacrylate monomer, ¶[0064], and 35/41.4 = 84.5%.
It is further taught in ¶[0003] that urethane (meth)acrylates are diluted with an organic solvent to adjust viscosity. This reasonably suggests the amount of solvent (water for aqueous systems) is used to control the viscosity of the resulting composition. While Matsunami does not explicitly teach the amount of water to be used nor the required resulting viscosity, this teaching establishes the amount of solvent can be used to adjust the viscosity of the composition as desired. As such, it would have been obvious to add more solvent (water or aqueous solution) to the exemplified composition of Matsunami to adjust its viscosity as appropriate. This would have led one of ordinary skill in the art at the time the invention was filed to the amount of urethane (meth)acrylate in the total composition of less than 35 wt % which overlaps with the recited range. Applicant presents no comparative data on the effect of amount of oligomer with respect to the total composition on their results.
Claims 19-20, 22-23, 25-28, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al, US20120225968 in view of Wood et al, US20040170779.
Regarding claim 19, Nakano teaches a UV curable water-based printing ink comprising a UV curable urethane (meth)acrylate and pigment, ¶[0041]. Nakano further teaches the ink composition comprises a polymerization initiator ¶¶[0014, 0168] and a fluorescent brightening agent known as a sensitizer ¶¶[0178-0179]. The initiator is hydrophobic, ¶¶[0027, 0169], and includes at least a thioxanthone initiator, ¶[0028]. The brightening agent and initiator are mixed together and emulsified with the urethane (meth)acrylate oligomer, ¶¶[0135, 0196], and the amphiphilic urethane (meth)acrylate forms micelles in the water with the hydrophobic portion directed toward the core and the hydrophilic portion directed to the water phase; the micelles include the polymerization initiator within it, ¶¶[0199-0201], also see figures 1 and 2, which satisfies the claimed initiator being contained within a particle of the oligomer.
Nakano does not teach using a hydroxylamine of formula I as shown in the instant claims.
Wood discloses an ink composition for ink jet printing comprising a dialkyl hydroxylamine stabilizer and a water-soluble dye ¶[0114]. The alkyl groups independently comprise methyl, ethyl, or octyl groups, ¶[0028]. The dialkyl hydroxylamines provide the inks with light stability, gas fade stability, dark storage stability, and permanence of the cured inks, see abstract and ¶¶[0011,0206]. The ink compositions are preferably water-borne inks, ¶[0130]. Wood discloses other ingredients such as binders can be in the inks, such as acrylate or methacrylate copolymers and water-soluble polyurethanes, ¶0144].
Wood and Nakano are analogous art to the claimed invention because both are in the area of ink compositions for ink jet printing. It would be obvious to a person having ordinary skill in the art before the effective filing date to combine the dialkyl hydroxylamine of Wood with the invention of Nakano with the motivation to improve the color fastness and light stability of the printed ink.
Regarding claim 20, Wood further discloses the hydroxylamine can be N,N-diethylhydroxylamine, ¶[0029].
Regarding claims 22, 23, 25-27, Nakano further teaches the UV curable water-based printing ink comprises a urethane (meth)acrylate made from a diisocyanate, a hydroxyl group containing (meth)acrylate, and a polyoxyalkylene glycol ether ¶[0041]. The hydroxyl containing (meth)acrylate is a compound having one or more (meth)acryloyl groups and one hydroxyl group that reacts with the diisocyanate through a urethanation reaction ¶[0080], which reads on claims 22 and 23. The polyoxyalkylene glycol monoalkyl ether forms a urethane bond with the diisocyanate ¶[0103], which reads on claims 22 and 25. Nakano further teaches that the polyisocyanate of the urethane (meth)acrylate can have three or more isocyanate groups, ¶[0088], and uses a HMDI trimer in synthesis example 6, ¶[0275], which reads on claim 26. The polyoxyalkylene glycol monoalkyl ethers such as polyethylene glycol monomethoxy ether and polyethylene glycol monoethoxy ether can be used in the urethane (meth)acrylate polymer ¶[0106], which reads on claim 27.
Regarding claim 28, Nakano further teaches the UV curable water-based printing ink composition has a viscosity preferably between 2 mPa.s and 25 mPa.s ¶[0221].
Regarding claim 36, Nakano teaches curing the UV curable water-based ink on a recording medium ¶[0216-0224]. Nakano does not teach using the dialkylhydroxylamine of claim 19 in the formulation. Wood discloses using the dialkylhydroxylamine in ink compositions that are then deposited on a recording material through a nozzle ¶[0003]. The addition of the dialkylhydroxylamine is to improve color fastness and fade stability of the printed product ¶[0011]. The ink compositions of Wood can utilize similar ingredients like water-soluble binders such as polyurethane and polymethacrylate ¶[0144]. Therefore it would be obvious to a person having ordinary skill in the art before the effective filing date to combine the dialkylhydroxylamine with the ink of Nakano and print the ink on a recording medium with the motivation of improving the color fastness and fade stability of the printed ink.
Claims 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al, US20120225968 in view of Wood et al, US20040170779.
Regarding claim 33, Nakano teaches a UV curable water-based printing ink composition comprising a UV curable urethane (meth)acrylate, the structure of which is formula (1) and is nonionic ¶[0041]. Nakano further teaches the composition comprises a polymerization initiator ¶¶[0014, 0168] and a fluorescent brightening agent known as a sensitizer ¶¶[0178-0179]. The initiator is hydrophobic, ¶¶[0027, 0169], and includes at least a thioxanthone initiator, ¶[0028]. The brightening agent and initiator are mixed together and emulsified with the urethane (meth)acrylate oligomer, ¶¶[0135, 0196], and the amphiphilic urethane (meth)acrylate forms micelles in the water with the hydrophobic portion directed toward the core and the hydrophilic portion directed to the water phase; the micelles include the polymerization initiator within it, ¶¶[0199-0201], also see figures 1 and 2, which satisfies the claimed initiator being contained within a particle of the oligomer.
Nakano does not teach using a hydroxylamine of formula I as shown in the instant claims.
Wood discloses an ink composition for ink jet printing comprising a dialkyl hydroxylamine stabilizer and a water-soluble dye ¶[0114]. The alkyl groups independently comprise methyl, ethyl, or octyl groups, ¶[0028]. Wood further discloses the hydroxylamine can be N,N-diethylhydroxylamine, ¶[0029]. The dialkyl hydroxylamines provide the inks with light stability, gas fade stability, dark storage stability, and permanence of the cured inks, see abstract and ¶¶[0011,0206]. The ink compositions are preferably water-borne inks, ¶[0130], and can comprise 0.01 wt.% to about 30 wt.% of the dialkylhydroxylamine ¶[0125]. Wood discloses other ingredients such as binders can be in the inks, such as acrylate or methacrylate copolymers and water-soluble polyurethanes, ¶0144].
Wood and Nakano are analogous art to the claimed invention because both are in the area of ink compositions for ink jet printing. It would be obvious to a person having ordinary skill in the art before the effective filing date to combine the hydroxylamine of Wood with the invention of Nakano with the motivation to improve the color fastness and light stability of the printed ink.
Regarding claim 34, Nakano further teaches the UV curable water-based printing ink comprises a urethane (meth)acrylate made from a diisocyanate, a hydroxyl group containing (meth)acrylate, and a polyoxyalkylene glycol ether ¶[0041]. The hydroxyl containing (meth)acrylate is a compound having one or more (meth)acryloyl groups and one hydroxyl group that reacts with the diisocyanate through a urethanation reaction ¶[0080]. The polyoxyalkylene glycol monoalkyl ether forms a urethane bond with the diisocyanate ¶[0103].
Claims 37-38, 41, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al, US20120225968 in view of Wood et al, US20040170779.
Regarding claim 37, Nakano teaches a UV curable water-based printing ink comprising a UV curable urethane (meth)acrylate ¶¶[0013, 0041], a polymerization initiator ¶[0168], a fluorescent brightening agent known as a sensitizer ¶¶[0178-0179], and at least one surfactant ¶[0068]. Nakano further teaches the UV curable water-based printing ink comprises a urethane (meth)acrylate made from a diisocyanate, a hydroxyl group containing (meth)acrylate, and a polyoxyalkylene glycol ether ¶[0041]. The hydroxyl containing (meth)acrylate is a compound having one or more (meth)acryloyl groups and one hydroxyl group that reacts with the diisocyanate through a urethanation reaction ¶[0080]. The polyoxyalkylene glycol monoalkyl ether forms a urethane bond with the diisocyanate ¶[0103]. Nakano further teaches the ink composition comprises a polymerization initiator ¶¶[0014, 0168] and a fluorescent brightening agent known as a sensitizer ¶¶[0178-0179].
The initiator is hydrophobic, ¶¶[0027, 0169], and includes at least a thioxanthone initiator, ¶[0028]. The brightening agent and initiator are mixed together and emulsified with the urethane (meth)acrylate oligomer, ¶¶[0135, 0196], and the amphiphilic urethane (meth)acrylate forms micelles in the water with the hydrophobic portion directed toward the core and the hydrophilic portion directed to the water phase; the micelles include the polymerization initiator within it, ¶¶[0199-0201], also see figures 1 and 2, which satisfies the claimed initiator being contained within a particle of the oligomer.
Nakano does not teach using a hydroxylamine of formula I as shown in the instant claims.
Wood discloses an ink composition for ink jet printing comprising a dialkyl hydroxylamine stabilizer and a water-soluble dye ¶[0114]. The alkyl groups independently comprise methyl, ethyl, or octyl groups, ¶[0028]. The dialkyl hydroxylamines provide the inks with light stability, gas fade stability, dark storage stability, and permanence of the cured inks, see abstract and ¶¶[0011,0206]. The ink compositions are preferably water-borne inks, ¶[0130]. Wood discloses other ingredients such as binders can be in the inks, such as acrylate or methacrylate copolymers and water-soluble polyurethanes, ¶0144].
Wood and Nakano are analogous art to the claimed invention because both are in the area of ink compositions for ink jet printing. It would be obvious to a person having ordinary skill in the art before the effective filing date to combine the hydroxylamine of Wood with the invention of Nakano with the motivation to improve the color fastness and light stability of the printed ink.
Regarding claim 38, Wood further discloses the hydroxylamine can be N,N-diethylhydroxylamine, ¶[0029]. The UV curable polymer of Nakano is nonionic according to formula (1) in the abstract and ¶[0041].
Regarding claim 41, Nakano teaches the UV curable water-based printing ink comprises a hydroxyl group containing (meth)acrylate, and a polyoxyalkylene glycol ether ¶[0041]. The hydroxyl containing (meth)acrylate is a compound having one or more (meth)acryloyl groups and one hydroxyl group ¶[0080].
Response to Arguments
Applicant’s arguments, filed 12/22/2025, with respect to the rejection(s) of claim(s) 1-2, 4-7, 11, 13-15, and 17 under §102, anticipated by Matsunami et al, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Matsunami under 103.
As explained above, Matsunami produces emulsion compositions in the examples with about 35 wt.% of the polyisocyanate derivative (oligomer), ¶¶[0059, 0064], and also teaches in example 2 that the amount of polyisocyanate derivative (oligomer) relative to the total solids is about 84.5 wt.%, which reads on the claimed 30-90% oligomer content relative to the total solids in the composition in amended claim 1. This is calculated from the 35 parts resin content plus the 1.4 parts initiator plus 5 parts triacrylate monomer, ¶[0064], and 35/41.4 = 84.5%.
It is further taught in ¶[0003] that urethane (meth)acrylates are diluted with an organic solvent to adjust viscosity. This reasonably suggests the amount of solvent (water for aqueous systems) is used to control the viscosity of the resulting composition. While Matsunami does not explicitly teach the amount of water to be used nor the required resulting viscosity, this teaching establishes the amount of solvent can be used to adjust the viscosity of the composition as desired, an hence is a results effective variable. As such, it would have been obvious to add more solvent (water or aqueous solution) to the exemplified composition of Matsunami to adjust its viscosity as appropriate, specifically increasing the amount would lower the viscosity, and alternatively decreasing the amount would increase the viscosity. This would have led one of ordinary skill in the art at the time the invention was filed to the amount of urethane (meth)acrylate in the total composition of less than 35 wt % which overlaps with the recited range.
Applicant's arguments, filed 12/22/2025, with respect to the §103 rejections of claims 19, 33, 37 and their dependents have been fully considered but they are not persuasive.
In response to applicant’s argument that Nakano and Wood fail to teach the feature that the initiator and/or sensitizer are contained in the oligomer particle, examiner directs applicant to paragraphs 0199-0201 of Nakano, where it is explained that the oligomer is amphiphilic and forms micelles in the water, and the initiator, when emulsified with the oligomer, is held within the micelle in the hydrophobic portion. This is also shown in figures 1 and 2 of Nakano. Therefore Nakano modified by Wood does teach the claimed feature.
For the reasons given, the 103 rejections over Nakano in view of Wood are maintained.
Applicant’s argument filed 12/22/2025 with respect to the language of the Markush grouping in amended claim 6 is persuasive, but upon further consideration, a 112b rejection is applied due to the lack of antecedent basis of the term (C), when claim 1 uses (C’) for the polyalkylene glycol. Claim 4 is likewise rejected under 112b for the same reason.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766