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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claim(s) 1, 2, and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. (JP 2017-206572), as cited on the IDS, wherein the machine English translation is used for citation, as set forth above with respect to claim 1, and further in view of Fukui et al. (JP 4919185), wherein the machine English translation is used for citation.
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Regarding claims 1, 2, 4, and 5; Yokoyama et al. teaches a photocurable compositions containing a thiol compound (A) and an allylic monomer (B) [0006], an allylic polymer (C) including polymers represented by the following formulae (13-20) [0072-0079],
Yokoyama et al. teaches the composition may further comprise other components, such as pigments and a dispersant [0093], however fails to teach the dispersant having a basic polar or acidic polar functional group and the required amine and/or acid value. Fukui et al. teaches a radiation curable inkjet printing ink composition comprising a pigment and a dispersant, such as Ajisper PB821 (amine value: 11.2 mg KOH/g; instant spec [0042]) [0037]. Yokoyama et al. and Fukui et al. are analogous art because they are both concerned with the same field of endeavor, namely radiation curable quick-drying inkjet ink compositions. At the time of filing, a person of ordinary skill in the art would have found it obvious to added Ajisper PB821, as taught by Fukui et al., to the composition of Yokoyama et al., and would have been motivated to do so in order to stably disperse particles of the pigment in the ultraviolet-curable composition, as suggested by Fukui et al. [0037].
Regarding claim 6; Yokoyama et al. teaches the composition further comprises a photopolymerization initiator [0087].
Claim(s) 1, 2, and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. (WO 2016/125661), as cited on the IDS, wherein US Serial No. 2017/0313795 is used as the English equivalent for purpose of citation, herein referred to as US’795, in view of Sasaki (JP 2007-269779).
Regarding claims 1, 2, and 4; US’795 teaches a photocurable resin composition containing an allylic polymer (A) being produced by polymerization of an allylic compound represented by the following formula (I) [0024-0027]:
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US’795 teaches the composition may further comprise pigments [0056 and 0058], however fails to explicitly teach the claimed dispersant. Sasaki teaches a photopolymerizable composition, suitable for use in offset printing on plastic substrates [p37, para5], comprising pigments [p28-29] and dispersants such as DisperBYK-162 (amine value: 13 mg KOH/g) and DisperBYK-163 (amine value: 11 mg KOH/g) [p31, para1]. US’795 and Sasaki are analogous art because they are both concerned with the same field of endeavor, namely photopolymerizable compositions suitable for use in offset printing on plastic substrates. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the dispersants as taught by Sasaki (DisperBYK-162 or DisperBYK-163), to the composition of US’795, and would have been motivated to do so in order to improve uniform distribution and dispersibility of the pigments in said composition.
Regarding claim 5; US’795 teaches the resin composition further contains an ethylenically unsaturated compound [0014].
Regarding claim 6; US’795 teaches the resin composition further comprises a photoinitiator [0016].
Regarding claim 7; US’795 does not explicitly require any other polymers in addition to the allylic polymer, thus teaches an active energy ray-curable polymer consisting of the allylic polymer.
Response to Arguments
Applicant's arguments filed 18 July 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that Yokoyama and Fukui do not teach the composition having good adhesion onto a surface of plastics without sacrificing flowability, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding arguments directed to Fukui, the reference is only relied upon for rendering obvious the addition of a dispersant to the composition of Fukui. One of ordinary skill in the art would not, nor does the rejection state, replace the polymer that Yokoyama teaches with the polymer of an amino(meth)acrylate that Fukui teaches for preventing the issue of the ink composition for printing, as applicants are alleging.
As such, Yokoyama et al. in view of Fukui et al. is still relied upon for rendering obvious the basic claimed active energy ray-curable ink composition, as required by the claim language.
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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767