DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/2025 has been entered.
An amendment was filed 11/14/2025. Claims 1, 25, 52 and 82 were amended.
Claims 1-2, 7-8, 11-18 and 20-24 are rejected. Claims 25, 52 and 82 are withdrawn from consideration.
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.
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.
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.
Primary reference Sun
Claims 1, 11-18 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al, CN 110804381 A (Sun), taken in view of evidence by LibreTextsTM Chemistry: “Colloids” (“Colloids”).
The attached machine translation of Sun is referenced in the below rejection.
Regarding claims 1, 11, 14-15, Sun teaches a primer solution suitable for printing non-absorbent printing media with water-based pigment inkjet inks, the primer solution comprising: 10-70% of a pigment adsorbent, 5-25% of a cationic polymer emulsion, 5-25% fixing agent, 0.05-1% of a wetting agent, 0.05-1% of an antifoaming agent, and water (Sun; page 2, lines 52-56).
The cationic polymer emulsion can be a cationic acrylic emulsion (Sun; page 3, lines 5-8). An “emulsion” is a “colloidal dispersion” of a liquid in either a liquid or a solid as is evidenced by “Colloids” (“Colloids”; page 4, “Emulsions”). Therefore, the cationic acrylic emulsions of Sun are equivalent to the cationic acrylic colloidal dispersions as claimed.
The fixing agent is one or more organic amines including ammonium salts such as triethylbenzyl ammonium chloride (i.e., water-soluble salts as claimed) (Sun; page 3, lines 18-19). The fixing agent can improve adhesion of the coating to the substrate and further strengthen the cationization so that the printed pattern is more vivid (i.e., a surface treatment agent) (Sun; page 3, lines 21-22).
The wetting agent (i.e., surfactant) includes polyether-modified silicones and/or nonionic surfactants, such as Diago 280 and WA-6903 (Sun; page 3, lines 24-29).
Defoamers include acetylene glycol-based defoamers (i.e., an emulsifier-comprising defoamer of claim 11), such as ZH-7001 and Surfynol DF-420 (Sun; Page 3, lines 31-33).
The pigment adsorbent is selected from at least one nano-silica emulsion, nano-alumina, (i.e., high surface area solids of claim 14), and nano-calcium chloride (Sun; page 2, lines 58-60). A nano-silica emulsion is preferred (i.e., silica colloidal particles of claim 15) (Sun; page 2, line 58-page 3, line 3). An “emulsion” is a “colloidal dispersion” of a liquid in either a liquid or a solid as is evidenced by “Colloids” (“Colloids”; page 4, “Emulsions”).
The compositions are applied to non-absorbing printing mediums, such as various plastic films including PVC, PET, PP, PE, PMMA, PA, PS, PU and rubber (i.e., heat-shrinkable substrates) (Sun; page 4, lines 1-5).
In Example 2, Sun discloses a composition comprising 15% nano-alumina (a high surface solid of claims 14 and 15), 10% cationic acrylic emulsion; 15% dodecyl dimethylbenzyl ammonium bromide (water-soluble salt surface treatment agent); 0.05% WA-6903 (a surfactant), 1% Surfynol DF-420 (defoamer) and water (Sun; page 4, lines 49-60). The composition is sprayed onto a polypropylene substrate (i.e., a heat-shrinkable substrate) (Sun; page 5, lines 2-4).
In Example 4, Sun discloses a composition comprising 45% nano-silica emulsion (a high surface solid of silica colloidal particles of claims 14-15), 25% nano-calcium carbonate (an opacifier), 15% cationic acrylic emulsion, 15% trimethyl hexadecyl ammonium hydroxide (water-soluble salt surface treatment agent); 0.05% WA-6903 (a surfactant), 0.05% ZH-7001 (defoamer) and water (Sun; page 5, lines 19-25). The composition is coated onto a polyamide substrate (Sun; page 5, lines 27-30).
Examples 2 and 4 are the closest teachings of Sun to the claimed invention, differing only in that Example 2 comprises 1% defoamer rather than 0.05-0.25% defoamer claimed, and Example 4 contains 0.05% surfactant rather than 0.25-2.00% surfactant as claimed. Further, Examples 2 and 4 comprise 15% of a water-soluble salt surface treatment agent rather than greater than 0% to about 5.0% by weight as claimed.
However, as discussed above, Sun teaches that the surfactant/wetting agent may be present in an amount of 0.05-1%, which overlaps with the claimed range of 0.25-2.00%. The antifoaming agent may be present in an amount of 0.05-1%, which overlaps with the claimed range of 0.05-0.25%. The fixing agent (surface treatment agent) may be present in an amount of 2-25% by weight, which overlaps with the claimed great than 0 to about 5.0% by weight. See Sun; page 2, lines 52-56.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
While there is no disclosure that the primer solutions of Sun are intended for use on “heat shrinkable substrate having a total free shrink at 185oF of at least 15% as measured by ASTM D2732” as presently claimed, Applicants’ attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., for use on “heat shrinkable substrate having a total free shrink at 185oF of at least 15% as measured by ASTM D2732”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 12-13, Sun is relied upon as teaching the limitations of claim 1 as discussed above. The pigment adsorbent is selected from at least one of nano-silica emulsion, nano-alumina, and nano-calcium chloride (emphasis added) (Sun; page 2, lines 58-60).
Given that Sun discloses pigment adsorbents that overlap the presently claimed surface treatment agents, including calcium chloride, it therefore would be obvious to one of ordinary skill in the art to use a pigment adsorbent which includes calcium chloride, which is both disclosed by Sun and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Further, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, such as a mixture of two pigment adsorbents, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069 1072. Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).
When combining calcium chloride with another pigment adsorbent as taught by Sun, it is clear that the calcium chloride may be used in such a mixture in an amount overlapping with the claimed range of greater than 0% to about 5% by weight.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 16-17, Sun is relied upon as teaching the limitations of claim 1 as discussed above. The pigment adsorbents of Sun include substances that may function as an opacifier, e.g., nano-alumina, nano-calcium carbonate and nano-aluminum hydroxide, and are present in an amount of 10-70%, which overlaps with the claimed amounts of up to 35% (Sun; page 2, line 54 and page 3, lines 59-60). Sun exemplifies compositions which comprise 15% nano-alumina (Example 2; page 4, lines 49-60) and 15% nano-calcium carbonate (Example 4; page 5, lines 19-25). Because these opacifiers are present in aqueous compositions, it is clear that they are present as aqueous dispersions.
Regarding claim 18, Sun is relied upon as teaching the limitations of claim 16 as discussed above. Sun exemplifies an aqueous composition that comprises 50% nano-titanium dioxide in Example 3 (i.e., a titanium dioxide opacifier as claimed) (Sun; page 5, lines 8-9). Because Sun’s compositions require a pigment adsorbent, all of which are nano-sized, it is clear that the titanium dioxide dispersed in the aqueous composition of Example 3 is a pigment adsorbent, and therefore may be present in the compositions in an amount of 10-70% by weight (Sun; page 2, line 54 and 58-60). This range overlaps with the claimed opacifier range of up to about 35% by weight.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 24, Sun teaches the composition of claim 1 as discussed above, wherein the composition is a primer liquid suitable for printing (Sun; page 2, lines 45-46).
Sun does not explicitly teach a “flexographic” primer.
However, the recitation in the claims that the printing composition is a “flexographic primer” is merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure is capable of performing the intended use. Given that Sun discloses primer compositions as presently claimed, it is clear that the compositions of Sun would be capable of performing the intended use, i.e., a flexographic primer, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al, CN 110804381 A (Sun) taken in view of evidence by LibreTextsTM Chemistry: “Colloids” (“Colloids”) as applied to claim 1 above, in view of Schoff, “Optimum Viscosity for Paint Application” (Schoff).
Regarding claim 2, Sun is relied upon as teaching the limitations of claim 1 as discussed above. Sun teaches that the primer liquid compositions may be applied by brushing, wiping, rolling, scraping, spraying or other methods (Sun; page 3, lines 54-56).
Sun does not explicitly teach a composition with a viscosity of about 40cp to about 200cp as claimed.
With respect to the difference, Schoff teaches that as a rule of thumb in the paint industry, a viscosity of approximately 100cp provides acceptable spraying, brushing, or roll coating (Schoff; para 2). Although rates of 50-500cps were sprayable, the low end is likely to cause turbulence, overspray and sagging, and the high end gives poor atomization and an unacceptable appearance. When brushing, low viscosity causes spattering and causes hiding problems, while if over 100cps may cause brush drag. For rolling, viscosities below 100cps will likely cause misting, and above will give ropiness and other unwanted patterns (Schoff; para 6).
Schoff is analogous art as it teaches optimal viscosities for coating compositions.
In light of the motivation provided by Schoff regarding the optimal viscosity for the application of a coating (paint) composition by spraying, brushing or rolling, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to adjust the viscosity of the coating compositions of Sun to about 100cps, and thereby arrive at the claimed invention, in order to avoid turbulence, overspray, sagging, poor atomization, spattering, misting, unwanted patterns and brush drag, and in order to obtain an evenly applied coating with a good appearance.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al, CN 110804381 A (Sun), taken in view of evidence by LibreTextsTM Chemistry: “Colloids” (“Colloids”) and Evonik, “Surfynol 420” (Evonik).
Regarding claim 7, Sun is relied upon as teaching the limitations of claim 1 as discussed above. The defoaming agent is an acetylene glycol-based defoamer, such as Surfynol DF-420, or Surfynol DF-110D, Surfynol DF104-E, Surfynol DF-110F, and ZH-7001 (Sun; page 3, lines 31-33). The instant specification at [0086] teaches that Surfynol®420 is an ethoxylated acetylenediol based surfactant. Further, Evonik teaches that Surfynol 420 acts as both a wetting agent and a defoamer (DF), (Evonik; “Description”).
The teachings of Sun would have presented a recognition of equivalency in the prior art and would have presented strong evidence of obviousness in combining Surfynol 420 with another defoaming agent, such as Surfynol DF-110D, Surfynol DF104-E, Surfynol DF-110F, or ZH-7001, in order to provide an acetylene glycol-based based defoamer, and thereby arrive at the claimed invention. Combining equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06.I.).
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069 1072. Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).
Further, the defoamer proportions of 0.05-1% by weight overlap in scope with the claimed surfactant amounts of 0.25 to 2.00% by weight (Sun; page 2, line 55).
Therefore, it would have been obvious to one of ordinary skill in the art to add such defoamer mixtures in amounts that overlap the surfactant amounts as presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al, CN 110804381 A (Sun), taken in view of evidence by LibreTextsTM Chemistry: “Colloids” (“Colloids”) and Dow, Technical Data Sheet for “Triton X-405” (Dow).
Regarding claim 8, Sun teaches the composition of claim 1 as discussed above. Sun teaches that the wetting agent may be a non-ionic surfactant such as, for example only, Dow’s X-405 (Sun; page 3, lines 24-29). As is evidenced by Dow, Dow’s X-405, i.e., Triton X-405, is an octylphenol ethoxylated (i.e., an ethoxylated alcohol-based surfactant as claimed) (see Dow, page 1).
Given that Sun discloses surfactants that overlaps the presently claimed surfactants, including ethoxylated alcohol-based surfactants, it therefore would have been obvious to one of ordinary skill in the art to use the Dow X-405 ethoxylated alcohol surfactant, which is both disclosed by Sun and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al, CN 110804381 A (Sun), taken in view of evidence by LibreTextsTM Chemistry: “Colloids” (“Colloids”) and “Annex 10 of the Ordinance of the FDHA on Materials and articles intended to come into contact with foodstuffs” (FDHA).
Regarding claims 20-21, Sun is relied upon as teaching the composition of claim 1 as discussed above. Sun teaches that a high swelling polymer and a cationic polymer emulsion are used together as a binder, wherein the high-swelling polymer is selected from at least one of gelatin, polyvinyl alcohol and polyvinyl pyrrolidone (Sun; page 3, lines 5-7). The high swelling polymer is present in an amount of 5-15% (Sun; page 2, line 54).
The composition of Example 2 (as discussed above) comprises, as a binder, 15% gelatin and 10% cationic acrylic resin emulsion (Sun; page 4, lines 49-60). As is evidenced by FDHA, “Annex 10 of the Ordinance of the FDHA on materials and articles intended to come into contact with foodstuffs,” “List of permitted substances for the production of packaging inks and related requirements,” both gelatin and polyvinylpyrrolidone are listed as compliant with the Swiss Ordinance SR 817.023.21 (FDHA; page 63, 1928 and page 64, 1951), and thus are food packaging compliant. Examiner notes that Annex 10 is an annex of Swiss Ordinance SR 817.023.21.
Primary reference Vanoudenhoven
Claims 1, 7-8, 11, 14-18, 20, 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Vanoudenhoven, WO 2017/218742A1 (Vanoudenhoven), taken in view of evidence by LibreTextsTM Chemistry: “Colloids” (“Colloids”).
Regarding claim 1, Vanoudenhoven teaches stabilized systems comprising aqueous solutions of carbonic acid that include a solvated cationic and/or amphoteric resin and a stabilizer. Such systems can be used for the cationic printing of polymer-based substrates (e.g. polyethylene, polypropylene, polyethylene terephthalate, and glycol-modified polyethylene terephthalate), i.e., heat-shrinkable substrates (Vanoudenhoven; [002], [0029] and [0030]).
The cationic polymer may have an acrylic backbone structure (Vanoudenhoven; [0046]). Preferred commercially available acrylic cationic resins include DVK.4171, an acrylic cationic emulsion polymer (Vanoudenhoven; [0091] and [00161]), and Ottopol KX-101, a hydroxyl functional cationic acrylic emulsion polymer (Vanoudenhoven; [00206]). An “emulsion” is a “colloidal dispersion” of a liquid in either a liquid or a solid as is evidenced by “Colloids” (“Colloids”; page 4, “Emulsions”). Therefore, at least the DVK.4171 and Ottopol KX-101 cationic acrylic polymers of Vanoudenhoven are acrylic colloidal dispersions as claimed.
The cationic polymers are preferably present in the stabilized carbonic acid solution in an amount of 10-45 wt% (Vanoudenhoven; [0057]). The stabilized carbonic acid solutions containing the solvated cationic resin may be present in a color dispersion with cationic properties that is suitable for an ink and coating composition, in a preferred amount of 25-75 wt% (Vanoudenhoven; [0062-0063]). Therefore the cationic acrylic polymer emulsion is present in the ink and coating compositions in amounts of 2.5-33.75 wt% (25*0.1 = 2.5 wt% and 75*0.45=33.75 wt%). 2.5-33.75 wt% overlaps in scope with the claimed range of from about 10.00% to about 30.00% by weight of a polymer binder as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Water is used in the stabilized carbonic acid solution (Vanoudenhoven; [0054]).
A defoaming agent may be added to the stabilized carbonic acid solution which contain the cationic resin in an amount of 0.01-5 wt%, most preferably 0.01-0.5 wt% (Vanoudenhoven; [0060]). The stabilized carbonic acid solutions containing the solvated cationic resin may be present in a color dispersion with cationic properties that is suitable for an ink or coating composition, in a preferred amount of 25-75 wt% (Vanoudenhoven; [0062-0063]). Further, the inks and coatings may comprise a defoamer additive in an amount of about 0.001 to about 10 wt% or more based on the total weight of the ink composition (Vanoudenhoven; [0081-0082]).
Therefore, the compositions preferably comprise 0.0025-0.375 wt% defoamer from the stabilized carbonic acid solutions (25*0.0001 = 0.0025 wt% and 75*0.005=0.375 wt%), and 0.001 to 10 wt% defoamer as an ink additive, for a total of 0.0035 to 10.375 wt% defoamer (0.0025+0.001=0.0035 and 0.375+10.0=10.375). 0.0035 to 10.375 wt% overlaps with the claimed defoamer amounts of about 0.05% to about 0.25% by weight.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The inks and coatings may contain a wetting agent and/or surface tension modifier (i.e., surface treatment agent) additive, wherein each additive may be present in an amount of about 0.001 to about 10% or more based on the total weight of the ink composition (Vanoudenhoven; [0081-0083] and [0085]). About 0.001 to about 10% overlaps in scope with the claimed surfactant range of from about 0.025% to about 2.00% by weight, and the claimed surface treatment agent range of from greater than 0% up to about 5.00% by weight.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Vanoudenhoven further teaches that suitable surfactants (i.e., surface treatment agents) include soluble salts as claimed, e.g., cetyl trimethyl ammonium chloride, alkylamine salts, quaternary ammonium salts, and mixtures thereof (Vanoudenhoven; [0085]).
Given that Vanoudenhoven discloses wetting agents, surfactants, and mixtures thereof that overlap the presently claimed surfactant and surface treatment agent comprising a water soluble salt, including e.g., cetyl trimethyl ammonium chloride, alkylamine salts, quaternary ammonium salts, and mixtures thereof, it therefore would be obvious to one of ordinary skill in the art to use the wetting agents, surfactants, and mixtures thereof, which is both disclosed by Vanoudenhoven and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Examiner note: The claimed terms “surfactant” and “surface treatment agent” overlap in scope, and also encompass the “wetting agents” as disclosed by Vanoudenhoven. The claims have been interpreted as requiring the presence at least two surfactants/surface treatment agents/wetting agents, wherein at least one is a water soluble salt, and wherein each is present in the claimed amounts.
While there is no disclosure that the printing compositions of Vanoudenhoven are for use on a heat-shrinkable substrate “total free shrink at 185oF of at least 15% as measured by ASTM D2732” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. on a heat-shrinkable substate having a total free shrink at 185oF of at least 15% as measured by ASTM D2732”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 7, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches that the surfactants include ethoxylated acetylene glycols, i.e., ethoxylated acetylenediols (Vanoudenhoven; [0083] and [0085]).
Regarding claim 8, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches that the wetting agents include alcohol alkoxylates, (e.g. BYK® DYNWET), and surfactants include ethoxylated nonylphenols and ethoxylated acetylene glycols, i.e., ethoxylated alcohol-based surfactants (Vanoudenhoven; [0083] and [0085]).
Given that Vanoudenhoven discloses wetting agents and surfactants that overlap the presently claimed surfactants, including ethoxylated acetylenediols and ethoxylated alcohol-based surfactants, it therefore would be obvious to one of ordinary skill in the art to use the ethoxylated acetylenediol and/or ethoxylated alcohol-based surfactants, which are both disclosed by Vanoudenhoven and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 11, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches any foam destroying polymer or compound can be used as a defoamer in the inks, such as Dow 62 or 65 defoamer, polysiloxanes, oxyalkylamines, silicone oils, etc. (i.e., polysiloxanes and emulsifiers) (Vanoudenhoven; [0060] and [0083]).
Given that Vanoudenhoven discloses defoamers that overlap the presently claimed defoamer agents, including polysiloxanes and emulsifiers, it therefore would be obvious to one of ordinary skill in the art to use polysiloxanes and emulsifier defoamers, which are both disclosed by Vanoudenhoven and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 14-15, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches that the compositions may further comprise an anti-misting agent such as silica (Vanoudenhoven; [0081]).
Given that Vanoudenhoven discloses anti-misting agents that overlap the presently claimed high surface area solids, including silica, it therefore would be obvious to one of ordinary skill in the art to use silica, which is both disclosed by Vanoudenhoven and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 16-18, the claims further limit the opacifier which is an optional embodiment of claim 1 (i.e., up to about 35.00% by weight of an opacifier) and therefore not required. As such, claims 16-18 are rejected based on identical/substantially identical reasons as claim 1.
Regarding claims 20 and 22, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches that the cationic resin-based inks can be used for confectionary/cold seal for packaging of candies and well as for shrink wrap (Vanoudenhoven; [0029-0030]). Therefore, it is clear that the inks of Vanoudenhoven, when used for printing candy packaging and/or shrink wrap, must include components that are food packaging compliant as claimed.
Regarding claim 24, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches and exemplifies that the inks may be applied flexographic print processes (Vanoudenhoven; [0022], [0071], [0141] and [0186]).
Although Vanoudenhoven does not explicitly teach that the compositions are a flexographic “primer” as claimed, the recitation in the claims that the printing composition as claimed is flexographic “primer” is merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure is capable of performing the intended use. Given that Vanoudenhoven discloses printing compositions as presently claimed, it is clear that the printing inks of Vanoudenhoven would be capable of performing the intended use, i.e., flexographic “primer”, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Vanoudenhoven taken in view of evidence by “Colloids” as applied to claim 1 above, and further in view of Hood, US 2017/0129856 A1 (Hood).
Regarding claim 2, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches and exemplifies that the inks may be applied by a flexographic print processes (Vanoudenhoven; [0022], [0071], [0141] and [0186]). Vanoudenhoven further teaches that components may be added to adjust the ink viscosity, and are within the capabilities of the skilled person (Vanoudenhoven; [0071] and [0074]).
Vanoudenhoven does not explicitly teach wherein the printing composition has a viscosity of from about 40cP to about 200cP as claimed.
With respect to the difference, Hood teaches that viscosity is a key element to the physical properties and commercial performance capabilities of an ink system. A typical viscosity range for flexographic printing inks if from 0.05 to 0.5 Pa.s (i.e., 50-500 cP).
In light of the motivation of Hood to adjust the viscosity of a printing ink depending on the particular printing process used, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the flexographic printing inks of Vanoudenhoven to 50-500 cP in order to obtain suitable physical properties and improved commercial performance of the inks. 50-500cP overlaps with the claimed viscosity range of about40 cP to about 200 cP.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 12-13, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Vanoudenhoven taken in view of evidence by “Colloids” as applied to claims 1, 20 and 22 above, and further in view of Jarrett et al, WO 2019/2048800 A1 (Jarrett).
Regarding claims 12-13, Vanoudenhoven is relied upon as teaching the limitations of claim 1 as discussed above. Vanoudenhoven teaches that flow agents and plasticizers may be added to the ink and coating compositions (Vanoudenhoven; [0081]). The inks and coatings may be used in printing processes employing energy curing such as UV curing (Vanoudenhoven; [0071] and [0084]).
The inks and coatings may contain a plasticizer or flow agent (Vanoudenhoven; [0081]).
Vanoudenhoven does not explicitly teach the addition of a multivalent salt material (claim 12) or calcium chloride (claim 13) to the inks as claimed.
With respect to the difference, Jarrett teaches a water-based inkjet and flexographic ink for application to a wide variety of substrates including polymeric materials, and which are UV or EB radiation curable in a 1-step curing process (Jarrett; page 6, lines 16-20 and page 40, lines 1-22). The compositions may provide a food contact certifiable surface (Jarrett; page 8, lines 6-7). The compositions are aqueous (Jarrett, page 9, line 4 and page 39, line 9). The compositions preferably comprise a polysiloxane wetting agent (Jarrett; page 9, lines 19-20).
Jarrett teaches that the compositions preferably comprise a filler or plasticizer, wherein calcium chloride a preferred plasticizer (Jarrett; page 9, lines 18-19 and page 11, lines 10-11). Jarrett teaches that plasticizers advantageously increase flowability and reduce the film formation temperature of coatings. Calcium chloride is again taught as a suitable plasticizer (Jarrett; page 39, lines 1-5).
Jarrett exemplifies a coating composition comprising acrylic acid, BYK 349 wetting agent, Foamaster® NS1 defoamer, water, and calcium chloride. When calcium chloride is added to the radiation curable coating, it had the effect of plasticizing the composition, thus increasing the gloss of the cured coating and reducing the tendency of the cured film to crack on curing (Jarrett; page 60, lines 1-14).
Jarrett is analogous art as it teaches flexographic printing compositions comprising acrylic polymer binders, defoaming agents, wetting agents, calcium chloride, and water, for use on heat shrinkable substrates which come into contact with food.
In light of the motivation by Jarrett to add a calcium chloride plasticizer to aqueous flexographic printing compositions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a calcium chloride plasticizer and flow aid to the ink and coating compositions of Vanoudenhoven, particularly those which are UV curable, in order to increase the flowability and gloss of the compositions, while reducing the film forming temperature and reducing cracking upon curing.
Regarding claims 21 and 23, Vanoudenhoven is relied upon as teaching the limitations of claims 20 and 22 respectively, as discussed above. Vanoudenhoven teaches that the cationic inks are suitable for use on substrates which present challenges for the printmaker, including confectionary/cold seal for packaging of candies and shrink wrap, i.e., food packaging and food wrap (Vanoudenhoven; [0026], [0029] and [0030]).
Vanoudenhoven does not explicitly teach wherein the polymer, the defoamer agent, the surfactant, the surface treatment and/or the optional opacifier are Swiss Ordinance SR 817.023.21 compliant.
With respect to the difference, Jarrett teaches that the compositions, which are suitable for use in food-contact applications, may have significant advantages for the packaging industry as they may be certifiable under Swiss Ordinance SR 817.023.21 (Jarrett; page 7, lines 6-7 and page 56, lines 19-24). Jarrett also teaches that components for food contact applications must be FDA approved (Jarrett; page 5, lines 11-28).
In light of the motivation provided by Jarrett to provide inks and coatings which are suitable for use in food-contact applications, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ensure that the components of the inks and coatings of Vanoudenhoven are in compliance with Swiss Ordinance SR 817.023.21 when used in food contact applications, such as candy packaging and shrink wrap, in order to ensure regulatory compliance as well as the safety of the end user.
Response to Arguments
Applicant’s arguments, see Remarks, pages 7-8, filed 11/14/2025, with respect to the 35 U.S.C §103 over Wang in view of Hutter and Song, and over Wang in view of Hutter and Song and Usui, have been fully considered and are persuasive. The 35 U.S.C §103 rejections over these references have been withdrawn. Wang, Hutter, Song and Usui, alone or in combination, do not teach printing compositions which contain greater than 0% up to about 5.00% of a surface treatment agent comprising one or more soluble salts as presently claimed.
Applicant's arguments, see Remarks, page 9, filed 11/14/2025, with respect to the 35 U.S.C §103 rejection over Sun in view of Colloids, have been fully considered but they are not persuasive for the following reasons.
Applicant argues that the references fail to teach a surface treatment agent as is required by amended claim 1. Examiner respectfully disagrees for the reasons set forth in the rejection over Sun on pages 4-9 above. Specifically, Sun teaches both water-soluble salts as fixing agents, as well as the multivalent metal salt calcium chloride for addition to the compositions.
Further, upon updating the search with respect to the amended claims, note the new grounds of rejection under 35 U.S.C §103 over Vanoudenhoven taken in view of evidence by “Colloids”, and over Vanoudenhoven taken in view of evidence by “Colloids” and further in view of Jarrett as set forth above.
Conclusion
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/CDL/Examiner, Art Unit 1732 /CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732