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.
Claim(s) 1, 3-10, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motofuji et al. (JP 2011-221476), wherein the machine English translation is used for citation.
Regarding claim 1 and 3; Motofuji et al. teaches an active energy ray curable composition comprising a radical initiator (A) [0057], photoacid generator (B) [0010], e.g. sulfonium salt [0024], a polymerizable monomer (D) (monofunctional and difunctional acrylates greater than 50% by mass) [0095], a colorant (E) [0114], a metal oxide powder (F) [0123]. Motofuji et al. teaches the metal oxide powder has a mean particle size of 0.01 microns to 1.0 microns [0126]. Motofuji et al. teaches the alumina [0124].
Motofuji et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Motofuji et al. does not specifically disclose an embodiment containing a radical initiator (A), photoacid generator (B), a polymerizable monomer (D) , a colorant (E) , a metal oxide powder (F). However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing a radical initiator (A), photoacid generator (B), a polymerizable monomer (D) , a colorant (E) , a metal oxide powder (F) based on the invention of Motofuji et al., and would have been motivated to do so since Motofuji et al. suggests that the composition can contain a radical initiator (A) [0057], photoacid generator (B) [0010], a polymerizable monomer (D) [0095], a colorant (E) [0114], a metal oxide powder (F) [0123].
Regarding claims 4-6; Motofuji et al. teaches the composition further comprises a photosensitizer having an anthracene skeleton in an amount of 1-15 wt% [0129].
Regarding claim 8; Motofuji et al. teaches 0.05-30% by weight of the photoacid generator.
Regarding claims 7, 9, and 10; Motofuji et al. teaches the photoacid generator to be used in an amount of 0.1-20% by weight, however is silent with respect to the amount of metal oxide. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of metal oxide in order to achieve desired dielectric properties. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Regarding claims 13; Motofuji et al. teaches a method of applying the ink (via ink jet printing) composition and irradiating with UV light [0133-0134].
Regarding claim 14; Motofuji et al. fails to explicitly teach irradiation in an atmosphere having an oxygen concentration of 5% by volume or less. One of ordinary skill in the art, at the time of filing, would have been motivated to conduct polymerization without the presence of oxygen, because oxygen is known to inhibit polymerization in free radical processes.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motofuji et al. (JP 2011-221476), wherein the machine English translation is used for citation, as applied to claim 1 above, and further in view of Kawanami et al. (JP 2019-104866), wherein the machine English translation is used for citation.
Motofuji et al. teaches the basic claimed active energy ray curable ink, as set forth above, with respect to claim 1.
Regarding claim 12; Motofuji et al. fails to teach the composition further comprising a gellant. Kawanami et al. teaches an active ray curable ink for inkjet printing comprising gelling agents such as fatty acid ketones [0016; 0051-0056]. Motofuji et al. and Kawanami et al. are analogous art because they are both concerned with the same field of endeavor, namely active ray curable ink for inkjet printing. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the fatty acid ketone gelling agent as taught by Kawanami et al., to the composition of Motofuji et al., and would have been motivated to do so in order to achieve a desired viscosity when printing, as suggested by Kawanami et al. [0054].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motofuji et al. (JP 2011-221476), wherein the machine English translation is used for citation, as applied to claim 1 above, and further in view of Van Meulder (EP 3144353), wherein the machine English translation is used for citation.
Motofuji et al. teaches the basic claimed active energy ray curable ink, as set forth above, with respect to claim 1.
Regarding claim 15; Motofuji et al. teaches suitable metal oxides to be employed in the invention include alumina, however fails to teach silica. Van Meulder teaches radiation curable compositions for low gloss comprising radiation curable (meth)acrylates, and a metal oxide such as alumina or silica [0045]. Therefore, Van Meulder teaches that alumina and silica are functional equivalents for the purpose of functioning as metal oxide particulates in radiation curable coatings. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-10, and 12-15 have been considered but are moot because the new ground of rejection does not rely on position as applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark 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.
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.
/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767