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 .
DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/06/2026 has been entered. Claims 1-9 are currently under examination on the merits.
Any rejections and/or objections made in the previous office action and not repeated below are hereby withdrawn.
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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al (WO2020148441A1, of record, US 20220073767, ‘767 hereafter, from the same patent family, is cited in this office action) in view of Miyamoto et al (US 2020/0270286, ‘286 hereafter).
Regarding claims 1-2 and 9, ‘767 discloses a photocurable inkjet ink composition comprising (A) preferably 10 to 35 wt% of a benzyl acrylate based on total weight of the composition ([0033]-[0039]); (B) a monofunctional monomer having 6 or more carbon atom hydrocarbon group in a preferred range of 2 to 30 wt% or a polyfunctional monomer having 6 or more carbon atom hydrocarbon group (hexane diacrylate, [0083]) in a range of 20 to 60 wt% based on total weight of the composition; (C) and (D) phosphine oxide initiator being bis(2,4,6-trimethylbenzoyl)phenyl phosphine oxide (Omnirad 819, [0221]) and/or ethoxy(2,4,6-trimethylbenzoyl)phenyl phosphine oxide (TPO-L, [0223]) in preferred content range of 1 wt% to 15 wt% based on total weight of the composition ([0040]-[0052]), (E) an amine-modified oligomer in a preferred range of 1 to 15 wt% ([0092]-[0098]); and a colorant being a white pigment in a preferred range of 1 to 15 wt% based on total weight of the composition to render a white ink ([0119], [0126]-0128]). ‘767 does not specifically set forth an example satisfying all the limitations of instant claims 1-2 and 9, wherein the content of C is more than 0 and less than 2.5% by mass and content of D being 6.5 to 13.0% by mass. However, it is known in the art that TPO-L alone can be used in an ink composition with a content around 9.0 wt% to render the ink being sufficiently cured without causing yellowing problem, as evidenced by ‘286 ([0267], Comparative Example 1, Table 5, Comparative Example 4, white ink [0282], Table 8), thus one of ordinary skill in the art would have use photoinitiator TPO-L alone or TPOL with small amount or trace amount of TPO, to render the ink composition having desired curability; wherein the ratio of PTO-L to PTO satisfying present claim 9.
Regarding claims 3 to 8, ‘767 teaches all the limitations of claims 1 and 2, but the prior art does not expressly set forth that the coating film formed from the ink composition has surface brightness and transmittance as claimed; however, as set forth above in paragraph 11, ‘767 fairly suggests an ink composition being substantially identical to the ink composition as presently claimed, it is reasonable to expect that the photocured coating film formed from the ink composition of ‘767 would have possessed the same optical properties including the surface brightness and transmittance as presently claimed, in absence of an objective showing to the contrary. In addition, it is well known in the art that the surface brightness and light transmittance of a cured coating film (image being printed from ink composition) directly depend upon the pigment content in the ink composition, thus the brightness and light transmittance are result-effective variables in terms of pigment content in the ink composition. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the content of the white pigment in the ink composition within the scope of the present claims so as to render the instantly claimed surface brightness and transmittance of the coating film.
Response to Arguments
Applicant's arguments filed on 12/18/2025 have been fully considered but they are not persuasive.
Applicant argues that cited prior art shows that either TPO or TPO-L alone does not cause yellowing problem but it is unknown what would happen when using a combination of TPO-L and TPO. The examiner’s position is that the content limitations of TPO is more than 0% to 2.5% by mass, in which the end point of more than 0% could be close to 0, (such as TPO-L contains trace amount of TPO), which apparently would not affect the yellowing of the ink composition. Cas law holds that one of the end point the range disclosed by the prior art is close enough to the end point recited in the instant claim, the limitation of the instant claim are met. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (See MPEP 2144.05). In addition, except small amount of TPO combines with TPO do not affect yellowing of the ink composition as argued, which apparently is expected; no unexpected results have been shown by combining these two photoinitiators( See Table 1 of present application, Example 1 using TPOL alone, and Example 2, using combination of TPOL and TPO, all properties are the same).
For the reasons set forth above and of record, the claims stand properly rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782