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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims/Formal Matters
The examiner acknowledges the amendments made to 1, 15, and 16, the addition of claims 17-19, and the cancellation of claim 6. Claims 1-5 and 7-19 are pending.
On pages 9 and 10 of the applicant’s response, the applicant asks for removal of the strike-through on foreign references based upon the inclusion of the English language equivalents, which have been reviewed by the examiner as noted by the applicant. Annotated IDS statements for the dates of 12/13/2022, 6/26/2024, and 12/18/2024 are attached.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over Qian (CN 113004739) in view of Sato (JP 2012-162615).
Regarding Claims 1, 3, 7, 12, 15, and 17-19,
Qian teaches a composition curable by light exposure (Paragraph 1) which reads upon a method of forming an image in which the composition includes an ethylenically unsaturated monomer that preferably has two or more functional groups (Paragraph 30) such as a diacrylate (Paragraph 31) and that also includes an ethylenically unsaturated oligomer that may be a polyester acrylate (Paragraph 34, Paragraph 56, Paragraph 59). Qian teaches that the oligomer is to reduce the mobility of extractable residues from the cured composition, which is of concern to several industries including toys, dentistry, and food and pharmaceutical packaging (Paragraph 6). Qian does not teach that the composition contains a monomer with a phosphoric ester group. Sato teaches a UV-curable inkjet composition containing from 0.5 to 13% by mass polymerizable phosphoric acid ester compounds (Abstract) which are of the following structures:
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in which R may be hydrogen or a 1 to 4 carbon alkyl chain and R1 is a 1 to 4 carbon alkyl chain (Paragraph 13) and that it is preferable that R1 be ethyl in order to improve adhesion (Paragraph 30 for mono acrylate incorporation and Paragraph 32 for bis incorporation), with the preferred structure of Sato represented by Chemical Formula 1 meeting the requirements of Claims 17-19. Sato states that incorporation of this type of compound is known to improve adhesion characteristics to substrates, in particular metals (Paragraph 22). Additionally, the range disclosed by Sato contains the range of the instant claim, with Sato further stating that the amount is preferably between 4 and 13% (Paragraph 37), as amounts below this level result in inadequate substrate adhesion while amounts above this range increase the viscosity of the composition as well as adversely affecting the scratch resistance of the cured composition (Paragraph 37). This teaching would motivate the ordinarily skilled artisan to select an amount within this range. As Sato discloses a composition that is comprised of acrylates that includes a phosphate containing compound for good adhesion and Qian teaches a similar composition, comprised largely of acrylates that includes a polyester oligomer that improves resistance to small molecule mobility, it would have been obvious prior to the effective filing date of the instant application to have combined the teachings of Sato and Qian to obtain the predictable result of an energy ray curable coating containing a phosphate compound to improve adhesion as well as a polyester oligomer to improve small molecule mobility with a reasonable expectation of success. It would also have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of the overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to composition B, both the compositions of Sato (Paragraph 38) and Qian (Paragraph 31) contain multifunctional monomers, which meet the requirements of the instant claim.
Finally, with regard to coating the second composition on the cured first composition, Sato teaches that the composition may be coated onto itself to result in thicker layers (Paragraph 83). As the cured composition A would be comprised of a polymer resin, it would logically follow that the composition could be coated and cured on that resin, meeting the requirements of claims 1 and 12. It would therefore have been obvious prior to the effective filing date of the instant application to have applied the composition onto a polymer resin, including a cured version of the resin of the instant claim one or more times.
Regarding Claim 2,
Qian teaches that the amount of the multifunctional compound (Component A of Qian) can comprise 10 to 85% by weight of the composition but preferably 15 to 65% to improve the photocuring rate (Paragraph 32), which overlaps with the range of the instant claim (25% or less). One of ordinary skill in the art would adjust the incorporation amount of this and other components to obtain the desired properties, such as hardness and strength, in the final cured composition. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 4,
Qian teaches that the polyester acrylate oligomer may comprise 2 to 60% by weight of the composition (Paragraph 35), with increasing amounts reducing mobility of small molecules more (Paragraph 35). The range of Qian overlaps with the range of the instant claim. One of ordinary skill in the art would adjust the incorporation amount of this and other components to obtain the desired properties, such as hardness and strength, in the final cured composition. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 5,
Qian teaches the polyester acrylate is an oligomer (Paragraph 34) and lists Sartomer CN750 and CN2252 explicitly. As oligomers are defined to be polymers with few repeating units, it would logically follow that an oligomer would be of a low molecular weight and as such, it would have been obvious to have used an oligomer with a molecular weight of 2000 or less.
Regarding Claim 8,
Qian teaches that the monomer preferably has 2 or more polymerizable groups (Paragraph 31) and further enumerates compounds such as propoxylated glycerol triacrylate and dipentaerythritol pentaacrylate and ethoxylated pentaerythritol tetraacrylate as options (Paragraph 31), meeting the requirements of the instant claim.
Regarding Claims 9 and 10,
Qian teaches that the polymerizable monomer may be contained in amounts of 10 to 85% by weight of the composition (Paragraph 32), which overlaps with the range of the instant claim (50% or more). Qian states that the amount of polymerizable monomer has an effect on the curing rate (Paragraph 32), and as such, one of ordinary skill in the art would adjust the amount accordingly to obtain a cure rate that is acceptable along with the desired material properties. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness.
Regarding Claims 11 and 16,
While Qian teaches that the composition is a light curable ink (Paragraph 1), Qian does not teach application using inkjet. Sato teaches that the ink compositions can be applied using a variety of methods, preferably inkjet printing (Paragraph 80). As Qian states that the ink composition may be applied using roller coating (Paragraph 74), it would logically follow that it would be able to be applied via inkjet, as it is similar to the composition of Sato which can be coated using a variety of methods, including by inkjet. As such, it would have been obvious prior to the effective filing date of the instant application to have applied the composition via inkjet.
With regard to an apparatus for applying the compositions to a substrate and curing them, as both Qian (Paragraph 1) and Sato (Paragraphs 80-83) disclose photocuring and inkjet application is addressed above, it would logically follow that an apparatus was used to conduct these operations and as such, it would have been obvious prior to the effective filing date of the instant application to have used an apparatus to apply and cure the composition.
Regarding Claims 13 and 14,
The light exposure time required to cure a composition would be a function of the intensity of the light source, as well as the efficiency of initiation from the photoinitiator, the absorptivity of the composition itself, and a variety of other factors. Ultimately, the exposure time would be determined based upon the time required to fully cure the composition. As such, this would render the exposure time to be a result-effective variable and it would have been obvious prior to the effective filing date of the instant application to have used any exposure time that cured the material.
Response to Arguments
Applicant’s arguments with respect to claim(s) 10/15/2025 have been considered but are moot because the new ground of rejection addresses the applicant’s amended incorporation range of the (meth)acrylate-containing phosphoric acid ester component.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765