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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I Claims 1-12 and species of 5,000 MW or more and Compound 4A in the reply filed on November 6, 2025 is acknowledged.
Confirmation of election of species of molecular weight of 5,000 or more was made via telephone call to Susan Pan on December 10, 2025.
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 6, 2025.
Claims 7-9 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 6, 2025.
Claims pending are 1-6, 10-12 and 17-18.
Drawings and Specification Objection
The drawings and specification are objected to because when there is only one figure it is to be referenced as “The Figure” rather than Figure 1. See 37 CFR.1.184(u)(1) and 37 CFR 1.121(d). Similarly, the Brief Description of the Drawing section must also refer to “The Figure” rather than Figure 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” (emphasis added) If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Further, the disclosure is objected to because of the following informalities: the Table of page 84 of the as-filed specification contains a Japanese character on line B-C in the photopolymerization initiator section. All US applications must be in English. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1-5, 10-11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Itoh (U.S. 20160154303)
Itoh exemplifies in Table 5 ¶[0804] (page 111) Example 18, a composition comprising:
Dye compound (A) P-15. P-15 is a copolymer A’17, B-1 and B-15 with a weight average molecular weight of 16,100. See Table 3 on page 79. B-1 is a methacrylic acid monomer (page 94) and B-15 is a monomer which anticipates Structure 4a of Claim 5 when m = 1, n = 1, X = 0 and R1 = CH3.
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This anticipates Compound A of Claim 1, Claim 2, Claim 3, and Claim 5 along with the weight average molecular weight of Claim 4 along with Claim 17.
In Table 5 the alkali soluble resin J1 is a methacrylate resin. See page 107 second column ¶[0749]. This anticipates the alkali soluble resin of Claim 1, Claim 2, Claim 3 and the thermoplastic resin of Claim 11 as acrylates are thermoplastic resins.
The dipentaerythritol hexaacrylate of Table 5 anticipates the polymerizable compound of Claim 1, Claim 2, Claim 3.
The polymerization initiator of Table 5 anticipates the polymerization initiator of Claim 10.
The pigment dispersions of Table 5 are not black particles according to Claim 12. However, Itoh specifically teaches a variety of pigments in ¶[0376] onwards including carbon black, a particulate black pigment. (¶[0379]) Therefore, one of ordinary skill in the art can at once envisage the pigment of Table 5 being any one of the pigments specifically taught by Itoh including carbon black. This anticipates Claim 12.
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 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 6, 18 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh (U.S. 20160154303).
Itoh is applied as above under §103.
With respect to Claim 6, Itoh does not exemplify an embodiment with B-15 and a structure according to 5 of Claim 6.
Structure 5 in Claim 6 is taught by Itoh as B-26 or B-27. (page 98)
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Note that Itoh does not require an acid group (such as B-1 or B-2) to be present in the copolymer Dye (A). See ¶[0181].
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Itoh, in particular that of P-15, by substituting B-1 for B-26 or B-27 as Itoh these as functionally equivalent, as in serving the same function in the invention to B-1 based on Table 3.
B-26/B-27 reads over Claim 6 and Claim 18 Structure 5 when R3 = methyl, Y = O and AL = ethyl, R4 = methyl substituent.
With respect to Claim 12, Itoh does not exemplify a black particle pigment for the compositions.
Itoh specifically teaches a variety of pigments in ¶[0376] onwards including carbon black, a particulate black pigment. (¶[0379])
Therefore, It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Itoh, in particular that of Example 18, by using carbon black as the pigment instead of the exemplified pigment because Itoh suggests a variety of pigments for this purpose including carbon black in ¶[0379].
This reads over the black particulate pigment of Claim 12.
In general, as §103s (including combined with §102) are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP §2131.04.
With respect to Claim 12 under §103, there are no comparative or inventive examples demonstrating any kind of effect due to pigment choice.
With respect to Claim 6, all of Applicant’s inventive examples are to Structure 4A and/or Structure 5 wherein the copolymer consists of combination of these two structures or has an additional acrylic acid copolymer. Additionally, the only demonstration for the Structure 5 is with R4 = H and 10 repeats of the ethoxy group while the claimed Structure 5 is for any amount of alkoxy groups, and any substituent for R4 and, also, any kind of alkylene group. The required nexus between the claims and the demonstration does not appear present as the claims are not commensurate in scope with what would be considered probative of the demonstration.
Additionally, it is entirely unclear what MEGAFACE F552, F551 or F555A other than it is not Compound A. This prevents more detailed analysis of the prior art with respect to the demonstration of results.
Finally, Rahman (U.S. 6,447,980) teaches FC 430 surfactant from 3M is a fluoroaliphatic polymeric ester. This is the same category of compound (fluoroaliphatic polymeric ester) of Structure 4A/5 of the claims. Gelorme (U.S. 4,882,245) teaches coating aids such as FC 430 from 3M produce even thickness of film across a surface to prevent defects in an end product which might be caused by non-wetting of the surface. (Column 5 lines 40-55) Gelmorme is drawn to photocurable resists. (See abstract). These teachings of the prior art suggest the category of fluoroaliphatic polymeric esters are known in coatings and photocurable resists, such as Applicant’s area, to be used to prevent unevenness of the resulting coating film. This is the same problem Applicant suggests they are using these compounds to overcome. (See ¶[0005] of the as filed specification along with ¶[0019]) Additionally, Suzuki (U.S. 20060165919) specifically teaches the fluoroaliphatic polymer ester reduces the drying unevenness in films made containing it. (See ¶[0012]-¶[0018] and Structure 4A in ¶[0020], ¶[0065] 5000-25,000 weight average molecular weight ¶[0074]), Therefore, Applicant’s results do not appear truly unexpected for the above reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766