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.
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.
Claim(s) 1-4 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US Serial No. 2019/0169453), in view of Li et al. (US Serial No. 2011/0124799).
Regarding claims 1-2 and 6; Sato et al. teaches an ink jet ink composition including water; and particles including a chain polymer [0051], which contains at least one urethane or urea bond and a hydrophilic group and contains particles [0090-0093]. Sato et al. teaches the hydrophilic group is preferably a neutralized anionic group; neutralization can be performed using an organic amine, for example triethylamine [0201-0211]. Sato et al. teaches the composition comprises a polymerizable compound, such as SR833S (tricyclodecanedimethanol diacrylate) [0646; T6]
Sato et al. teaches an organic amine neutralizer (e.g. triethylamine), however fails to teach a neutralizer having a solubility in water at 20°C of 12.5 g/100 mL or less. Li et al. teaches inkjet ink [abs] having a crosslinked polyurethane dispersoid binder additive [0053], wherein neutralization of the ionic groups on the polyurethane is carried out by converting the acid groups to salt groups via tertiary amines, such as triethylamine and tripropylamine (ClogP value of 5.0 or less; instant spec [0043]) [0113-0114]. Sato et al. and Li et al. are analogous art because they are both concerned with the same field of endeavor, namely aqueous polyurethane particle containing dispersions, suitable for use as inkjet ink compositions. Therefore, Li et al. teaches that triethylamine and tripropylamine are functional equivalents for the purpose of neutralizing acidic groups. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
In the instance only tripropylamine is used, 100 mol% of the salt is derived from the tripropylamine.
Regarding claims 3-4 and 7; Sato et al. fails to teach an HSP distance between the amine and a polymer P1 is 4.5 MPa1/2 or more, does not teach wherein a HSP distance between the polymerizable monomer M and polymer P1 is 12 MPa1/2 or less, and does not teach the polymer P has a glass transition temperature of 85°C or less. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, the mixture of a polyurethane, amine neutralizer, tricyclodecanedimethanol diacrylate yields a HSP distance between the amine and a polymer P1 is 11.4 MPa1/2 and a HSP distance between the polymerizable monomer M and polymer P1 is 10.3 MPa1/2 [Ex]. The original specification teaches suitable polymers P include urethane polymers, urethane-urea polymers, urea polymers; said polymers have a Tg of less than 85C [0053-0054]. Therefore, the claimed effects and physical properties, i.e. change in HSP and Tg, would necessarily in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 8; Sato et al. teaches an image forming method of the present invention which includes an application step of applying the ink of the present disclosure described above onto a base material (substrate), and a curing step (e.g. via ultraviolet rays) of curing the ink applied to the base material [0496-0517].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US Serial No. 2019/0169453), in view of Li et al. (US Serial No. 2011/0124799), as applied to claim 1 above, as evidenced by Sugai et al. (US Serial No. 2025/0368843).
Regarding claim 5; Sato et al. teaches the composition comprising SR833S (tricyclodecanedimethanol diacrylate) and SR399E (dipentaerythritol pentaacrylate) [0568; T6], SR833S has a ClogP of greater than 2, thus the content of polymerizable monomer M1 having a ClogP value of 2 or less is at most 50 mass%, which overlaps with the claimed range.
Sugai et al. provides evidence that tricyclodecanedimethanol diacrylate has a ClogP of 4.69 [0083].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 have been considered but are moot because the new ground of rejection does not rely on any reference 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.
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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.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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