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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 14 September 2026, with respect to the rejection(s) of claim(s) 1-13 and 16 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shukla (US Serial No. 2012/0208914) and Birbaum et al. (WO 2004/104051).
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.
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) 1-9, 11-13, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shukla (US Serial No. 2012/0208914), as evidenced by “ChemSrc”.
Regarding claims 1, 3-5, 7-9, 11-13, and 16; Shukla teaches photoinitiator compositions comprising a photoinitiator and at least one ethylenically unsaturated polymerizable compound [0080]. Shukla teaches the composition may further comprise a solvent such as acetonitrile (bp 82°C at 1 atm; instant spec [0062]) [0084], and in some embodiments the photocurable inks are substantially free of organic solvents meaning that they are present in an amount of less than 10% (e.g. 5-10 wt%) [0104]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the solvent in an amount of 5 wt%, based on the invention of Shukla, and would have been motivated to do so since Shukla teaches that the composition may include solvents in an amount of 5 wt% are suitable for achieving particulars of the present invention, particularly with respect to dispersibility and viscosity [0134].
Shukla teaches the photocurable ink composition comprises alkoxylated acrylic monomers of higher functionality, which can be used alone or together with one or more di-functional materials, such as ethoxylated (1-20 EO units) trimethylolpropane triacrylate [0105], specifically for example ethoxylated (EO3) trimethylolpropane triacrylate. Shukla teaches it is desired that the total amount of the alkoxylated material is in the range of 80-95% by weight of the photocurable ink [0105] and teaches, in a preferred embodiment, no other ethylenically unsaturated polymerizable compounds are used, thus the alkoxylated trimethylolpropane triacrylate is present in an amount of 100 wt% based on the total weight of the polymerizable material. 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. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
Shukla does not explicitly disclose a vapor pressure of the evaporative diluent is at least five times greater than a vapor pressure of the at least one polymerizable monomer nor a difference in surface tension of the evaporative diluent to a surface tension of the photocurable composition is not greater than 5 mN/m. The Examiner takes the position that since the prior art teaches employing the same compounds in the same amounts (ethoxylated trimethylolpropane triacrylate and acetonitrile), the claimed difference in vapor pressure and surface tension would be necessarily present in the invention of Marques et al. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Shukla fails to explicitly teach a viscosity of the photocurable composition is not greater than 20 mPa·s. 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, a photocurable compositions comprising a polymerizable material, evaporative diluent, and photoinitiator, achieve a viscosity of not greater than 20 mPa·s [0025-0027]. Therefore, the claimed effects and physical properties, i.e. viscosity, would necessarily be present 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.
“ChemScr” provides evidence that ethoxylated trimethylolpropane triacrylate has boiling point of greater than 250°C at 1 atm.
Regarding claim 2; Shukla does not explicitly teach a contact angle of the photocurable composition on the claimed substrate. 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. Therefore, the claimed effects and physical properties, i.e. contact angle, would necessarily be present 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 6; Shukla teaches the composition may include monomers, such as reaction products of bisphenol A epoxide with acrylic acid (aromatic multifunctional acrylate monomer) [0081].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shukla (US Serial No. 2012/0208914), as evidenced by “ChemSrc”, as applied to claim 7, and further in view of Birbaum et al. (WO 2004/104051).
Shukla teaches the basic claimed photocurable composition, as set forth above, with respect to claim 7.
Regarding claim 10; Shukla teaches the composition can also comprise minor amounts of non-alkoxylated radiation curable monomer material such as tetraethylene glycol diacrylate and butanediol diacrylate [0106], however fails to teach at least one multifunctional acrylate monomer such as trimethylolpropane triacrylate. Birbaum et al. teaches a photocurable composition comprising a photoinitiator system, a solvent, and unsaturated compounds such as tetraethylene glycol diacrylate, butanediol diacrylate, and trimethylolpropane triacrylate [p20, line22-33]. Therefore, Birbaum et al. teaches that tetraethylene glycol diacrylate, butanediol diacrylate, and trimethylolpropane triacrylate are functional equivalents for the purpose of functioning as polymerizable monomers in photopolymerizable compositions suitable for use as inks and adhesives. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
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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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
