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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-26, in the reply filed on 11/19/2025 is acknowledged.
Applicant has elected to elect with traverse. First, Applicant argues the groups overlap in content and thus additional search burden is not serious (see Applicant’s Remarks at pg. 2).
However, this is not found persuasive because establishment of a search burden is used to determine whether the Office may require restriction in national applications filed under 35 (U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT). In other words, the requirement regarding a serious search burden does not apply to national stage applications submitted under 35 U.S.C. 371.
Next, Applicants argue a national stage application should have unity of invention if drawn to a product, a process for the manufacture of said product, and use of said product, and that Groups I-IV are related as product and use of said product (see Applicant’s Remarks at pg. 2).
However, this does not preclude a restriction via an a posteriori unity of invention analysis. 37 CFR § 1.475(b) explicitly indicates “Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.” In this case, there is no special technical feature between the claims, as demonstrated in the Restriction Requirement dated 10/10/2025 (and in the claim 16 rejection below), and thus a proper a posteriori lack of unity of invention analysis is provided.
Therefore, the restriction/election requirement is still deemed proper and is made final.
Claims 27-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 27-34 are directed to a non-elected invention. Applicant timely traversed the restriction requirement in the reply filed on 11/19/2025.
Claim Objections
Claim 18 is objected to because of the following informalities:
• Claim 18 should be amended as follows: “…(2,2-dimethyl-1,3-dioxolan-4-yl)methyl acrylate, cyclohexanespriro…”. In other words, a comma should be added.
• In claim 18, the compound “cyclohexanespriro-2-(1,3-dioxolane-4-yl))methyl acrylate” appears to have an extra parentheses at the end. To correct, the Examiner suggests deleting one of the parentheses.
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 16-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US-20200255677-A1) (hereinafter referred to as “Tanaka”) in view of Koike et al. (US-20210403732-A1) (hereinafter referred to as “Koike”).
Regarding claims 16-21, Tanaka teaches a UV curable inkjet ink (see Tanaka at para. 0013 and 0016, teaching a radiation-curable ink jet composition that may be cured with ultraviolet radiation) including
• a pigment, a free radical photoinitiator (see Tanaka at para. 0066 and 0072), and
• a polymerizable composition containing more than 90.0 wt% of monofunctional polymerizable compounds based on the total weight of the polymerizable composition (at least 92.0 wt%, regarding claim 21) (see Tanaka at para. 0024, teaching the amount of monofunctional monomer in the polymerizable component to preferably range from 94 mass% to 97 mass%, which falls completely within the claimed ranges), wherein
the monofunctional polymerizable compounds include:
• more than 12.0 wt% of a heterocyclic acrylate (H), which is a non-aromatic cyclic acrylate wherein the one or more heteroatoms are an oxygen atom, wherein the heterocyclic acrylate includes tetrahydrofurfuryl acrylate (regarding claim 18) (see Tanaka at para. 0023 and 0042-0043, teaching the monofunctional monomer component may contain a saturated aliphatic group-containing monofunctional monomer, such as tetrahydrofurfuryl (meth)acrylate; also see Tanaka at para. 0045, teaching the content of the saturated aliphatic group-containing monofunctional monomer (e.g., tetrahydrofurfuryl (meth)acrylate) to range from 1 to 15 mass% relative to the total amount of the composition; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• more than 23.0 wt% of a mixture of an aromatic acrylate (A) and an alicyclic acrylate (L); wherein the wt% of the monofunctional polymerizable compounds is based on the total weight of the UV curable inkjet ink, wherein the aromatic acrylate includes 2-phenoxyethyl acrylate (regarding claim 19), and wherein the alicyclic acrylate includes dicyclopentenyl acrylate (regarding claim 20) (see Tanaka at para. 0023 and 0035, teaching the monofunctional monomer component may contain an aromatic group-containing monofunctional monomer, such as phenoxyethyl acrylate (i.e., 2-phenoxyethyl acrylate); also see Tanaka at para. 0023 and 0027, teaching the monofunctional monomer component may contain a monofunctional acrylate having a polycyclic hydrocarbon group, such as dicyclopentenyl acrylate; also see Tanaka at para. 0041, teaching the content of the aromatic group-containing monofunctional monomer (e.g., phenoxyethyl acrylate) to range from 20 to 50 mass% relative to the total composition; also see Tanaka at para. 0029, teaching the content of the monofunctional acrylate having a polycyclic hydrocarbon group (e.g., dicyclopentenyl acrylate) to range from 5 to 40 mass% relative to the total composition; thus, Tanaka necessarily teaches a total content of the aromatic group-containing monomer + the acrylate having a polycyclic hydrocarbon group to range from 25 to 90 mass% in their composition (20% aromatic monomer minimum + 5% polycyclic monomer minimum = 25% total minimum; 50% aromatic maximum + 40% polycyclic maximum = 90% total maximum); this range of 25 to 90 mass% falls completely within the claimed range).
While Tanaka teaches the composition outlined above, Tanaka fails to teach the composition as containing more than 5.0 wt% of N-vinyl oxazolidinone (V), wherein a weight ratio R = (H + A) / (V + L) is not more than 2.0, wherein the N-vinyl oxazolidinone is N-vinyl-5-methyl-2-oxazolidinone (regarding claim 17).
However, Koike teaches a radiation curable ink jet ink composition comprising a polymerizable compound, a photopolymerization initiator, and a colorant (see Koike at para. 0008). Koike further teaches the ink to contain vinyl methyl oxazolidinone, which is a nitrogen-containing monofunctional monomer having a vinyl group as a functional group (see Koike at para. 0013). Moreover, Koike teaches the vinyl methyl oxazolidinone to improve an adhesive property between a coating film and a recording medium and an abrasion resistance of the coating film (see Koike at para. 0013). Furthermore, Koike teaches the content of the vinyl methyl oxazolidinone in the ink to range from 5 to 40 mass% in order to improve the adhesive property, abrasion resistance, and storage stability (see Koike at para. 0014). Additionally, Koike teaches their polymerizable compound may contain a monofunctional (meth)acrylate monomer having an aromatic group, a monofunctional (meth)acrylate monomer having an alicyclic structure, and a monofunctional (meth)acrylate monomer having a cyclic ether structure (see Koike at para. 0028, 0031, and 0033).
Tanaka teaches their polymerizable component may include a nitrogen-containing monofunctional monomer, including nitrogen-containing monofunctional vinyl monomers (see Tanaka at para. 0030). Tanaka further teaches the content of the nitrogen-containing monofunctional monomer in their composition to range from 5 to 40 mass% in order to improve rub fastness (i.e., abrasion resistance) and adhesion (see Tanaka at para. 0034). This is the same content range (5 to 40 mass%) and the same benefits (abrasion resistance and adhesion) taught by Koike for their vinyl methyl oxazolidinone monomer (see Koike at para. 0014).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the vinyl methyl oxazolidinone (i.e., N-vinyl oxazolidinone, or N-vinyl-5-methyl-2-oxazolidinone) of Koike as the nitrogen-containing monofunctional monomer in Tanaka in an amount ranging from 5 to 40 mass% in the entire composition. One of ordinary skill in the art would have been motivated to do so in order to improve abrasion resistance, adhesion, and storage stability (see Koike at para. 0014). Moreover, the selection of a known material (N-vinyl oxazolidinone), which is based upon its suitability for the intended use (as a nitrogen-containing monofunctional vinyl monomer in a curable ink), is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Following the above modification, the composition of modified Tanaka contains 5 to 40 mass% of N-vinyl oxazolidinone as a nitrogen-containing monofunctional monomer. This range of 5 to 40 mass% overlaps the claimed range of “more than 5.0 wt%,” establishing a prima facie case of obviousness, see MPEP § 2144.05.
Furthermore, following the above modification, the composition of modified Tanaka contains the following compounds in their polymerizable component, wherein the wt% are based on the total weight of the ink:
(V): 5 to 40 mass% N-vinyl oxazolidinone (see modification above)
(H): 1 to 15 mass% of tetrahydrofurfuryl (meth)acrylate (see Tanaka at para. 0043 and 0045)
(A): 20 to 50 mass% of phenoxyethyl acrylate (i.e., 2-phenoxyethyl acrylate) (see Tanaka at para. 0035 and 0041).
(L): 5 to 40 mass% of dicyclopentenyl acrylate (see Tanaka at para. 0027 and 0029).
Given the above four concentrations listed, the claimed ratio “R = (H + A) / (V + L)” range in modified Tanaka is calculated as follows:
Ratio minimum calculation:
(1% H minimum + 20% A minimum)/(40% V maximum + 40% L maximum) = 0.26 ratio minimum
Ratio maximum calculation:
(15% H maximum + 50% A maximum)/(5% V minimum + 5% L minimum) = 6.5 ratio maximum
Thus, the claimed ratio in modified Tanaka ranges from 0.26 to 6.5. This range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
It is noted that the limitation of claim 1 indicating the ink to be used “for inkjet printing tarpaulins” is a recitation of intended use. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Regarding claim 22, see Tanaka at para. 0067 and 0070, teaching the composition may contain an acylphosphine oxide polymerization initiator in an amount ranging from preferably 7 to 9 mass% in the composition.
Regarding claims 23-24, see Tanaka at para. 0075 and 0079, teaching the pigment may be carbon black or a yellow pigment, such as Pigment Yellow 155.
Regarding claim 26, the composition of modified Tanaka contains the following compounds in their polymerizable component (see claim 16 rejection above):
5 to 40 mass% N-vinyl oxazolidinone (V) (see modification above)
1 to 15 mass% of tetrahydrofurfuryl (meth)acrylate (H) (see Tanaka at para. 0043 and 0045)
20 to 50 mass% of phenoxyethyl acrylate (A) (i.e., 2-phenoxyethyl acrylate) (see Tanaka at para. 0035 and 0041).
5 to 40 mass% of dicyclopentenyl acrylate (L) (see Tanaka at para. 0027 and 0029).
Thus, the total content of V + H + A + L is greater than 31 mass% (5% V minimum + 1% H minimum + 20% A minimum + 5% L minimum = 31% total minimum). This range of greater than 31 mass% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; alternatively, see Tanaka at para. 0025, teaching the monofunctional monomer content in the composition to range from 78 mass% or more, which falls completely within the claimed range.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Koike, as applied to claim 16 above, or, in the alternative, further in view of Loccufier (US-20150218398-A1) (hereinafter referred to as “Loccufier”).
Regarding claim 25, see Tanaka at para. 0075, teaching the pigment may include titanium oxide.
In the alternative that the “titanium oxide” referred to by Tanaka does not read on the claimed “titanium dioxide,” titanium dioxide is a ubiquitous pigment in the ink art, and is well-known to suitably be used in radiation curable inkjet inks (see Loccufier at para. 0097).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use titanium dioxide as a pigment in the composition of modified Tanaka, as titanium dioxide is a well-known pigment in the art (see Loccufier at para. 0097). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Retailleau et al. (US-20220403198-A1) teach a radiation curable ink set (see Retailleau at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731