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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In the instant case, the abstract uses the implied phrase “described herein” in line 1. The abstract also uses the term “herein” in line 1, which is considered legal phraseology and should be avoided.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites “wherein the molar ratio of the monomer” . . .. There is insufficient antecedent basis for “the molar ratio”. To overcome this issue, it is recommended to amend the claim to recite, for example, “wherein [[the]]a molar ratio of the monomer” . . ..
Additionally, it is unclear what the basis for the molar ratio is. Specifically, the claim recites that the molar ratio is “based on the weight percentage of the respective monomer in the respective copolymer”. That is, the claim appears to define a molar ratio in terms of weight, rather than in terms of moles. Additionally, it is unclear which “respective monomer” and “respective copolymer” the basis of the molar ratio is referring to.
Based on the data in the specification (see Table 3), this limitation will be interpreted as referring to a molar ratio of the number of moles of the monomer comprising the anhydride group (e.g., maleic anhydride) in the copolymer of the second thermoplastic resin to the number of moles of the monomer comprising the epoxide group (e.g., glycidyl methacrylate) in the copolymer of the first thermoplastic resin.
Finally, there is insufficient antecedent basis for “the weight percentage”, “the respective monomer”, and “the respective copolymer” in line 4 of the claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4, 6-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orlik et al. (US PGP 2015/0338757 A1).
Orlik teaches an electrostatic ink composition comprising a carrier liquid, a pigment, a resin, and a slip agent dispersed in the carrier liquid ([0011], [0027], [0078], [0083]). A method of printing comprising the steps recited in instant claim 13, and a printed substrate comprising the components recited in instant claim 14 are also described ([0026]-[0033], [0138]-[0198]). Orlik also teaches that a primer may be coated onto the print substrate ([0088]). In other words, the substrate includes multi-layer substrates (which reads on the corresponding limitation recited in instant claim 15).
The resin is taught to be a thermoplastic resin, and includes co-polymers of ethylene or propylene (e.g., 70 wt% to 99 wt%) and maleic anhydride (e.g., 0.1 wt% to 30 wt%) and ethylene-acrylate terpolymers like ethylene-acrylic esters-maleic anhydride (MAH) or glycidyl methacrylate (GMA) (i.e., a copolymer comprising an alkylene monomer and a monomer comprising an epoxide group) ([0053]) (which reads on the corresponding limitations recited in instant claim 1, claim 2, claim 3, claim 4, and claim 10). Orlik teaches that a combination of these resins may be used in the electrostatic ink composition ([0053]).
Orlik further teaches that “Lotader 8200” is a suitable example of the resin ([0069]). According to the Applicant’s disclosure, “Lotader 8200” is a copolymer of ethylene (i.e., an alkylene monomer), ethylacrylate (i.e., an alkenoic acid alkyl ester monomer being a propenoic-C2-alkyl-ester monomer), and maleic acid anhydride (i.e., an ethylenically unsaturated monomer comprising an anhydride group) (see [000125] of the instant specification) (which reads on the corresponding limitations recited in instant claim 1, claim 6, claim 7, claim 8, claim 9, and claim 11).
Orlik appears to be silent to explicitly teach that the resin is crosslinked, as recited in claim 13 and claim 14. However, in using a combination of the resins described above, the epoxide group of the ethylene-acrylic ester-glycidyl methacrylate terpolymer would be expected to necessarily crosslink with the anhydride group of the ethylene-ethyl acrylate-maleic anhydride terpolymer.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mor et al. (US PGP 2016/0121622 A1).
Mor teaches an ink and a method of printing, comprising steps of:
(a) applying an ink comprising a thermoplastic resin to a print substrate using an electrostatic printing process; and
(b) applying an overcoat composition comprising a crosslinking agent to the ink on the print substrate such that the thermoplastic resin of the ink is crosslinked ([0025]-[0033]).
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In other words, the printed ink composition contains the crosslinking agent. Mor teaches that applying the crosslinking agent to the electrostatic ink composition was discovered to increase its durability and scratch resistance ([0034]). The crosslinking agent is taught to comprise a polyepoxide ([0036]). In the examples, poly(ethylene-co-glycidyl methacrylate) (PEGM) is taught to be used as the crosslinking agent ([0045], [0104], claim 9). According to Mor, the general structure of PEGM is shown below (Table 1 on pg. 13):
As shown above, PEGM is a thermoplastic resin comprising a copolymer comprising an alkylene monomer (i.e., ethylene) and a monomer comprising an epoxide group, wherein the monomer comprising the epoxide group is an ethylenically unsaturated monomer comprising an epoxide group, the ethylenically unsaturated monomer comprising the epoxide group being an ester of an ethylenically unsaturated carboxylic acid and an epoxide group-containing alcohol comprising a terminal epoxide group (which reads on the corresponding limitations recited in instant claim 1, claim 2, claim 3, claim 4, claim 5, and claim 10).
The ink is taught to be formed from an electrostatic ink composition comprising a carrier liquid, a pigment, a first ethylene acrylic acid copolymer resin, and a second ethylene acrylic acid copolymer resin ([0075], [0085]). “Lotader 8200” is taught to be a suitable example of an ethylene acrylic acid copolymer resin ([0076]). According to the Applicant’s disclosure, “Lotader 8200” is a copolymer of ethylene (i.e., an alkylene monomer), ethylacrylate (i.e., an alkenoic acid alkyl ester monomer being a propenoic-C2-alkyl-ester monomer), and maleic acid anhydride (i.e., an ethylenically unsaturated monomer comprising an anhydride group) (see [000125] of the instant specification) (which reads on the corresponding limitations recited in instant claim 1, claim 6, claim 7, claim 8, claim 9, and claim 11).
Therefore, Mor describes a method of printing including the steps recited in instant claim 13, and a printed substrate including the components recited in instant claim 14. Mor further teaches that the substrate used in the printing layer includes multi-layer substrates like a coated cellulosic print (e.g., paper having a coating layer) ([0092]) (which reads on the corresponding limitation recited in instant claim 15).
Mor appears to be silent to teach a molar ratio of the monomer comprising an anhydride group (i.e., “Lotader 8200”) to the monomer comprising an epoxide group (i.e., PEGM), as recited in instant claim 12. In light of the 112(b) issues discussed above, this limitation will be interpreted as referring to a molar ratio of the number of moles of the monomer comprising the anhydride group (e.g., maleic anhydride) in the copolymer of the second thermoplastic resin to the number of moles of the monomer comprising the epoxide group (e.g., glycidyl methacrylate) in the copolymer of the first thermoplastic resin.
However, “Lotader 8200” and PEGM are the same thermoplastics included in the Applicant’s ink (see [000124]-[000125]). In other words, the resins of Mor include the same proportions of the anhydride-containing monomer and epoxide-containing monomer in the copolymers of the respective first and second thermoplastic resins as the Applicant’s ink. Accordingly, Mor’s electrostatic ink composition would be expected to necessarily exhibit the same molar ratio as the Applicant’s ink (and thus would necessarily read on the corresponding limitation recited in instant claim 12).
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.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nesher et al. (US PGP 2018/0203373 A1), in view of Mor et al. (US PGP 2016/0121622 A1).
The teachings of Mor are discussed above and incorporated herein. Nesher teaches an electrophotographic ink composition comprising a polymer resin mixture and a liquid carrier (Abstract). The ink composition is taught to contain a colorant, such as a pigment ([0075]). A method of printing comprising the steps recited in instant claim 13, and a printed substrate comprising the components recited in instant claim 14 are also described ([0078]-[0082]). Nesher also teaches that a primer may be coated onto the print substrate ([0081]). In other words, the substrate includes multi-layer substrates (which reads on the corresponding limitation recited in instant claim 15).
The resin mixture is taught to include an olefin polymer B which forms 1 to 50 weight% of the resin mixture ([0028]). The olefin polymer B is taught to include an olefin copolymer comprising ethylene in an amount of 60 to 78 weight% of the copolymer, and polar monomers like maleic anhydride of glycidyl methacrylate in an amount of 0.1 to 10 weight% of the copolymer ([0033]) (which reads on the corresponding limitations recited in instant claim 1, claim 2, claim 3, claim 4, claim 5, and claim 10).
In one example, the olefin polymer B is taught to include a terpolymer of ethylene, ethyl acrylate, and maleic anhydride ([0036]) (which reads on the corresponding limitations recited in instant claim 1, claim 6, claim 7, claim 8, claim 9, and claim 11). Suitable examples of such terpolymers are taught to include “Lotader 4700”, “Lotader 5500”, “Lotader 4503”, and “Lotader 4720” ([0036]).
Nesher appears to be silent to teach a molar ratio of the monomer comprising an anhydride group to the monomer comprising an epoxide group, as recited in instant claim 12. In light of the 112(b) issues discussed above, this limitation will be interpreted as referring to a molar ratio of the number of moles of the monomer comprising the anhydride group (e.g., maleic anhydride) in the copolymer of the second thermoplastic resin to the number of moles of the monomer comprising the epoxide group (e.g., glycidyl methacrylate) in the copolymer of the first thermoplastic resin.
However, “Lotader” and PEGM are the same thermoplastics included in the Applicant’s ink (see [000124]-[000125]). In other words, the resins of Nesher include the same proportions of the anhydride-containing monomer and epoxide-containing monomer in the copolymers of the respective first and second thermoplastic resins as the Applicant’s ink. Accordingly, Nesher’s electrostatic ink composition would be expected to necessarily exhibit the same molar ratio as the Applicant’s ink (and thus would necessarily read on the corresponding limitation recited in instant claim 12).
Nesher also appears to be silent to teach the use of two or more kinds of the olefin polymer B in combination. Therefore, Nesher does not explicitly teach an ink composition comprising a polymer resin mixture including both the olefin copolymer comprising ethylene and maleic anhydride of glycidyl methacrylate and the olefin terpolymer of ethylene, ethyl acrylate, and maleic anhydride.
However, according to MPEP § 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPZ 1069, 1072 (CCPA 1080).
Moreover, as previously discussed in Mor, olefin polymers like poly(ethylene-co-glycidyl methacrylate) (PEGM) are taught to be effective crosslinking agents. Mor taught that applying a crosslinking agent to an electrostatic ink composition increased its durability and scratch resistance ([0034]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have included a combination of one or more olefin polymers, such as the copolymer of ethylene and glycidyl methacrylate and the terpolymer of ethylene, ethyl acrylate, and maleic anhydride, in the electrophotographic ink composition of Nesher. The skilled artisan would have been motivated to do so because Nesher teaches that the olefin polymer B is used to provide an electrophotographic composition that has a desirable durability and scratch resistance ([0027] of Nesher), and Mor teaches that olefin polymers like PEGM increase the durability and scratch resistance ([0034] of Mor). In doing so, the resin mixture would necessarily be crosslinked, as Mor teaches that PEGM acts as a crosslinking agent (and thus would read on the corresponding limitations recited in instant claim 13 and claim 14).
Claims 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Orlik et al. (US PGP 2015/0338757 A1), in view of Mor et al. (US PGP 2016/0121622 A1).
The teachings of Orlik and Mor are discussed above and incorporated herein. As discussed above, Orlik teaches that the resin includes ethylene-acrylate terpolymers like ethylene-acrylic esters-glycidyl methacrylate (GMA). However, Orlik appears to be silent to explicitly teach poly(ethylene-co-glycidyl methacrylate) (i.e., a copolymer without the acrylic ester monomer) as an example of the resin, as recited in instant claim 5.
However, as also discussed above, Mor teaches that olefin polymers like poly(ethylene-co-glycidyl methacrylate) (PEGM) are effective crosslinking agents that can be applied to an electrostatic ink composition to increase its durability and scratch resistance ([0034]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have included a crosslinking agent, such as the copolymer of ethylene and glycidyl methacrylate, in the electrostatic ink composition of Orlik. The skilled artisan would have been motivated to do so because Mor teaches that olefin polymers like PEGM increase the durability and scratch resistance ([0034] of Mor). In doing so, Orlik’s electrostatic ink composition would be expected to necessarily exhibit the same molar ratio as the Applicant’s ink, as “Lotader 8200” and PEGM are the same thermoplastics included in the Applicant’s ink (see [000124]-[000125]) (and thus would necessarily read on the corresponding limitation recited in instant claim 12).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
11/13/2025