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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group II, Species IIA, claims 70-75 in the reply filed on 03/11/2026 is acknowledged. The traversal is on the ground that the cited reference does not teach the technical feature including “a synergist being amines, thiols or combination thereof”, as recited in the present claim 57. This is not found persuasive because, as set forth in the office action filed on 01/05/2026, the common technical feature of these invention groups do not require a synergist as argued (see claims 70 and 79). Therefore, the restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 57-69 and 76-80 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claims. Claims 70-75 are currently under examination on the merits.
Claim Objections
Claims 70-75 are objected to because of the following informalities: each of the claims recites multiple subject matters in one claim. Appropriate correction is required.
Claim 70 is objected to because of the following informalities: “comprising the reaction product a) according to claim 57” because the claim 57 has been withdrawn. The limitations regarding this reaction product should be incorporated in this claim. Appropriate correction is required.
Claim 71 is objected to because of the following informalities: “wherein the (meth)acrylates are: a) monomers and/or oligomers; and/or b) polyester acrylates and/or methacrylates” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
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.
Claims 71-72 are 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 pre-AIA the applicant regards as the invention.
Claim 71 is rejected as being vague and indefinite when the claim recites "wherein the (meth)acrylates are: a) monomers and/or oligomers; and/or b) polyester acrylates and/or methacrylates”, because it is not clear the recited (meth)acrylates are used alternately or by combination. In the office action, it is taken the (meth)acrylates as recited are used alternately.
Claim 72 is rejected as being vague and indefinite when the claim recites "comprising ≤7wt% of one or more additional photoinitiators” because the base for wt% is not clear, it could base on the total weight of the composition, solid content of the composition, or weight of one or more of the major components in the composition. In the office action, it is taken that it is based on the total weight of composition.
Claim 73 is rejected as being vague and indefinite when the claim recites "wherein the synergist is present in the composition in an amount between 5 and 15 wt%” because the base for wt% is not clear, the base could be total weight of the composition, solid content of the composition, or weight of one or more of the major components in the composition. In the office action, it is taken that the base is the total weight of the composition.
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 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 70-72 and 74-75 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsueh et al (US 2013/0296485, ‘485 hereafter).
Regarding claims 70-72 and 74-75, ‘485 discloses a coating composition, which can be applied to a substrate by a inkjet-printing and curable by UV reading upon UV-inkjet ink composition ([0016], [0049]-[0056], [0061], [0073], [0075]); comprising a reaction product of dibenzoylmethane ([0032]-[0041]. [0083], [0098], [0102]), which is an aromatic Michael addition donor materials comprising two active methylene hydrogens and at least two benzoyl-moieties, with a Michael addition acceptor materials being a mono or multi-functional (meth)acrylate (0042]-[0049], [0098], [0102]); which is self-sensitive polymerizable [0049] and capable of initiating a free radical polymerization reaction when it is used in combination with a synergist such as photoinitiators ([0055]) and other synergists ([0056]); wherein the photoinitiator can be a Norrish type I photoinitiator with a content of 0.1 to 5 wt% based on total weight of the coating composition ([0055]). The coating composition may further comprise a (meth)acrylates ([0052], [0054])
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 73 is rejected under 35 U.S.C. 103 as being unpatentable over Hsueh et al (US 2013/0296485, ‘485 hereafter) as evidenced by Narayan-Sarathy et al (US 2007/0004815, ‘815 hereafter).
Regarding claim 73, ‘485 teaches all the limitations of claim 1, ‘815 also discloses that the coating composition may further comprise a synergist ([0056]) but does not specifically name a synergist being amines or thiols. However, it is well-known in the art that synergist amine, in a content of 5 to 15 wt% in a coating composition, can be used to prevent free radical polymerization of acrylate from oxygen inhibition, to improve surface curing of a coating composition, as evidenced by ‘815 ([0012]), therefore, one of ordinary skill in the art would have been motivated to use an amine synergist as known in the art, to modify the coating composition of ‘485, in order to render a coating composition having better surface curing performance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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