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
Response to Amendment
Applicant's amendments filed on 08/28/2026 have been entered. Claims 70-72, 74-75 and 81-90 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Newly submitted claims 81 and 85 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly added claims 81 and 85 require Micheal addition acceptor being halogen organic acid or ester as claim 81 and amino-based compounds as in claim 85, which are different materials as (meth)acrylate-based compounds as applied in the previous office action.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 81 and 85 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 87-90 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 70 requires the reaction product having each Michael addition donor material-derived moiety present in the reaction product is covalently attached to a single Michael addition acceptor-derived moiety, thus both r and s should be 1 in formula I as recited in the present claim 87. In addition, nowhere in the claim 70 requires R6, R4 and r as recited in the claims 88-90. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 70-72, 74-75, 82-84 and 86-87 are 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 claims 70-72 and 74-75, ‘485 discloses a coating composition, which can be applied to a substrate by an inkjet-printing and curable by UV reading upon UV-inkjet ink composition ([0016], [0049]-[0056], [0061], [0073], [0075]); comprising a reaction product of dibenzoylmethane satisfying present claim 82 ([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 include DPHA; which is self-sensitive polymerizable and has (meth)acrylate group satisfying present claims 83-84 and 86-87 ([0042]-[0049], [0098], [0102] [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]). ‘815 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. The coating composition may further comprise a (meth)acrylates ([0052], [0054]).
Response to Arguments
Applicant's arguments filed on 08/28/2026 have been fully considered and they are not persuasive.
Applicant argues that amended claim 70 includes the limitation "wherein each Michael addition donor material-derived moiety present in the reaction product is covalently attached to a single Michael addition acceptor-derived moiety." Thus, the molar ratio of Michael addition donor material to Michael addition acceptor is 1:1. However, the examiner’s position is that the limitation require that the reaction product as claimed having ratio of Michael addition donor material-derived moiety to Michael addition acceptor-derived moiety being 1:1, does not require the reactants to form the product, which are Michael addition donor material and Michael addition acceptor, having the same ratio; and the composition as claimed does not exclude excess amount of either Michael addition donor material or Michael addition acceptor material in the composition. It is also noted that the paragraph of ‘815 is cited as evidence for
using synergist amine to prevent free radical polymerization of acrylate from oxygen inhibition, to improve surface curing of a coating composition, is a well-known practice in the art. The rejection as drafted does not include any other technical features being taught by ‘815.
For the reasons set forth above and of record, the claims stand properly rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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