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
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 1, 2025.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The following claims are rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims in the chart of U.S. Patent No. 12,410,320 in view of Shimura et al (US 10,005,911).
Current invention claims
Patent claims
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The claims of the patent does not contain the compound (H) containing at least one hydroxyl group. Shimura teaches a curable composition for ink-jet printing that contains a photopolymerization initiator and a hydroxyl group containing (meth)acrylate compound (abstract). Shimura teaches the motivation for adding the hydroxyl group containing (meth)acrylate to be because it shows excellent adhesion and protection performance to a substrate (column 4, lines 48-60). The patent and Shimura are analogous in the art of ink-jet curable compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to add the hydroxyl group containing monomer of Shimura to the patent, thereby, obtaining the present invention.
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.
Claims 1-14 and 21-29 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (US 2015/0064417).
With regards to claims 1-3 and 5, Choi teaches a composition applicable for inkjet printing (abstract) that contains a (meth)acryloyl group containing monomer, a block isocyanate, and a photo-polymerization initiator (abstract) wherein the composition contains a polyfunctional (meth)acrylate (reading on claimed (N)) with a monofunctional (meth)acrylate (0051) (reading on claimed (M)) and the addition of a (meth)acrylate having an OH group (0046) (reading on claimed (H)). Choi teaches the number of acrylate groups to be 5 and the number of isocyanate groups to be 2 (0146 example 4) reading on a ratio of acrylate to isocyanate groups to be 2.5.
Choi does not teach the molar concentration of the acrylate groups and the molar concentration of the acryloyl groups in claimed compound (N).
However, in looking at example 4 of Choi, the amount of polyfunctional monomer to be 30 parts in a composition having 87.1 total parts (reading on 34%), the amount of monofunctional monomer to be 20 parts (reading on 23%) and the amount of hydroxyl containing monomer to be 20 parts (reading on 23%) which provides 2.9 mol/kg of acrylate groups and the amount molar concentration of the acryloyl groups in the claimed compound (N) to be 20% (0146 example 4).
With regards to claims 4 and 21, Choi teaches the compound reading on claimed (N) to be pentaerythritol triacrylate (0152) as the only compound having more than one acryloyl group and thus reading on 100% of claimed (N) not having more than 3 functional groups.
With regards to claim 6, Choi teaches the photo-polymerization initiator to include phosphine oxide compounds (0069).
With regards to claims 7 and 23, Choi teaches the isocyanate groups of the isocyanate compound to be blocked (0056).
With regards to claims 8 and 26, Choi teaches the amount of hydroxyl groups per compound in the composition to be 2 and the number of isocyanate groups per isocyanate compound to be 2 (0146 example 4) reading on a ratio of 1.
With regards to claims 9 and 27, Choi teaches the hydroxyl containing (meth)acrylate to include diol compounds (0045).
With regards to claims 10 and 28, Choi teaches the only compound not included in claimed (M), (N), (R), (D), and (H) to be a leveling agent at a concentration of 0.1 parts in a composition having 87.1 total parts (reading on 0.11%) (0146 example 4) reading on 99.9% of the claimed compounds present in the composition.
With regards to claim 11, Choi teaches the viscosity of the inkjet ink to be 150 mPas or less (0083).
With regards to claim 12, Choi teaches the only initiator to be a photo-polymerization initiator that is not a cationic or anionic initiator (0146 example 4 and 0160-0161).
With regards to claims 13 and 29, Choi teaches the only polymerizable compounds to contain acrylate groups (0146 example 4).
With regards to claim 14, Choi teaches the addition of a polymerization inhibitor (0079).
With regards to claim 22, Choi teaches the initiator to include 2,4,6-trimethylbenzoyl diphenylphosphine oxide (0069).
With regards to claims 24 and 25, Choi teaches the blocking agent for the isocyanate compound to include caprolactam (0064).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following reference teaches the composition, however, the isocyanate is reacted to form a urethane prior to putting in the composition: Yoshihiro et al (JP 2006298952).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763