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 .
This Office Action is in response to the amendments and arguments filed April 28, 2026 wherein claims 1-29 are currently pending and claims 15-20 are withdrawn due to a restriction requirement.
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)) reading on a compound that is differtn from (M), (N), and (D). 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).
Response to Arguments
Applicant’s arguments, see pages 8 and 9, filed April 28, 2026, with respect to the rejection of claims 1-6, 10-14, 21, 22, 28, and 29 under double patenting have been fully considered and are persuasive. The rejection of the above claims with regard to the given rejection has been withdrawn.
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive.
Argument - Applicant argues that the statement that the claimed compound (H) is different than the compounds (D), (M), and (N) and that being different is further defined in the specification as meaning that they don’t share (meth)acryloyl groups.
Response - The definition in the specification regarding (H) to be different is not explicitly clear as it states that the relevant specific groups of (D), (M), and (N) are not contained in (H). However, it is unclear from that definition what “the relevant” group is. Further, the broadest reasonable interpretation of the claim simply states that the compound is different from (D), (M), and (N) meaning that the compound only needs to not be the exact same compound as the other components. For example, hydroxy ethyl (meth)acrylate is different from ethyl (meth)acrylate. Therefore, this argument is not persuasive.
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 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
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