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Claims 13-19 and 21-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06 July 2026.
Applicant's election with traverse of group I, claims 1-6, 8, and 10-12 in the reply filed on 06 July 2026 is acknowledged. The traversal is on the ground(s) that Spitteler in view of Porter does not render obvious the instant claim 1. This is not found persuasive because, as stated below, the invention of claim 1 is rendered obvious by modified Kendra. Therefore, the common technical feature of the groups does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
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 4 and 12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the term “high degree of acrylic unsaturation” which is a relative term which renders the claim indefinite. The term “high degree” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination claim 4 is interpreted such that any degree of unsaturation satisfies the claimed limitation.
Claim 12 recites the phrase "such as" which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, claim 12 is interpreted such that the options following the phrase “such as” are optional.
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 1-2, 4-6, 8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kendra et al. (US 20210395425 A1) in view of Walter et al. (EP 0614953 A1; herein English machine translation used for all citations) and Menzel et al. (US 20150167139 A1).
Regarding claim 1, Kendra teaches a primer composition (C) for flexographic printing wherein said primer composition comprises a monofunctional or difunctional radiation curable monomer (c1) (see monomer of Kendra) in an amount of about 5 wt.% to about 25 wt.% (Kendra, Abstract, Par. 0024-0025-0026, 0044-0045, 0063). Kendra teaches the primer composition comprises a photoinitiator in an amount of 5-10 wt.% (Kendra, Par. 0046-0047). Kendra teaches the primer composition comprises an acid functional radiation curable monomer (c3) (carboxylated acrylate) present in a range of 35-55 wt.% which has an acid value of 270 mg KOH/g (Kendra, Par. 0004 and 0038-0040). Kendra teaches the primer composition comprises a multifunctional radiation curable monomer (c4) with an acrylate functionality of at least 3 (see urethane acrylate with hexa-functionality) (Kendra, Par. 0004 and 0041-0043). Kendra’s photoinitiator amount, (c3) amount, and (c3) acid value lie within the claimed ranges of 0-20 wt.%, 25-60 wt.%, and more than 240 mg KOH/g respectively and therefore establish a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Kendra’s (c1) amount overlaps the claimed range of 25-60 wt.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Kendra is silent regarding the primer composition comprising a cellulosic polymer (c2) in a range of 2-12 wt.%.
Walter teaches a radiation (UV) curable flexographic printing composition comprising an acrylate compound, a photoinitiator, and a cellulosic polymer (cellulose acetate butyrate) in an amount of 0.5-3 wt.% (Walter, Par. 0030, 0044-0045), which overlaps the claimed range of 2-12 wt.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Kendra and Walter are analogous art as they both teach radiation curable compositions for flexographic printing comprising a photoinitiator and an acrylate compound. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the cellulosic polymer of Walter in the primer composition of Kendra. This would allow for binding of the composition (Walter, Par. 0007 and 0044).
Modified Kendra is silent regarding the primer composition having an acid value of 50-135 mg KOH/g.
Menzel teaches a radiation curable primer composition comprising an acylate compound and a photoinitiator wherein the primer composition has an acid value of 10-120 mg KOH/g for improved adhesion (Menzel, Par. 0007-0008, 0025, 0029-0030 0203), which overlaps the claimed range of 50-135 mg KOH/g and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Kendra and Menzel are analogous art as they both teach radiation curable primer compositions comprising an acrylate compound and a photoinitiator. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the primer composition of modified Kendra to have an acid value within the claimed range. This would allow for improved adhesion (Menzel, Par. 0029-0030).
Regarding claim 2, modified Kendra teaches the radiation curable monomers (c1) has an average acrylate functionality of 2 (Kendra, Par. 0045 – see “diacrylate).
Regarding claim 4, modified Kendra teaches the multifunctional radiation curable monomer (c4) is a hexafunctional urethane acrylate (Kendra, Par. 0041-0043).
Regarding claim 5, modified Kendra teaches the multifunctional radiation curable monomer (c4) is present in a range of about 15-45 wt.%, which overlaps the claimed range of 0.1-15 wt.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2131.03.
Regarding claims 6 and 8, modified Kendra teaches that the cellulosic polymer (c2) is cellulose acetate butyrate (CAB) (Walter, Par. 0030, 0044-0045), which is the same as the instant invention per the instant specification Par. 0056. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. Therefore, absent objective evidence to the contrary, the cellulosic polymer of modified Kendra would have inherently exhibited the claimed glass transition temperature, melting temperature, and average molecular weight.
Regarding claim 10, modified Kendra teaches the cellulosic polymer (c2) is present in an amount of 0.5-3 wt.% (Walter, Par. 0030, 0044-0045) and the acid functional radiation curable monomer (c3) is present in an amount of 35-55 wt.% (Kendra, 0038-0040). This results in a ratio of (c2) to (c3) of 1:101 to 1:11.67, which overlaps the claimed range of about 1:30 to about 1:6 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claim 11, modified Kendra teaches the acid functional radiation curable monomer (c3) is a carboxylated polyester acrylate (Kendra, Par. 0039-0040).
Regarding claim 12, modified Kendra teaches the photoinitiator is from the alpha-hydroxy ketone chemical family (Kendra, Par. 0047 – see “1-hydroxycyclohexyl phenyl ketone (HCPK)).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kendra et al. in view of Walter et al. and Menzel et al. as applied to claim 1 above, further in view of Arora et al. (US 20110060069 A1).
Regarding claim 3, modified Kendra teaches all of the elements of the claimed invention as stated above for claim 1. Modified Kendra is silent regarding the one or more radiation curable monomers (c1) having an acid value lower than 240 mg KOH/g.
Arora teaches a primer composition for flexographic printing comprising a radiation curable monomer that is hexanediol diacrylate (Arora, Par. 0002, 0031, and 0046), which is the same radiation curable monomer as the instant invention per the instant specification Par. 0059 and 0061. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. Arora’s radiation curable monomer would thus have inherently exhibited the claimed acid value absent objective evidence to the contrary.
Modified Kendra and Arora are analogous art as they both teach primer compositions for flexographic printing comprising a radiation curable monomer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the monomer of Arora as the monomer of modified Kendra. This would allow for viscosity modification of the composition (Arora, Par. 0031).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS J KESSLER/Examiner, Art Unit 1782
Prosecution Insights