DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claim 2 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 4/9/2026. Thus, the following action is properly made final.
Claim Objections
Claim 1 objected to because of the following informalities: “a total content” should be “the total content” because of inherent antecedent basis. Appropriate correction is required.
Claim 5 objected to because of the following informalities: formula (I) should be H2C=CR1…. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “an aliphatic urethane oligomer”. However, the specification only support an aliphatic urethane acrylate oligomer.
Claim Rejections - 35 USC § 103
Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Araki (WO2022070517) in view of Carlson et al (US 6,534,128).
Claims 1-2, 4, 6: Araki teaches a radiation curable ink jet composition 65 wt% of GTA glycerin triacrylate,10wt% of N-vinylcaprolactam, 0.45 wt% of phenoxyethyl acrylate, 3-methyl-1,5-pentanediol diacrylate, and an initiator TPO-L (2,4,6-trimethylbenzoyl) ethoxyphenylphosphine oxide (example 11). Araki further teaches urethane (meth)acrylate can be used as radical polymerizable monomer [0064-0065].
Araki does not teach an aliphatic urethane oligomer.
However, Carlson discloses a low viscosity aliphatic urethane oligomer and using it in an inkjet composition can prevent the print from shrinking and improve properties such as adhesion, resilience etc. (2:3:40, examples). Carlson further teaches when the urethane oligomer is used, the inkjet composition comprising 1-40 wt% of oligomer, 60-90 wt% of radiation curable reactive diluent (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to partially replace GTA and/or 3MPDDA with the aliphatic urethane oligomer of Carlson to improve physical properties of the inkjet composition. In the resulting composition, the content of GTA would overlap the claimed range.
Claim 3, 5: Araki teaches the radical polymerizable monomer may be any of a monofunctional a bifunctional monomer, and a trifunctional or higher functional monomer [0045]. The preferred trifunctional monomer can be glycerin triacrylate and preferred monofunctional monomer can be isobornyl acrylate [0179]. The bifunctional monomer can be 2-(2-vinyloxyethoxy)ethyl (meth)acrylate [0060, 0076].
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763