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 .
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.
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.
Claim(s) 1 and 3-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimohara et al. (US Serial No. 2008/0241485), in view of Bollen (EP 3287499) and Seno et al. (US Serial No. 2012/0242768).
Regarding claims 1, 4, and 5; Shimohara et al. teaches an inkjet recording composition comprising a vinyl ether monomer [0077, 0086], a compound having 3-10 mercaptan groups [0130], an onium salt photoacid generator [0205], and a photoradical generating agent [0020-0021; clms8-9].
Shimohara et al. fails to teach a stabilizing agent comprising an imidazole compound. Bollen teaches a composition suitable for use as inkjet ink, the composition further comprising a dispersion-stabilizing compound such as an imidazole having a thiol group (radical polymerizable group) [0109]. Shimohara et al. and Bollen are analogous art because they are both concerned with the same field of endeavor, namely photopolymerizable inkjet ink compositions. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the imidazole dispersion stabilizer, as taught by Bollen, to the composition of Shimohara et al., and would have been motivated to do so in order to achieve dispersion stability of the ink composition, as suggested by Bollen [0108].
Shimohara et al. teaches thioxanthone [0206], however fails to teach a photosensitizing agent comprising N-alkyl carbazole. Seno et al. teaches a photocurable inkjet ink composition comprising photosensitizers such as N-vinyl carbazole and thioxanthone [0111]. Therefore, Seno et al. teaches that N-vinyl carbazole and thioxanthone are functional equivalents for the purpose of functioning as a photosensitizer for inkjet ink compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Regarding claim 3; Shimohara et al. teaches the solvent is optional [0164].
Regarding claim 6; Shimohara et al. does not explicitly teach an absolute difference between an initial viscosity and post storage viscosity. In view of the compositions being substantially similar, the compositions would necessarily possess the same properties. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to the applicants to show otherwise. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 2977) and In re Fitzgerald, 205 USPQ 594 (CCPA).
Regarding claim 7; Shimohara et al. teaches a cured film [0148].
Regarding claims 8-9; Shimohara et al. teaches a method of coating via inkjet, exposing the coating to irradiation, and heating said coating [0004, 0248-0251].
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimohara et al. (US Serial No. 2008/0241485), in view of Bollen (EP 3287499) and Seno et al. (US Serial No. 2012/0242768), as applied to claim 1 above, and further in view of Ide et al. (US Serial No. 2011/0001190).
Shimohara et al., Bollen, and Seno et al. render obvious the basic claimed curable composition, as set forth above, with respect to claim 1.
Regarding claim 2; Shimohara et al. fails to teach the photoacid generator comprises a diazomethane compound. Ide et al. teaches a photocurable thiol-ene type inkjet ink composition comprising a photoacid generator such as a diazomethane [0191]. Shimohara et al. and Ide et al. are analogous art because they are both concerned with the same field of endeavor, namely photocurable inkjet ink compositions. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the diazomethane photoacid generator, as taught by Ide et al., to the composition of Shimohara et al., and would have been motivated to do so in order to achieve quick and efficient polymerization of the compound.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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