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
Applicant’s election without traverse of Group I, claims 1-9 in the reply filed on 3/19/2026 is acknowledged. Examiner notes that a serious examination burden may exist where a different field of search is required. In the instant case, an examination burden exists because the claims of each invention are independent from each other and would require a separate examination for non-prior art issues as well as prior art issues such as differing broadest reasonable interpretations. Claims 1-9 are under examination.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ono et al. (US PG Pub 2016/0376451 A1).
Regarding claims 1-2 and 4, Ono et al. teach a film obtained by photocuring a photocurable inkjet ink composition, which correspond to the coating composition (abstract), wherein the composition comprises a compound B represented by the formulas below ([0041],[0060])(which correspond to the first monomer), a (meth) acrylate monomer E [0078] (which correspond to the second monomer), a photopolymerization initiator (claim 4), a surfactant ([0044], claim 1) and a solvent ([0044], claim 5).
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wherein X is an oxygen atom and R18 and R19 are selected from the following groups:
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wherein R20 is a divalent hydrocarbon group having 1 to 10 carbons, R21 is a hydrogen or a methyl group ([0060]- [0062]), thereby reading on the first monomer represented by chemical formulas 1 or 2, as required by the instant claim.
Regarding claim 3, Ono et al. teach the compound B represented by
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[0060], wherein R18 is
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, wherein R20 is a divalent hydrocarbon group having 1 to 10 carbons, R21 is a hydrogen or a methyl group ([0060]-[0062]), thereby reading on the first monomer represented by chemical formula 1, as required by the instant claim. This disclosure of the claimed subject matter is sufficiently specific to constitute anticipation under 35 USC 102.
Regarding claim 5, Ono et al. teach the composition comprises a (meth)acrylate monomer (E) for adjusting viscosity [0044], wherein specific examples of the (meth)acrylate monomer (E) are tricyclodecanedimethanol di(meth)acrylate, 1,4-cyclohexanedimethanol di(meth)acrylate [0081], thereby reading on a diol diacrylate as the second monomer. Although Ono et al. listed as one possible selection out of many acrylate monomers, the MPEP 2131.02 teaches: II. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Therefore, the above claim is anticipated.
Regarding claim 7, Ono et al. teach the composition comprises 50-75 wt.% of solvent relative to the total composition [0077], as required by the instant claim.
Regarding claim 9, Ono et al. are silent on the surface tension of the composition. However, in view of the substantially identical composition of Ono et al., it is reasonable to infer that the composition of Ono et al. would possess the recited surface tension because surface tension is an inherent property.
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 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US PG Pub 2016/0376451 A1).
Ono et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 6, Ono et al. teach the composition comprises 1-60 wt.% of the first monomer (compound B) [0065], 1- 60 wt.% of the second monomer (methacrylate monomer E) [0083], 1-10 wt.% of the photoinitiator [0072], 50-75 wt.% of solvent [0077], 0.1-1 wt.% of surfactant, relative to the total weight of the composition. Thus, by examiner’s calculation the solid content of the composition per 100 wt.%, excluding the solvent is approximately 2-95.8 wt.% of first monomer, 2-95.8 wt.% of second monomer, 2- 82.6 wt.% of the photoinitiator and 0.2-25 wt.% of surfactant.
Ono et al. and the claims differ in that Ono et al. do not teach the exact claimed ranges for the first monomer, second monomer, photoinitiator and surfactant as recited in the instant claims. However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Ono et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 8, Ono et al. teach the viscosity of the composition is in a range of 2-25 mPa.s (cps), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Ono et al. MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
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