DETAILED ACTION
Response to Amendments
In response to the amendment received on 05/14/2026:
• Claims 1-3 and 5-17 are currently pending. Claim 4 is canceled. Claims 15-16 are withdrawn for being directed to a non-elected invention(s).
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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Torfs et al. (US-20180206342-A1) (hereinafter referred to as “Torfs”).
Regarding claims 1, 6, and 17, Torfs teaches an ink (see Torfs at para. 0038, teaching a UV free radical curable inkjet ink) comprising:
• a polymerizable monomer A having a ClogP value of 2.3 or less (1.5 or less, regarding claim 6) (see Torfs at para. 0038, teaching the ink as including a difunctional monomer or oligomer; also see Torfs at para. 0059, teaching triethylene glycol diacrylate as a suitable difunctional monomer; triethylene glycol diacrylate has a ClogP value of 1.3, as disclosed in Applicant’s specification at para. 0042);
• a surfactant, wherein a content of the surfactant is 0.3% by mass or more relative to a total amount of the electron beam curable ink (see Torfs at para. 0158-0159, teaching the ink may contain a surfactant in an amount of less than 10 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05), and
• a polymerizable monomer B having a ClogP value of more than 2.3 and a viscosity of 20 mPa•s or less (see Torfs at para. 0076-0079, teaching the ink may contain a monofunctional monomer, such as isooctyl acrylate; isoocctyl acrylate has a ClogP value of 4.4 and a viscosity of 5.0, as disclosed by Applicant’s specification at Table 3 at pg. 14; isooctyl acrylate corresponds to the claimed “polymerizable monomer B”), wherein
• a content of a polymerization initiator is less than 1% by mass relative to the total amount of the electron beam curable ink (less than 0.1% by mass, regarding claim 17) (see Torfs at para. 0109, teaching the ink may contain a photoinitiator in an amount ranging from 0 to 50 wt%; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05).
It is noted that the limitation “electron beam curable” in the preamble is a property of the ink composition. Since the ink of Torfs is the same as that claimed, it necessarily follows that the ink is “electron beam curable” like claimed. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to provide evidence to the contrary. See MPEP § 2112-2112.02.
Regarding claim 2, see Torfs at para. 0068, teaching the content of the difunctional monomer (i.e., triethylene glycol diacrylate, or the polymerizable monomer A) in the ink to range from 15 to 90 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 3, see Torfs at para. 0158-0159, teaching the ink may contain a surfactant in an amount of less than 10 wt%; also see Torfs at para. 0068, teaching the content of the difunctional monomer (i.e., triethylene glycol diacrylate, or the polymerizable monomer A) in the ink to range from 15 to 90 wt%; thus, the ratio of the difunctional monomer to the surfactant in the ink of Torfs is greater than 1.5 (15% difunctional monomer min/10% surfactant max = 1.5; this range of greater than 1.5 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 5, see Torfs at para. 0068, teaching the content of the difunctional monomer (i.e., triethylene glycol diacrylate, or the polymerizable monomer A) in the ink to range from 15 to 90 wt%; also see Torfs at para. 0077, teaching the content of the monofunctional monomer (i.e., isooctyl acrylate, or the polymerizable monomer B) to range from 0 to 9 wt% in the ink; thus, the ratio of the difunctional monomer to the monofunctional monomer ranges from 1.67 or greater (15% difunctional monomer min/9% monofunctional monomer max = 1.67); this range of 1.67 or greater overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 7-8 and 14, see Torfs at para. 0059, teaching triethylene glycol diacrylate as a suitable difunctional monomer; triethylene glycol diacrylate is a polyfunctional (meth)acrylate including three ethylene oxide chains.
Regarding claim 9, see Torfs at para. 0038, teaching the ink as further containing a polyfunctional monomer (separate from the difunctional monomer); also see Torfs at para. 0069, teaching the polyfunctional monomer may include trimethylolpropane triacrylate; thus, Torfs teaches an ink containing triethylene glycol diacrylate as the difunctional monomer, trimethylolpropane triacrylate as the polyfunctional monomer, and isooctyl acrylate as the monofunctional monomer; among all three of these monomers, only trimethylolpropane triacrylate is a monomer having a viscosity greater than 60 mPa-s at 25 ° (106 mPa-s, see Applicant’s specification at Table 4 at pg. 16); also see Torfs at para. 0075, teaching a content of the polyfunctional monomer to range from 15 to 90 wt%; thus, Torfs teaches an ink where the content of trimethylolpropane triacrylate ranges from 15 to 90 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 10, see Torfs at para. 0161, teaching the surfactant may be a silicone surfactant.
Regarding claim 11, see Torfs at para. 0159, teaching the content of the surfactant may be less than 10 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 12, see Torfs at para. 0059, 0070, and 0079, teaching the ink may contain triethylene glycol diacrylate as a difunctional monomer, trimethylolpropane triacrylate as a polyfunctional monomer, and isooctyl acrylate as a monofunctional monomer; also see Torfs at para. 0068, teaching the ink as containing 15 to 90 wt% of the difunctional monomer; also see Table 6 of Torfs at pg. 14, teaching an example ink containing 41.76% of total difunctional monomer (VEEA is the difunctional monomer in the example ink; 30.06 wt% + 11.7% VEEA from Disp-W = 41.76% total VEEA in the example ink; also see Table 5 of Torfs at pg. 13), which falls within the range of 15 to 90 wt% taught by Torfs (see Torfs at para. 0068).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the difunctional monomer, e.g., triethylene glycol diacrylate, in the ink of Torfs to be 41.76 wt%, given that Torfs teaches an example ink containing the difunctional monomer in this amount and further given this value falls within the broad range of 15 to 90 wt% taught by Torfs (see Torfs at para. 0068 and Table 6 of Torfs at pg. 14).
Furthermore, see Torfs at para. 0075, teaching the ink as containing 15 to 90 wt% of the polyfunctional monomer; also see Table 6 of Torfs at pg. 14, teaching an example ink containing 31.5% of total polyfunctional monomer (18.5% TMPTA (trimethylolpropane triacrylate) + 13% DTMPTA (ditrimethylolpropane tetraacrylate) = 31.5% total polyfunctional monomer; also see Torfs at para. 0070 and 0214-0215), which falls within the range of 15 to 90 wt% taught by Torfs (see Torfs at para. 0070).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the polyfunctional monomer, e.g., trimethylolpropane triacrylate, in the ink of Torfs to be 31.5 wt%, given that Torfs teaches an example ink containing the polyfunctional monomer in this amount and further given this value falls within the broad range of 15 to 90 wt% taught by Torfs (see Torfs at para. 0070 and Table 6 of Torfs at pg. 14).
Moreover, see Torfs at para. 0077-0079, teaching the ink may contain 0 to 9 wt% of a monofunctional monomer, such as isooctyl acrylate; thus, following the above modifications, Torfs reasonably teaches an ink containing:
• 41.76 wt% of triethylene glycol diacrylate as a difunctional monomer;
• 31.5 wt% of trimethylolpropane triacrylate as a polyfunctional monomer; and
• 0 to 9 wt% of isooctyl acrylate as a monofunctional monomer.
Triethylene glycol diacrylate has a ClogP of 1.3 (see Applicant’s specification at Table 1 at pg. 10), isooctyl acrylate has a ClogP value of 4.4 (see Applicant’s specification at Table 3 at pg. 14), and trimethylolpropane triacrylate has a ClogP of 3.4 (see Applicant’s specification at pg. 16). The above information is simplified in table form below:
Component in ink of Torfs
Concentration of Component
ClogP Value of Component
Triethylene glycol diacrylate
41.76 wt%
1.3
Trimethylolpropane triacrylate
31.5 wt%
3.4
isooctyl acrylate
0 to 9 wt%
4.4
In order to calculate the range of the weighted average of ClogP values from the values in the above table, the Examiner will calculate the minimum weighted average value (i.e., when isooctyl acrylate content is 0 wt%) and the maximum weighted average value (i.e., when isooctyl acrylate content is 9 wt%). Further, the weighted average is calculated based on the formula at para. 0071 of Applicant’s specification:
Minimum weighted average of ClogP value (i.e., when the content of the monofunctional monomer is 0 wt%):
1.3(0.4176) + 3.4(0.315) + 4.4(0)
[AltContent: connector] = 2.2 weighted average minimum
0.4176 + 0.315 + 0
Maximum weighted average of ClogP value (i.e., when the content of the monofunctional monomer is 9 wt%):
1.3(0.4176) + 3.4(0.315) + 4.4(0.09)
[AltContent: connector] = 2.4 weighted average maximum
0.4176 + 0.315 + 0.09
Thus, Torfs reasonably teaches embodiments where the weighted average of ClogP values in their ink ranges from 2.2 to 2.4. This range of 2.2 to 2.4 falls completely within the claimed range.
Regarding claim 13, see Torfs at para. 0162 and 0164, teaching the ink may contain a reactive silicone surfactant that is polymerizable, e.g., silicone modified acrylates.
Response to Arguments
Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue the Examiner has pieced together isolated descriptions from the specification of Torfs with impermissible hindsight (see Applicant’s Remarks at pg. 7). Applicants further argue the ink in Torfs is a UV-curable ink, whereas the present invention is directed to an electron beam-curable ink (see Applicant’s Remarks at pg. 7). Moreover, Applicants argue Torfs does not teach ClogP value, nor does it disclose suppression of migration, nor does it provide any motivation to selectively combine individual elements of the present invention from among the disclosures therein (see Applicant’s Remarks at pg. 7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
"[A]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." MPEP 2145(X)(A). Here, Torfs explicitly teaches their ink may include a difunctional monomer, such as triethylene glycol diacrylate (see Torfs at para. 0059), a surfactant (see Torfs at para. 0158-0159), a monofunctional monomer, such as isooctyl acrylate (see Torfs at para. 0076-0079), and an initiator in an amount ranging from 0.3 to 15 wt% (see Torfs at para. 0109). Accordingly, Torfs explicitly teaches the claimed ink composition through the explicit teachings of such components as suitable materials. All such teachings were available to one of ordinary skill in the art before the effective filing date. Consequently, Torfs teaches the claimed ink.
Furthermore, the fact that Torfs teaches a “UV-curable” ink does not mean the ink is not “electron-beam curable” as claimed. UV-curable inks are known in the art to suitably function as electron-beam curable inks, i.e., they are not mutually exclusive (see US-20110118377-A1 at para. 0018). In any case, Torfs teaches the same composition as that claimed, including the same monomers as Applicants (see claim 1 rejection above). Consequently, the ink of Torfs necessarily would be “electron-beam curable” as claimed. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof shifts to Applicants to provide objective evidence to the contrary. See MPEP § 2112-2112.02.
Lastly, simply because Torfs doesn’t specifically mention ClogP value or migration does not preclude Torfs from reading on the claims. Nothing in the claims is directed to migration. Further, Torfs teaches monomers that meet the claimed ClogP values (see claim 1 rejection above). Applicants have not pointed to any evidence to suggest criticality or unexpected results with respect to their claimed composition. Moreover, a specific motivation is not required for the specific combination of materials in Torfs, given the rationale lies in Torfs explicit teachings of the components as suitable materials in their ink. Thus, Torfs reads on the claimed invention.
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a potential amendment to overcome the current grounds of rejection. It is noted that this amendment is suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendment won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if such amendment is added (i.e., allowability is NOT guaranteed following the incorporation of such amendment). Lastly, Applicants may use all or none of such suggestion – it is merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendment further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion 1 (support found at para. 0065 of Applicant’s specification):
“…a surfactant; and
a polymerizable monomer B having a ClogP value of more than 2.3 and a viscosity of 20 mPa • s or less,
wherein a content of the polymerizable monomer B relative to the total amount of the ink is 20% by mass to 80% by mass,
wherein a content of the surfactant…”
Examiner’s Note: The above proposed amendment would appear to overcome Torfs, given Torfs teaches a concentration of 0 to 9 wt% of monofunctional monomer (i.e., isooctyl acrylate) in their ink, which falls outside the proposed range of 20% by mass to 80% by mass.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hauck et al. (US-20110118377-A1) teach an inkjet printing device (see Nakashima at Abstract).
Nakashima et al. (US-20210347170-A1) (hereinafter referred to as “Nakashima”) teaches an inkjet printing device (see Nakashima at Abstract).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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, Amber R Orlando can be reached on 571-270-3149. 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.
/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
Prosecution Insights