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 of Group I, claims 1-14, without traverse in the reply filed on 11/26/2025 is acknowledged.
Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/26/2025.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima et al. (JP-2020094102-A), with reference to the included machine translation (hereinafter referred to as “Nakajima”), with evidence from Maeda et al. (WO-2013161298-A1), with reference to the included machine translation (hereinafter referred to as “Maeda”), as to the rejection of claims 1-3 and 6-9.
Regarding claims 1 and 6, Nakajima teaches an electron beam curable ink (see Nakajima at para. 0001, teaching an electron beam-curable aqueous inkjet ink composition) comprising:
• a polymerizable monomer A having a ClogP value of 2.3 or less (1.5 or less, regarding claim 6) (see Example 13 of Nakajima at para. 0062, teaching an example ink containing 30 wt% of dimethyl acrylamide and 10 wt% of polyethylene glycol (600) diacrylate; dimethyl acrylamide has a ClogP value of -0.2, as disclosed by Applicant’s specification at Table 1 at pg. 10; further, PEG600 diacrylate has a ClogP value of -0.16, as evidenced by at Maeda at pg. 6, para. 5); and
• 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 Example 13 of Nakajima at para. 0062, teaching an example ink containing 0.5 wt% of acetylene diol surface conditioner, i.e., a surfactant), and
• a content of a polymerization initiator is less than 1% by mass relative to the total amount of the electron beam curable ink (see Example 13 of Nakajima at para. 0062, teaching an example ink; Example 13 does not contain a polymerization initiator, thus making the content of the initiator 0%).
Regarding claim 2, see Example 13 of Nakajima at para. 0062, teaching an example ink containing 40 wt% of monomers that correspond to the monomer A (30 wt% of dimethyl acrylamide + 10 wt% of PEG600 diacrylate = 40 wt% total); this value of 40 wt% falls within the claimed range.
Regarding claim 3, see Example 13 of Nakajima at para. 0062, teaching an example ink containing 40 wt% of monomers that corresponds to the monomer A (30 wt% of dimethyl acrylamide + 10 wt% of PEG600 diacrylate = 40 wt% total), and 0.5 wt% of surfactant; thus, the mass ratio of the monomer to the surfactant is 40:0.5, or 80; this value of 80 falls within the claimed range.
Regarding claims 7-8, see Example 13 of Nakajima at para. 0062, teaching an example ink containing PEG600 diacrylate; PEG600 is a polyfunctional (meth)acrylate including two or more ethylene oxide chains.
Regarding claim 9, see Example 13 of Nakajima at para. 0062, teaching an example ink containing 30 wt% of dimethyl acrylamide and 10 wt% of PEG600 diacrylate; dimethyl acrylamide has a viscosity of 1.3 mPa-s (as disclosed by Applicant’s specification at pg. 10), which is below the claimed viscosity of 60 mPa-s; further, the only other remaining monomer, PEG600 diacrylate, has a content of 10 wt% in the ink; thus, even if PEG600 diacrylate has a viscosity above 60 mPa-s, it necessarily follows the ink meets the claimed limitation, given that 10 wt% falls within the claimed range.
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.
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 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima.
Regarding claim 10, while Example 13 of Nakajima teaches the ink according to claim 1 outlined above, Example 13 of Nakajima fails to teach the surfactant as being a silicone-based surfactant.
However, Nakajima teaches the surface conditioner may be an acetylene-based or silicone-based surface adjusting agent (see Nakajima at para. 0035).
In this case, both acetylene-based and silicone-based surface conditioners are functional equivalents, i.e., both are surface conditioners suitable for use in the ink of Nakajima.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the acetylene-based surface conditioner in Example 13 of Nakajima with a silicone-based surface conditioner like that disclosed by Nakajima, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Regarding claim 11, while Example 13 of Nakajima teaches the ink according to claim 1 outlined above, Example 13 of Nakajima fails to teach a content of the surfactant to range from 1 to 10% by mass relative to the total amount of the electron beam curable ink.
However, Nakajima teaches broadly that the content of the surface conditioner may range from 0.1 to 1.5% by mass in the ink (see Nakajima at para. 0036).
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 surfactant in Example 13 of Nakajima to range from 0.1 to 1.5% by mass, as Nakajima teaches as such broadly for their ink (see Nakajima at para. 0036). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
This range of 0.1 to 1.5% by mass overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 1-14 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 and 6, 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); and
• 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 content of a polymerization initiator is less than 1% by mass relative to the total amount of the electron beam curable ink (see Torfs at para. 0109, teaching the ink may contain a photoinitiator in an amount ranging from 0.3 to 15 wt%; this range overlaps the claimed range, 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 4, 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.”
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.
Conclusion
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.
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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.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731