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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the limitation "a UV-curable oligomer" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is unclear of the oligomer in claim 1 is intended to be further added to the composition since the composition in claim 1 is required to already comprise of UV-curable oligomer? It is unclear if applicant is intending for the oligomer in line 2 of claim 2 is the same “UV-curable oligomer” required in lines 1-2 and 3 of claim 1.
Additionally, claim 4, lines 3-4, requires the UV-curable oligomer has a structural unit derived from a polyisocyanate compound having three or more isocyanate groups in its structure, it is unclear if applicant intends for the “UV curable oligomer” in claim 2, line to comprise the claimed structural unit in lines 3-4 or if applicant intends for the “UV curable oligomer” required in claim 1 to further comprise the claimed isocyanate structural unit in lines 3-4. Clarification is requested.
Claim 16 recites the limitation "a UV-curable oligomer" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is unclear of the oligomer in claim 16 is intended to be further added to the composition since the composition in claim 15 is required to already comprise of UV-curable oligomer? It is unclear if applicant is intending for the oligomer in line 2 of claim 16 is the same “UV-curable oligomer” required in lines 1-2 and 3 of claim 15.
Additionally, claim 16, lines 3-4, requires the UV-curable oligomer has a structural unit derived from a polyisocyanate compound having three or more isocyanate groups in its structure, it is unclear if applicant intends for the “UV curable oligomer” in claim 16, line to comprise the claimed structural unit in lines 3-4 or if applicant intends for the “UV curable oligomer” required in claim 15 to further comprise the claimed isocyanate structural unit in lines 3-4. Clarification is requested.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS. —Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 14, 16 and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 4 sets forth the composition comprises a UV oligomer, a colorant and a mercapto compound. However, the composition of claim 1 is required to comprise a colorant and a mercapto compound. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The composition of claim 14 sets forth the dispersion further comprises from 0.01 to 10 mass % of a mercapto compound; however, the dispersion of claim 1 is already required to comprise the same mass % of a mercapto compound. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 is requires the claim composition of claim 15 to comprise a polymerization initiator and/or a sensitizer; however, the composition of claim 15 already requires a polymerization initiator and/or a sensitizer. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4, 7, 10, 13-16 and 18 are is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Hayashi et al (7,951,526).
Hayashi sets forth modified silica particles and photosensitive composition comprising such. Said photosensitive composition comprises said modified silica particles as a filler and a photopolymerizable compound—see col. 2, lines 24-26; col. 4, lines 39-42; and lines 6, lines 22-24. The photosensitive composition further comprises (a) an infrared absorber; (b) a photopolymerization initiator; and (c) a resin binder—see col. 6, lines 25-27. Hayashi, also, sets forth the photoinitiator (b) may comprise an accelerator, such as a mercapto compound—see col. 15, lines 19-21. Said infrared absorbing compound is set forth as a compound which have a maximum absorption wavelength in a near infrared or infrared range, i.e., a maximum absorption wavelength in a range from 760 nm to 1200 nm, wherein said compounds include various pigments or dyes—see col. 6, lines 29-33 to col. 12, line 25 (this is deemed to anticipate the colorant of claim 1). Said composition may comprise thermal polymerization inhibitors in amounts from 0.01 to 5 % (col. 19, lines 4-24); colorants, such as dyes in amounts from 0.5 to 5 % by weight (col. 19, lines 25-33); as well as, other additives, such as inorganic fillers, plasticizers, and surfactants--see col. 19, lines 35-42. Said photosensitive resin composition additionally comprises a solvent in amounts from 1 to 50 wt. %--see col. 19, line 52 to col. 20, line 4.
Hayashi teaches the surface of said modified silica particles are modified by an organic compound having at least one ethylenically unsaturated group, at least one hydrophilic moiety and at least one silyloxy group represented by formula
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—see abstract, col. 3, lines 25-35; col. 4, lines 1-13.
Regarding the UV curable water-based compositions of claims 1-3, 7, 10 and 12: Hayashi expressly sets forth a photosensitive composition comprising:
1.40 wt.% by weight of a urethane acrylate1 oligomer obtained by reacting hexamethylene diisocyanate with hydroxyethyl acrylate and pentaerythritol triacrylate;
2.88 wt.% of an acrylic graft copolymer dispersion;
0.70 wt. % of a polyurethane acrylate2 obtained by reacting a tri-functional polyisocyanurate resin based on hexamethylene diisocyanate (DESMODUR N3200 having the structure
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) with 2-amino-4-hydroxy-6-methylpyrimidine and polyethylene glycol monoacrylate;
0.30 wt.% of photoinitiator, Irgacure 250;
0.07 wt. % of an infrared absorbing dye;
0.14 wt. % of mercapto-3-triazole (thiol/mercaptan compound as accelerator);
0.14 wt. % of dispersant Byk 336 (modified dimethylpolysiloxane copolymer);
0.95 wt. % of modified silica particles obtained in synthesis of silica compound 1-8 (cols. 28-29);
46.66 wt. % of n-propanol (solvent);
23.38 wt. % of water (corresponding to water-based); and
23.38 wt. % of methyl ethyl ketone (solvent)—see table 1 in col. 30, lines 40-50.
Said compositions is deemed to anticipate the compositions of claims 1-3, 7, and 10, wherein the polyurethane acrylate2 is deemed to correspond to applicant’s UV curable oligomer having a structural unit derived from a compound represented by formula (1). Said polyurethane acrylate2 comprises a structural unit from the polyethylene glycol mono-acrylate reactant which has the structural formula:
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which corresponds to formula (1) in claim 1 when x is an ethylene group. Said mercapto-3-triazole corresponds to applicant’s claimed mercapto compound. Said infrared absorbing dye correspond to applicant’s claimed colorant. Thus, the composition of claim 1 is anticipated. Said polyurethane acrylate2 further comprises a structural units derived from a hexamethylene diisocyanate-containing compound corresponding to applicant’s claimed structural units of claim 3, wherein the polyisocyanurate of the reaction mixture comprise three isocyanate groups (see compound above). Thus claim 3 is anticipated. Said composition comprises 0.14 wt. % of said mercapto compound overlapping in scope and anticipating claim 7. The Irgacure 250 and the mercapto-3-triazole (accelerator) are deemed to correspond to claim 9.
Regarding claim 10: It is deemed modified silica particles of synthesis compound 5 comprises a polyurethane acrylate oligomer having the formula
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bonded to the surface of silica particles. It is deemed this UV curable oligomer also anticipates the instantly claim oligomer comprising a structural unit derived from a compound represented by claimed formula (1), i.e., the reactive site and hydrophilic site in the above compound. Thus, it is deemed claim 10 is anticipated. The composition of claim 1 is not excluded from comprising more than one UV curable oligomer.
Regarding claim 12: Said composition from table 1 comprising said modified silica particles is coated onto an aluminum substrate (recording medium) and cured to obtain a printed lithographic plate (printed articles).
Regarding the UV curable water-based compositions of claim 4: Hayashi expressly sets forth a photosensitive composition comprising:
1.40 wt.% by weight of a urethane acrylate1 oligomer obtained by reacting hexamethylene diisocyanate with hydroxyethyl acrylate and pentaerythritol triacrylate;
2.88 wt.% of an acrylic graft copolymer dispersion;
0.70 wt. % of a polyurethane acrylate2 obtained by reacting a tri-functional polyisocyanurate resin based on hexamethylene diisocyanate (DESMODUR N3200 having the structure
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) with 2-amino-4-hydroxy-6-methylpyrimidine and polyethylene glycol monoacrylate;
0.30 wt.% of photoinitiator, Irgacure 250;
0.07 wt. % of an infrared absorbing dye;
0.14 wt. % of mercapto-3-triazole (thiol/mercaptan compound as accelerator);
0.14 wt. % of dispersant Byk 336 (modified dimethylpolysiloxane copolymer);
0.95 wt. % of modified silica particles obtained in synthesis of silica compound 1-8 (cols. 28-29);
46.66 wt. % of n-propanol (solvent);
23.38 wt. % of water (corresponding to water-based); and
23.38 wt. % of methyl ethyl ketone (solvent)—see table 1 in col. 30, lines 40-50. Said polyurethane acrylate2 comprises a structural units derived from a hexamethylene diisocyanate-containing compound corresponding to applicant’s claimed structural units of claim 4 (see above structure for DESMODUR N3200), wherein the polyisocyanurate of the reaction mixture comprise three isocyanate groups (see structure from above). Thus claim 4 is anticipated.
Regarding the dispersion of claims 13-14: Hayashi expressly sets forth a photosensitive composition comprising:
1.40 wt.% by weight of a urethane acrylate1 oligomer obtained by reacting hexamethylene diisocyanate with hydroxyethyl acrylate and pentaerythritol triacrylate;
2.88 wt.% of an acrylic graft copolymer dispersion;
0.70 wt. % of a polyurethane acrylate2 obtained by reacting a tri-functional polyisocyanurate resin based on hexamethylene diisocyanate (DESMODUR N3200 having the structure
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) with 2-amino-4-hydroxy-6-methylpyrimidine and polyethylene glycol monoacrylate;
0.30 wt.% of photoinitiator, Irgacure 250;
0.07 wt. % of an infrared absorbing dye;
0.14 wt. % of mercapto-3-triazole (thiol/mercaptan compound as accelerator);
0.14 wt. % of dispersant Byk 336 (modified dimethylpolysiloxane copolymer);
0.95 wt. % of modified silica particles obtained in synthesis of silica compound 1-8 (cols. 28-29);
46.66 wt. % of n-propanol (solvent);
23.38 wt. % of water (corresponding to water-based); and
23.38 wt. % of methyl ethyl ketone (solvent)—see table 1 in col. 30, lines 40-50. Said composition comprises 0.14 wt. % of said mercapto compound overlapping in scope with the claimed 0.01 mass % to 5 mass% and the polyurethane acrylate2 comprises a structural unit derived from a polyisocyanate having three or more isocyanate groups (see explanation of Desmodur N3200 above). Thus claims 13-14 are anticipated.
Regarding the dispersion of claims 15-16 and 18: Hayashi expressly sets forth a photosensitive composition comprising:
1.40 wt.% by weight of a urethane acrylate1 oligomer obtained by reacting hexamethylene diisocyanate with hydroxyethyl acrylate and pentaerythritol triacrylate;
2.88 wt.% of an acrylic graft copolymer dispersion;
0.70 wt. % of a polyurethane acrylate2 obtained by reacting a tri-functional polyisocyanurate resin based on hexamethylene diisocyanate (DESMODUR N3200 having the structure
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) with 2-amino-4-hydroxy-6-methylpyrimidine and polyethylene glycol monoacrylate;
0.30 wt.% of photoinitiator, Irgacure 250;
0.07 wt. % of an infrared absorbing dye;
0.14 wt. % of mercapto-3-triazole (thiol/mercaptan compound as accelerator);
0.14 wt. % of dispersant Byk 336 (modified dimethylpolysiloxane copolymer);
0.95 wt. % of modified silica particles obtained in synthesis of silica compound 1-8 (cols. 28-29);
46.66 wt. % of n-propanol (solvent);
23.38 wt. % of water (corresponding to water-based); and
23.38 wt. % of methyl ethyl ketone (solvent)—see table 1 in col. 30, lines 40-50. Said polyurethane acrylate2 in the above composition comprises a structural unit from the polyethylene glycol mono-acrylate reactant which has the structural formula:
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which corresponds to formula (1) in claim 1 when x is an ethylene group; a photopolymerization initiator (Irgacure 250); a surfactant (Byk 336); and a mercapto-compound (mercapto-3-triazole), thus claims 15-16.
Regarding claim 18: The polyurethane acrylate2 obtained by reacting a tri-functional polyisocyanurate resin based on hexamethylene diisocyanate (DESMODUR N3200 having the structure
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) with 2-amino-4-hydroxy-6-methylpyrimidine and polyethylene glycol monoacrylate.
Claim(s) 1-4 and 6-20 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Nakano et al (US2012/0225968).
Nakano sets forth ink compositions comprising a pigment; a water-soluble organic solvent; a surfactant; at least either of a urethane (meth)acrylate being represented by the following general formula (1) and having a weight average molecular weight of 1,000 to 10,000 and a cross-linked urethane (meth)acrylate having a constitutional unit including the urethane (meth)acrylate; a compound having a radical polymerizable group(s); a photoradical polymerization initiator; and water, wherein general formula (1) is
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, where n is 1 to 30, A1 is a residue of a hydroxyl group-containing (meth)acrylate, B1 is a residue of diisocyanate, C1 is a residue of a diol of an acyclic hydrocarbon or a cyclic hydrocarbon, and D1 is a residue of a polyoxyalkylene glycol mono-alkyl ether—see abstract; [0016]; [0041] and [0074].
Nakano sets forth the ink composition is a light curable aqueous emulsion having an average particle size of preferably from 30 to 2000 nm comprising at least one of a urethane (meth)acrylate represented by the general formula (1) and a cross-linked urethane (meth)acrylate, a compound having a radical polymerizable group and a photopolymerization initiator—see [0204]. Said emulsion particles encapsulate said photopolymerization initiator and polymerizable compounds—see [0201].
Regarding the ultraviolet-curable water-based ink of claims 1-4 and 6-11, as well as, the printed article of claim 12:
Nakano explicitly sets forth a ink composition comprising 8.3 parts of a self-dispersed pigment; 8 parts of propylene glycol; 3 parts of 1,2-hexanediol; 1 parts Byk-348 (surfactant); 0.3 parts Byk-333 (surfactant); 30 parts of a light curable aqueous emulsion e-4; and 49.4 parts water; wherein the light curable aqueous emulsion comprises a urethane acrylate oligomer having the structure represented by formula (1), wherein A is a residue of comprising 5 (meth) acrylate polymerizable groups from dipentaerythritol pentaacrylate and D is the residue of methoxy polyethylene glycol(2000) which corresponds to claimed formula (1) when Y is an acyl group, wherein the oligomer additionally comprises isocyanate residues units from isophorone diisocyanate (see synthesis example X [0273]) encapsulating polypentaerythritol polyacrylate, a polymerizable compound; a phosphine oxide photoinitiator (TPO); a photosensitizer (DETX); a fluorescent brightening agent; and a 2.5 parts by weight of a crosslinking polymercaptan compound (PEMP, a primary thiol having 4 thiol groups)—claims 1-4 and 6-10, see [0269]; [0273]; [0298], example 16 and table 4.
Regarding claim 11: Nakano sets forth said light curable aqueous emulsion has an average particle size of from 30 to 2000 nm, which encompasses the particle size of claim 11, comprising at least one of a urethane (meth)acrylate represented by the general formula (1)—see [0204].
Regarding claim 12 the composition of example 16 is filled into inkjet ink cartridges and printed via inkjet printing onto A4 paper (a recording medium) to obtain a cured printed article—see [0308].
Regarding claim 13-14: The light curable emulsion comprising the urethane acrylate oligomer having the structure represented by formula (1), wherein A is a residue of comprising 5 (meth) acrylate polymerizable groups from dipentaerythritol pentaacrylate and D is the residue of methoxy polyethylene glycol(2000) which corresponds to claimed formula (1) when Y is an acyl group, wherein the oligomer additionally comprises isocyanate residues units from isophorone diisocyanate (see synthesis example X [0273]) encapsulating polypentaerythritol polyacrylate, a polymerizable compound; a phosphine oxide photoinitiator (TPO); a photosensitizer (DETX); a fluorescent brightening agent; and a 2.5 parts by weight of a crosslinking polymercaptan compound (PEMP, a primary thiol having 4 thiol groups) is deemed to anticipate the dispersion of claims 13-14.
Regarding the UV-curable water-based composition of claims 15-20:
Nakano explicitly sets forth a ink composition comprising 8.3 parts of a self-dispersed pigment; 8 parts of propylene glycol; 3 parts of 1,2-hexanediol; 1 parts Byk-348 (surfactant); 0.3 parts Byk-333 (surfactant); 30 parts of a light curable aqueous emulsion e-4; and 49.4 parts water; wherein the light curable aqueous emulsion comprises a urethane acrylate oligomer having the structure represented by formula (1), wherein A is a residue of comprising 5 (meth) acrylate polymerizable groups from dipentaerythritol pentaacrylate and D is the residue of methoxy polyethylene glycol(2000) which corresponds to claimed formula (1) when Y is an acyl group, wherein the oligomer additionally comprises isocyanate residues units from isophorone diisocyanate (see synthesis example X [0273]) encapsulating polypentaerythritol polyacrylate, a polymerizable compound; a phosphine oxide photoinitiator (TPO); a photosensitizer (DETX); a fluorescent brightening agent; and a 2.5 parts by weight of a crosslinking polymercaptan compound (PEMP, a primary thiol having 4 thiol groups) within the formed micelles—claims 15-20.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Neither of the cited references set forth explicitly and/or fairly suggest the thiol compound is a secondary thiol. Both set forth primary thiol compounds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
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