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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 08/20/2021. It is noted, however, that applicant has not filed a certified copy of the JP2021-135103 application as required by 37 CFR 1.55.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Araki (# US 2015/0344709).
Araki discloses:
1. An active energy ray-curable ink (see Abstract), comprising:
a polymerizable compound (see Abstract; [0022]-[0025]); and
a colorant ([0124]-[0136]),
the polymerizable compound comprising:
an N-vinyl compound ([0041]-[0043]),
a monofunctional polymerizable compound ([0044]-[0053]), and
a compound selected from the group consisting of a difunctional (meth)acrylate (polyfunctional polymerizable compound; [0054]-[0064]) and a polymerizable silicone-based surfactant ([0090]-[0104]),
wherein a total content of a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of less than −30° C. and a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of more than 30° C., excluding the N-vinyl compound, is 10% by mass or less of a total amount of the polymerizable compound (see Examples), and
wherein a total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant is 0.5% to 2% by mass of the total amount of the polymerizable compound ([0100]).
2. The active energy ray-curable ink according to claim 1, wherein:
a content of the N-vinyl compound is 10% to 35% by mass of the total amount of the polymerizable compound (15 to 35%; [0043]), and
a content of the monofunctional polymerizable compound capable of forming a homopolymer is 60% to 85% by mass of the total amount of the polymerizable compound ([0037]; [0053]).
3. The active energy ray-curable ink according to claim 1, wherein the N-vinyl compound comprises N-vinylcaprolactam ([0042]).
4. The active energy ray-curable ink according to claim 1, wherein the monofunctional polymerizable compound capable of forming a homopolymer comprises phenoxyethyl acrylate ([0049]-[0052]).
5. The active energy ray-curable ink according to claim 1, wherein the number of carbon atoms included in the difunctional (meth)acrylate, excluding a (meth)acryloyl group-portion, is 4 to 36 (1 to 12 carbon; [0069]).
6. The active energy ray-curable ink according to claim 1, wherein the polymerizable compound comprises the polymerizable silicone-based surfactant ([0099]-[0104]).
7. An ink set (white and color ink; [0187]), comprising:
the active energy ray-curable ink according to claim 1; and
a pretreatment liquid (white ink; [0187]).
8. The ink set according to claim 7, wherein the pretreatment liquid comprises a polymerizable compound and a polyester resin ([0059]-[0067]).
9. The ink set according to claim 7, wherein the pretreatment liquid comprises a polymerizable compound including a polymerizable compound A having an acid group.
10. The ink set according to claim 8, wherein a proportion of a monofunctional polymerizable compound to the polymerizable compound included in the pretreatment liquid is 80% by mass or more (see Examples).
11. An image recording method, comprising:
applying the active energy ray-curable ink according to claim 1 to a substrate; and
irradiating the active energy ray-curable ink deposited on the substrate with an active energy ray ([0168]-[0188]).
12. The image recording method according to claim 11, wherein the substrate has a thickness of 1 mm or more ([0200]).
13. The image recording method according to claim 11, wherein the substrate is composed of a metal, a plastic, a synthetic leather, or a rubber ([0189]).
14. An image recording method, comprising:
using the ink set according to claim 7;
applying the pretreatment liquid and the ink to a substrate by ink jet recording; and
performing irradiation with an active energy ray subsequent to application of the pretreatment liquid and subsequent to application of the ink (see Examples; [0187]-[0190]).
Araki explicitly did not discloses:
1. A monofunctional polymerizable compound forming a homopolymer having a glass transition temperature of −30° C. to 30° C.
However, Araki discloses exactly same phenoxyethyl acrylate as applicant discloses in their own specification. The glass transition temperature is property of the material, which constant to the material. Therefore, obviously the phenoxyethyl acrylate discloses by the Araki obviously have glass transition temperature of −30° C. to 30° C (Tg, 5 °C; for evidence please see Gelest BMAX POEA Data sheet).
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Araki (# US 2015/0344709) in view of Engel et al. (# US 2012/0287213).
Araki discloses all the limitation of the ink composition except:
15. The active energy ray-curable ink according to claim 1, wherein the total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant is 0.5% to 1.5% by mass of the total amount of the polymerizable compound.
16. The active energy ray-curable ink according to claim 1, wherein the difunctional (meth)acrylate is selected from the group consisting of 1,6-hexanediol diacrylate, 1,10-decanediol diacrylate, neopentyl glycol diacrylate, tricyclodecane dimethanol diacrylate, and 2-hydroxy-3-methacrylpropyl acrylate.
Engel et al. teaches that to have high quality printed image,
15. The active energy ray-curable ink according to claim 1, wherein the total content of the compound selected from the group consisting of the difunctional (meth)acrylate ([0086]) and the polymerizable silicone-based surfactant is 0.5% to 1.5% by mass of the total amount of the polymerizable compound (0.1 to 1%; [0172]).
16. The active energy ray-curable ink according to claim 1, wherein the difunctional (meth)acrylate is selected from the group consisting of 1,6-hexanediol diacrylate, 1,10-decanediol diacrylate, neopentyl glycol diacrylate, tricyclodecane dimethanol diacrylate, and 2-hydroxy-3-methacrylpropyl acrylate ([0086]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of Araki et al. by the aforementioned teaching of Engel et al. in order to have the high quality printed image.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Applicant maintains “This passage of Araki does not explicitly show the feature of claim 1, above, given that Araki only broadly describes the total content of surfactant in the ink composition, rather than a content with respect to a total amount of polymerizable compound. Additionally, the claimed range of a total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant is much narrower than that of Araki. The claimed range of 0.5% to 2% by mass exhibits superior technical effects, as shown in Tables 2 and 3 of the present application. The Examples confirm that, when the ink satisfies the specified numerical range and composition of claim 1, images having excellent flexibility and excellent blocking resistance are formed. On the contrary, Comparative Examples 1 and 2 of the present application, for example, which contain a monofunctional polymerizable compound capable of forming a homopolymer having a Tg of more than 30°C, in an amount exceeding 10% by mass of the total amount of the polymerizable compound, show poor flexibility of the formed images. In addition, Comparative Example 6 of the present application, which contains the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant, at a content of more than 2% by mass of the total amount of the polymerizable compound (3% by mass), shows poor flexibility of the formed images.
Applicant also submits that the Examples of Araki do not satisfy claim 1. Since the glass transition temperature of IBOA as a homopolymer is 88°C (see Table 3 of the present specification), IBOA falls within the scope of a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of more than 30°C, recited in claim 1 of the present application. As Examples 1-3, 6-16, and 18-63 of Araki all contain IBOA in amounts exceeding 10% by mass of the total polymerizable compounds, these Examples do not satisfy the feature of claim 1 of the present application, that a total content of a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of less than -30°C and a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of more than 30°C, excluding the N- vinyl compound, is 10% by mass or less of a total amount of the polymerizable compound. In Examples 4, 5, and 17 of Araki, the polymerizable compounds in the ink do not satisfy the requirement of claim 1 that a total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant is 0.5% to 2% by mass of the total amount of the polymerizable compound. The total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant of these Examples exceeds 2% by mass of the total amount of the polymerizable compound.
Thus, since none of the Examples of Araki satisfy the requirement of present claim 1, one of ordinary skill in the art would not have had any motivation to adjust the total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant, to be 0.5% to 2% by mass of the total amount of the polymerizable compound.”
The Examiner draws particular attention to the Applicant’s argument that "Araki does address a polymerizable compound (see Abstract; [0022]-[0025]); and a colorant ([0124]-[0136]), the polymerizable compound comprising: an N-vinyl compound ([0041]-[0043]), a monofunctional polymerizable compound ([0044]-[0053]), and a compound selected from the group consisting of a difunctional (meth)acrylate (polyfunctional polymerizable compound; [0054]-[0064]) and a polymerizable silicone-based surfactant ([0090]-[0104]), wherein a total content of a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of less than −30° C. and a monofunctional polymerizable compound capable of forming a homopolymer having a glass transition temperature of more than 30° C., excluding the N-vinyl compound, is 10% by mass or less of a total amount of the polymerizable compound (see Examples), and wherein a total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant is 0.5% to 2% by mass of the total amount of the polymerizable compound ([0100])”, it teaches a laundry list of possible a polymerizable compound (see Abstract; [0022]-[0025]); and a colorant ([0124]-[0136]), the polymerizable compound comprising: an N-vinyl compound ([0041]-[0043]), a monofunctional polymerizable compound ([0044]-[0053]), and a compound selected from the group consisting of a difunctional (meth)acrylate (polyfunctional polymerizable compound; [0054]-[0064]) and a polymerizable silicone-based surfactant ([0090]-[0104]), wherein a total content of the compound selected from the group consisting of the difunctional (meth)acrylate and the polymerizable silicone-based surfactant is 0.5% to 2% by mass of the total amount of the polymerizable compound ([0100]). The format in which Araki presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Araki to present its teaching in an example format; citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the components from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377. Therefore, Applicant’s argument is not convincing.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
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, Ricardo Magallanes can be reached at 571-272-5960. 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.
MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853