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 .
Response to Amendment
In response to the Amendment received on 7/09/2026, the examiner has carefully considered the amendments. The examiner acknowledges the addition of new claim 14.
The Declaration under 37 CFR 1.132 filed 07/09/2026 is insufficient to overcome the rejection of claims 1-9 based upon Schaedler et al (US11,591,141) in view of Liu et al (WO2021/232,557) as set forth in the last Office action because: The formulations (S01 – S08) are not set forth as being commensurate in scope with the claims. It is not clear if the metal in said formulations is an aluminum alloy or if the thermal initiator has an initiation temperature range from 60 °C to 100 °C.
However, it is acknowledged the combination of the photoinitiator, thermal initiator, and NaYF4 up-conversion material shows an unexpected increase in depth cure.
Response to Arguments
Applicant’s arguments, see Remarks/Amendment, filed 07/09/2026, with respect to the rejection(s) of claim(s) 1-9 under 35 U.S.C. 103 as being unpatentable over Schaedler et al (US11,591,141) in view of Liu et al (WO2021/232,557) have been fully considered and are persuasive. After reconsideration of the overall teachings of both reference (Schaedler et al and Liu et al) in combination with applicants’ arguments with the Declaration by application, it is deemed a skilled artisan would have found the increase in depth cure from the combination of the photoinitiator, thermal initiator, and NaYF4 up-conversion material unexpected. It can be seen formulation S03 has a 116 % increase of depth cure over S01 and a 25 % increase over S04. Therefore, the rejection has been withdrawn.
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 2, 7, 9, and 14 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 2 sets forth the limitation “The metal ink comprises 88% aluminum alloy powder, 4.4% epoxy acrylate photosensitive resin containing a hydroxyl structure, 4% pentaerythritol triacrylate, 0.5%1-819, 1% AIBN, 2% NaYF4, and 0.1% defoamer, with the listed mass percentages totaling 100%” in line 4-6. As written, it is unclear if applicant intends for this limitation to be an addition to claim 2 or if applicant intends for the limitation to be a new claim. Please note the placement of the period “.” at the end of line 3 prior to the amended claim limitations. Clarification is requested.
Claims 2, 7 and 14 contain the trademark/trade name I-819. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe photoinitiator and, accordingly, the identification/description is indefinite.
Claim 9 contains the trademark/trade name BYK-028. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe silicone defoamer and, accordingly, the identification/description is indefinite.
Appropriate correction is required.
Allowable Subject Matter
Claims 1, 3-6, and 8 are allowed.
The following is an examiner’s statement of reasons for allowance: The reasons for allowance are set forth above.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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, 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
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