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
Claims 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/08/2026.
Claim Rejections - 35 USC § 102
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 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 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.
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.
Claim(s) 1-5, 7-12, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2021-056301 (henceforth JP ‘301).
JP ‘301 teaches a photocurable varnish for use as a postprocessing liquid to be applied to a toner image in an electrophotographic image forming method (abstract). Additionally, the photocurable varnish is taught to have a surface tension of 10 to 50 mN/m ([0143]). In embodiments the photocurable varnishes taught by JP ‘301 have surface tensions of 24.3 and 22.4 mN/m at 25 °C (see Table 4). While JP ‘301 does not teach an interfacial tension of the photocurable varnish to water, the varnishes do have surface tensions within the range recited by the Applicant in pending claim 2. Furthermore, the varnishes of JP ‘301 are structurally similar to those taught by the Applicant in the instant specification. Namely, both JP ‘301 and the Applicant teach the use of varnishes formed from hexanediol diacrylates (see [0466-471 and Tables III to V of the instant specification and Table 4 of JP ‘301). Additionally, the varnishes of both JP ‘301 and the instant application are taught to include silicone-based surfactants such as dimethylsiloxanes (see [0142] of JP ‘301 and [0467-468] of the instant specification). As such, the varnishes of JP ‘301 would be expected to inherently possess interfacial tension to water within the range recited in pending claim 1.
In the method of JP ‘301 the photocurable varnish is irradiated with an active ray in order to effect curing ([0145]). As stated above, the varnish is applied and irradiated over an image formed by an electrophotographic process. The surfactant in the varnish is taught to be a polyether-modified polydimethylsiloxane and therefore reads on the dimethylsiloxane having an ethylene oxide group in a side chain recited in pending claim 5 ([0142]). The varnish of JP ‘301 is further taught to contain a bifunctional active ray reactive monomer having an alkyl group in a main chain within a range of 40 to 80 mass % with respect to a total amount of the varnish ([0136-139]). As stated above, the range of suitable surface tension values encompasses the Applicant’s ranges recited in pending claims 9-10. The toner taught by JP ‘301 (printing material) is taught to comprise a hydrocarbon wax ([0090-99]). The toner image is formed by using developer drums, photoreceptor drums and transfer drums and therefore reads on the Applicant’s recitation of a “roll-to-roll” method ([0028-34]).
Claim(s) 6, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021-056301 (henceforth JP ‘301).
The complete discussion of JP ‘301 above is included herein. While JP ’301 teaches the use of a polyether-modified polydimethylsiloxane surfactant but does not teach a mole fraction of the polyether group. However, according to the MPEP, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP 2144.05 II A) Given that JP ‘301 does not teach a suitable amount of the mole fraction of the polyether group it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the instant application to have ascertained a suitable molar amount through routine experimentation.
JP ‘301 also does not teach forming an additional cured layer from the photocurable varnish as is recited by the Applicant in pending claim 13 nor a suitable thickness for the varnish layer as is recited in pending claim 15. However, JP ‘301 teaches that the varnish layer may be applied to cover either the entire image or to cover only a select portion of the image ([0132]). Furthermore, JP ‘301 teaches several coating methods that would readily allow for multiple coats of varnish such as a roll coater ([0133]). The MPEP teaches that duplication of parts in an invention is prima facie obvious (MPEP 2144.04 IV) and therefore it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date to have either formed two photocured layers in sequence or to have coated the printed image in step wise fashion by coating select portions of the image with the cured layer. The MPEP also teaches that changes in size/proportion are prima facie obvious (MPEP 2144.04 IV) and therefore it would have been obvious to any person of ordinary skill in the art at the time of the effective filing date to have determined and applied the cured layer with a suitable or desired thickness and to have optimized said thickness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (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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/PETER L VAJDA/Primary Examiner, Art Unit 1737 08/27/2026
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