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 without traverse of Group I, claims 1-11 in the reply filed on 6/10/2026 is acknowledged. Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/10/2026.
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.
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.
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama (US 2010/0009287).
Regarding claim 1, Kodama discloses a curable composition containing a polymerizable compound (par. 0023 – “polymerizable monomer”), a photopolymerization initiator (par. 0023), and a solvent (par. 0035), wherein
the polymerizable compound contains an aromatic compound (par. 0029), the curable composition has a viscosity of 8-50 mPas at 25 C (par. 0083 – falls within the claimed range), in a state which solvent is removed,
the curable composition has a viscosity of 30-10000 mPas at 26 C without a solvent (par. 0083); and
a content of the solvent is 70-95% of the total composition (par. 0114).
It has been held that where the prior art discloses a range that overlaps with or lies inside of the claimed range, a prima facie case of obviousness exists. Accordingly, one of ordinary skill in the art would have found it obvious to have specified that the viscosity of the solvent is as claimed.
Regarding claims 2-3, Kodama discloses the subject matter of claim 1, and “the polymerizable compound contains not less than one type of a polymerizable compound” is inherent in meeting “containing a polymerizable compound” (from claim 1); and a boiling point of the compound at normal pressure (interpreted as 1 atm) is not less than 250 C. and a molecular weight is not less than 200 (par. 0116 expresses values much larger than 200, “at least 2000”).
Regarding claims 4-6, Kodama discloses the subject matter of claim 1, and “the solvent contains not less than one type of a solvent” is inherent with the presence of “a solvent” (met in claim 1), and a boiling point of the solvent is 70-200 C, or 80-180 C, or 100-160 C (par. 0111) which all at least overlap with the ranges presented in claims 4-6. It has been held that where the prior art discloses a range that overlaps with or lies inside of the claimed range, a prima facie case of obviousness exists. Accordingly, one of ordinary skill in the art would have found it obvious to have specified that the boiling points of the solvent is as claimed.
Regarding claims 7-9, Kodama discloses the subject matter of claim 1, and further discloses that the polymerizable compound is a polymer having a polymerizable functional group (par. 0028-0030) which would have some examples where the parameter as defined would be between 2 and 3 (see par. 0058-0081 containing examples of the polymerizable monomer which would contain a polymerizable functional group).
Regarding claims 10-11, Kodama discloses the subject matter of claim 1, and further discloses that the solvent is 70-85% of the composition (par. 0111) and that the composition is an inkjet composition (par. 0125).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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, Christina Johnson can be reached at (571) 272-1176. 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.
/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
Prosecution Insights