4DETAILED 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
Withdrawn Objections/Rejections
The objection to claims 7-10 is withdrawn due to Applicant’s amendment on December 18, 2025.
Paragraphs 5-8 of the 35 U.S.C. 112(b) rejections of claims 1-10, 13 are withdrawn due to Applicant’s amendment and clarifications in the response filed on December 18, 2025.
Repeated Rejection
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The 35 U.S.C. 112(b) rejection of claim 5 as set forth in paragraph 9 of the Office action mailed on October 2, 2025, is repeated for the same reason previously of record.
Applicant has not listed the organic solvents of the positive list which are essential elements of the Markush group in claim 5. While Applicant has provided a copy of the Swiss Ordinance 817.023.21 Annex 10 document, in the response filed on December 18, 2025, there is no “positive list of organic solvents” that are grouped together, or even individual compounds labeled as positive organic solvents, in said document which only appears to recite substances that are approved by the Swiss Ordinance, without distinguishing between the different types of substances, not labeling any of the substances or grouping them as “positive organic solvent(s)”, let alone as “organic solvent(s)” or even just as “solvent(s)”. Amendment including the actual named organic solvents, accompanied by relevant citation(s) from the document are required.
New Objections
Claim Objections
Claims 2-3 are objected to because of the following informalities:
Lines 2-7 of claim 2 should be rewritten as:
- - wherein the plastic polymer film is film, oriented polypropylene film, cast polypropylene film, film coextruded with at least one layer of polypropylene, polyethylene film, film coextruded with at least one layer of polyethylene, mono-or bi-oriented polyethylene film, polyamide film, mono- or bi-oriented film, polyvinyl chloride film, cellophane film, polylactic acid film, compostable film
Line 2 of claim 3 should be rewritten as:
- - wherein said at least one resin with the plastic polymer of said film is
Line 2 of claim 9 should be rewritten as:
- - further consisting titanium dioxide and/or substances capable of imparting white colouration. - -.
Appropriate correction is required.
Claim Interpretation
In lines 6-7 of claim 2, the Markush group member of “general plastic film which can be used to make a printed film” is interpreted to be synonymous with “any plastic film” including the specific plastic polymer films listed in the claim.
New Rejections
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7-8, 13 are rejected under 35 U.S.C. 102(a/1,2) as being anticipated by Fujii, WO-2019/235141-A1 (US 2021/054223 is used here).
Regarding claim 1, Fujii teaches a primer composition (the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]) for inkjet printing (ink jet recording [0195]) on a plastic polymer film (impermeable medium … include a base material formed of a thermoplastic resin [0167]) consisting of: a) at least one resin having affinity with the plastic polymer of said film (contains a resin, in this manner, the adhesiveness between the impermeable medium and the layer to be formed by applying the pretreatment liquid can be improved [0070]); b) at least one aliphatic C2-C10 organic bi- or tri-carboxylic acid ([0060], di-or tri-valent organic acid, functional group is carboxy group [0062]); c) a solvent consisting of an organic solvent selected from at least one aliphatic alcohol (water-soluble solvent include… polyhydric alcohols … 1,2,6-hexanetriol, 1,2-hexanediol [0140] water-soluble organic solvent [0143]) having a boiling point comprised in a range of 80 to 250[Symbol font/0xB0]C (water-soluble organic solvent [0250] examples … include polyhydric alcohols represented by 1,2,6-hexane triol [0251], hexanediol [0251]) which is within the newly amended claimed range of “comprised between 35 and 250[Symbol font/0xB0]C”, which is the same as a range of 35[Symbol font/0xB0]C to 250[Symbol font/0xB0]C, as defined by Applicant in the response filed on December 18, 2025.
Although Fujii fails to specify that the primer composition for inkjet printing on the plastic polymer film, is a primer composition for digital inkjet printing on the plastic polymer film, this is a recitation of intended use. An intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Fujii teaches the presently claimed primer composition for inkjet printing on the plastic polymer film, as described above.
Regarding claim 2, Fujii teaches that the plastic polymer film is a general plastic film which includes polypropylene film, polyethylene film, polyethylene terephthalate film, polyvinyl chloride film, and nylon film which is a species of polyamide film (resin base material [0169] in the form of a sheet [0168]).
Regarding claim 3, Fujii teaches that the at least one resin having affinity with the plastic polymer of said film is selected from polyurethane, polyester, acrylic, polyamide resins ([0117]).
Regarding claim 4, Fujii teaches that the at least one aliphatic bi- or tri- organic C2-C10 acid is oxalic acid, succinic acid, glutaric acid, adipic acid, pimelic acid and citric acid ([0017, 0060]).
Regarding claim 7, Fujii teaches that the resin a) is comprised in a range of 3% to 15% w/total w of the primer composition as prepared (by mass with respect to the total mass of the pretreatment liquid [0110]) which overlaps the claimed range of between 1 and 10%.
Regarding claim 8, Fujii teaches that the at least one aliphatic C2-C10 organic bi- or tri-carboxylic acid ([0060, 0068] di- or trivalent organic acid, functional group … carboxy group [0062]) is contained in total amounts within a range of 1.5% to 10% w/total w of the primer composition as prepared (by mass [0068]) which is within the claimed range comprised between 1 and 10%.
Regarding claim 13, although Fujii fails to specify for the primer composition for digital inkjet printing on the plastic polymer film, that the plastic polymer film is laminated with one or more plastic films of the same or different polymer; aluminum; and/or paper, this is a recitation of intended use. An intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Fujii teaches the presently claimed primer composition for digital inkjet printing on the plastic polymer film, as described above. In addition, Fujii teaches that the plastic polymer film is used for soft packaging ([0172]) which is commonly laminated with one or more plastic films of the same or different polymer; aluminum; and/or paper, for the purpose of providing the desired combination of soft packaging properties.
Claim Rejections - 35 USC § 103
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.
Claims 5-6, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii, as applied to claims 1-4, 7-8, 13 above, and further in view of Koichi (Clarivate Analytics English translation of JP-4088995-B2).
Fujii teaches the primer composition for digital inkjet printing on a plastic film, consisting of a) at least one resin having affinity with the plastic polymer of the plastic film; b) at least one aliphatic C2-C10 organic bi- or tri-carboxylic acid; and c) consists of one or more organic solvents having a boiling point that is comprised between 35 and 250[Symbol font/0xB0]C, which is the same as being within a range of 35[Symbol font/0xB0]C to 250[Symbol font/0xB0]C, as described above.
Regarding claims 5-6, Fujii teaches that the organic solvent includes at least one aliphatic alcohol (alkyl alcohols having 1 to 4 carbon atoms [0140]), but fails to teach that the solvent is ethyl acetate.
However, Koichi teaches that in a primer composition (organic primer layer [0079]), an aliphatic alcohol (lower aliphatic alcohols such as methanol, ethanol, isopropanol, n-butanol, and isobutanol [0068] which are alkyl alcohols having 1 to 4 carbon atoms) can be replaced by ethyl acetate, as an organic solvent ([0068]), for the purpose of providing the desired ease of handling ([0068]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have replaced the aliphatic alcohol in the primer composition for digital inkjet printing on a plastic film, with ethyl acetate as the solvent, in order to obtain the desired ease of handling, as taught by Koichi.
Regarding claim 14, Fujii teaches the at least one aliphatic C2-C10 organic bi- or tri-carboxylic acid (oxalic acid, glutaric acid, and citric acid ([0017, 0060]), but fails to teach that it is an aliphatic organic mono-carboxylic acid substituted in the aliphatic chain with a halogen atom, and has a pKa between 0.2 and 5.
However, Fujii teaches that the organic acid can have a pKa that is as low as 2.5 ([0063]), for the purpose of providing the desired combination of storage stability, transfer suppression ([0064]) and aggregating property ([0065]).
Koichi teaches that in a primer composition (organic primer layer [0079]), the organic bi- or tri-carboxylic acids of oxalic acid, glutaric acid, and citric acid, can be replaced by chloroacetic acid ([0023]) which is an aliphatic C2 organic mono-carboxylic acid that is substituted in the aliphatic chain with a halogen atom, and has a pKa between 0.2 and 5, as disclosed in Applicant’s specification (lines 5-10 of page 5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided an aliphatic C2 organic mono-carboxylic acid that is substituted in the aliphatic chain with a halogen atom, and has a pKa between 0.2 and 5, in place of the at least one aliphatic C2-C10 organic bi- or tri-carboxylic acid, having a pKa between 0.2 and 5, in the primer composition of Fujii, in order to obtain the desired combination of storage stability, transfer suppression and aggregating property, as taught by Fujii in light of Koichi.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii, as applied to claims 1-4, 7-8, 13 above, and further in view of Loccufier (US 2019/0367762).
Fujii teaches the primer composition for digital inkjet printing on a plastic film, as described above. Fujii fails to teach that the primer composition further consists of substances imparting white coloration.
However, Loccufier teaches that a primer composition has substances that impart white coloration (substrate … polymeric surface … may also be primed, e.g. by a white ink [0109]), including titanium dioxide ([0054]), contained in concentrations comprised within a range of about 15 to about 80% by weight of the total weight of the composition as prepared (total slurry weight [0058]), which is within the claimed range of between 10 and 90% by weight, for the purpose of providing utility in printing on a dark substrate (textile [0054] plastic substrate [0110]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have further consisted substances imparting white coloration, including titanium dioxide, in concentrations within a range of between 10 and 90% by weight of the total weight of the composition as prepared, in the primer composition for digital inkjet printing on a plastic film, of Fujii, in order to obtain the desired utility in printing on a dark substrate, as taught by Loccufier.
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 should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782