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 .
Status of Application
Claims 1-5, 7, 8 and 11-23 are pending and presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/14/2026 has been entered.
Response to Arguments
Applicant's arguments filed 7/14/2026 have been fully considered but they are not persuasive.
Applicant argues that the references fail to appreciate the unexpected results in the resulting coating when the sequential steps are performed. Applicant argues that the amended narrower range of 2-42% for pigment volume concentration is commensurate in scope with the presented evidence. However, the Examiner maintains that the evidence is not commensurate in scope with the claims. Three examples is not sufficient to support unexpected results for the claimed combination including any photoinitiator and any pigment.
Applicant argues that none of the references teach the sequential steps of drying using IR, UV curing and EB curing. In particular, Applicant argues that Lapin2 states the benefit of omitting thermal drying and one would not look towards Lapin2 to modify the type of thermal drying used in Paulus because Lapin2 teaches benefit of eliminating thermal drying. However, the Examiner maintains that the combination of references make obvious these sequential steps. Paulus teaches sequentially drying with a heat source and then curing, Lapin teaches curing sequentially with UV and then EB, and finally Lapin2 teaches that IR can be used for drying. Therefore, the Examiner maintains that these references make obvious the sequential steps of drying with IR, UV curing and then EB curing. Additionally, the Examiner notes that Paulus requires thermal drying and Lapin2 teaches where heat is necessary that it can be provided by infrared. Therefore, the Examiner maintains that Lapin2 does not teach away from thermal drying.
Applicant argues that the references fail to appreciate the unexpected results in the resulting coating when the sequential steps are performed. However, the Examiner maintains that the evidence is not commensurate in scope with the claims. Three examples is not sufficient to support unexpected results for a combination including any photoinitiator and any pigment in a pigment volume concentration of 2-42%.
With respect to claim 19, Applicant restates the same arguments as above. The Examiner maintains the rejection for the same reasons as outlined above. Applicant also argues that Paulus fails to teach the coating is free of isocyanates during preparation and prior to curing. While this may be true, the Examiner notes that the rejection is based on a combination of references. In this case, primary reference, Lapin teaches the waterborne coating free of isocyanates and prepared without using isocyanate (Table 2). Paulus is simply recited for teaching a pre-cure drying step. Therefore, the Examiner maintains that the combination of references make obvious the coating free of isocyanates during preparation and prior to curing. Further, Applicant argues that one would not be motivated to modify the cited reference to arrive at claim 19 as Paulus teaches the isocyanate-containing compositions provides desirable hardness. However, as noted above, Lapin teaches the composition that is used and Paulus only modifies Lapin by providing a motivation for a pre-cure drying step. Therefore, even if Paulus teaches that isocyanates are essential in their composition this is not relevant to the combination of references which is utilizing Lapin’s composition.
Finally, Applicant argues that one would not be motivated to modify Paulus, which discloses a coating, in view of the ink specific references of Lapin and Lapin2. However, the Examiner disagrees and contends that coating and/or use of an ink is analogous art as both coatings and inks involve depositing material on a substrate and then drying/curing that material to form a covering on the surface of the substrate. Therefore, the Examiner maintains it would be obvious to look towards Lapin and Lapin2 for modifying Paulus. Thus, the rejections are maintained.
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.
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.
1. Claim(s) 1-5, 7, 8, 11-13 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paulus (WO2020/083754, of which reference is made to the English language translation provided by Applicant) in view of Lapin et al. (“Dual UV/EB Curing of Printing Inks”) and Lapin (WO 2016/164220, hereinafter referred to as Lapin2).
Regarding claims 1-5, 7, 8, 11-13, 15, and 16, Paulus teaches a method comprising: preparing a waterborne coating composition (claim 1); curing the waterborne coating using UV radiation and electron beam radiation (claims 14 and 15). Paulus teaches the composition including a photoinitiator for UV curing (0261), such as benzophenone (0263, which is a Type II photoinitiator), an inorganic pigment (0233), and customary additives such as fillers (0231). Paulus teaches the composition preferably having a pigment volume concentration of 10-40% (0236, and note that overlapping ranges are prima facie evidence of obviousness). Paulus also teaches a step of drying the waterborne coating with a heat source prior to irradiation (0258) at a temperature of 15-80 ºC (0259), and that nitrogen addition is minimized during irradiation curing by conducting irradiation under an inert gas atmosphere of noble gases or carbon dioxide (0284). Additionally, Paulus teaches that the waterborne composition is a polyurethane and does not contain isocyanate as it is reacted in preparation of the waterborne composition (0327-0328 and 0248-0254). Finally, Paulus teaches a waterborne coated substrate (claims 14 and 15), such as paper (0260), prepared by the process (claims 14 and 15). Paulus fails to teach the curing done by first UV curing to generate a UV cured coating followed by EB curing the UV-cured coating or an explicit example where both UV and EB curing are used together, and wherein the drying is conducted using infrared radiation
First, Lapin teaches dual UV/EB curing printing inks (1st paragraph) including a photoinitiator and a pigment (Table 2) by first UV curing to form a UV cured coating followed by EB curing (middle of page 41). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Paulus’ process by curing first with UV radiation followed by curing of the UV cured coating with EB radiation. One would have been motivated to make this modification as Lapin teaches that the combined use of UV followed by EB curing yields improved print quality, low energy, elimination of solvents, higher speed, and assurance of complete curing due to consistent EB output and penetration.
Second, Lapin2 teaches electron beam curing inkjet ink (abstract), wherein the electron beam irradiation can be supplemented with thermal radiation for drying from an IR lamp (page 12, lines 1-8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Paulus in view of Lapin’s process by drying with IR lamps. One would have been motivated to make this modification as one could have substituted IR lamp heating for the generic heating of Paulus in view of Lapin. One could have made this substitution with a reasonable expectation of success as one could have substituted one means of heating for another with a reasonable expectation of success (particularly given that Lapin2 teaches heating using IR for curing a coating prior to an EB radiation step), and the predictable result of providing a cured waterborne coating.
II. Regarding claims 17, Paulus in view of Lapin and Lapin2 teach all the limitations of claims 1 (see above), but fail to teach the volatile organic compounds of the coating are less than 100, less than 50 or less than 10 g/L.
However, the VOC of a composition will dictate its potential uses as well as its environmental impact and the risk to the user. A lower VOC content necessarily presents a lower environmental impact and less hazardous application conditions. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges for a VOC content of less than 10 g/L through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
2. Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paulus in view of Lapin and Lapin2 as applied to claim 1 above, and further in view of Boock et al. (WO 2011/003036).
Regarding claim 14, Paulus in view of Lapin and Lapin2 teach all the limitations of claim 1, but fail to teach the humidity and temperature as claimed. However, humidity and temperature during EB curing are result-effective variables as evidenced by Boock which teaches controlling temperature and humidity during EB curing (page 41, lines 6-26). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges for temperature and humidity through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
3. Claim(s) 1, 3-5, 11, 12, 15 and 17-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lapin in view of Thames et al. (WO 01/44380) and Paulus and Lapin2.
Regarding claims 1, 3-5, 11, 12, 15, and 17-23, Lapin teaches a process comprising: preparing a waterborne coating composition/ink comprising a photoinitiator for UV curing (Table 2), an acrylate functional water dispersed binder (Table 2) and at least one organic pigment (Table 2) and the waterborne coating free of isocyanates and prepared without using isocyanate (Table 2); curing the coating using UV radiation and then curing the UV-cured coating with EB radiation (middle of page 41) and a product prepared from the process (middle of page 41). Lapin fails to teach the waterborne composition having a pigment concentration and VOC content as claimed. Lapin further fails to teach a first drying step prior to UV curing, wherein the drying is done using IR radiation.
First, Thames teaches preparing a water-borne ink (abstract) comprising pigments (page 20, lines 3-12) and the VOC content is less than 0.4 g/L (Example 18, page 48). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lapin’s process by using a waterborne ink as disclosed by Thames with the VOC as claimed. One would have been motivated to make this modification to utilize a more environmentally friendly ink that avoids any harmful organic solvents.
Second, Paulus teaches a similar method comprising: preparing a waterborne coating composition (claim 1); curing the waterborne coating using UV radiation and electron beam radiation (claims 14 and 15). Paulus teaches the composition including a photoinitiator for UV curing (0261), such as benzophenone (0263, which is a Type II photoinitiator), an inorganic pigment (0233), and customary additives such as fillers (0231). Paulus teaches the composition preferably having a pigment volume concentration of 10-40% (0236). Paulus also teaches a step of drying the waterborne coating with a heat source prior to irradiation (0258) at a temperature of 15-80 ºC (0259). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lapin’s process by additionally including a low temperature pre-drying step prior to UV radiation curing and providing the pigment in a PVC of 10-40% (and note that overlapping ranges are prima facie evidence of obviousness). One would have been motivated to make this modification to ensure complete removal of solvent/water prior to curing irradiation to yield optimal film properties and to provide a PVC that yields an optimal aesthetic appearance to the dried coating without negatively impacting any properties of the composition/coating.
Finally, Lapin2 teaches electron beam curing inkjet ink (abstract), wherein the electron beam irradiation can be supplemented with thermal radiation for drying from an IR lamp (page 12, lines 1-8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lapin in view of Thames and Paulus’s process by drying with IR lamps. One would have been motivated to make this modification as one could have substituted IR lamp heating for the generic heating of Lapin in view of Thames and Paulus. One could have made this substitution with a reasonable expectation of success as one could have substituted one means of heating for another with a reasonable expectation of success (particularly given that Lapin2 teaches heating using IR for curing a coating prior to an EB radiation step), and the predictable result of providing a cured waterborne coating.
Conclusion
Claims 1-5, 7, 8 and 11-23 are pending.
Claims 1-5, 7, 8 and 11-23 are rejected.
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/ROBERT S WALTERS JR/
July 16, 2026Primary Examiner, Art Unit 1717
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