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 .
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.
Claims 1, 3-5, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hayata et al. (EP-2484729-A1).
Regarding claims 1 and 3
Hayata discloses an inkjet composition comprising particularly preferably 25 to 50 wt % of a compound represented by Formula (1) (paras 0040 and 0046). This reads on claimed formula (1).
Hayata discloses an inkjet composition comprising 1 to 15 wt % of a compound represented by Formula (3) (paras 0052-0057). This reads on claimed formula (2).
Hayata discloses an inkjet composition comprising an oligomer which is preferably urethane (meth)acrylate (paras 0105-0109).
Hayata discloses that other polymerizable compounds may be used such as dimethylaminomethyl(meth)acrylate (i.e., an amino(meth)acrylate) (0052), making it obvious to include such compound, as it from a short finite list with predictable results. Although Hayata does not disclose this compound is an oligomer, however, it is noted as a polymerizable compound, and once polymerization starts at some point it will be an oligomer.
With respect to the amounts of compounds of Formula (1) and Formula (2), as the amounts of the reference overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Hayata discloses that the composition is curable by exposure actinic radiation (para 0027), i.e., active energy ray-curable.
Regarding claim 4
Hayata discloses that the component A-3 is 2-ethoxyehtoxyethyl acrylate (claim 8).
Regarding claim 5
Hayata discloses that the molecular weight of the oligomer (i.e., urethane compound) is 400 to 10,000 (para 0126). As the molecular weight of the reference overlaps the claimed amount the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 7
Hayata discloses that the oligomer compound is most preferably used in an amount of 1 to 10 wt % (para 0138). As the amounts of the urethane in the reference overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 8
The pencil hardness of the ink composition when cured is a property of the composition, and since Hayata discloses or makes obvious the claimed ink composition, it would be expected to have the same properties. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 9
Hayata discloses that the actinic radiation may be ultraviolet rays (para 0028). As such the ink would be ultraviolet curable.
Regarding claim 10
Hayata discloses an inkjet recording (i.e., printing) method comprising discharging the ink (i.e., jetting) from an inkjet head onto a substrate (i.e., recording medium) and irradiated to cure the composition (paras 219-224).
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art fairly teaches or suggest the limitations of this claim in combination with the limitations of the base claim from which it depends.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Hayata does not disclose the recited urethane/amino (meth)acrylate combination. While this may be true it is not persuasive as Hayata clearly discloses the urethane (meth)acrylate and also suggest the amino(meth)acrylate compound may be used as well, making the combination obvious.
Applicants argue that Hayata does not disclose that the amino methacrylate is an oligomer. While this may be true it is not persuasive because as stated in the rejection as the composition begins to react some oligomer of the amino methacrylate will be formed and present, making the claimed limitations obvious.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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