DETAILED ACTION
This office action follows a reply filed on September 22, 2026. Claims 1, 5 and 8-11 have been amended. Claims 1, 2 and 4-11 are currently pending and under examination.
The 112(b) rejection over claim 5 is withdrawn, as applicants have amended to define the trademark “Naphthol AS”.
The prior art rejection over CN 103547641 in view of Prantl (US 6,096,797) is withdrawn as applicants have limited the claimed invention to include only one stabilizer.
However, the remaining prior art rejections over Zhang are deemed proper and are maintained for the reasons set forth below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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 § 102
Claims 1, 2, 4-5 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (US 2014/0220315), as evidenced by Yang (US 2019/0153249) and Cunkle (US 6,080,864).
Zhang exemplifies a white printing ink comprising the following:
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where the monofunctional monomers are listed to include (meth)acrylate easters (p. 4, [0050]), and the resin is exemplified as Laropal A81, which is a urea-aldehyde resin (p. 5, [0053]). Oligomeric and polymeric (meth)acrylate compounds are not required by this embodiment.
Zhang discloses the additives to include polymerization inhibitors, specifically listed to include Irgastab UV-10, known in the art as bis(1-oxy-2,2,6,6-tetramethylpiperidin-4-yl) sebacate, which is a sterically hindered aminoxyl radical compound.
Irgastab UV-10 is known in the art as a stabilizer that can improve the storage stability of the ink composition, as evidenced by Yang (p. 3, [0026]) and Cunkle (col. 8, Table 1); therefore, the composition is inherently shelf-stable, as claimed.
Zhang anticipates instant claims 1-5 and 10-12.
Claim Rejections - 35 USC § 103
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (US 2014/0220315), as applied above to claims 1, 2, 4-5 and 10-12, and further in view of EP 2706099, as evidenced by Sartomer (CN131 B Technical Data Sheet, Sartomer, 2026, 1 page) and Nasvadba (US 2007/0225397).
Zhang anticipates instant claims 1, 2, 4-5 and 10-12, as Zhang discloses an energy curable ink comprising a urea-aldehyde resin, monofunctional monomers, specifically listed to include (meth)acrylate esters, a titanium dioxide pigment, and additives specifically listed to include Irgastab UV-10, known in the art as bis(1-oxy-2,2,6,6-tetramethylpiperidin-4-yl) sebacate, where oligomeric and polymeric (meth)acrylate compounds are not required by the white ink embodiment.
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The ranges suggested by Zhang overlap with those of the claimed invention, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Zhang exemplifies a combination of about 12 wt% urea-formaldehyde resin, about 17 wt% monofunctional monomers, 0.5 wt% inhibitor and 50.5 wt% titanium dioxide pigment (p. 16, Table 7). Modifying the example in Table 7 using the monofunctional (meth)acrylate monomers and the UV-10 inhibitor is prima facie obvious over instant claim 9.
While Zhang refers to CN131B as a monoacrylate oligomer, CN 131B is described by Sartomer as 2-hydroxy-3-phenoxypropyl acrylate and is shown below, and is technically a monofunctional monomer, and not an oligomeric (meth)acrylate, which is excluded by the claimed invention:
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This does not appear to be oligomeric as it does not possess any repeating groups and has a molecular weight of 222 g/mol.
As to claims 6-8, Zhang teaches the inhibitors to include benzoquinone, benzotriazolealuminum salt amine complexes, butylated hydroxytoluene, hydroquinone, hydroquinone monomethyl ether, Genorad 16, Irgastab UV-10 and 22, t-butylcatechol, t-butylhydroquinone, and combinations thereof, but does not teach the claimed nitroxyl containing stabilizers.
EP ‘099 teaches an active energy ray-curable injet ink composition comprising a pigment, monomer and inhibitor, where the inhibitor is listed to include Irgastab UV-10 and 22, hydroquinone, TBQ (t-butylhydroquinone), Genorad 16, etc., as well as “OH-TEMPO” (p. 8, [0064]-[0065]).
Substituting Irgastab UV-10 or Genorad 16 with OH-TEMPO is prima facie obvious, as EP ‘099 suggests these as functional equivalents for stabilizing acrylate containing inks, and they provide similar in-can stability for pigments inks, as evidenced by Nasvadba, shown below:
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Zhang in view of EP ‘099 is prima facie obvious over instant claims 6-8.
Response to Arguments
Applicant's arguments filed September 22, 2026 have been fully considered but they are not persuasive.
Applicants argue that Zhang does not describe a composition which is free of oligomeric and polymeric (meth)acrylate compounds.
The white ink formula explicitly discloses using monofunctional monomers to adjust the viscosity. The white ink formula does not require the presence of oligomeric and polymeric (meth)acrylate compounds.
While Zhang refers to CN131B as a monoacrylate oligomer, CN 131B is described by Sartomer as 2-hydroxy-3-phenoxypropyl acrylate and is shown below, and is technically a monofunctional monomer, and not an oligomeric (meth)acrylate, which is excluded by the claimed invention:
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This does not appear to be oligomeric as it does not possess any repeating groups and has a molecular weight of 222 g/mol.
Applicants nor Zhang define an oligomeric (meth)acrylate, and one of ordinary skill in the art would determine CN131B to be a monofunctional monomer based on the broadest reasonable interpretation.
Regardless, while the examples may exemplify the use of this supposed oligomer, it is not required by the teachings of Zhang.
Applicants argue that Irgastab UV-10 is one optional additive among a very large number of possibilities.
Irgastab UV-10 is specifically listed as one of only twelve possibilities, and is the only choice that is made when deciding which inhibitor should be used to meet the claimed invention, as the Laropal A81 is listed as the preferred resin; therefore, Zhang anticipates instant claim 1.
Applicants argue that EP ‘099 uses an oligomer and shelf-stability does not flow inherently from Irgastab UV-10.
Substituting Irgastab UV-10 or Genorad 16 with OH-TEMPO is prima facie obvious, as EP ‘099 suggests these as functional equivalents for stabilizing acrylate containing inks, and they provide similar in-can stability for pigments inks, as evidenced by Nasvadba, shown below:
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Applicants argue that EP ‘099 was cited as suggesting the use of 17.4 wt% of oligomer.
The examiner disagrees. Claim 9 was only rejected over Zhang. EP ‘099 was used to show that UV-10 and HO-TEMPO are considered functional equivalents as inhibitors in active energy ray-curable injet ink compositions comprising a pigment, monomer and inhibitor.
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 or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
