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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: wherein the aluminum plate is made by a method which comprises completing an electrolytic treatment at least 10 times. Examiner notes that in light of Applicant’s arguments filed 08/22/2025 which especially point out that the inventive Examples all show that the electrolytic treatment is repeated 10 times, it is apparent that Applicant regards the invention to only be achievable by methods which include repeating the electrolytic treatment at least 10 times.
Appropriate correction and/or clarification is required.
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.
Claim(s) 1-8, and 11-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Nakamura et al. (US 2019/0143666). Regarding claim 1, Nakamura et al. disclose “a support for a lithographic printing plate (paragraph 10) comprising: an aluminum plate (paragraph 10); and an anodized aluminum film disposed on the aluminum plate (paragraph 11).” Regarding the remainder of the claim, “wherein a plurality of projections are present on a surface of the support for a lithographic printing plate on a side of the anodized film, an average value of equivalent circular diameters of the projections in a cut surface at a position that is 0.5 μm greater than a position of the projections with an average height is in a range of 3.0 to 10.0 μm, and a density of the projections with a height of 0.5 μm or greater from the position of the projections with the average height is in a range of 3,000 to 9,000 pc/mm2,” it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established. See MPEP §2112.01. In this instance, the aluminum support of Nakamura et al. is produced by a substantially identical process as the aluminum substrate of the claims. See paragraphs 231-269 of Nakamura et al. and how each step and/or parameters of each step at least overlap the disclosed method of the instant application, making them at least substantially identical. Therefore, absent any indication on which process steps or parameters which would lead to each recited property, each recited property is presumed inherent. Similarly, regarding claims 2-6, 10, and 14-17, the claims are directed to recitations of a property. Since the aluminum support of Nakamura et al. is at least substantially identical, the recited properties are presumed inherent.
Regarding claims 7 and 18, Nakamura et al. further disclose “wherein a surface area ratio ΔS calculated according to Equation (1), from a geometrically measured area S0 and an actual area Sx acquired by an approximate three-point method from three-dimensional data obtained by measuring 512 × 512 points with an area of 25 μm × 25 μm on the surface of the aluminum support on the side of the image recording layer using an atomic force microscope, is 20% or greater (paragraph 14), ΔS = (Sx - S0)/S0 × 100 (%) ··· (1).”
Regarding claims 8 and 19, Nakamura et al. further disclose “wherein the anodized film has micropores (paragraph 17), the micropores are formed of large-diameter pores extending to a position at a depth of 10 to 1,000 nm from the surface of the anodized film and small-diameter pores communicating with bottom portions of the large-diameter pores and extending to a position at a depth of 20 to 2,000 nm from communication positions (paragraph 20), an average diameter of the large-diameter pores in the surface of the anodized film is in a range of 18 to 60 nm (paragraph 21), and an average diameter of the small-diameter pores at the communication positions is 15 nm or less (paragraph 22).” Regarding claim 10, since the aluminum support of Nakamura et al. is produced by a substantially identical process as the aluminum substrate of the claims, and the micropores are substantially identical as claimed in claim 8, the recited property of the density of the micropores is presumed to be inherent. Regarding claim 11, Nakamura et al. further disclose “a lithographic printing plate precursor (abstract) comprising: the support for a lithographic printing plate according to claim 1 (paragraph 10); and an image recording layer (paragraph 10).” Regarding claim 12, Nakamura et al. further disclose “wherein the lithographic printing plate precursor is of an on-press development type (paragraph 328).” Regarding claim 13, Nakamura et al. further disclose “a method of producing a lithographic printing plate, comprising: a step of image-exposing the lithographic printing plate precursor according to claim 11 to an infrared laser (paragraph 312); and a step of removing an unexposed portion of the image recording layer on a printing press by at least one selected from a printing ink or dampening water (paragraph 328).”
Claim(s) 9, 10, and 20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Nakamura et al. (US 2019/0143666) in view of Kudo (US 2019/0232703). Regarding claims 9 and 20, Nakamura et al. further disclose “wherein the anodized film has micropores (paragraph 17),” but fail to disclose “the micropores are formed of upper pore portions extending in a depth direction from the surface of the anodized film and lower pore portions communicating with bottom portions of the upper pore portions and extending to a position at a depth of 20 to 2,000 nm from communication positions, an average diameter of the upper pore portions in the surface of the anodized film is in a range of 18 to 60 nm, a maximum diameter of the upper pore portions is 200 nm or less, an average diameter of the lower pore portions at the communication positions is 15 nm or less, and a ratio of the maximum diameter of the upper pore portions to the average diameter of the upper pore portions in the surface of the anodized film is 1.2 or greater.” However, Kudo discloses a similar support wherein “the micropores are formed of upper pore portions extending in a depth direction from the surface of the anodized film and lower pore portions communicating with bottom portions of the upper pore portions and extending to a position at a depth of 20 to 2,000 nm from communication positions (Figure 3, paragraphs 166-168), an average diameter of the upper pore portions in the surface of the anodized film is in a range of 18 to 60 nm (paragraph 144), a maximum diameter of the upper pore portions is 200 nm or less (paragraphs 52 and 143), an average diameter of the lower pore portions at the communication positions is 15 nm or less (paragraph 159), and a ratio of the maximum diameter of the upper pore portions to the average diameter of the upper pore portions in the surface of the anodized film is 1.2 or greater (paragraph 150). The anodic film of Kudo results in suppression of the occurrence of appearance failures (paragraph 58) and/or excellent scratch resistance (paragraph 68). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the anodic oxide film as the anodic oxide film of Nakamura et al. in order to suppress the occurrence of appearance failures and/or to have excellent scratch resistance. Regarding claim 10, Kudo discloses that the density of micropores should be between 250 and 3000 pcs/µm2 for desired scratch resistance (paragraph 85, Tables 2 and 5). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to set the density of the micropores to between 250 and 3000 pcs/µm2 in order to achieve desired scratch resistance. Examiner notes that paragraph 85 actually discloses “pcs/mm2”, but Examiner notes that tables 2 and 5 use pcs/µm2, and asserts that the latter makes sense in the context of the disclosure as a whole.
Requirement For Information
Since Applicant is the same in the instant application as in that of Kudo, in accordance with 37 C.F.R. §1.105, if Applicant disagrees with the reasoning and assertion made by the examiner that paragraph 85 of Kudo should disclose the density as being in units of pcs/µm2, Examiner officially requires Applicant to supply the following information: - any documentation which would prove that the units in paragraph 85 of Kudo are correct, but that the units found in Tables 2 and 5 are not. For example: lab notes, experimental results, or affidavits/declarations from those who have firsthand knowledge with respect to the discrepancy. If Applicant agrees with Examiner’s assertion, Applicant should let the Office know in Applicant’s response to the instant Office Action.
Furthermore, regardless of which unit is correct, Applicant should endeavor to correct the associated error in the published patent, US 10,427,443.
Response to Arguments
Applicant's arguments filed 08/22/2025 have been fully considered but they are not persuasive.
Examiner notes that Applicant did not response to Examiner’s Requirement for Information in the last action. In order to be responsive to the instant action, Examiner respectfully requests that Applicant, in the next reply, respond appropriately to the Requirement for Information.
Applicant’s arguments that the support of Nakamura et al. does not have the claimed features as alleged by Examiner is not persuasive. The arguments are merely attorney arguments which do not rise to the level of objective evidence required to show that support of Nakamura et al. does not necessarily have the claimed features. See MPEP §2112(V). In this instance, Applicant argues that Nakamura et al. only disclose performing the electrolytic treatment four times, which Applicant alleges is not enough times to arrive at the recited properties. However, none of Applicant’s examples show that the example of Nakamura et al. does not necessarily have the recited properties. Specifically, none of Applicant’s examples show a scenario which is sufficiently identical to any scenario of Nakamura et al. which would show that Nakamura et al. do not necessarily have the recited properties. For example, in Applicant’s examples, the electrolytic treatments all are done at temperatures at or below 15°C for the inventive examples, and at either 25°C or 40°C for the comparative examples. The example 1 of Nakamura et al. and cited by Applicant uses 30°C.
Additionally, Applicant’s specification sets forth that the temperature of the electrolytic treatment is preferably 30°C or lower (paragraph 49), and that the treatment is preferably carried out a plurality of times (paragraph 48). Therefore, it cannot be said that the examples of Nakamura et al. do not necessarily have the properties recited.
Thus, absent any actual objective evidence which shows that Nakamura et al. do not necessarily have the properties claimed, the rejection is maintained.
Examiner notes that in light of Applicant’s arguments filed 08/22/2025 which especially point out that the inventive Examples all show that the electrolytic treatment is repeated 10 times, it is apparent that Applicant regards the invention to only be achievable by methods which include repeating the electrolytic treatment at least 10 times. If this is not the case, Applicant should make clear in the next response what process steps are actually required to arrive at the claimed printing plate.
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 JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853