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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 30 June 2026 is acknowledged.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 June 2026.
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.
Claim(s) 1-9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naderhoff et al. (US Serial No. 2009/0162564).
Regarding claims 1-2, 4-7, and 11; Naderhoff et al. teaches an aqueous polyurethane dispersion comprising resin particles [T2], which includes 10 to 60 percent by weight of a polymeric polyol, 5 to 40 percent by weight of at least one compound containing both isocyanate reactive groups and meth(acrylate) groups wherein said compound comprises 1 to 30 percent by weight of at least one hydroxyl alkyl acrylate, 1 to 15 percent by weight of at least one compound comprising both isocyanate reactive groups and carboxyl groups, and 10 to 50 percent by weight of at least one isocyanate functional group [abs; 0002, 0011]. Naderhoff et al. teaches the polyurethane dispersion is blended with an amine extender compound [0011], photoinitiator (e.g. benzophenone) [0028], and a reactive diluent [0025]. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123.
Naderhoff et al. teaches, in a preferred embodiment, a polyurethane aqueous dispersion having an acrylate equivalent weight of 445 was prepared by reacting 92 parts (OH: 92/468= ~0.20 mol) of polyester polyol having an average OH equivalent weight of 468, 70 parts (OH: (2*17)/134.13= ~ 0.25 mol) of dimethylol propionic acid, 46 parts (OH: 46/257= ~0.18 mol) of a reaction product of liquid bisphenol A epoxy resin and acrylic acid, the reaction product having an average OH equivalent weight of 257, 100 parts (NCO: (2*100)/222.28= ~0.90 mol) of isophorone diisocayante, and 30.4 parts (OH: 30.4/116= ~0.26mol) of hydroxyethyl acrylate in the presence of 53 parts of propoxylated neopentyl glycol diacrylate (reactive diluent). Naderhoff et al. teaches the reacted product is further reacted with 4.4 parts (4.4/403= ~0.011 mol) of polypropylene oxide triamine having an average molecular weight of 403 (corresponds to the amino group containing compound having a H on a C atom at the alpha position), then adding 17 parts (17/164.2= ~ 0.10mol) of a photoinitiator Darocur® 1173, and blending the mixture with 391 parts of deionized water [Ex7].
The polyurethane obtained above [Ex7], prior to the addition of the photoinitiator, is a polyurethane wherein about 0.01 mol or less of NCO remains in view of the OH amount (~0.89 mol in the total) and NCO amount (~0.09 mol) of the raw material compounds. The value obtained by dividing the substance amount (17/164.2= ~ 0.10 mol) of the photoinitiator used in the example, by the number of moles ((92+46+17+53+100+30.1+1.1)/445 = about 0.77 mol) of acryloyl groups of the polyurethane mixture is about 13 mol% [Ex7], and thus satisfies the ratio of the number of moles of the generator relative to the number of moles of the ethylenic double bond (as calculated by Examiner).
In the alternative, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of filing a person having ordinary skill in the art would have found it obvious to optimize mol% of the photoradical generator to the ethylenic double bonds, and optimize the number of moles of amino group to photoradical generator; and would have been motivated to do so in order to achieve desired properties (i.e. reactivity rates and/or dispersibility) of the present invention.
Regarding claims 3 and 8; Naderhoff et al. does not explicitly teach wherein an HSP distance between the resin and the photoradical generator is 5.5 MPa1/2 or less, nor explicitly teaches an HSP distance between the photoradical generator and the compound having the amino group A having a H atom on the C atom at the alpha position is 6 MPa1/2 or less. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. HSP distances, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Regarding claim 9; Naderhoff et al. does not explicitly teach the resin has a glass transition temperature of 90°C or lower. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. glass transition temperature, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naderhoff et al. (US Serial No. 2009/0162564), as applied to claim 1 above, and further in view of Sato et al. (US Serial No. 2019/0169453).
Naderhoff et al. teaches the basic claimed aqueous dispersion, as set forth above, with respect to claim 1.
Regarding claim 10; Naderhoff et al. teaches a suitable photoinitiator to be employed in the present invention is Darocur® 1173, however fails to teach the photoradical generator has a number average molecular weight of 1000 or more. Sato et al. teaches aqueous inkjet ink compositions comprising photopolymerization initiators such as Darocur® 1173 and Speedcure® 7010 (Mn of greater than 1000). Therefore, Sato et al. teaches that Darocur® 1173 and Speedcure® 7010 are functional equivalents for the purpose of functioning as photopolymerization initiators (radical generators) in aqueous inkjet ink fomrulations. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
