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.
Claim 30 contains the trademark/trade names CN6092 and Omnirad. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe urethane acrylate oligomers and photo-initiators and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 21, 24-28 and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO2019/109043).
Regarding claims 1, 21, 24, 27, 33 Moore teaches that it is known provide a radiation curable binder [0185][0194] wherein the binder may have a viscosity meeting the limitations of the current claims pre-application [0068]. Moore is silent as to the post-cure viscosity of the cured layer formed. However, first it should be noted that the composition of Moore appear to be either identical or substantially the same as the composition of the current application. This is supported in that the binder is stated as having the same viscosity claimed above with the same glass transition temperature [0141], the binder may be TMPTA [00200] as in claim 21 of the current application with an average functionality reading on the range of claim 24, the composition may have the same molecular weight as claimed in claim 26 with the melamine additive of claim 26 [0259], it may contain the same laponite additive of claims 27 and 33 and used in the same percentages claimed [0226] with the same polyurethane dispersion of claim 28 [0259] with the same acetoxy functional crosslinking agents of claim 32 [0178], all of which may be present in a mixture of organic solvent and water as in claim 34. Second, Moore states that toughness and abrasion resistance are desired qualities in the final coating [0197] wherein Moore further states that toughness may be directly affected by the molecular weight of components employed and that the molecular weight of the components in the coating composition directly affects the viscosity of the composition provided [0196]. Therefore if it were determined that somehow the composition of Moore is not identical to that of the current claims, in the absence of criticality of the specific post-exposure viscosity of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize/balance the viscosity of the composition of Moore in order to control the final toughness and viscosity of the cured composition. Further it is noted that the current claim are not method claims and are instead drawn to a coating composition. As such, it is not a requirement of the claims that any particular applicator be used or that any particular volatile loss percent be present. It is merely required that the prior art of Moore be capable of being applied using the applicator claimed and be capable of the loss of volatiles claimed wherein it is noted that Moore is specifically drawn to high transfer efficiency coatings and applicators (title) and would therefore reasonably be expected to be capable of the same uses and outcomes claimed.
Regarding claim 25, Moore further teaches wherein the binder may have the same number average molecular weight claimed [0183]. Further the current claims are not method claims and therefore do not require a step of UV exposure. Rather the prior art merely needs to be able to gain the stated viscosity increase as claimed wherein in the rejection of claim 1 above, reasoning to optimize the viscosity of the composition of Moore was already provided.
Regarding claim 26, the primary and additional resin components of Moore preferably have glass transition temperatures in the range claimed [0207-0211].
Regarding claim 28, Moore further teaches water in the amount claimed [0228] and the use of a hexamethoxymethyl melamine resin as claimed [0175].
Regarding claim 32, Moore teaches the use of the acetoacetoxy functional polymer claimed as a crosslinking agent as shown above but is silent as to the amount used in terms of total weight of the composition as claimed. However, those of ordinary skill in the art would readily recognize that the amount of “cross-linking agent” provided would directly affect the amount of crosslinking present in the final product wherein Moore states that crosslink density further affects the toughness and scratch resistance of the final material. Therefore, in the absence of criticality of the specific percentage of functional polymer claimed, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of crosslinking agent employed by Moore in order to control the level of crosslinking of the material formed by Moore thereby controlling the desired properties of Moore including toughness and scratch resistance. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 34, as shown above, Moore teaches the use of both water and organic solvents but fails to explicitly state the ratios claimed. However, Moore teaches that varying the solvent combinations directly controls the evaporation rates of solvents [0228] wherein those of ordinary skill in the art would readily recognize that this would directly control the drying/curing time of the invention of Moore. Therefore, in the absence of criticality of the specific ratio of organic solvent to water claimed, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of organic solvent and water in order to control the drying/curing time of the invention of Moore. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 22-23 and 35-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO2019/109043) as applied to claim 1, 21, 24-28 and 32-34 above and further in view of Yukota et al. (JP2018/168321).
Regarding claim 22, the teachings of Moore are as shown above. Moore fails to teach wherein the binder may comprise a urethane acrylate oligomer reading upon the current claims such as CN9062 as taught in the current specification [0048]. However, Yukota teaches that it is known to incorporate urethane acrylate oligomers such as CN9062 into printable radiation curable ink compositions (abstract) so that the “hardness of the cured printed layer can be improved” (see 5 immediate paragraphs before CN9062 is cited). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate that CN9062 of Yukota into the radiation curable printable ink of Moore in order to gain said improved cured hardness in the invention of Moore.
Regarding claim 23, the teachings of Moore are as shown above. Moore fails to teach wherein the binder may comprise a hexanediol acrylate monomer. However, Yukota teaches that it is known to incorporate 1, 6-hexanediol diacrylate into printable radiation curable ink compositions (abstract) so as to provide them with “favorable re-ejectability” (see 3 paragraphs immediately before the citation of 1, 6-hexanediol diacrylate). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the 1, 6-hexanediol diacrylate of Yukota into the radiation curable printable ink of Moore in order to gain said favorable re-ejectability.
Regarding claim 35, Moore teaches that it is known provide a radiation curable binder [0185][0194] wherein the binder may have a viscosity meeting the limitations of the current claims pre-application [0068]. Moore is silent as to the post-cure viscosity of the cured layer formed. However, first it should be noted that the composition of Moore appear to be either identical or substantially the same as the composition of the current application. This is supported in that the binder is stated as having the same viscosity claimed above with the same glass transition temperature [0141], the binder may be TMPTA [00200] as in claim 21 of the current application with an average functionality reading on the range of claim 24, the composition may have the same molecular weight as claimed in claim 26 with the melamine additive of claim 26 [0259], it may contain the same laponite additive of claims 27 and 33 and used in the same percentages claimed [0226] with the same polyurethane dispersion of claim 28 [0259] with the same acetoxy functional crosslinking agents of claim 32 [0178], all of which may be present in a mixture of organic solvent and water as in claim 34. Second, Moore states that toughness and abrasion resistance are desired qualities in the final coating [0197] wherein Moore further states that toughness may be directly affected by the molecular weight of components employed and that the molecular weight of the components in the coating composition directly affects the viscosity of the composition provided [0196]. Therefore if it were determined that somehow the composition of Moore is not identical to that of the current claims, in the absence of criticality of the specific post-exposure viscosity of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize/balance the viscosity of the composition of Moore in order to control the final toughness and viscosity of the cured composition. Further it is noted that the current claim are not method claims and are instead drawn to a coating composition. As such, it is not a requirement of the claims that any particular applicator be used or that any particular volatile loss percent be present. It is merely required that the prior art of Moore be capable of being applied using the applicator claimed and be capable of the loss of volatiles claimed wherein it is noted that Moore is specifically drawn to high transfer efficiency coatings and applicators (title) and would therefore reasonably be expected to be capable of the same uses and outcomes claimed. Moore fails to teach wherein the composition further comprises pentaerythritol tetraacrylate. However, Yukota teaches that it is known to substitute pentaerythritol tetraacrylate for TMPTA in printable radiation curable ink compositions (abstract). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the pentaerythritol tetraacrylate of Yukota for the TMPTA components of Moore as a simple substitution of one known polyfunctional acrylate monomer for another wherein the results of the substitution would have been predictable based upon the teachings of Yukota. The teachings of Moore in view of Yukota are as shown above. Moore fails to teach wherein the binder may comprise a urethane acrylate oligomer reading upon the current claims such as CN9062 as taught in the current specification [0048]. However, Yukota teaches that it is known to incorporate urethane acrylate oligomers such as CN9062 into printable radiation curable ink compositions (abstract) so that the “hardness of the cured printed layer can be improved” (see 5 immediate paragraphs before CN9062 is cited). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate that CN9062 of Yukota into the radiation curable printable ink of Moore in order to gain said improved cured hardness in the invention of Moore. Further Moore teaches amounts of photoinitiator overlapping the claims range [0184]. Further Moore teaches the use of branched copolyester with hydroxyl functionality [0164-165] in the amounts claimed [0173]. Moore further teaches wherein the composition may comprise a thermal binder [0086] with crosslinkable carboxyl groups [0160] and a polyacids which may be considered as “crosslinking component” given that it is part of the crosslinking process [0162].
Regarding claim 36, the component referred to above as the “crosslinking component” is listed as being present in amounts reading upon the currently claimed range [0173].
Regarding claim 37, Moore further teaches the use of extender pigments in the amounts claimed [0224].
Regarding claim 38, Moore further teaches the use of polysiloxane based flow control agents [0234]. This ingredient is an optional ingredient wherein 0% of the polysiloxane based flow agent reads upon the range claimed.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO2019/109043) as applied to claim 1, 21, 24-28 and 32-34 above and further in view of Becker et al. (USPGPub 2014/0106075).
Regarding claim 29, the teachings of Moore are as shown above. Moore further teaches that it is known to incorporate styrene-acrylic latex dispersions into his coating composition but is silent as to the specific properties of the dispersions. Further Moore teaches that additional resin components can have glass transition temperatures in the range claimed [0209]. Moore fails to state the desired hydroxyl number of the dispersion. However, Becker teaches that for radiation curable binders coatings the reactivity of the binder is controlled in part by the hydroxyl number of components in the binder [0039-0040]. Therefore, in the absence of criticality of the specific hydroxyl number of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the hydroxyl number of the coating of radiation curable binder coating of Moore in order to control the reactivity of the composition of Moore as guided by Becker. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO2019/109043) in view of Becker et al. (USPGPub 2014/0106075) as applied to claim 29 above and further in view of Lin et al. (TW1515255).
The teachings of Moore in view of Becker are a shown above. Moore further teaches the use of a ketimine crosslinking components [0160][0178]. Moore further teaches the use of methacrylated polyesters [0141][0187][0206]. Moore is silent as to the hydroxyl number of these compounds. However, as with the styrene-latex components above, Becker teaches that it is desirable to optimize the hydroxyl numbers of the components of his coatings composition in order to control in the reactivity of the overall composition [0039-0040]. Therefore, in the absence of criticality of the specific hydroxyl number of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the hydroxyl number of the coating of radiation curable binder coating of Moore in order to control the reactivity of the composition of Moore as guided by Becker. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further it is noted that Becker further teaches the use of hydroxy number in the claimed range for similar components, providing further guidance on this specific optimization [0039]. The teachings of Moore in view of Becker are a shown above. Moore in view of Becker fails to teach the use of di-pentaerythritol pentaacrylate as claimed. However, Lin teaches that in radiation curable resin coatings comprising acrylate components it is known to substitute dipentaerythritol pentaacrylate for pentaerythritol triacrylate components (claim 4) as in Moore [0200]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the dipentaerythritol pentaacrylate of Lin for the pentaerythritol-type acrylate components of Moore as a simple substitution of one known pentraerythritol-type pentaacrylate for another wherein the results of the substitution would have been predictable based upon the teachings of Lin.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO2019/109043) in view of Yukota et al. (JP2018/168321) as applied to claims 22-23 and 35-38 and further in view of Becker et al. (USPGPub 2014/0106075) and Lin et al. (TW1515255).
As relates to claim 39, the teachings of Becker are reasonably applicable to the teachings of Moore in view of Yukota in the same way that they are applicable to the teachings of Moore alone as in the rejection of claim 29 above. Further the teachings of Lin are reasonably applicable to the teachings of Moore in view Yukota and Becker in the same way that they are applicable to the teachings of Moore in view of Becker as in the rejection of claim 31 above. Further Moore teaches that the crosslinkable groups may comprise epoxy groups [0178]used in conjunction with a polyamine chain extender [0169].
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
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