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 .
Rejections
Claim Rejections - 35 USC § 102
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 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/131414 Koyanagi et al., with the English translation provided by the applicant being referenced below unless otherwise noted.
Koyanagi, paragraph [0003], discloses coating a substrate with a primer, which is an adhesive layer by definition of “primer”, which allows a composition to adhere to a substrate to which it would not otherwise adhere well. The primer of Koyanagi is aqueous polyurethane with carboxyl groups crosslinked with carbodiimide. See Koyanagi, the abstract and paragraphs [0003], [0006], [0052], [0054]-[0056], [0063], [0065]-[0066], [0078], which gives printed images which fall within the scope of those of the instant claim 15 “printed material” noting the images applied by the methods of Koyanagi, paragraph [0078], and the remainder of the document.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/131414 Koyanagi et al., with the English translation provided by the applicant being referenced below unless otherwise noted.
Koyanagi, paragraph [0003], discloses coating a substrate with a primer, which is an adhesive layer by definition of “primer”, which allows a composition to adhere to a substrate to which it would not otherwise adhere well. The primer of Koyanagi is aqueous polyurethane with carboxyl groups crosslinked with carbodiimide. See Koyanagi, the abstract and paragraphs [0003], [0006], [0052], noting that the amines therein fall within the scope of those of the instant claims, including claims 1 and 4, according to paragraph [0059] of the instant specification, [0054]-[0056], [0063], which falls within the scope of the instant claim 3, [0065]-[0066], [0078], which gives printed images which fall within the scope of those of the instantly claimed “digital printing type image” based on the fact that “type” modifies the claimed images to include these other images even though they are applied by a different means because there is no particular distinction required of the images of the instant claims applied by digital printing and those applied by the methods of Koyanagi, paragraph [0078], all of which can be automated so as to be digitally controlled methods and therefore “digital printing type images”, and the remainder of the document.
The polyether polyol and carboxylate groups of Koyanagi fall within the scope of the instant claims 2, 7, and 11. See Koyanagi, paragraph [0006]. Note the various saturated hydrocarbon groups throughout the reactants of Koyanagi used to make their polyurethanes. Note that the amines of Koyanagi will necessarily neutralize these acid groups to give ammonium carboxylate groups.
The acid value, molecular weight, and amounts of polyurethane with acid groups and the amounts of the carbodiimides and their equivalents give the ratio of carbodiimide groups to carboxylate groups of the instant claim 1.
The polyurethanes of Koyanagi have hydrophilic groups and hydrophobic groups and therefore are necessarily surfactants of the instant claims requiring surfactants, particularly the lower molecular weight fraction thereof necessarily present from the definition of “average molecular weight” in polymer chemistry.
Koyanagi does not describe the instantly claimed inventions in the instantly claimed language or exemplify inventions which fall within the scope of the instant claims.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the instantly claimed inventions from the disclosure of Koyanagi because they are encompassed by Koyanagi, as discussed above, and the instantly claimed particulars would have been expected to give inventions having the properties of the inventions of Koyanagi, including those properties specifically discussed by Koyanagi and those properties inherent to the inventions of Koyanagi, and the instantly claimed amounts of acid and carbodiimide groups would have been expected to give predictable degrees of crosslinking and predictable properties thereof to the ordinary skilled artisan.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
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