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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/25/2024, 9/18/2025, 10/3/2025, and 1/6/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/695,283 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach substantially the same invention. Claims 1 and 2 of the instant application teach an ink composition for ultraviolet-curable inkjet printing comprising polymerization components and a photopolymerization initiator, wherein the polymerization components include (A) a polyfunctional amine-modified oligomer, (B) a nitrogen-containing monomer, (C) an aromatic ring-containing monomer, and (D) a polyfunctional monomer, wherein (A) the polyfunctional amine-modified oligomer comprises an acrylated amine compound having two photopolymerizable functional groups and two amino groups in a molecule, wherein (B) the nitrogen-containing monomer comprises at least one of acryloylmorpholine or vinyl caprolactam, wherein (C) the aromatic ring-containing monomer comprises benzyl acrylate and phenoxyethyl acrylate, wherein (D) the polyfunctional monomer comprises at least one of dipropylene glycol diacrylate, 1,6-hexanediol diacrylate, or ethoxylated trimethylolpropane triacrylate. While the ranges of each component may differ, it would have been obvious to one having ordinary skill in the art that the instant claims are substantially the same as the claims set forth in U.S. application no. 18/695,283 because the claimed ranges for each of components (A) through (D) overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Nakashima et al. (US 2019/0062580).
Nakashima et al disclose the following claim limitations in claim 1, an ink composition for ultraviolet-curable inkjet printing comprising polymerization components and a photopolymerization initiator (abstract), wherein the polymerization components include (A) a polyfunctional amine-modified oligomer [0028] – [0031], (B) a nitrogen-containing monomer [0022] – [0023], (C) an aromatic ring-containing monomer [0022] – [0023], and (D) a polyfunctional monomer [0026] – [0027], wherein (A) the polyfunctional amine-modified oligomer comprises an acrylated amine compound having two photopolymerizable functional groups and two amino groups in a molecule [0028] – [0031], wherein (B) the nitrogen-containing monomer comprises at least one of acryloylmorpholine or vinyl caprolactam [0022] – [0023], while Nakashima et al. does not specifically teach (C) the aromatic ring-containing monomer comprises benzyl acrylate and phenoxyethyl acrylate, along with N-vinyl caprolactam, it would have been obvious to one having ordinary skill in the art at the time of filing that where benzyl acrylate, phenoxyethyl acrylate, and N-vinyl caprolactam are listed as monofunctional monomers, and the reference provides that two or more types of monofunctional monomers may be combined [0022] – [0023], benzyl acrylate, phenoxyethyl acrylate and N-vinyl caprolactam could be used together in the ranges provided in the instant application), wherein (D) the polyfunctional monomer comprises at least one of dipropylene glycol diacrylate, 1,6-hexanediol diacrylate, and ethoxylated trimethylolpropane triacrylate [0026] – [0027], wherein a content of (A) the polyfunctional amine-modified oligomer is 0.8 to 11.0% by mass [0031], wherein a content of (C) the aromatic ring-containing monomer is 32.0 to 75.0% by mass [0023], and wherein a content of (D) the polyfunctional monomer is 1.5 to 14.0% by mass [0027].
Regarding claim 2, a content of (B) the nitrogen-containing monomer is 10.0% by mass to 33.0% by mass [0024].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references teach an ink composition for UV-curable inkjet printing with a polyfunctional amide-modified oligomer, nitrogen-containing monomer, aromatic ring-containing monomer, and polyfunctional monomer.
US 2012/0270018 (Mizutani et al.)
US 2011/0159251 (Sato et al.)
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/LAURA MARTIN SWEENEY/Supervisory Patent Examiner, Art Unit 2855
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