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 .
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18/695,148 in view of Tsuchiya et al. (# US 2009/0124720).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter except:
the ink composition comprises resin component, wherein the hydroxyl group-containing resin includes a ketone resin having a hydroxyl group and a content of the hydroxyl group-containing resin is 1.5 to 16.0% by mass.
Tsuchiya et al. teaches that to have the ink composition with uniform ejection property, the ink composition comprises resin component, wherein the hydroxyl group-containing resin includes a ketone resin having a hydroxyl group ([0010]) and a content of the hydroxyl group-containing resin is 1.5 to 16.0% by mass (8 to 20%; [0015]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the ink composition of copending application (148) by the aforementioned teaching of Tsuchiya et al. in order to have the ink composition having excellent in curability, adhesiveness, extensibility, crease resistance, and surface tackiness property.
This is a provisional nonstatutory double patenting rejection.
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya et al. (# US 2009/0124720).
Tsuchiya et al. discloses:
1. An ink composition for ultraviolet-curable inkjet printing comprising (see Abstract) polymerization components (see Abstract; [0023]-[0040]), a resin component ([0042]-[0048]), and a photopolymerization initiator (see Abstract; [0053]-[0055]),
wherein the polymerization components include (A) a polyfunctional amine-modified oligomer ([0036]), (B) a nitrogen-containing monomer (N-viny caprolactam; [0018]; [0031]), (C) an aromatic ring-containing monomer ([0024]), and (D) a polyfunctional monomer ([0019]; [0041]),
wherein the resin component includes a hydroxyl group-containing resin ([0042]-[0046]),
wherein (A) the polyfunctional amine-modified oligomer comprises an acrylated amine compound having two photopolymerizable functional groups and two amino groups in a molecule ([0036]),
wherein (B) the nitrogen-containing monomer comprises vinyl caprolactam ([0018]; [0031]),
wherein (C) the aromatic ring-containing monomer comprises benzyl acrylate ([0040]) and phenoxyethyl acrylate ([0016]),
wherein (D) the polyfunctional monomer comprises at least one of propoxylated neopentyl glycol diacrylate, dipropylene glycol diacrylate, and 1,6-hexanediol diacrylate ([0040]),
wherein a content of (A) the polyfunctional amine-modified oligomer is 0.1 to 13.0% by mass ([0041]),
wherein a content of (C) the aromatic ring-containing monomer is 35.0 to 75.0% by mass (70% or more; [0030]),
wherein a content of (D) the polyfunctional monomer is 2.0 to 16.0% by mass (1 to 10%; [0041]), and
wherein the hydroxyl group-containing resin includes a ketone resin having a hydroxyl group. ([0042]-[0043]).
The Examiner draws particular attention to the Applicant that " Tsuchiya et al. does address (A) a polyfunctional amine-modified oligomer ([0036]), (B) a nitrogen-containing monomer ([0018]; [0031]), (C) an aromatic ring-containing monomer ([0024]), and (D) a polyfunctional monomer ([0019]; [0041]), it teaches a laundry list of possible (A) a polyfunctional amine-modified oligomer ([0036]), (B) a nitrogen-containing monomer ([0018]; [0031]), (C) an aromatic ring-containing monomer ([0024]), and (D) a polyfunctional monomer ([0019]; [0041]). The format in which Tsuchiya et al. presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Tsuchiya et al. to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the (A) a polyfunctional amine-modified oligomer, (B) a nitrogen-containing monomer, (C) an aromatic ring-containing monomer, and (D) a polyfunctional monomer from the list and any additives from the list, including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377.
2. The ink composition for ultraviolet-curable inkjet printing of claim 1, wherein a content of the vinyl caprolactam is 3.5 to 17.0% by mass ([0032]), and
wherein a content of the hydroxyl group-containing resin is 1.5 to 16.0% by mass (see Abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Kameyama et al. (# US 2014/0212634) discloses an ink composition used in active energy ray-curable inkjet printing, which has excellent curing property, discharge property, storage stability, and compatibility with various substrates. The inkjet ink composition of the present invention includes at least two types of polymerizable compounds selected from a group consisting of (A) 2-(2-vinyloxyethoxy)ethyl acrylate, (B) N-vinyl caprolactam, and (C) at least one type of bifunctional acrylate monomer including at least a diacrylate having a molecular weight of 250 or less. (see Abstract).
(2) Nakashima et al. (# US 2021/0155813) discloses a photocurable inkjet printing ink composition that demonstrates excellent preservation stability and discharge stability, good adhesion, bending tolerance property, and tackiness, and high hardness. As a solution, a photocurable inkjet printing ink composition containing photopolymerizable compounds and photopolymerization initiator is provided, wherein the photocurable inkjet printing ink composition satisfies the requirements of A to E: A. 3,3,5-trimethyl cyclohexyl acrylate is contained by 5 to 50 percent by mass in all photopolymerizable compounds; B. multifunctional monomers and/or multifunctional oligomers of 10° C. or lower in glass transition temperature are contained by 1 to 15 percent by mass in all photopolymerizable compounds; C. monofunctional monomers are contained by a total of 40 percent by mass or more in all photopolymerizable compounds; D. amino group and/or amide group-containing monomers and/or oligomers are contained; and E. the ink composition has a viscosity of 10 mPa.Math.s or lower at 25° C (see Abstract).
(3) Engel et al. (# US 2012/0287213) discloses an UV-ink jet printing ink composition comprises: (a) difunctional (meth)acrylate monomer, (b) photoinitiator, (c) effect pigments and (d) optionally trifunctional and/or polyfunctional(meth)acrylate monomers (see Abstract).
(4) Nakashima et al. (# US 2019/0062580) discloses a photocurable inkjet printing ink composition contains a photopolymerizable compound and a photopolymerization initiator, wherein in 100 percent by mass of the photocurable inkjet printing ink composition, included are: an acrylamide-based monomer by 5.0 to 50 percent by mass; a monofunctional monomer other than acrylamide-based monomer by 15 to 70 percent by mass; a polymerizable compound having two or more functionalities by 5.0 to 30.0 percent by mass; vinyl caprolactam by 0.1 to 15 percent by mass and/or an acrylated amine compound having two photopolymerizable functional groups and two amino groups in the molecule by 0 to 10 percent by mass; and the percentage of monofunctional monomers in the photopolymerizable compound is 60 to 99.5 percent by mass (see Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricardo Magallanes can be reached at 571-272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853
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