DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-10; “an inkjet resin composition”) in the reply filed on 05/04/2026 is acknowledged.
3. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/04/2026.
Claim Objections
4. Claim 3 is objected to because of the following informalities:
As to Claim 3: The applicants are advised to correct the misspelling of “polydimethylsiloxan” with “polydimethylsiloxane”.
Appropriate correction is required.
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.
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.
5. Claims 1, 3-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Umeda et al. (US 2015/0212413) in view of Hayashi et al. (US 2003/0118922) and Ueno et al. (US 2007/0251414).
As to Claims 1 and 3-4: Umeda et al. disclose a photosensitive resin composition for use in inkjet (Paragraphs [0031] and [0156]), corresponding to the claimed inkjet resin composition. The composition taught by Umeda et al. comprises 1-100 parts by weight of two or more photoactive unsaturated compounds including 2-ethylhexyl(meth)acrylate, isodecyl(meth)acrylate, and urethane (meth)acrylates, wherein (meth)acrylates mean methacrylate or acrylate (Paragraphs [0053]-[0057]), which overlap with those claimed, i.e., 20-30% by weight of 2-ethylhexyl acrylate, 40-50% by weight of isodecyl acrylate, and 1-10% by weight of urethane acrylate, and 1-50 parts by weight of an oil-soluble photopolymerization initiator (Paragraphs [0052] and [0059]), which overlaps with the claimed 1-5% by weight of an initiator.
While Umeda et al. broadly disclose the addition of additives to their photosensitive resin composition (Paragraphs [0065] and[0066]), they do not specify them as including surface flow control additive such as polydimethylsiloxane and the compound represented by Formula 2, and its particular amount as required by claims 1 and 3-4. Moreover, while Umeda et al. disclose using 1-100 parts by weight of photoactive unsaturated compounds (Paragraphs [0053]-[0057]), they not specify them as including the claimed 4-hydroxybutyl acrylate.
Nevertheless, Hayashi et al. disclose the use of hydroxyalkyl (meth)acrylate such as the claimed 4-hydroxybutyl acrylate in a photosensitive resin composition having superior elastic deformation modulus at room temperature and sufficient hardness (Paragraphs [0029] and [0102]).
Furthermore, Ueno et al. disclose employing 0.1-100 parts by weight of silicone additives such as polydimethylsiloxane (which according to present claim 3 corresponds to the claimed surface flow control additive) and compounds represented by the claimed Formula 2 (which overlaps with its claimed amount of 0.05-1% by weight of the surface flow control additive) in a photosensitive resin composition to provide the same with desired dispersion in a short time (Paragraphs [0030], [0049]-[0052] and [0057]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the 4-hydroxybutyl acrylate and surface flow control additives suggested by Hayashi et al. and Ueno et al. as the unsaturated compounds and additives in the composition of Umeda et al., with a reasonable expectation of successfully obtaining superior elastic deformation modulus at room temperature, sufficient hardness, and desired dispersion at a short time.
Additionally, while Umeda et al. disclose the addition of additives including silane coupling agents to their photosensitive resin composition (Paragraph [0065]), they do not specify the amount of the silane coupling agents as required by the claims. Nevertheless, Ueno et al. disclose using silane coupling agents in an amount of 0.1-100 parts by weight (which overlaps with the claimed 1-5% by weight of silane coupling agent) to provide photosensitive resin composition with desired dispersing properties (Paragraphs [0030] and [0049]-[0052]). Thus, it would have been obvious to one of ordinary skill in the art to use the claimed amount of silane coupling agent taught by Ueno et al. in the photosensitive resin composition of Umeda et al., with a reasonable expectation of successfully providing the same with desired dispersing properties.
As to Claims 7-10: These properties would have naturally followed from the suggestion of Umeda et al., Hayashi et al. and Ueno et al. since they would have collectively suggested identical or substantial identical composition as those claimed for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
6. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Umeda et al. (US 2015/0212413) in view of Hayashi et al. (US 2003/0118922) and Ueno et al. (US 2007/0251414) as applied to claims 1, 3-4 and 7-10 above, and further in view of Motofuji et al. (US 2014/0045966).
The disclosures with respect to Umeda et al., Hayashi et al. and Ueno et al. in paragraph 5 are incorporated here by reference.
However, they do not specify their initiator as including the claimed 2,2-dimethoxy-1,2-diphenylethan-1-one.
Nevertheless, Motofuji et al. disclose using initiators include 2,2-dimethoxy-1,2-diphenylethane-1-one in a photosensitive resin composition having high heat resistance suitable for inkjets (Paragraphs [0006], [0043], [0258] and [0268]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed 2,2-dimethoxy-1,2-diphenylethan-1-one initiator taught by Motofuji et al. as the initiator in the composition suggested by Umeda et al., Hayashi et al. and Ueno et al., with a reasonable expectation of successfully obtaining high heat resistance suitable for inkjets.
Allowable Subject Matter
7. Claims 5 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Vasu Jagannathan can be reached at (571)272-1119. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
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