DETAILED ACTION
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
Applicant’s election without traverse of Group I (claims 1-12) in the reply filed on 04/01/2026 is acknowledged. However, in light of amendments, Group II (claims 13-18) is now rejoined with Group I. Further, given that claims 21 and 25 of Group III have been amended such that they are directed towards a vinyl primer system, claims 21 and 25 are rejoined with Group I. While, claim 19 is amended to depend on the vinyl primer system of claim 1, claim 19 is drawn to a method of coating substrate. As noted in the restriction requirement mailed on 02/11/2026, the method of coating substrate (Group III) requires a different field of search. Therefore, claims 19, 20 and 22-24 of Group III have not been rejoined. Accordingly, claims 1-18, 21 and 25 are examined on the merits in this office action.
Claims 19, 20 and 22-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 04/01/2026.
Information Disclosure Statement
Information Disclosure Statements (IDS) submitted on 08/13/2024 and 12/02/2024 are considered and signed IDS forms are attached.
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.
Claims 1-18, 21 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a photoinitiator configured to cure at least the first oligomer”. It is not clear what is meant by “configured” or how the photoinitiator must “configured” or modified in order to cure at least the first oligomer. It is suggested that the claim be amended to recite “a photoinitiator cures at least the first oligomer”. This rejection affects all the dependent claims.
Claim 1 recites “the vinyl primer system is configured to provide an ink-receptive coating”. It is not clear what is meant by “configured” or how the vinyl primer system must “configured” or modified in order to provide an ink-receptive coating. It is suggested that the claim be amended to recite “the vinyl primer system provides an ink-receptive coating”. This rejection affects all the dependent claims.
Claim 7 recites “the ink-receptive coating is configured to have a thickness between 3 to 40 micrometers”. It is not clear what is meant by “configured” or how the ink-receptive coating must “configured” or modified in order to have a thickness between 3 to 40 micrometers. It is suggested that the claim be amended to recite “the ink-receptive coating has a thickness between 3 to 40 micrometers”.
Claim 11 recites “additives such as defoamers, leveling agents, dispersing agents, anti-settling agents, and/or rheology modifiers”. In light of the “such as” language, the scope of the claim is confusing because it is not clear whether the defoamers, leveling agents, dispersing agents, anti-settling agents, and/or rheology modifiers is a limitation required to be met in the claim. See MPEP 2173.05(d).
Claim 13 recites “a photoinitiator configured to cure at least the first oligomer”. It is not clear what is meant by “configured” or how the photoinitiator must “configured” or modified in order to cure at least the first oligomer. It is suggested that the claim be amended to recite “a photoinitiator cures at least the first oligomer”. This rejection affects all the dependent claims.
Claim 13 recites “the vinyl primer system is configured to be arranged over a substrate”. It is not clear what is meant by “configured” or how the vinyl primer system must “configured” or modified in order to be arranged over a substrate. It is suggested that the claim be amended to recite “the vinyl primer system is arranged over a substrate”. This rejection affects all the dependent claims.
Claim 15 recites “the vinyl primer system is configured to provide an ink-receptive primer coating”. It is not clear what is meant by “configured” or how the vinyl primer system must “configured” or modified in order to provide an ink-receptive primer coating. It is suggested that the claim be amended to recite “the vinyl primer system provides an ink-receptive primer coating”.
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.
Claims 1-6, 8, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Derennes et al. (US 8,669,204 B2 cited in IDS), taken in view of evidence by Snodgrass et al. (WO 2021/219781 A1) and Rudel et al. (US 2002/0115224 A1).
Regarding claims 1-4, Derennes et al. disclose a composition (vinyl primer system) comprising a mixture of a polyether acrylate (first oligomer) and a urethane acrylate (second oligomer) (see col. 11, claim 1). A specific example of polyether acrylate includes Genomer 3414 (see col. 7, Example 5, Table 5). As evidenced by Snodgrass et al., Genomer 3414 is polyether acrylate oligomer (see page 43, Example 2, Table 2). That is, polyether acrylate can be oligomer. A specific example of urethane acrylate includes Ebecryl 270 (see col. 8, Example 9, Table 9). As evidenced by Rudel et al., Ebecryl 270 is urethane acrylate oligomer (see paragraph 0084). That is, urethane acrylate can be oligomer.
The amount of polyether acrylate is 20 to 60 wt% and the amount of urethane acrylate is 20 to 55 wt% (see col. 11, claim 8). The composition contains a photoinitiator that can cure the composition (i.e. first oligomer and second oligomer) upon exposure to UV radiation or electron beam (see col. 11, claim 1). Further, there is no disclosure of a monofunctional (meth)acrylic-based monomer in the composition. That is amount of monofunctional (meth)acrylic-based monomer is 0 wt%.
The composition is used as a protection layer (see Abstract). The protection layer 6 is applied on a backing film 2 (substrate) and an ink layer 3 is applied on the protection layer 6 (see Figure 3 and col. 10, lines 64-67). That is, the protection layer 6 is an ink-receptive primer coating. Accordingly, the composition (vinyl primer system) is configured to provide an ink-receptive primer coating on a substrate.
In light of the overlap between the claimed vinyl primer system and that disclosed by Derennes et al., it would have been obvious to one of ordinary skill in the art to use a vinyl primer system that is both disclosed by Derennes et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Derennes et al. disclose the composition (vinyl polymer system) as set forth above. Further, Derennes et al. disclose that the urethane acrylate (second oligomer) can have functionality at most equal to three (see col. 11, claim 1).
Regarding claim 6, Derennes et al. disclose the vinyl primer system as set forth above. Further, Derennes et al. disclose that the polyether acrylate can have functionality at most equal to three (see col. 11, claim 1). Given that acrylate functionality can only either be uniform or vary along the oligomer chain, the polyether acrylate necessarily has acrylate functionality that is either uniform or vary along the oligomer chain.
Regarding claim 8, Derennes et al. disclose the vinyl primer system as set forth above. The vinyl primer system comprises the mixture of the polyether acrylate (first oligomer) and the urethane acrylate (second oligomer) in amount of 30 to 85 wt% (see col. 11, claim 7). The vinyl primer system comprises a diluent in form of di- or triacrylate monomer which is UV-cross-linkable in amount of up to 60 wt% (see col. 11, claim 7). Accordingly, the vinyl primer system comprises 30 to 100 wt% of combination of the first oligomer, second oligomer (additional polymerizable compound) and diluent (additional polymerizable compound).
Regarding claim 11, Derennes et al. disclose the vinyl primer system as set forth above. Further, Dereness et al. disclose the composition (vinyl primer system) can comprise an antifoam (defoamer) (see col. 3, lines 51-54).
Regarding claim 12, Derennes et al. disclose the viscosity of the composition (vinyl primer system) is less than or equal to 4000 mPa.s at 25 °C, i.e. less than or equal to 4000 centipoise (see col. 11, claim 5). While there is no disclosure of viscosity at 77 °C, given the broad range of viscosity and given that viscosity decreases as temperature increases, the viscosity of the vinyl primer system at 77 °C will necessarily overlap with viscosity of less than or equal to 4000 mPa.s.
Claims 13, 14, 16, 18, 21 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Derennes et al. (US 8,669,204 B2 cited in IDS), taken in view of evidence by Snodgrass et al. (WO 2021/219781 A1) and Rudel et al. (US 2002/0115224 A1).
Regarding claims 13, 14, 16, 18, 21 and 25, Derennes et al. disclose a composition (vinyl primer system) comprising a mixture of a polyether acrylate (first oligomer) and a urethane acrylate (additional oligomer or cross-linkable compound), a diluent in a form of at least one di- or triacrylate monomer which is cross-linkable (monomer diluent or additional cross-linkable compound) and a photoinitiator (see col. 11, claim 1). The photoinitiator can cure the composition (i.e. first oligomer and additional cross-linkable compounds) upon exposure to UV radiation or electron beam (see col. 11, claim 1). A specific example of polyether acrylate includes Genomer 3414 (see col. 7, Example 5, Table 5). As evidenced by Snodgrass et al., Genomer 3414 is polyether acrylate oligomer (see page 43, Example 2, Table 2). That is, polyether acrylate can be oligomer. A specific example of urethane acrylate includes Ebecryl 270 (see col. 8, Example 9, Table 9). As evidenced by Rudel et al., Ebecryl 270 is urethane acrylate oligomer (see paragraph 0084). That is, urethane acrylate can be oligomer. The urethane acrylate oligomer (additional oligomer) is different than the polyether acrylate oligomer (first oligomer). Further, there is no disclosure of a monofunctional (meth)acrylic-based monomer in the composition. That is amount of monofunctional (meth)acrylic-based monomer is 0 wt%.
The vinyl primer system comprises the mixture of the polyether acrylate (first oligomer) and the urethane acrylate (additional oligomer or cross-linkable compound) in amount of 30 to 85 wt% (see col. 11, claim 7). The vinyl primer system comprises the diluent in form of di- or triacrylate monomer which is UV-crosslinkable (monomer diluent or additional cross-linkable compound) in amount of up to 60 wt% (see col. 11, claim 7). Accordingly, the vinyl primer system comprises 30 to 100 wt% of combination of the first oligomer, urethane acrylate (additional oligomer or polymerizable compound) and diluent (diluent or additional polymerizable compound).
The composition is used as a protection layer (see Abstract). The protection layer 6 is applied on a backing film 2 (substrate) and an ink layer 3 is applied on the protection layer 6 (see Figure 3 and col. 10, lines 64-67). The protection layer 6 is an ink-receptive coating. That is, the vinyl primer system (composition) is configured to be arranged over a substrate.
In light of the overlap between the claimed vinyl primer system and that disclosed by Derennes et al., it would have been obvious to one of ordinary skill in the art to use a vinyl primer system that is both disclosed by Derennes et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 1, 2, 7-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Grunewalder et al. (WO 2015/006704 A1 cited in IDS).
Regarding claim 1, Grunewalder et al. disclose a coating composition comprising a hydrophobic oligomer (first oligomer) such as polyether (meth)acrylate, a multifunctional (meth)acrylate monomer, a photoinitiator, a solvent and additives (see Abstract and paragraph 0022). The coating composition comprises about 10 to about 70 wt% of hydrophobic oligomer (see paragraph 0024). Accordingly, the amount of polyether (meth)acrylate oligomer is about 10 to about 70 wt%. The coating composition is curable by ultraviolet light using photoinitiator (see paragraph 0030). That is, the photoinitiator is configured to cure the coating composition including the hydrophobic oligomer (first oligomer). Given that there is no disclosure of monofunctional (meth)acrylic-based monomers in the coating composition, the amount of the monofunctional (meth)acrylic-based monomers is 0 wt%. The coating composition can be applied to a wooden board (substrate) as a primer coating (see Abstract and paragraph 0034).
Grunewalder et al. do not disclose the vinyl primer system is configured to provide an “ink-receptive coating”. However, given that the vinyl primer system is identical to that presently claimed, the vinyl primer system is necessarily configured to provide an “ink-receptive coating”.
In light of the overlap between the claimed vinyl primer system and that disclosed by Grunewalder et al., it would have been obvious to one of ordinary skill in the art to use a vinyl primer system that is both disclosed by Grunewalder et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 2, Grunewalder et al. disclose the coating composition (vinyl primer system) as set forth above. The coating composition can comprise the multifunctional (meth)acrylate monomer as noted above. The multifunctional (meth)acrylate monomer is a polymerizable or cross-linkable compound.
Regarding claim 7, Grunewalder et al. disclose the coating composition (vinyl primer system) has a wet coating thickness of about 1 to 5 mils, i.e. 25.4 to 127 microns (see paragraph 0053). Given the broad disclosure of the wet coating thickness and given that dry coating thickness would be less than the wet coating thickness, the dry coating thickness would necessarily overlap with thickness of 25.4 to 127 microns.
Regarding claim 8, Grunewalder et al. disclose the coating composition (vinyl primer system) as set forth above. The coating composition comprises about 10 to about 70 wt% of hydrophobic oligomer (first oligomer) as noted above. Further, the coating composition comprises the multifunctional (meth)acrylate monomer in amount of about 1 to about 50 wt% (see paragraph 0026). Accordingly, the coating composition comprises amount 11 to about 100 wt% of the combination of the first oligomer and additional polymerizable or cross-linkable compound.
Regarding claim 9, Grunewalder et al. disclose the coating composition (vinyl primer system) as set forth above. Further, the coating composition can comprise pigment in amount of less than 5 wt% (see paragraph 0032).
Regarding claim 11, Grunewalder et al. disclose the coating composition (vinyl primer system) as set forth above. Further, the coating composition can comprise dispersants (dispersing agents) in amount of less than 5 wt% (see paragraph 0032).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Grunewalder et al. (WO 2015/006704 A1 cited in IDS) as applied to claim 1 above, further in view of Okada et al. (US 6,844,029 B2).
Regarding claim 10, Grunewalder et al. disclose the coating composition (vinyl primer system) as set forth above. Grunewalder et al. do not disclose 1 to 35 wt% of an extender.
Okada et al. disclose a photocurable primer composition comprising an extender pigment for the purpose of a stress relaxation of a coating film and keeping adhesion properties (see col. 7, lines 7-11). The amount of the extender pigment is 1 to 300 parts by weight per 100 parts by weight of a total resin solid content in the primer composition (see col. 7, lines 15-19). Accordingly, the amount of the extender pigment is 1 to 75 wt% in the primer composition.
In light of motivation for using 1 to 75 wt% of extender pigment disclosed by Okada et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use 1 to 75 wt% of extender pigment in the coating composition of Grunewalder et al. in order to provide a stress relaxation of a coating film and keeping adhesion properties, and thereby arrive at the claimed invention.
Claims 13-15, 17, 18, 21 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Grunewalder et al. (WO 2015/006704 A1 cited in IDS).
Regarding claims 13, 14, 17, 18, 21 and 25, Grunewalder et al. disclose a coating composition comprising a hydrophobic oligomer (first oligomer) such as polyether (meth)acrylate, a multifunctional (meth)acrylate monomer (monomer diluent or additional cross-linkable compound), a photoinitiator, a solvent and additives (see Abstract and paragraph 0022). The coating composition comprises about 10 to about 70 wt% of hydrophobic oligomer (see paragraph 0024). Accordingly, the amount of polyether (meth)acrylate oligomer is about 10 to about 70 wt%. Further, the coating composition comprises the multifunctional (meth)acrylate monomer in amount of about 1 to about 50 wt% (see paragraph 0026). Accordingly, the coating composition comprises amount 11 to about 100 wt% of the combination of the first oligomer and additional polymerizable or cross-linkable compound. The coating composition is curable by ultraviolet light using photoinitiator (see paragraph 0030). That is, the photoinitiator is configured to cure the coating composition including the hydrophobic oligomer (first oligomer). Given that there is no disclosure of monofunctional (meth)acrylic-based monomers in the coating composition, the amount of the monofunctional (meth)acrylic-based monomers is 0 wt%. The coating composition can be applied to a wooden board (substrate) as a primer coating (see Abstract and paragraph 0034). That is, the vinyl primer system is configured to be arranged over a substrate.
In light of the overlap between the claimed vinyl primer system and that disclosed by Grunewalder et al., it would have been obvious to one of ordinary skill in the art to use a vinyl primer system that is both disclosed by Grunewalder et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 15, Grunewalder et al. disclose the coating composition (vinyl primer system) has a wet coating thickness of about 1 to 5 mils, i.e. 25.4 to 127 microns (see paragraph 0053). Given the broad disclosure of the wet coating thickness and given that dry coating thickness would be less than the wet coating thickness, the dry coating thickness would necessarily overlap with thickness of 25.4 to 127 microns.
Grunewalder et al. do not disclose the vinyl primer system is configured to provide an “ink-receptive coating”. However, given that the vinyl primer system is identical to that presently claimed, the vinyl primer system is necessarily configured to provide an “ink-receptive coating”.
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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