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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/05/2026 has been entered.
Response to Amendments
In response to the amendment received on 01/05/2026:
• Claims 50-59, 61, and 63-91 are currently pending. Claims 1-49, 60, and 62 are canceled. Claims 77-82 are withdrawn for being directed to a non-elected invention(s). The objection to claim 70 is withdrawn in light of the amendments to the claims. The objection to claim 50 is maintained (see claim objections below). The rejections of claims 61, 67, and 91 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
Claim Interpretation
It is noted that the interpretation for the claimed term “substantially free” mentioned in the Non-Final mailed 06/10/2025 is withdrawn here, in light of the 112(b) rejection below. The remaining definitions from the Non-Final Rejection dated 06/10/2025 are still incorporated herein.
Claim Objections
Claims 50, 61, and 69 are objected to because of the following informalities:
• Claim 50 should be amended as follows: “…at least one of the one or more inert hard resins is an iso diallyl phthalate resin or a…”
• Claim 61 should be amended as follows: “…the (meth)acrylate monomers and/or oligomers of part c), and…”
• Claim 69 should be amended as follows: “…optionally wherein the vegetable oils are linseed oil, soya oil, or combinations thereof.”
Appropriate correction is required.
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 53, 58, 64, 75, 76, 83, 87, 90, and 91 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.
In claims 53 and 83, the term “the amount of (meth)acrylate monomers and oligomers” lacks sufficient antecedent basis. It is unclear which (meth)acrylate monomers and oligomers are being referred to – the multifunctional or monofunctional monomers and oligomers, or both? The Examiner is interpreting the phrase “the amount of (meth)acrylate monomers and oligomers” to refer to the total of all (meth)acrylate monomers and oligomers in the composition.
In claim 58, the term “CMR” is used; however, claim 57 includes the term “CMR” inside of parentheses. This generates confusion, given that the use of parentheses makes it unclear whether a term is optional or not. In other words, it is unclear what “CMR” represents given the term is previously used within parentheses. For the purposes of examination, the Examiner is interpreting “CMR” to refer to “carcinogenic, mutagenic, or reprotoxic.” To correct, the Examiner suggests changing both uses of the term “CMR” in claim 58 to “carcinogenic, mutagenic, or reprotoxic.”
In claims 64, 87, and 90, the phrase “the (meth)acrylate oligomers” lacks sufficient antecedent basis. It is unclear which (meth)acrylate oligomer is being referred to – the multifunctional or monofunctional oligomer, or both? The Examiner is interpreting the phrase “the (meth)acrylate oligomers” to refer to the total of all (meth)acrylate oligomers in the composition. To correct, the Examiner suggests amending the claim as follows: “…wherein at least 95wt% of
Regarding claims 75 and 76, the term “substantially free” is a relative term which renders the claim indefinite. The term “substantially free” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the Examiner previously interpreted “substantially free” to refer to a concentration of 5 wt% or less (see the “Claim Interpretation” in the Non-Final Rejection dated 06/10/2025 at pg. 9), such an interpretation is not consistent across the art (e.g., see US-20180051184-A1 at para. 0046 and US-20140005332-A1 at para. 0102). Furthermore, Applicant’s specification suggests “substantially free” to be even narrower than a range of 5 wt% or less, given the “substantially free” range is a “more preferable” range relative to a range of “less than 5wt%” in the specification (see Applicant’s specification at pg. 18, lines 14-17; and pg. 25, lines 4-7). Consequently, it becomes unclear what range “substantially free” is referring to. To correct, the Examiner suggests amending the claims to simply say “free,” i.e., to delete the word “substantially.” For the purposes of examination, the Examiner is interpreting any composition lacking the component (i.e., containing 0 wt%) to be “substantially free” of such component.
Furthermore, in claim 76, the phrase “comprising less than 5wt% of synthetic waxes, wherein the ink or coating composition is substantially free of synthetic waxes” is confusing. Applicant’s specification indicates the “substantially free” range to be “more preferable” than the range of “less than 5 wt%” (see Applicant’s specification at pg. 25, lines 4-7). Consequently, the “substantially free” range is suggested to be narrower than the range of “less than 5 wt%.” However, this leads to confusion, as claim 76 now appears to claim two different ranges for a single component. For example, if “substantially free” refers to a range of 3 wt% or less, would prior art that contains a wax content of 4 wt% still read on the claim? As such, confusion arises. For the purposes of examination, the Examiner is interpreting any content amount for the synthetic wax of less than 5 wt% to read on the claim. To correct, the Examiner suggests deleting the phrase “wherein the ink or coating composition is substantially free of synthetic waxes” from the claim.
In claim 91, the phrase “non-phthalate allyl resins” is confusing, given claim 50 narrowed the non-phthalate allyl resins to be selected from diallylcycloalkane-based resins. To correct, the Examiner suggests amending the claim as follows: “…consists of iso diallyl phthalate resins, non-phthalate allyl resins selected from diallylcycloalkane-based resins, or combinations thereof.” For the purposes of examination, the Examiner is interpreting as such.
Allowable Subject Matter
Claim 50 would be allowed if the above objection to claim 50 is overcome (see “Claim Objections” above).
The following is an examiner’s statement of reasons for allowance:
With respect to independent claim 50, the prior art does not reasonably teach or suggest a lithographic radiation curable hybrid ink or coating composition comprising: a) 10 wt% to 30 wt% one or more inert hard resins selected from the group consisting of rosin resins, rosin resin derivatives, hydrocarbon resins, modified hydrocarbon resins, iso diallyl phthalate resins, non-phthalate allyl resins, and combinations thereof, wherein at least one of the one or more inert hard resins is iso diallyl phthalate resin or a non-phthalate allyl resin selected from diallylcycloalkane-based resins; b) 10 to 60 wt% non-UV raw material selected from the group consisting of vegetable oils, vegetable oil esters, alkyds resins, antioxidants, and combinations thereof; and c) 5 wt% to 45 wt% one or more multifunctional (meth)acrylate monomers and/or oligomers; d) 0-10 wt% monofunctional (meth)acrylate monomers and/or oligomers; and wherein the ink or coating composition comprises ≥ 40 wt% biorenewable content, wherein the biorenewable content is measured according to the standard method described in ASTM D6866.
The closest prior art includes Gaudl (US-20190023916-A1), Borg (WO-2023079295-A1), Hoggett (US-20230054945-A1), and Gan (US-20130224495-A1).
While Gaudl, Borg, Hoggett, and Gan teach most of the limitations of claim 1 outlined above, none teach or suggest the inert hard resin to be an iso diallyl phthalate resin or a non-phthalate allyl resin selected from diallylcycloalkane-based resins. While styrene-allyl alcohol resins are known to suitably be used as inert resins in curable inks (see Hoggett at para. 0077), there is no teaching or suggestion, nor a reasonable expectation of success, to incorporate an iso diallyl phthalate resin or a non-phthalate allyl resin selected from diallylcycloalkane-based resins as an inert resin in the composition of Gaudl. There is no teaching or suggestion in the prior art to use the claimed resins as inert resins in a composition like Gaudl, particularly considering the specific combination of components in Gaudl. Consequently, claim 50 overcomes Gaudl and would be allowed if the above objection to claim 50 is overcome.
With respect to dependent claims 51-52, 54-57, 59, 63, 65-68, 70-74, 84-86, 88, and 89, if the above objection over claim 50 is overcome, claims 51-52, 54-57, 59, 63, 65-68, 70-74, 84-86, 88, and 89 would found to be allowable for the same reasons given above, and in further consideration of their additional limitations (accordingly, such claims are given the “objected to” status indicator in the “Index of Claims”).
With respect to dependent claims 61 and 69, they would be allowed if the above objections to claims 61 and 69 are overcome (see “Claim Objections” above).
With respect to dependent claims 53, 58, 64, 75, 76, 83, 87, 90, and 91, they would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 12/05/2025 have been fully considered. The Examiner agrees that Applicants’ amendments to the claims overcome the previous grounds of rejection (see Applicant’s Remarks at pg. 9-12). However, a few claim objections and 112(b) rejections remain, see above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lussier et al. (US-20180051184-A1) teach an aqueous particle-free inkjet ink composition (see Lussier at Abstract).
Lindekens et al. (US-20140005332-A1) teach a radiation curable composition (see Lindekens at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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