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 .
Election/Restrictions
Claims 1-5, 8, 25, and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/02/2025
Applicant's election with traverse of Group II in the reply filed on 12/02/2025 is acknowledged. The traversal is on the ground(s) that the claims constitute a group of inventions under 37 C.F.R. 1.475(b)(1). This is not found persuasive because 37 C.F.R. 1.475(b)(1) states that unity of invention exists “if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.” In the present case: Group I is a product. Group II is a different product. Group III is method of forming the product of Group II. Group IV is a method of using the product of Group II.
Since Group I is drawn to a different product than is found in Groups II-IV, the claims do not correspond to only one of the combinations (1)-(5).
Examiner notes that even though claim 1 has been amended to depend from claim 12, the claim does not necessarily require all of the limitations of claim 12, since claim 1 has been amended to state that the printing plate is formed from the raw plate of claim 12. It is conceivable, for example, that the structure and components of the printing plate required in claim 1 could be made from components or products different from the raw plate as recited in claim 12. Therefore, it is still deemed that Group I does not require the same features as Group II, and subsequently the claims lack unity of invention. Regardless, since claim 12 is known in the prior art (see the rejection of claim 12 below), it is not a special technical feature, and unity of invention is lacking a posteriori.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 18 is 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 18 recites the limitation "the polymer particles” in line 4, “the thermoplastic elastomer” in line 5, and “the photopolymerizable compound having a number average molecular weight of 2,000 or more and 8,000 or less” in lines 7-8. There is insufficient antecedent bases for these limitations in the claim.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 12-21, 23, and 24 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Saito et al. (US 2018/0275515).
Regarding claim 12, Saito et al. disclose “a flexographic printing raw plate (title) comprising at least: a support (paragraph 138); and a photosensitive resin composition layer sequentially stacked (paragraph 138).” Regarding the remainder of the claim, “wherein under the following <Measurement condition 1>, the photosensitive resin composition layer has at least a region (A2) having a storage modulus of 100 MPa or more and 500 MPa or less at a frequency of 2,000 Hz and a region (B2) having a storage modulus of 3 MPa or more and 15 MPa or less at 2,000 Hz, <Measurement condition 1> the photosensitive resin composition layer is isolated from the stack, molded into a thickness of 1.5 mm, and irradiated with ultraviolet light of 3000 mJ both from an upper face and from a lower face, and dynamic elasticity mapping measurement by AFM is performed on a cross section obtained by cutting 1 μm of a surface layer of the resulting cured product,”it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by an identical or substantially identical process, a prima facie case of either anticipation or obviousness has been established. See MPEP §2112.01. In this instance, the original (raw) plate of Saito et al. has substantially identical composition as is claimed by Applicant. The original plate of Saito et al. is made of: (i) polymer particles (paragraphs 16, 79) made from monomers of an aromatic vinyl compound (paragraph 36: styrene-butadiene copolymer; paragraph 40: styrene) and a conjugated diene compound (paragraph 36: styrene-butadiene copolymer; paragraph 39: 1,3-butadiene); (ii) a thermoplastic elastomer that has a glass transition temperature below room temperature (paragraph 83) made from monomers of aromatic vinyl compound and a conjugated diene compound (paragraph 84: styrene and butadiene);
(iii) a photopolymerizable compound (paragraph 18); and (iv) a photopolymerization initiator (paragraph 19).These components are substantially identical to those components used by Applicant (see the rejection of claim 16 below for more specifics). As such, the properties recited in claims 12-15, 19, and 20 are presumed inherent. See MPEP §2112.01
Regarding claim 16, Saito et al. further disclose “(i) having a glass transition temperature of −45° C. or higher and −10° C. or lower (paragraph 153: Examiner notes that the synthesis laid out in paragraph 153 is substantially identical to synthesis example 15 of Applicant: therefore, this property is presumed inherent; a thermoplastic elastomer (paragraph 83) (ii) having a glass transition temperature of −95° C. or higher and −60° C. or lower (paragraph 83: rubber elasticity at normal temperature means a glass transition temperature below 25°C, which overlaps the recited range); a photopolymerizable compound (paragraph 18) (iii); and a photopolymerization initiator (iv) (paragraph 19), wherein the polymer particles (i) comprise: an aromatic vinyl compound (paragraph 40); and a conjugated diene compound (paragraph 39), as monomer units constituting the polymer particles (i), and the thermoplastic elastomer (ii) comprises: an aromatic vinyl compound (paragraph 84: styrene); and a conjugated diene compound (paragraph 84: butadiene), as monomer units constituting the thermoplastic elastomer (ii).” Regarding claim 17, Saito et al. further disclose “wherein the photosensitive resin composition layer comprises a photopolymerizable compound having a number average molecular weight of 2,000 or more and 8,000 or less (paragraphs 97 and 100: polyethylene glycol polypropylene glycol di(meth)acrylates with 20 polypropylene glycol chains).” Regarding claim 18, Saito et al. further disclose “wherein when the total amount of the photosensitive resin composition layer is defined as 100% by mass, a content of the polymer particles (i) is 3% by mass or more and 30% by mass or less (Examples, especially Example 3), a content of the thermoplastic elastomer (ii) is 25% by mass or more and 55% by mass or less (paragraph 89, Example 3), and a content of the photopolymerizable compound having a number average molecular weight of 2,000 or more and 8,000 or less is 1% by mass or more and 20% by mass or less (paragraph 94, Examples).” Regarding claim 21, Saito et al. further disclose “wherein in the photosensitive resin composition layer, a mass ratio of the polymer particles (i) to the thermoplastic elastomer (ii) is 0.1 or more and 1.0 or less (paragraph 89).” Regarding claim 23, Saito et al. further disclose “wherein based on 100 parts by mass of the conjugated diene compound monomer unit as monomer units constituting the polymer particles (i), the polymer particles (i) comprise: 40 parts by mass or more and 120 parts by mass or less of an aromatic vinyl compound monomer unit (paragraph 37, 153); and 25 parts by mass or more and 140 parts by mass or less of a (meth)acrylic acid ester monomer unit (paragraph 37, 153).” Regarding claim 24, Saito et al. further disclose “wherein as a monomer unit constituting the polymer particles (i), the polymer particles (i) comprise a (meth)acrylic acid ester monomer unit having a number average molecular weight of 150 or more and 500 or less (paragraph 41: at least hexyl (meth)acrylate).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853