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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-3, 5, and 10-12 are objected to because of the following informalities:
There are improper first recitations for (i.e. should be changed to “a”):
Claim 1, 5th line, “the total amount of”, and line 8, “the group”;
Claim 2, 2nd line, “the weighted average molecular weight”;
Claim 3, 3rd line, “the content of”;
Claim 5, 3rd line, “the content of”, and 4th line, “the total monomer amount”;
Claim 11: 5th line, “the thickness”; and
Claim 12, 3rd line, “that surface”.
Claim 10, 4th line, should change “the composition” to “the ink jet ink composition” for consistency.
Appropriate correction is required.
Claim Interpretation
Examiner notes limitations with listings using “or” and “at least one of… and”, such as in claim 1, do not require all of the listed parts to be used for rejection basis, but only one of the alternatives.
Claim Rejections - 35 USC § 102
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) 1, 3-6, and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamohara (US 20210380827 A1).
Regarding claim 1, Kamohara discloses an ink jet ink composition (at para. 0042) comprising
a monomer (at para. 0042) and a resin (at para. 0206),
wherein the monomer does not comprise an aromatic group-containing monomer, or comprises an aromatic group-containing monomer in an amount of less than 35 mass % based on a total amount of the ink jet ink composition (Examples 1-7 demonstrate using only monomers that are not aromatic (N-vinyloxazolidinone, isobornyl acrylate, and cyclic trimethylolpropane formal acrylate), therefore having an aromatic group-containing monomer amount of 0 mass % (i.e. not comprising any) based on a total amount of the ink jet ink composition; at para. 0311-0316; Table 1), and
wherein the resin comprises at least one of an acrylic resin (A) having hydroxy groups or carboxy groups (acrylic resin as specific resin from Sato et al. (to WO 2017033984); at para. 0212; Sato et al. (to US 20180162979 A1 as the English translation of WO 2017/033984) notes hydroxy or carboxy group may be part of specific resin at para. 0155) and a resin (B) having one or more structural units selected from a group consisting of structural units represented by the formulas (1), (2), and (3) from the claimed invention (Variplus AP, CA, and SK; at para. 0215).
Regarding claim 3, Kamohara further discloses wherein a content of the resin is 10 mass % or less based on the total amount of the ink jet ink composition (“1 mass % to 10 mass %, more preferably 1.5 mass % to 10 mass %, particularly preferably 2 mass % to 6 mass %”; at para. 0220).
Regarding claim 4, Kamohara further discloses wherein the monomer comprises vinylmethyloxazolidinone (N-vinyl-5-methyloxazolidinone; at para. 0072).
Regarding claim 5, Kamohara further discloses wherein the monomer comprises a monofunctional monomer, and a content of the monofunctional monomer is 40 to 90 mass % based on a total monomer amount (proportion of the monofunctional radical-polymerizable monomers in all radical-polymerizable monomers may be 60 mass % or more, and up to 90 mass %; at para. 0174-0175).
Regarding claim 6, Kamohara further discloses wherein the monomer comprises a hydroxy group-containing monomer (3-hydroxy-1-(meth)acryloyloxyadamantan; at para. 0091).
Regarding claim 8, Kamohara further discloses wherein the content of the aromatic group-containing monomer is 20 mass % or less based on the total amount of the ink jet ink composition (Examples 1-7 demonstrate using monomers that are not aromatic (N-vinyloxazolidinone, isobornyl acrylate, and cyclic trimethylolpropane formal acrylate) therefore 0 mass % based on a total amount of the ink jet ink composition; at para. 0311-0316; Table 1).
Regarding claim 9, Kamohara further discloses the composition as being for printing on a non-absorbent recording medium (applied onto substrate; at para. 0248; substrate may be non-absorbable, preferably plastic such as polyethylene terephthalate (PET), polypropylene (PP), and polystyrene (PS); at para. 0255)
The examiner notes claim 9 is an intended use claim as it describes what the invention is for rather than what the invention is [structurally] and therefore does not carry any patentable weight. (See MPEP 2111.02.)
Regarding claim 10, Kamohara further discloses an ink jet print recording method comprising:
an ejection step of ejecting the ink jet ink composition according to claim 1 from an ink jet head (step of applying by inkjet method to a substrate; at para. 0248; use of head; at para. 0328, 0329, 0331) and attaching the composition to a non-absorbent recording medium (substrate may be non-absorbable, preferably plastic such as polyethylene terephthalate (PET), polypropylene (PP), and polystyrene (PS); at para. 0255); and
a curing step of curing the ink jet ink composition on the non-absorbent recording medium (step of irradiating ink; at para. 0248, 0332).
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamohara.
Regarding claim 2, Kamohara teaches wherein a weight average molecular weight (Mw) of the resin is preferably 3000 to 200,000 (at para. 0216). MPEP 2144.05 states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. For a weight average molecular weight of the resin, the claimed range of 5000 or less overlaps with the range of 3000 to 200,000 taught by Kamohara.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the ink jet ink composition to have a weight average molecular weight of the resin of 5000 or less, such as 3000, for the purpose of achieving an ink composition with good adhesion to a substrate, such as a non-absorbable substrate, as taught by Kamohara (at para. 0252).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamohara as applied to claim 1 above, and further in view of Liu et al. (US 20230257610 A1), hereinafter referred to as Liu.
Regarding claim 7, Kamohara mentions use of (meth)acrylates and vinyl ether compounds as monomers (at para. 0157), however Kamohara does not explicitly teach wherein the monomer comprises a vinyl ether group-containing (meth)acrylate represented by the following formula (4);
CH2=CR1-COOR2-O-CH=CH-R3 (4)
where R1 is a hydrogen atom or a methyl group, R2 is a divalent organic residue having 2 to 20 carbon atoms, and R3 is a hydrogen atom or a monovalent organic residue having 1 to 11 carbon atoms.
Liu teaches a similar ink jet ink composition (at para. 0015-0023) wherein a monomer may include 2-(2-vinyloxyethoxy)ethyl acrylate (at para. 0021), which satisfies the criteria of the claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ink jet ink composition to include a monomer that satisfies the criteria of the claim for the purpose of using a combination of monomers that may improve ink performance properties, such as cross-hatch adhesion and pencil hardness, as taught by Liu (at para. 0073).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamohara as applied to claim 10 above, and further in view of Hiraoka et al. (US 10414150 B2), hereinafter referred to as Hiraoka.
Regarding claim 11, Kamohara teaches wherein in the curing step, the thickness of a coating of a cured product of the ink jet ink composition is 10 µm or less (“a cured film of the ink, with an average thickness of 10 μm”; at para. 0338), however Kamohara does not teach the wherein the recording method further comprises a winding step of winding up the non-absorbent recording medium having the ink jet ink composition after curing on it.
Hiraoka teaches a similar ink jet recording method and apparatus (col. 13, ll. 50-60; Fig. 1) wherein a cured film is wound after printing and curing (medium is fed, printed by heads 23, cured by light sources 24,then conveyed and wound by reeling roll 26; col. 13, ll. 50-60; Fig. 1). Further, the thickness of a coating of a cured product of 10 µm or less (10 µm; col. 19, ll. 5-6; 7 µm; col. 29, ll. 12-13).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ink jet recording method to further include a winding step after curing as taught by Hiraoka. This would have been done for the purpose of recovering/reeling the product (cured/recorded film) in a roll.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamohara as applied to claim 10 above, and further in view of Desie et al. (EP 1586459 A1), hereinafter referred to as Desie.
Regarding claim 12, Kamohara does not teach wherein the recording method further comprises a corona treatment step of performing, prior to the ejection step, a corona treatment on that surface of the non-absorbent recording medium to which the ink jet ink composition is to be attached.
Desie teaches a similar ink jet recording method wherein, prior to ejection, an ink-receiving surface of non-absorbent substrate (at para. 0065) receives surface treatment before ink ejection, and the surface treatment may be corona treatment (at para. 0070).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ink jet recording method to further include a corona treatment step prior to ejection for the purpose of increasing dispersive surface energy of the surface of the substrate, as taught by Desie (at para. 0070).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYRA M VAN KREUNINGEN whose telephone number is (571)272-9423. The examiner can normally be reached Mon-Thur 9:00am-6:00pm and Fri 9:00am-1:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DOUGLAS X RODRIGUEZ can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYRA MELOR VAN KREUNINGEN/ Examiner, Art Unit 2853
/DOUGLAS X RODRIGUEZ/ Supervisory Patent Examiner, Art Unit 2853
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