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 .
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Specification
The disclosure is objected to because of the following informalities: for the table on page 6 and first table on page 12, columns “C” and “D” are missing 15%, assumed to be “13” and “2” for each of the “Pigment paste (CMYK and white) and “Co-formulants/additives” respectively.
Appropriate correction is required.
Claim Objections
Claims 6, 7, 9, 14, and 17 are objected to because of the following informalities:
for claim 6 , “A process for digitally printing a flexible material” should be “A process for digitally printing on a flexible material” due to a flexible material being different from an ink-printed flexible material,
“a flexible material” is recited twice, and therefore the second should have “the”, and
“the ink-printed flexible material” is listed before “an ink-printed flexible material” and should be switched,
“the group” should be “a group”, and
“(MVOX)” should be “(VMOX)”;
for claim 7, “said ink-printed flexible material” should be “the ink-printed flexible material” to maintain consistency;
“a UV/LED lamp” should be “the UV/LED lamp”;
for claim 9, “the group” should be “a group” since it excludes “mixtures thereof”, presently recited in claim 6;
for claim 14, “Flexible material” should be “The ink-printed flexible material”, and
“the printed flexible material” should be “the ink-printed flexible material”; and
for claim 17 , “said flexible material” should be “the flexible material” to maintain consistency.
Appropriate correction is required.
Further, it is suggested to amend the last line of claim 9 to recite “vinyl methyl-oxazolidinone (VMOX)” for consistency with other claims.
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 6 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 6 recites “the latter” in step iii. There is no listing of parts in the step that would suggest a former and a latter. As best understood by the examiner, “the latter” should be changed to “the ink-printed flexible material” and will be examined as such.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 recites “wherein said at least one monofunctional monomer is a mixture comprising 2 or 3 monomers selected from a group consisting of cyclic trimethylolpropane formal acrylate (CTFA), trimethyl cyclohexyl acrylate (TMCHA), lauryl acrylate (LA), caprolactone acrylate (CA), vinyl methyl-oxazolidinone, and tetrahydrofurfuryl-acrylate (THFA)”. The addition of tetrahydrofurfuryl-acrylate (THFA) expands the previous listing of mixture components described in claim 6 which claim 9 depends on therefore broadening the scope of the original claim.
As understood by the examiner, the claims presently read, for example, like
claim 6: X is A, B, or a mixture (AB)
claim 9: X is AB or ABC or AC or BC
Mixtures with C (ABC, AC, and BC) were not previously possibilities indicated by the independent claim.
Therefore, while limiting the “at least one monofunctional monomer” to be a mixture of 2 or 3 monomers, the claim also broadens the what the mixture may include rather than only narrowing it.
For examination purposes, claim 9 will be examined such that it recites “wherein said at least one monofunctional monomer is a mixture comprising 2 or 3 monomers selected from the group consisting of cyclic trimethylolpropane formal acrylate (CTFA), trimethyl cyclohexyl acrylate (TMCHA), lauryl acrylate (LA), caprolactone acrylate (CA), and vinyl methyl-oxazolidinone
Claim 14 recites “the printed flexible material is inodorous according to the European standard EN 1230-2”. This limitation is a duplicate of “an ink-printed flexible material which is inodorous according to European Standard EN 1230-2” from step iii. in claim 6 which claim 14 depends on. Therefore, the claim is rejected as not further limiting the subject matter of claim 6.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 6, 8, 9, 11-14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Retailleau et al. (WO 2022128258 A1, from IDS), hereinafter referred to as Retailleau.
Regarding claim 6, Retailleau teaches a process for digitally printing on a flexible material (at para. 0155) comprising the steps of:
i. providing the flexible material (tarpaulin; at para. 0023, 0166-0169);
ii. printing a non-aqueous digital UV/LED ink comprising at least 75% by weight, based on the ink weight, of at least one monofunctional monomer, on the flexible material (“UV curable inkjet ink” with “more than 90.0 wt% of monofunctional polymerizable compounds”; at para. 0023); and
iii. curing an ink-printed flexible material, by exposing the ink-printed flexible material to a UV/LED lamp (UV curing by UV LEDs; at para. 0155), thus obtaining the ink-printed flexible material which is inodorous according to European Standard EN 1230-2 (as understood by the examiner, the steps taught by Retailleau are comparable to the claimed invention, therefore resulting in an ink-printed flexible material being inodorous according to European Standard EN 1230-2),
wherein said at least one monofunctional monomer is selected from the group consisting of cyclic trimethylolpropane formal acrylate (CTFA), trimethyl cyclohexyl acrylate (TMCHA), lauryl acrylate (LA), caprolactone acrylate (CA), vinyl methyloxazolidinone (VMOX) and mixtures thereof (vinyl methyl oxazolidinone, heterocyclic acrylate, and alicyclic acrylate; at para. 0023; heterocyclic acrylate may be cyclic trimethylolpropane formal acrylate; at para. 0043-0045; alicyclic acrylate may be 3,3,5-trimethylcyclohexyl acrylate; at para. 0051-0054).
Retailleau does not explicitly teach wherein the non-aqueous digital UV/LED ink has a viscosity of less than 0.012 Pa*s as measured by Brookfield rotational viscometer at 60 rpm and 25°C. Retailleau does teach wherein the non-aqueous digital UV/LED ink has a viscosity between 3.0 and 15.0 mPa*s (i.e. 0.003 and 0.015 Pa*s; at para. 0031). 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”. The claimed range of 0.012 Pa*s overlaps with the range between 3.0 and 15.0 mPa*s taught by Retailleau.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a viscosity of within a range of less than 0.012 Pa*s, such as just above 3.0 mPa*s, for the purpose of having a good ejecting ability, as taught by Retailleau (at para. 0031).
The examiner notes that Retailleau does not disclose the use of Brookfield rotational viscometer at 60 rpm and 25°C to determine the viscosity. However, because the ink taught by Retailleau is comparable to the ink of the claimed invention based on the general composition and application method thereof (as applied to steps i)-iii) above), it is understood that the inks have comparable properties and how viscosity is measured is irrelevant to the resulting ink. Therefore, the measurement method of using a Brookfield rotational viscometer at 60 rpm and 25°C does not carry any patentable weight.
Regarding claim 8, Retailleau further teaches wherein said at least one monofunctional monomer is in admixture with tetrahydrofurfuryl-acrylate (THFA) (may include tetrahydrofurfuryl acrylate; at para. 0043).
Regarding claim 9, Retailleau further teaches wherein said at least one monofunctional monomer is a mixture comprising 2 or 3 monomers selected from the group consisting of cyclic trimethylolpropane formal acrylate (CTFA), trimethyl cyclohexyl acrylate (TMCHA), lauryl acrylate (LA), caprolactone acrylate (CA), and vinyl methyl-oxazolidinone (VMOX) (vinyl methyl oxazolidinone, heterocyclic acrylate, and alicyclic acrylate; at para. 0023; heterocyclic acrylate may be cyclic trimethylolpropane formal acrylate; at para.0043-0045; alicyclic acrylate may be 3,3,5-trimethylcyclohexyl acrylate; at para. 0051-0054).
Regarding claim 11, Retailleau further teaches wherein the digital UV /LED ink comprises at least 80% by weight, based on the ink weight, of at least one monofunctional monomer being a mixture comprising vinyl methyl-oxazolidinone (VMOX) (more than 90.0 wt% of monofunctional polymerizable compounds; at para. 0023; as a mixture with vinyl methyl oxazolidinone, heterocyclic acrylate, and alicyclic acrylate; at para. 0023).
Regarding claim 12, Retailleau further teaches wherein said at least one monofunctional monomer is a mixture comprising TMCHA (mixture includes at para. 0023; alicyclic acrylate may be 3,3,5-trimethylcyclohexyl acrylate; at para. 0051-0054), however Retailleau does not explicitly teach wherein the mixture comprises 10-80% by weight of TMCHA, based on the ink weight.
Retailleau does teach wherein the mixture comprises more than 6.0 wt% of an alicyclic acrylate, such as TMCHA, based on the ink weight (at para. 0055). 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”. The claimed range of 10-80% of TMCHA lies inside the range of 6.0 wt% or more taught by Retailleau. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a content of TMCHA within a range of more than 6%, such as 10-80%, for the purpose of having a good flexing and adhesion, as taught by Retailleau (at para. 0011).
Regarding claim 13, Retailleau further teaches wherein said at least one monofunctional monomer is a mixture comprising CFTA (mixture includes heterocyclic acrylate; at para. 0023; heterocyclic acrylate may be cyclic trimethylolpropane formal acrylate; at para. 0043-0045), however Retailleau does not explicitly teach wherein the mixture comprises 60-90% by weight of CTFA, based on the ink weight.
Retailleau does teach wherein the mixture comprises more than 12.0 wt% of a heterocyclic acrylate, such as CFTA, based on the ink weight (at para. 0046). 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”. The claimed range of 60-90% of CFTA lies inside the range of 12.0% or more taught by Retailleau. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a content of TMCHA within a range of more than 12%, such as 60-90%, for the purpose of having a good flexing and adhesion, as taught by Retailleau (at para. 0011).
Regarding claim 14, Retailleau does not disclose wherein the printed flexible material is inodorous according to the European standard EN 1230-2. However, Retailleau discloses the same steps recited in the claimed invention, therefore resulting in an inodorous printed flexible material according to European Standard EN 1230-2.
Regarding claim 17, Retailleau further teaches wherein said flexible material is a textile material, or a plastic material, or a film (tarpaulin; at para. 0166-0169).
Claim(s) 7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Retailleau as applied to claim 6 above, and further in view of Grigore et al. (US 20160257135 A1), hereinafter referred to as Grigore.
Regarding claim 7, Retailleau teaches the process of claim 6, however Retailleau does not teach wherein in step iii, the ink-printed flexible material is cured by exposing the ink-printed flexible material to an excimer lamp and then to the UV/LED lamp.
Grigore teaches a process for printing and curing ink on a substrate (at para. 0033; substrate may be plastic; at para. 0026). Ink is applied using a first light source, such as an excimer lamp (at para. 0023, 0033), then a second light source, such as a UV LED (at para. 0034).
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 process taught by Retailleau to cure the ink-printed flexible material by using an excimer lamp before a UV/LED lamp for the purpose of improving curing of the upper level of the ink applied, as taught by Grigore (at para. 0033).
Regarding claim 10, Retailleau as modified by Grigore teach the process of claim 7, and Retailleau teaches wherein the UV/LED lamp emits radiations having a wavelength of 350-410 nm (UV emission wavelength between 360 and 400 nm; at para. 0155), however Retailleau does not teach wherein the excimer lamp emits radiations having a wavelength of 160-180 nm.
Grigore further teaches wherein the first light source, such as the excimer lamp, emits radiations having a wavelength of 100-280nm (UVC; at para. 0023, 0033). 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”. The claimed range of 160-180nm lies inside the range of 100-280nm taught by Grigore.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the process taught by Retailleau to cure the ink-printed flexible material by using an excimer lamp with a emission wavelength of 100-280nm, such as 160-180nm, for the purpose of improving curing of the upper level of the ink applied, as taught by Grigore (at para. 0033).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Retailleau as applied to claim 6 above, and further in view of Sato et al. (EP 3412738 A1, from IDS), hereinafter referred to as Sato.
Regarding claim 16, Retailleau teaches the process of claim 6, however Retailleau does not teach wherein said at least one monofunctional monomer has a glass transition temperature of -55°C to 45°C, as measured by differential scanning calorimetry.
Sato teaches a light-curable inkjet printing ink composition comprising a monofunctional monomer mixture wherein a monofunctional monomer (A) has a glass transition temperature of 20°C or more and another monofunctional monomer (A) has a glass transition temperature of less than 20°C (at para. 0011). Therefore, Sato would have at least one resulting monofunctional monomer mixture wherein the overall glass transition temperature is within the range of -55°C to 45°C. Further, the method in which glass transition temperature is determined does not change what the glass transition temperature should be due to glass transition temperature being a standard property.
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 process of Retailleau to specify wherein said at least one monofunctional monomer has a glass transition temperature of -55°C to 45°C for the purpose of using a non-aqueous digital UV/LED ink with good curability, good adhesion, and good flexibility, as taught by Sato (at para. 0009).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. From IDS:
Yoshino et al. (EP 2848660 A1) is related to ink composition and ink-printed materials and is relevant to at least part of claim 6 and some dependent claims.
Mathew et al. (WO 2022055625) is related to ink composition and is relevant to at least some dependent claims.
Piccirilli (IT 201800010020 A1) is related to ink composition and ink-printed materials and is relevant to at least part of claim 6 and some dependent claims.
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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21 August 2026
/KYRA MELOR VAN KREUNINGEN/ Examiner, Art Unit 2853
/DOUGLAS X RODRIGUEZ/ Supervisory Patent Examiner, Art Unit 2853
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