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 .
Claim Objections
Applicant is advised that should claim 3 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
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.
Claim(s) 1-3, 5, 6, and 8-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saraiya et al. (US 2004/000514). Regarding claims 1, 3, and 15, Saraiya et al. disclose “a directly imageable waterless planographic printing plate precursor (title) comprising a primer layer (paragraph 21), a heat sensitive layer (paragraph 46) and a silicone rubber layer (paragraph 51) on a substrate in this order (paragraph 18).” Saraiya et al. fail to disclose “wherein the thinnest portion of the heat sensitive layer has a thickness of 0.2 µm or more), and wherein the primer layer has an average thickness of 2 to 500 µm.” However, Saraiya et al. disclose that the thickness of the heat sensitive layer determines the amount absorber required (paragraph 48). It has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to, through routine optimization, set the thinnest portion of the heat sensitive layer has a thickness of 0.2 µm or more in order to achieve the optimum or workable amount of absorber. Saraiya et al. also disclose that the primer layer exists to, for example, prevent heat loss or regulate ink receptivity (paragraph 21). One having ordinary skill in the art would understand that as the thickness of an insulating layer increases, the amount of heat loss is lowered. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art, through routine experimentation, to set the thickness of the primer layer to 2 for 500 µm in order to determine the optimal or workable thickness for prevention of heat loss. Saraiya et al. fail to specifically disclose “wherein, within a 750 µm-wide region of the primer layer in the cross-section, the sum of the total area of portions protruding from a reference height of the primer layer and the total area of portions recessing from a reference height of the primer layer is 0 to 60 µm2”, as in claim 1, or “wherein a maximum peak height on the surface of the primer layer is 0.5 µm or less,” as in claim 3. However, 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, and recited properties are presumed inherent. See MPEP §2112.01. In this instance, the precursor of Applicant is said to achieve the desired properties by having a substrate which has a smooth surface having a roughness (Ra) of 0.4 µm or less (paragraph 17 of Applicant’s specification), and then applying a primer layer-forming composition on said smooth substrate (paragraph 31 of Applicant’s specification). Therefore, since the precursor of Saraiya et al., as modified, is at least substantially identical to that of Applicant, both as claimed and as in method of production, the recited property is presumed inherent. Similarly, with respect to claims 2, 6, 12, and 17, since the precursor of Saraiya et al., as modified, is at least substantially identical to that claimed and/or produced by Applicant, the recited properties are presumed inherent. Regarding claims 5 and 16, Saraiya et al., as modified, teach all that is claimed, as in claims 1 and 3 above, respectively, except “wherein the thinnest portion of the primer layer has a thickness of 1 µm or more,” but does teach that the primer layer exists to, for example, prevent heat loss or regulate ink receptivity (paragraph 21). One having ordinary skill in the art would understand that the thickness of the primer layer would affect the effectiveness at least for the purpose of heat loss, and would be motivated to make the thickness at all positions thick enough to prevent heat loss. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art, through routine experimentation, to set the thickness of the thinnest portion of the primer layer to 1 µm or more in order to determine the optimal or workable thickness for prevention of heat loss and/or to ensure that there are no portions which allow for unacceptable amounts of heat loss. Regarding claim 8, Saraiya et al., as modified, teach all that is claimed, as in claim 1 above, except “wherein the heat sensitive layer has an average thickness of 0.5 to 2 µm,” but do teach that the thickness of the layer determines the amount absorber required (paragraph 48). It has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to, through routine optimization, set the average thickness of the heat sensitive layer to between 0.5 and 2 µm in order to achieve the optimum or workable amount of absorber. Regarding claims 9 and 18, Saraiya et al. further disclose “wherein the silicone rubber layer has an average thickness of 3.2 to 4.8 µm (paragraph 59).” Regarding claims 10 and 19, Saraiya et al. further disclose “wherein the heat sensitive layer is thermally-ablatable (paragraph 39).” Regarding claims 11 and 20, Saraiya et al. further discloses “wherein the silicone rubber layer contains hard domains (paragraph 58: fillers such as silica).”
Regarding claim 13, Saraiya et al. further disclose “which comprises an exposure step of irradiating the directly imageable waterless planographic printing plate precursor according to claim 1 with laser light to form a latent image; and a development step of removing the silicone rubber layer corresponding to an image area of the latent image (paragraph 74).”
Regarding claim 14, Saraiya et al. teach all that is claimed, as in claim 13 above, except “wherein, in the exposure step of forming the latent image, an AM screen having a precision equivalent to an AM screen of 180 lpi to 650 lpi or an AM/FM mixed screen is used.” However, Examiner takes Official Notice that a hybrid AM/FM screen is a known method of exposing a printing plate precursor in order to achieve a desired image in the printing plate. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use a hybrid AM/FM screen in order to image the precursor in the method of Saraiya et al. in order to achieve a desired image in the printing plate.
Since Applicant did not traverse that which was asserted as being common knowledge, that which was taken to be common knowledge is now considered to be admitted prior art. See MPEP §2144.03(c).
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive.
Applicant argues that Saraiya et al. do not disclose features of the claims, specifically the ranges of the thinnest portion of the heat sensitive layer or the thickness of the primer layer. MPEP §2144.05 sets forth that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. The MPEP further states that Applicant can rebut the prima facie case of obviousness by: A) showing that the range is critical; B) showing that the prior art teaches away; C) showing that the parameter was not recognized as result-effective; and/or D) showing that a claimed parameter is disclosed in a very broad range in prior art. Applicant has failed to show any of A-D.
Specifically, Applicant alleges that Saraiya et al. disclose a range of the thickness of the underlayer of 0.83 µm to 0.95 µm which is out of the range claimed. However, this is merely from an example, and not a range which is disclosed as being absolute. Further, Applicant has not shown that the difference between the disclosed range and the claimed range is critical. Examiner has already established that the thickness of the underlayer is a result-effective variable (see the rejection above). Finally, Applicant has not shown D).
Similarly, Applicant has not shown A-D with respect to the thickness of the thinnest portion of the heat sensitive layer.
Therefore, the rejection is maintained.
Regarding the recited feature of the sum of the total area of portions protruding from a reference height of the primer layer and the total area of portions recessing from a reference height of the primer layer, 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, and recited properties are presumed inherent. See MPEP §2112.01. In this instance, since the precursor of Saraiya et al., as modified, is at least substantially identical to that of Applicant, both as claimed and as in method of production, the recited property is presumed inherent.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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