CTNF 19/367,266 CTNF 81468 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 1-3, 5-11, and 13-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki et al. (JPH08339090A2) in view of Simpson et al. (US 2009/0202948). Regarding claim 1, Aoki et al. disclose “a manufacturing method of a flexographic printing plate having a non-image area and an image area (paragraph 22), the manufacturing method comprising: an exposure step of imagewise exposing a photosensitive layer in a flexographic printing plate precursor having the photosensitive layer (paragraph 22); a development step of, after the exposure step, performing development using an aqueous developer for a flexographic printing plate to form a non-image area and an image area (paragraph 22); and wherein the aqueous developer comprises: a surfactant represented by Formula (1) (paragraph 13);” an anionic surfactant (paragraph 13: one or more of these used in combination);” water (paragraph 15), PNG media_image1.png 118 637 media_image1.png Greyscale here, in Formula (1), Ar 1 represents an m-valent aromatic group and m represents an integer of 1 to 8 (phenyl), X 1 represents a monovalent organic (nonyl) group and p represents an integer of 0 to 3 (1), which is smaller than m, in a case where p is 2 or 3, a plurality of X 1 ’s may be the same or different from each other, A 1 represents an alkylene group having 2 to 4 carbon atoms (ethylene), R 1 represents a hydrogen atom or an alkyl group, and n represents an integer of 1 to 100 (paragraph 13: at least: polyoxyethylene nonyl phenyl ethers. See also paragraph 30: either of the polyoxyethylene nonylphenyl ethers), in a case where n is an integer of 2 to 100, a plurality of A1’s may be the same or different from each other, and in a case where m - p is an integer of 2 to 8, a plurality of A1’s, n’s, and R 1 ’s may all be the same or different from each other.” Aoki et al. fail to disclose that there is an additional surfactant represented by Formula (2): PNG media_image2.png 114 647 media_image2.png Greyscale here, in Formula (2), Ar 2 represents an r-valent aromatic group and r represents an integer of 1 to 8, X 2 represents a monovalent organic group and q represents an integer of 0 to 3, which is smaller than r, in a case where q is 2 or 3, a plurality of X 2 ’s may be the same or different from each other, A 2 represents an alkylene group having 2 to 4 carbon atoms, R 2 represents an anionic group, and s represents an integer of 1 to 100, in a case where s is an integer of 2 to 100, a plurality of A 2 ’s may be the same or different from each other, and in a case where r - q is an integer of 2 to 8, a plurality of A 2 ’s, s’s, and R 2 ’s may all be the same or different from each other.” However, Aoki et al. do disclose that there can be one or more surfactants, and that an anionic surfactant such as alkylbenzene sulfonates can be used (paragraph 13). It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. 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 an alkylbenzene sulfonate surfactant in addition to the polyoxyethylene nonylphenyl ether surfactant because Aoki et al. disclose using more than one surfactant, and because Aoki et al. specifically mention it as being suitable. Simpson et al. disclose that alkyl benzene sulfonates and salts of phosphoric esters of polyoxyethylene alkylphenylethers are known anionic surfactants for use in a similar developer solution (paragraph 292). It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. Further, it has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. 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 salt of phosphoric ester of polyoxyethylene alkylphenylether as the anionic surfactant of Aoki et al. because it has been shown in the art to be suitable as an anionic surfactant in a developer solution; and/or substitute a salt of phosphoric ester of polyoxyethylene alkylphenylethers for the alkyl benzene sulfonate surfactant of Aoki et al. because it has been shown in the art to be equivalent as an anionic surfactant in a developer solution. Examiner asserts that one having ordinary skill in the art could at once envisage, from the disclosure of “salts of sulfuric esters of polyoxyethylene styrylphenylethers”, the simple case wherein X 2 is the styryl, Ar 2 is the phenyl, r is 1, and s is 13 (see the disclosure of paragraph 358, which shows that 13 repeating oxyethylene groups is known). Regarding claim 2, Aoki et al. further disclose “further comprising a rinse step of, after the development step, performing rinsing with water (paragraph 25).” Regarding claim 3, Aoki et al. further disclose “a concentration of divalent metal ions is 20 ppm or less in terms of calcium carbonate (calcium and magnesium are not mentioned as components of the water in Aoki et al., therefore this limitation is presumed to be met).” Regarding claims 5 and 13, Simpson et al. further disclose “wherein the anionic group represented by R 2 in Formula (2) is an oxoacid group or an oxoacid salt group (paragraph 292).” Regarding claims 6 and 14, Simpson et al. further disclose “wherein the oxoacid salt group is an ammonium salt, a primary ammonium salt, a secondary ammonium salt, a tertiary ammonium salt, or a quaternary ammonium salt of the oxoacid group (paragraph 292).” Examiner asserts that one having ordinary skill in the art could at once envisage the scenario wherein the salt is an ammonium salt from the disclosure of “ salts of phosphoric esters of polyoxyethylene alkylphenylethers.” Regarding claims 7 and 15, Simpson et al. further disclose “wherein the anionic group represented by R 2 in Formula (2) is a phosphoric acid group or an phosphoric acid salt group (paragraph 292).” Regarding claims 8 and 16, Aoki et al. further disclose “an alkali agent (paragraph 21: monoethanolamine).” Regarding claims 9 and 17, Aoki et al. further disclose “an antifoaming agent (paragraph 21).” Regarding claims 10 and 18, Aoki et al. further disclose “a chelating agent (paragraph 21: monoethanolamine or diethanolamine).” Regarding claims 11 and 19, Aoki et al. further disclose “wherein the aqueous developer for a flexographic printing plate has a divalent metal ion concentration of 20 ppm or less in terms of calcium carbonate (calcium and magnesium are not required in the developer of Aoki et al., therefore this limitation is met).” 07-21-aia AIA Claim (s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki et al. and Simpson et al., further in view of Yamada (US 2022/0100095). Regarding claim 4, Aoki et al., as modified, discloses all that is claimed, as in claim 1 above, except “wherein a content of the surfactant represented by Formula (1) is more than 15% by mass and less than 85% by mass with respect to a total content of the surfactant represented by Formula (1) and the surfactant represented by Formula (2).” However, Aoki et al. generally disclose that total amount of surfactants should be 5 to 30 wt% (paragraph 13), thereby leaving the proportion up to one having ordinary skill in the art. Yamada discloses a similar development solution comprising a nonionic surfactant and an anionic surfactant wherein the proportion of the two is 25:75 to 75:25 (that is, 25 to 75 wt% of either) in order to achieve development speed (abstract, paragraph 35). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to set the amount of the nonionic surfactant to the anionic surfactant to 25 to 75 weight percent in order to achieve development speed . 07-21-aia AIA Claim (s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki et al. and Simpson et al., further in view of Konishi (JPH10123722A). Regarding claim 12, Aoki et al. disclose all that is claimed as in claim 1 above, except “wherein the aqueous developer for a flexographic printing plate used in the development step is a used developer obtained by using the aqueous developer for a flexographic printing plate according to claim 1 for one or more developments, and the manufacturing method further includes a step of replenishing the aqueous developer for a flexographic printing plate according to claim 1 such that a concentration of components of the photosensitive layer, which have been removed by the development and which is contained in the used developer, is maintained to 7% or less.” However, Konishi discloses a method of developing a relief plate (paragraph 1) wherein the used developer is passed through a device to remove suspended matter like the scraped (developed and removed) photosensitive material in order to reuse the developer (paragraphs 50-52). The method continuously regenerates the developer and supplies it back into the developing apparatus (paragraph 52). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to modify the method of Aoki et al. to include the developer regeneration step of Konishi in order to reuse the developer. Furthermore, one having ordinary skill in the art would understand that the amount of suspended matter, including the scraped photosensitive material, is a quantity which is desired to be as small as possible if the developer is to be reused. One having ordinary skill in the art would also know that filtering out more requires more costs, through, inter alia , using and replacing filters, etc. Therefore, the amount of photosensitive material in the replenished developer is a results-effective variable. 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 set the concentration of the components of the photosensitive layer to be 7% or less in order to determine the amount which achieves the desired or optimal results . Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-37 AIA Claim s 1-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of copending Application No. 17748317 (‘317) in view of Simpson et al. Claim 24 of ‘317 discloses all of the features of claim 1, except that the anionic surfactant is, e.g., an alkyl sulfonate. However, Simpson et al. disclose that alkyl sulfonates and salts of phosphoric esters of polyoxyethylene alkylphenylethers are known anionic surfactants for use in a similar developer solution (paragraph 292). It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. Further, it has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. 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 salt of phosphoric ester of polyoxyethylene alkylphenylether as the anionic surfactant of ‘317 because it has been shown in the art to be suitable as an anionic surfactant in a developer solution; and/or substitute a salt of phosphoric ester of polyoxyethylene alkylphenylethers for the alkyl benzene sulfonate surfactant of ‘317 because it has been shown in the art to be equivalent as an anionic surfactant in a developer solution. Where the remaining claims are not identical or disclosed by ‘317, they would be obvious to one having ordinary skill in the art at the time of the filing of the invention. For example, for claim 12, Konishi would be used in a similar manner as was applied in the prior art rejection supra . This is a provisional nonstatutory double patenting rejection. 08-36 AIA Claim s 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 of U.S. Patent No. 12044971 (‘971) in view of Aoki et al. and Simpson et al. Regarding claim 1, ‘971 discloses the same method except that no anionic surfactant is required. However, Aoki et al. disclose using multiple surfactants, including polyoxyethylene nonyl phenyl ethers (meeting Formula (1) of ‘971) and anionic surfactants like alkylbenzene sulfonates (paragraph 13). It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. 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 an alkylbenzene sulfonate surfactant in addition to the polyoxyethylene nonylphenyl ether surfactant because Aoki et al. disclose using more than one surfactant, and because Aoki et al. specifically mention it as being suitable. Simpson et al. disclose that alkyl benzene sulfonates and salts of phosphoric esters of polyoxyethylene alkylphenylethers are known anionic surfactants for use in a similar developer solution (paragraph 292). It has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. Further, it has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. 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 salt of phosphoric ester of polyoxyethylene alkylphenylether as the anionic surfactant of Aoki et al. because it has been shown in the art to be suitable as an anionic surfactant in a developer solution; and/or substitute a salt of phosphoric ester of polyoxyethylene alkylphenylethers for the alkyl benzene sulfonate surfactant of Aoki et al. because it has been shown in the art to be equivalent as an anionic surfactant in a developer solution . Where the remaining claims are not identical or disclosed by ‘971, they would be obvious to one having ordinary skill in the art at the time of the filing of the invention. For example, for claim 12, Konishi would be used in a similar manner as was applied in the prior art rejection supra . 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853 Application/Control Number: 19/367,266 Page 2 Art Unit: 2853 Application/Control Number: 19/367,266 Page 3 Art Unit: 2853 Application/Control Number: 19/367,266 Page 4 Art Unit: 2853 Application/Control Number: 19/367,266 Page 5 Art Unit: 2853 Application/Control Number: 19/367,266 Page 6 Art Unit: 2853 Application/Control Number: 19/367,266 Page 7 Art Unit: 2853 Application/Control Number: 19/367,266 Page 8 Art Unit: 2853 Application/Control Number: 19/367,266 Page 9 Art Unit: 2853 Application/Control Number: 19/367,266 Page 10 Art Unit: 2853
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