Patent Application 17995435 - A COMPOSITION - Rejection

Patent Application 17995435 - A COMPOSITION

Title: A COMPOSITION

Application Information

• Invention Title: A COMPOSITION
• Application Number: 17995435
• Submission Date: 2025-05-16T00:00:00.000Z
• Effective Filing Date: 2022-10-04T00:00:00.000Z
• Filing Date: 2022-10-04T00:00:00.000Z
• National Class: 430
• National Sub-Class: 270100
• Examiner Employee Number: 84135
• Art Unit: 1785
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 0
• 103 Rejections: 2

Cited Patents

No patents were cited in this rejection.

Office Action Text

    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 .

Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2, 5, 6, 9, 14, 21, 22, 24, 26, 31, 34, 35, 37, 39, 41, 46, 51 and 63, in the reply filed on 4/14/2025 is acknowledged.

Claims 53, 55 and 57-60 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/14/2025.

Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.


Claim Objections
Claim 63 is objected to because of the following informalities:
In claim 63, the phrase “is used in” is objected to grammatically.  The objection can be overcome by changing the phrase to “can be used in” which is how the claim will be interpreted.
Appropriate correction is required.


Claim Rejections - 35 USC § 112
Claims 2, 5, 6, 9, 14, 21, 22, 24, 26, 31, 34, 35, 37, 39, 41, 46 and 51 are 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.
In each of claims 2, 5, 6, 9, 14, 21, 22, 24, 26, 31, 34, 35, 37, 39, 41, 46 and 51, the limitations that include the phrases “preferably…”, “more preferably…” and “most preferably…” render the claims indefinite as they are broad/narrow limitations within the same claim.  Each claim will be interpreted as being drawn to the broader limitations; further, this rejection can be overcome by deleting all of the “preferably…”, “more preferably…” and “most preferably…” limitations from the claims.
In claims 14, the phrases “epoxy (meth)acrylate oligomers including modified epoxy (meth)acrylate oligomers” and “(meth)acrylate oligomers including alkyl (meth)acrylate oligomers” render the claim indefinite as these are exemplary claim limitations as can be seen by how the terms are phrased in the preferably language in the same claim.  This is giving examples of the broader terms.  This rejection can be overcome by changing the phrases to “epoxy (meth)acrylate oligomers, modified epoxy (meth)acrylate oligomers” and “(meth)acrylate oligomers, alkyl (meth)acrylate oligomers” which is how the claim will be interpreted.
In claims 14, 41 and 46, the limitations “is selected from…and…or combinations thereof” render the claim indefinite as this is not a proper closed Markush group.  The rejection can be overcome by deleting the “and” prior to the last oligomer of the group and then changing “or combinations thereof” to “and combinations thereof” which is how the claim will be interpreted.


Claim Rejections - 35 USC § 103
Claims 1, 2, 5, 6, 9, 14, 21, 22, 24, 26, 31, 34, 35, 37, 39, 51 and 63 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata et al. (JP 2019-142090).
With regard to claims 1, 2, 6, 9, 14, 26, 31 and 63, Shibata et al. disclose a laser color developing layer formed from an ink composition, which reads on the applicants’ laser-imageable composition for the formation of an image on a substrate, that may comprise an ultraviolet curable component and a color developing component [0108].  The color developing component may be ammonium octamolybdate, which reads on applicants’ oxyanion of a multivalent metal, and the UV curable component may be a (meth)acrylic monomer, such as trimethylolpropane tri(meth)acrylate, and/or a (meth)acrylic oligomer [0064], [0109] and [0112].  The median size (D50) of the inorganic oxyanion compound may be 0.2 to 3 microns [0065]; however, Shibata et al. does not specifically teach a single composition having all of these components.
Since Shibata et al. specifically teach these compounds as appropriate for an ink composition for laser marking, it would have been obvious to one having ordinary skill to have made a composition having ammonium octamolybdate with acrylic monomers and oligomers as the reference clearly suggests such a composition at [0108]-[0109].  The results of such a combination would have predictable to one having ordinary skill in the art.
	With regard to claims 5, 21, 22, 24, 34, 35, 37, 39 and 51, given the fact that the materials are identical to that claimed and preferentially disclosed, the ink composition of the prior art will intrinsically possess the oxyanion surface area, the oligomer viscosity, the monomer viscosity and the print viscosity claimed absent object evidence to the contrary.



Claims 1, 2, 5, 6, 9, 14, 21, 22, 24, 26, 31, 34, 35, 37, 39, 41, 46, 51 and 63 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (JP 2017-075222), machine translation included, in view of Walker et al. (WO 2016/097667).
With regard to claims 1, 2, 6, 9, 14, 26, 31, 41, 46 and 63, Tajima et al. disclose an ultraviolet-curable offset ink composition for laser marking, which reads on applicants’ laser-imageable composition that can be used for the formation of an image on a substrate [0012].  The composition comprises ammonium octamolybdate, an acrylate monomer, which may be tripropylene glycol diacrylate, and/or an acrylate oligomer that may be an epoxy (meth)acrylate [0012], [0021] and [0023]; however, Tajima et al. do not specifically teach the median particle size of the ammonium octamolybdate.
Walker et al. teach that it is known to use ammonium octamolybdate particles in a liquid ink composition as a laser-activated marking agent, wherein the ammonium octamolybdate has a D50 particles size of from 1 to 2.5 microns (pg. 1, lines 24-30 and pg 4, lines 13-14).
Since Tajima et al. and Walker et al. are both drawn to laser marking compositions using ammonium octamolybdate, it would have been obvious to one having ordinary skill in the art to have substituted the ammonium octamolybdate particles of Walker et al. having a D50 particles size of from 1 to 2.5 microns as the ammonium octamolybdate particles of Tajima et al.  The results of such a substitution would have been predictable to one having ordinary skill as they are both ammonium octamolybdate materials for laser marking.
With regard to claims 5, 21, 22, 24, 34, 35, 37, 39 and 51, given the fact that the materials are identical to that claimed and preferentially disclosed, the ink composition of the prior art will intrinsically possess the oxyanion surface area, the oligomer viscosity, the monomer viscosity and the print viscosity claimed absent object evidence to the contrary.


Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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, Mark Ruthkosky can be reached at (571) 272-1291. 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.
/Gerard Higgins/Primary Examiner, Art Unit 1785