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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 25, 2025 has been entered.
Withdrawn Objection/Rejections
The objection to claim 15 is withdrawn due to Applicant’s amendment filed on September 25, 2025.
The 35 U.S.C. 112(b) rejection of claims 1-2, 4-6, 8-15, 24 and 26, is withdrawn due to Applicant’s amendment filed on February 25, 2025.
The 35 U.S.C. 103 rejection of claims 1-2, 4-6, 8-14, 24, 26 over Feng as the primary reference, is withdrawn due to Applicant’s amendment filed on September 25, 2025.
New Rejections
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-6, 8-15, 24, 26 are rejected under 35 U.S.C. 103 as being unpatentable over Feng, WO 2016/020766 A1 (US 2017/0226303 is used here, with a new embodiment introduced [0023-0024]), as evidenced by Nakai (US 20070287033).
Regarding claim 1, Feng teaches a varnish composition (light curable coating layer [0012], coating … can transmit greater than or equal to 50% of incident visible light (e.g. electromagnetic radiation (EMR) having a frequency of 430 THz to 790 THz) [0042]) that is crosslinkable under the action of UV-visible radiation (ultraviolet light curable coating layer [0012], di-,tri-,tetra- or penta-functional, specifically di-functional, in order to increase the crosslink density of the cured coating [0024]), comprising:
A) at least one multifunctional urethane acrylate oligomer (aliphatic urethane acrylate oligomer can include 2 to 15 acrylate groups ([0017]) comprising 6 acrylate functions (EBECRYL1290 (6 functionality) [0022]), or 2 acrylate functions ([CN981 [0022], Formulation # 14, Table 4 [0069]), which is within the claimed range of 2 to 9 acrylate functions, where the multifunctional urethane acrylate oligomer is the product of the reaction of a diisocyanate or triisocyanate with a hydroxylated acrylate monomer, said hydroxylated acrylate monomer being a random mixture resulting from the reaction of a polyol with a stoichiometric deficiency of acrylic acid, where the chain of the diisocyanate or triisocyanate has not been extended beforehand by a polyol, polyester, polyether or polycarbonate having residual hydroxyl functions, as described in Applicant’s specification (EBECRYL1290, last two lines of page 14 and first two lines of page 15; aliphatic urethane diacrylate such as CN981, lines 5-7 of page 14);
B) at least one reactive diluent comprising at least one diacrylate monomer (diluted with an acrylate monomer, 1,6-hexanediol diacrylate (HDDA) [0021], Formulation 14 contained 30 wt% HDDA [0069], Formulation # 14, Table 4 [0069]); and
C) at least one photoinitiator suitable for the light source used for the crosslinking (contained 5 wt% photoinitiator [0069] to facilitate curing of the ultraviolet curable coating layer under UV exposure [0068], promote polymerization … upon exposure to ultraviolet radiation ([0015], di-,tri-,tetra- or penta-functional, specifically di-functional, in order to increase the crosslink density of the cured coating [0024], where IRGACURE 184 [0028] is an exemplary one in Applicant’s specification, lines 10-15 of page 25),
wherein: the reactive diluent can be a mixture of two acrylate monomers (combination of monomers [0023]), the first acrylate monomer being the at least one diacrylate monomer which is an aliphatic diacrylate monomer (diluted with an acrylate monomer, 1,6-hexanediol diacrylate (HDDA) [0021]), and the second acrylate monomer being a second diacrylate monomer (specifically di-functional [0024]) which is an alicyclic diacrylate monomer (alkyl, cyclic [0023]) which are combined (combination of monomers [0023]) for the purpose of providing the cured varnish composition with the desired balance of adhesion, and mechanical properties including hardness and flexibility ([0023]), as further evidenced by Nakai.
Nakai teaches that an aliphatic diacrylate monomer and an alicyclic diacrylate monomer are combined for the purpose of providing the cured composition with the desired balance of mechanical properties ([0025]).
Regarding claim 2, Feng teaches that the multifunctional oligomer is an aliphatic urethane diacrylate (CN981 [0022], Formulation # 14, Table 4 [0069]) or an aliphatic urethane hexaacrylate (EBECRYL1290 (6 functionality [0022]), both of which are disclosed as commercially available multifunctional oligomers corresponding to the formulae IA or IB in Applicant’s specification (pages 12-15).
Regarding claim 5, Feng teaches that the multifunctional oligomer is an aliphatic urethane diacrylate (CN981 [0022], Formulation # 14, Table 4 [0069]).
Regarding claim 6, Feng teaches that the multifunctional oligomer is a multifunctional urethane acrylate oligomer (aliphatic urethane acrylate oligomer can include 2 to 15 acrylate groups ([0017]) comprising 6 acrylate functions (EBECRYL1290 (6 functionality) [0022]).
Regarding claim 8, Feng teaches the mixture (combination of monomers [0023]) of the aliphatic diacrylate monomer reactive diluent monomer (diluted with an acrylate monomer, 1,6-hexanediol diacrylate (HDDA) [0021]) and the alicyclic diacrylate monomer reactive diluent (alkyl, cyclic [0023] specifically di-functional [0024]) in which the reactive diluents/multifunctional oligomer weight ratio is 2.2 (65 wt% acrylate monomers/30 wt% multifunctional acrylate oligomer [0016]) which is within the claimed range of between 1.5 and 3.5.
Regarding claim 9, Feng teaches the varnish composition comprising the diacrylate monomer as a reactive diluent, as described above. In addition, Feng teaches that the diacrylate monomer/multifunctional oligomer weight ratio is 0.5 to 2.2 (15 to 65 wt% acrylate monomers/30 wt% multifunctional acrylate oligomer [0016]) which contains the claimed range of between 1.3 and 1.7, for the purpose of providing the desired combination of hardness and flexibility ([0023]), thus establishing the weight ratio as a result-effective variable.
Accordingly, in the absence of a clear showing to the contrary, it would have been routine experimentation by one of ordinary skill in the art at the time, to have narrowed the diacrylate monomer/multifunctional oligomer weight ratio of from 0.5 to 2.2, to the weight ratio of between 1.3 and 1.7, in the varnish composition of Feng, in order to obtain the desired combination of hardness and flexibility, as taught by Feng.
Regarding claim 10, Feng teaches that the photoinitiator is 1-hydroxycyclohexylphenyl ketone which is a type I radical photoinitiator (IRGACURE 184 [0028] is an exemplary one in Applicant’s specification, lines 10-15 of page 25).
Regarding claim 11, Feng teaches the instance where the composition does not contain a hybrid organic-inorganic reactive diluent, since the recitation of “when the composition also contains a hybrid organic-inorganic reactive diluent” means that the hybrid organic-inorganic reactive diluent is optional.
Regarding claim 12, Feng teaches the instance where the composition does not contain a surface agent ([0014]) which is optional as presently claimed (claim 1).
However, Feng teaches that the varnish composition is coated onto a substrate ([0023]). Adding a silicone-based surface agent to a coating composition was already common practice in the art at the time, for the purpose of providing the desired uniform and smooth coating surface.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have optionally added a silicone-based surface agent to the varnish composition of Feng, in order to obtain the desired uniform and smooth varnish coating surface, as was already common practice at the time.
Regarding claim 13, Feng teaches the instance where the composition does not contain a UV light stabilizer ([0014]).
However, Feng teaches that the varnish composition (light curable coating layer [0012], coating … can transmit greater than or equal to 50% of incident visible light (e.g., electromagnetic radiation (EMR) having a frequency of 430 THz to 790 THz) [0042]) is exposed to UV radiation (ultraviolet light curable coating layer [0012], di-,tri-,tetra- or penta-functional, specifically di-functional, in order to increase the crosslink density of the cured coating [0024]). Feng teaches that a UV absorber as a UV light stabilizer ([0060]) is added to a layer exposed to UV radiation ([0052]), for the purpose of preventing undesired degradation by the UV radiation.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have added a UV absorber as a UV light stabilizer to the varnish composition of Feng, in order to prevent undesired degradation by the UV radiation, as taught by Feng.
Regarding claim 14, Feng teaches that the varnish composition is crosslinkable (crosslink density [0024]) in the absence of a solvent (only reactive monomer diluents are present ([0023] which increase the crosslink density [0024]).
Regarding claim 15, Feng teaches that the composition comprises:
(i): A) the aliphatic urethane diacrylate, tetraacrylate or hexaacrylate oligomer (2 to 10 acrylate functional groups [0017], tetraacrylate [0021], 6 functionality [0022]) in an amount of 30 wt% (multifunctional acrylate oligomer [0016]) which within the claimed range of 20 to 50% by weight; B) the aliphatic diacrylate monomer as reactive diluent, in an amount of 65 wt% (acrylate monomers [0016]) which is within the claimed range of 50 to 70% by weight; and C) the radical photoinitiator in an amount of 5 wt% ([0069]) which is within the claimed range of 1 to 10% by weight.
In addition, Feng teaches that the diacrylate monomer/multifunctional oligomer weight ratio can range from 0.5 to 2.2 (15 to 65 wt% acrylate monomers/30 wt% multifunctional acrylate oligomer [0016]) which contains the claimed range of between 1.3 and 1.7, for the purpose of providing the desired combination of hardness and flexibility ([0023]), thus establishing the weight ratio as a result-effective variable.
Accordingly, in the absence of a clear showing to the contrary, it would have been routine experimentation by one of ordinary skill in the art at the time, to have narrowed the diacrylate monomer/multifunctional oligomer weight ratio of from 0.5 to 2.2, to the weight ratio of between 1.3 and 1.7, in the varnish composition of Feng, in order to obtain the desired combination of hardness and flexibility, as taught by Feng.
Alternatively, Feng teaches that the composition comprises:
(ii): A) the aliphatic urethane diacrylate, tetraacrylate or hexaacrylate oligomer (2 to 10 acrylate functional groups [0017], tetraacrylate [0021], 6 functionality [0022]) in an amount of 30 wt% (multifunctional acrylate oligomer [0016]) which within the claimed range of 20 to 50% by weight; B) the mixture of acyclic aliphatic and alicyclic diacrylate monomers as reactive diluents, in an amount of 65 wt% (acrylate monomers [0016]) which is within the claimed range of 50 to 70% by weight; and C) the radical photoinitiator in an amount of 5 wt% ([0069]) which is within the claimed range of 1 to 10% by weight; the sum of the percentages of all the components being equal to 100% of the total weight of the composition subjected to crosslinking; wherein the diacrylate monomers/multifunctional oligomer weight ratio is 2.2 (65 wt% acrylate monomers/30 wt% multifunctional acrylate oligomer [0016]) which is within the claimed range of 1.5 to 3.5; the sum by weight of the two reactive diluents being taken into consideration for calculating this ratio.
Although Feng, as evidenced by Nakai, is silent regarding a weight ratio of the acyclic aliphatic diacrylate monomer and the alicyclic diacrylate monomer, the simplest and hence most obvious weight ratio to try is 50/50 which is within the claimed range of 40/60 to 90/10, for the purpose of providing the cured varnish composition with the desired balance of adhesion, and mechanical properties including hardness and flexibility, as described above.
Accordingly, in the absence of a clear showing to the contrary, it would have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have provided a weight ratio of the acyclic aliphatic diacrylate monomer and the alicyclic diacrylate monomer, that is within a range of 40/60 to 90/10, in the varnish composition of Feng, in order to obtain the desired balance of adhesion, and mechanical properties including hardness and flexibility, as taught by Feng.
Regarding claim 24, Feng teaches a varnished article (thermoformed article [0051], ultraviolet cured coating applied [0050], light curable coating layer [0012], coating … can transmit greater than or equal to 50% of incident visible light (e.g. electromagnetic radiation (EMR) having a frequency of 430 THz to 790 THz) [0042]) which is thermoformable ([0051]) and since the varnish is formed by crosslinking the varnish composition under the action of UV-visible radiation (ultraviolet light curable coating layer [0012]) where the crosslink density is increased such that the modulus is increased without causing brittleness ([0024]) to form a hard, flexible material ([0023]), the varnished article is a scratch-resistant and abrasion-resistant varnished article.
Regarding claim 26, Feng teaches that the cured varnish composition (light curable coating layer [0012], coating … can transmit greater than or equal to 50% of incident visible light (e.g. electromagnetic radiation (EMR) having a frequency of 430 THz to 790 THz) [0042]) is thermoformable ([0051]) and since it results from the crosslinking under the action of UV-visible radiation (ultraviolet light curable coating layer [0012]) where the crosslink density is increased such that the modulus is increased without causing brittleness ([0024]) to form a hard, flexible material ([0023]), the cured varnish composition is a scratch-resistant and abrasion-resistant thermoformable varnish.
Response to Arguments
Applicant’s arguments directed to the new limitations introduced by Applicant’s amendment filed on September 25, 2025, have been considered but are moot because of the new embodiment and the new reference in the new grounds of rejection. However, Applicant’s arguments regarding the continued use of Feng as valid prior art are addressed below.
Applicant argues that Feng is not concerned with the scratch resistance of a thermoformable varnish because the crosslinkable composition of Feng is used as a means of adhesion between a substrate and a conductive layer where abrasion resistance is provided by an additional protective layer which is placed on the opposite side of the substrate ([0038] Figure 1).
Applicant is respectfully apprised that there are no positively recited laminate structures in the presently examined claims which provide any clear distinction between the application of the cured varnish composition of Applicant and the application of the cured varnish composition of Feng.
Moreover, Applicant is respectfully apprised that Feng teaches that the cured varnish composition (light curable coating layer [0012]) is thermoformable ([0051]) and results from the crosslinking under the action of UV-visible radiation (ultraviolet light curable coating layer [0012]) where the crosslink density is increased such that the modulus is increased without causing brittleness ([0024]) to form a hard, flexible material ([0023]), such that the thermoformable cured varnish is both scratch-resistant and abrasion-resistant due to the combination of hardness and flexibility.
In short, the cured thermoformable varnish of Feng is a scratch-resistant and abrasion-resistant thermoformable varnish, characterized in that it results from the crosslinking, under the action of UV-visible radiation, of the presently claimed varnish composition, due to the express intent of increasing the crosslink density so as to obtain the desired combination of hardness and flexibility without causing brittleness, as described above.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782