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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 has been entered. Claim 1 is amended; claims 2 and 12-13 are cancelled; and claims 8-10 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1, 3-11 and 14 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 4-7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Batalovic et al (WO 2005/014679 A1) in view of Miyabayashi et al (US 2012/0225969 A1) and Higuchi et al (US 2014/0295191 A1).
Regarding claims 1 and 11, Batalovic et al disclose in example 6 (Table 3), a coating formulation comprising H2(X)8(PEA6)8 (see pages 22-23 and reads on hyperbranched methacrylate polymer A in present claims 1 and 11), 4.0% by weight of Irgacure 184 (i.e., reads on the photopolymerization initiator D in present claim 1) and 20% by weight of reactive diluent HDDA (i.e., reads on solid content concentration ≥ 70% by mass in present claim 1. The coated films were cured (page 31, 2nd full paragraph). It is the Office’s position that composition is “curable” is implicit in the statement that coating film is cured (i.e., reads on the curable composition in present claim 1). The composition can include conventionally appropriate amounts of any of the optional components such as UV stabilizers (page 13, 1st full paragraph). If desired a second binder such as a conventional urethane acrylate may be included (page 13, 2nd full paragraph) which reads on the urethane (meth)acrylate B in present claim 1. The amount of reactive diluent added to the reaction mixture is such as to achieve a viscosity of the reactive composition which is from 0.01 to 50 Pas (bridging paragraph, pages 12-13) which is equivalent to 10 mPas to 5000 mPas (i.e., overlaps with the viscosity in present claim 1). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Batalovic et al are silent with respect to amount of hyperbranched (meth)acrylate based on total amount of A and B; and amount of UV absorber based on total amount of A and B.
However, regarding amount of hyperbranched (meth)acrylate based on total amount of A and B, Batalovic et al teach that hyperbranched (meth)acrylate is present in amounts of 10 to about 60% by weight (page 39, 3rd full paragraph). Additionally, Mayabayashi et al, teach that the content of urethane (meth)acrylate is preferably 10 to 40% by mass for the purpose of enabling to form coating film with satisfactory film strength and adhesion (paragraph 0087). Therefore, in light of the teachings in Mayabayashi et al, general disclosure of Batalovic et al and given that Batalovic contemplates including conventional urethane acrylate as a second binder, it would have been obvious to one skilled in art prior to the filing of present application, to prepare a curable composition, of Batalovic et al, comprising hyperbranched (meth)acrylate A in overlapping amounts in a total amount of hyperbranched (meth)acrylate and urethane (meth)acrylate, for above mentioned advantages.
Regarding amount of UV absorber, Batalovic et al teach that additives used in conventional UV-curing technology such as UV stabilizers may be included (page 13, 1st full paragraph). Additionally, Higuchi et al teach that UV absorbers of benzotriazine type having plurality of (meth)acryloxy groups have a UV absorbing capacity and high solubility in multifunctional (meth)acrylates. By combining the UV absorber with photocurable multifunctional methacrylate there are obtained coating compositions having improved UV absorbing capacity, anti-bleeding property and shelf-stability (abstract). The UV absorber is used in amounts of 5 to 80 parts by weight based on 100 parts by weight of (meth)acrylate (paragraphs 0082-0083) which overlaps with the amount of UV absorber in present claim 1. Therefore, in light of the teachings in Higuchi et al and given that Batalovic et al contemplate including in its composition any additives used in conventional UV-curing technology such as UV stabilizers, it would have been obvious to one skilled in art prior to filing of present application to include UV absorber, of Higuchi et al, in any amounts including the overlapping ranges of 5 to 60 parts by weight, in the curable composition, of Batalovic et al in view of Mayabayashi et al, for above mentioned advantages.
Regarding claim 4, Higuchi et al teach that UV absorbers are represented by formula:
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(paragraph 0029). It is noted that this UV absorber contains a triazine and hydroxyphenyl moiety.
Regarding claims 5 and 6, see example 6, of Batalovic et al, wherein the hyperbranched polymer has 6 acryloyl groups (page 19) which reads on present claim 5. The molecular weight of hyperbranched polymer in example 6 is calculated to be about 5000 (i.e., reads on molecular weight of (meth)acrylate A in present claim 6).
Regarding claim 7, Batalovic et al teach that degree of modification of the OH groups of the hyperbranched polyester is important in determining the properties, especially the viscosity. For e.g., one mole of second generation hyperbranched polyester (example 1) has 16 hydroxyl groups and if 8 moles of urethane acrylic adduct is used, this results in ~ 50% modification of the OH groups and results in the ultimate resin which has a significantly lower viscosity (bridging paragraph pages 10-11). Therefore, in light of the teachings in general disclosure of Batalovic et al, it would have been obvious to one skilled in art prior to the filing of present application to optimize the viscosity of hyperbranched polymer to any value including the presently claimed range of 10 to 10,000 mPa.s, if desired, by modifying the -OH groups on hyperbranched polyester, absent evidence to the contrary
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Batalovic et al (WO 2005/014679 A1) in view of Miyabayashi et al (US 2012/0225969 A1), Higuchi et al (US 2014/0295191 A1), and Fujimoto (JP 2006-070145 A).
It is noted that JP 2006-070145 A is in Japanese. A copy of the machine translation into English is provided with Office action mailed 12/28/2023. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Batalovic et al, Miyabayashi et al, and Higuchi et al in paragraph 8 above is incorporated her by reference.
Batalovic et al, Miyabayashi et al, and Higuchi et al are silent with respect to (meth)acrylate having a polycarbonate skeleton and its amount.
However, Fujimoto teaches a composition capable of forming a cured layer having excellent surface hardness, flexibility, heat resistance and transparency, exhibiting low cure shrinkage in polymerization, and having low viscosity and good workability. The composition comprises (A) urethane (meth)acrylate oligomer and (B) polycarbonate diol di(meth)acrylate (overview) which reads on (meth)acrylate having a polycarbonate skeleton in present claim 14. The component (B) when used in combination with component (A) imparts surface hardness and flexibility to the cured product (paragraph 0015). The polycarbonate diol di(meth)acrylate is obtained by the reaction of components b1 and b2 (paragraph 0015). Examples of b1 include polycarbonate diol obtained by the reaction of carbonic acid ester and a diol. Examples of carbonic acid ester and diol include dicyclohexyl carbonate and 1,4-cyclohexanediol, respectively (paragraphs 0017-0018). Examples of b2 include (meth)acrylic acid (paragraph 0020) which reads on cyclohexyl group containing polycarbonate diol diacrylate in present claim 3. Therefore, in light of the teachings in Fujimoto, it would have been obvious to one skilled in art prior to the filing of present application to include the polycarbonate diol di(meth)acrylate, of Fujimoto, in the curable composition, of Batalovic et al in view of Miyabayashi et al, and Higuchi et al, for above mentioned advantages.
Claims 1, 5-7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al (JP 2010-155409 A).
It is noted that JP 2010-155409 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claims 1 and 11, Kawada et al disclose a curable resin composition containing a multi-branched reactive compound A and/or polymer B having a reactive group, and a polymerization initiator C (abstract). See example 5 (Table 1), wherein the composition comprises 75 parts by weight of CN-2302 (i.e., hyperbranched polyester acrylate (see paragraph 0064) and reads on (meth)acrylate A having a hyperbranched structure in present claims 1 and 11), 5 parts by weight of D1173 (i.e., 2-hydroxy-2-methyl-1-phenyl-propanoic-1-one (see paragraph 0064) and reads on photopolymerization initiator in present claim 1). The viscosity of composition is preferably from 10 mPa.s to 200 mPa.s (paragraph 0034) which reads on the viscosity in present claim 1. See example 1, wherein there is no use of a solvent in preparing the curable composition (paragraph 0059) which reads on solids content of greater than or equal to 70 mass% in present claim 1. The resin composition may contain an oligomer having a (meth)acryloyl group such as urethane (meth)acrylate (paragraph 0043) which reads on the urethane (meth)acrylate in present claim 1. If necessary, the resin composition may further contain an ultraviolet absorber (paragraph 0046)
Kawada et al fail to disclose curable composition comprising (meth)acrylate A and ultraviolet absorber C in presently claimed amounts based on total of the (meth)acrylate A and urethane (meth)acrylate B.
However, Kawada et al in the general disclosure teach that blending amount of the oligomer having a (meth)acryloyl group is preferably 20 mass% or more and less than 80% by mass (paragraph 0043). The ultraviolet absorber is in amounts of 0.0001 to 5% by mass with respect to total amount of the composition (paragraph 0047). The multi-branched reactive compound A is preferably present in an amount of 10% by mass or more and 90% by mass of less (paragraph 0033). Therefore, in light of the teachings in general disclosure, of Kawada et al, it would have been obvious to one skilled in art prior to the filing of present application, to prepare a curable composition comprising (meth)acrylate A and ultraviolet absorber in overlapping amounts based on the total amount of (meth)acrylate A and urethane (meth)acrylate B, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 5, Kawada et al teach that number of acrylate functional group in CN-2302, a hyperbranched polyester is 16 (paragraph 0064).
Regarding claim 6, it is noted that CN-2302 has a molecular weight of 1270 (i.e., reads on the weight average molecular weight of (meth)acrylate A in present claim 6).
Regarding claim 7, it is noted that CN-2302 has a viscosity at 250C of 300 mPa.s and one skilled in art prior to the filing of present application would have a reasonable basis to expect the viscosity when measured at 200C with a E-type viscometer to fall within the presently claimed range, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al (JP 2010-155409 A) in view of and Fujimoto (JP 2006-070145 A).
It is noted that JP 2006-070145 A is in Japanese. A copy of the machine translation into English is provided with this Office action mailed 12/28/2023. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Kawada et al in paragraph 10 above is incorporated here by reference.
Kawada et al are silent with respect to (meth)acrylate having a polycarbonate skeleton and its amount.
However, Fujimoto teaches a composition capable of forming a cured layer having excellent surface hardness, flexibility, heat resistance and transparency, exhibiting low cure shrinkage in polymerization, and having low viscosity and good workability. The composition comprises (A) urethane (meth)acrylate oligomer and (B) polycarbonate diol di(meth)acrylate (overview) which reads on (meth)acrylate having a polycarbonate skeleton in present claim 14. The component (B) when used in combination with component (A) imparts surface hardness and flexibility to the cured product (paragraph 0015). The polycarbonate diol di(meth)acrylate is obtained by the reaction of components b1 and b2 (paragraph 0015). Examples of b1 include polycarbonate diol obtained by the reaction of carbonic acid ester and a diol. Examples of carbonic acid ester and diol include dicyclohexyl carbonate and 1,4-cyclohexanediol, respectively (paragraphs 0017-0018). Examples of b2 include (meth)acrylic acid (paragraph 0020) which reads on cyclohexyl group containing polycarbonate diol diacrylate in present claim 3. Therefore, in light of the teachings in Fujimoto, it would have been obvious to one skilled in art prior to the filing of present application to include the polycarbonate diol di(meth)acrylate, of Fujimoto, in the curable composition, of Kawada et al, for above mentioned advantages.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al (JP 2010-155409 A) in view of Higuchi et al (US 2014/0295191 A1).
The discussion with respect to Kawada et al in paragraph 10 above is incorporated here by reference.
Kawada et al are silent with respect to the species of ultraviolet absorber.
However, Higuchi et al teach that UV absorbers of benzotriazine type having plurality of (meth)acryloxy groups have a UV absorbing capacity and high solubility in multifunctional (meth)acrylates. By combining the UV absorber with photocurable multifunctional methacrylate there are obtained coating compositions having improved UV absorbing capacity, anti-bleeding property and shelf-stability (abstract). The UV absorbers are represented by formula:
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(paragraph 0029). It is noted that this UV absorber contains a triazine and hydroxyphenyl moiety. Therefore, in light of the teachings in Higuchi et al and given that Kawada et al contemplate including in its composition additives such as UV absorbers, it would have been obvious to one skilled in art prior to filing of present application to include UV absorber, of Higuchi et al, in the curable composition, of Kawada et al, for above mentioned advantages. Additionally, case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
It is noted that some of the arguments presented with this amendment are addressed prior to this and incorporated here by reference. Newly presented arguments are addressed below.
The rejections under 35 U.S.C. 103 as set forth in paragraphs 8-9, of office action mailed 8/8/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 15 below).
Applicant's arguments and Declaration under 37 CFR 1.132, filed 11/25/2025, have been fully considered but they are not persuasive. Specifically, general thrust of applicant argument is that only when the (meth)acrylate A is within the claimed range are the effects of present disclosure obtained (see Declaration under 37 CFR 1.132).
In response, the showing of unexpected results is with a curable composition comprising specific species of (meth)acrylate A, ultraviolet absorber C, and urethane acrylate B in specific amounts. However, the scope of claims is broader comprising any kind of hyperbranched or dendrimer in combination with any kind of urethane methacrylate and UV absorber in amounts including those outside that in Declaration filed under 37 CFR 1.132. Hence, it is the Office’s position that showing of unexpected results is not commensurate with scope of present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764