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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 1/20/2021 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, and 12-14 ( all pending claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification contains support for an embodiment wherein the acrylic has a weight average molecular weight of 200,000 or more (055) and a separate embodiment wherein the acrylic has a weight average molecular weight of 100,000 or less, but the specification dos not have support for the claimed range.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, and 12-14 ( all pending claims) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goeb et al (US 6,340,719), as evidenced by US2020/0362156
Goeb teaches a resin composition comprising 0.001 to 15% by weight of reactive monomer having isocyanate groups or a group derived from isocyanate group (col 6, lines 56+). The isocyanate may be blocked with phenols, lactams, imides, and the like (col 5, line 40). The remainder of the composition comprises a reactive monomer (col 6, lines 56+) comprising (meth)acrylate monomers reading on the formulas of claims 1 and 2 (col 4, lines 14+, wherein R2 may comprise 1-20 carbons). The composition may further comprise a curing agent such as a polyol col 9, lines 18+; (herein understood to read on the claimed “alcohol compound”). Said curing agent may be 1, 4 butanediol, , 1, 6, hexanediol, and diethylene glycol (col 9, lines 3+).
Goeb teaches the (meth)acrylate monomers can be used singularly or copolymerized with up to about 50 parts by weight (per 100 parts by weight of the monoethylenically-unsaturated monomer(s)) of one or more monoethylenically-unsaturated co-monomers selected from those having a homopolymer glass transition temperature greater than the glass transition temperature of a homopolymer of the preferred monomer(s) (col 4, lines 24+). Said teaching is understood to be sufficiently specific to anticipate the claimed “first structural unit is 80 parts by mass or more with respect to 100 parts by mass of all structural units constituting the acrylic resin.” Furthermore, Goeb teaches the second monomer is present in amounts of 0.01-15wt%, herein understood to be sufficiently specific to anticipate the claimed “content of the second structural unit is 5 parts by mass or more with respect to 100 parts by mass of all structural units constituting the acrylic resin.”
With regards to the limitation that the acrylic resin has a weight average molecular weight of 5,000 or more and 1,000,000 or less, the examiner takes the position that the viscosity teachings of Goeb read on said limitation, as evidenced by US 2020/0362156 (0036).
With regards to claim 12, the surrounding environment and/or the substrate(col 10, lines 5+) to which the coating is applied is understood to read on the claimed “heat source” and the cured product is understood to be in thermal contact with both the surrounding environment and substrate.
With regards to claim 13, Goeb teaches the composition may be crosslinked (claim 12) herein understood to read on the cured product of claim 13.
With regards to claim 14, Goeb teaches the composition may be crosslinked (claim 12) herein understood to read on the cured product of claim 14.
Response to Arguments
Applicant’s arguments filed 8/13/2025 have been fully considered but are not persuasive.
With regards to the rejection of all pending claims under 35 U.S.C. 102(a)(1) as being anticipated by Goeb et al (US 6,340,719; hereinafter “Goeb”), Applicant argues claims 1 and 2 have been amended to include limitations regarding: (1) the carbon atom number of the alkyl group; (2) the specific composition of the curing agent; (3) the content of the monomers(structural units) components; and (4) the weight average molecular weight of the acrylic resin. Said argument is noted but said amendments fail to overcome the anticipation rejection for the reasons noted above.
Applicant argues amended claims 1 and 2 are more commensurate with the submitted unexpected results to obtain a sufficient amount of heat storage. Applicant argues Example 1-4 (using the acrylic resin 1B in which the first monomer has R2 of lauryl group (12 carbon atoms)) shows the amount of heat storage of 35.0 J/g whereas Examples 1-5, 1-6, , and Examples 1-7 (inventive examples) show the amount of heat storage of 50.2, 79.0 and 96.5 J/g, respectively. Applicant argues said larger amount of heat storage can be obtained by the limitation “R represents an alkyl group having 14 to 30 carbon atoms”. Applicant further argues such superior results can be seen from comparison of Example 2-4 with Examples 2-5 to 2-7 in Table 5 of present application as well. Said argument is noted but is not persuasive as a showing of secondary considerations cannot be utilized to distinguish a claimed invention from an anticipatory reference. Furthermore, said argument is noted but is not persuasive as applicant’s arguments are not commensurate in scope with the pending claims. For instance, the species utilized for monomer B as claimed are much broader than the data presented. The claim also does not specify the amount of curing agent. Applicant also has failed to compare the claimed invention to the closest prior art.
Thus, applicant’s argument is not persuasive and the claims remain rejected for the reasons set forth herein.
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/ Primary Examiner, Art Unit 1787