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 .
Prosecution of application serial No. 17/436,952 is hereby reopened with approval of the TC Director as indicated at the end of this action.
The Examiner notes the decision of the Patent Trial and Appeal Board (PTAB dated 5/12/2026, in which the examiner was affirmed-in-part. The PTAB reversed the rejections of claims 17 and 18. The rejection of claims 1-5 and 16 was affirmed. Prosecution is reopened herein for all the pending claims.
The rejections regarding claims 1-5 and 16 that were affirmed by the PTAB are repeated herein since they were determined by the PTAB to be proper rejections.
The previous rejections of claims 17 and 18 are hereby withdrawn. Claims 17 and 18 are rejected herein over art of record not previously applied to the limitations of these claims.
Election/Restriction
Claims 6-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
Affirmed by the PTAB in the decision dated 5/12/2026
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.
Claim(s) 1-3, 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inami et al. (JP 2009221358) in combination with JP-5385863.
Rejection affirmed by the PTAB in the decision dated 5/12/2026.
In the abstract, ¶’s 39-41, and the examples, Inami et al. teach a curable hardening composition for coating substrate, such as glass, being excellent in hardening and with shock resistant properties having at least 5% of 2-acryloyl oxyethyl succinic acid (i.e., 4-(2-(acryloyloxy)ethoxy)-4-oxobutanoic acid) used in combination with other acrylic monomers, such as urethaneacrylate (their monomer A) and monoalkylacrylate (their monomer C), and a free radical photoinitiator. (See Table 1)
Inami et al. differ from the claimed invention in that they do not teach the alpha-alumina
particles in the composition. However, it is well known in the art to incorporate alpha-alumina particles in such curable compositions for forming such resilient curable coatings, such as taught in JP-5385863.
In the abstract and ¶’s 60-62, JP-5385863 teach incorporating alpha-alumina powder with an
average particle diameter of 1-10 micrometers (1000 – 10,000 nanometers) in curable coating compositions, incorporated in the curable compositions in amounts from 1 to 10% by mass, in order to improve the abrasion resistance of the coatings.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the
invention was made, to incorporate alpha alumina particles in the curable resilient coating composition of Inami et al., in order to improve the scratch resistance and abrasion resistance of the coating, as taught by JP-5385863, motivated by a reasonable expectation of success.
Claim(s) 1, 2, 4, 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inami et al. (JP 2009221358) in combination with Feng et al. (CN-105385336).
Rejection affirmed by the PTAB in the decision dated 5/12/2026.
In the abstract, ¶’s 39-41, and the examples, Inami et al. teach a curable hardening composition for coating substrate, such as glass, being excellent in hardening and with shock resistant properties having at least 5% of 2-acryloyl oxyethyl succinic acid (i.e., 4-(2-(acryloyloxy)ethoxy)-4-oxobutanoic acid) used in combination with other acrylic monomers, such as urethaneacrylate (their monomer A) and monoalkylacrylate (their monomer C), and a free radical photoinitiator. (See Table 1)
Inami et al. differ from the claimed invention in that they do not teach the alpha alumina
particles in the composition. However, it is well known in the art to incorporate alpha-alumina particles in such curable compositions for forming such scratch resistant and scrape resistant coatings, such as taught in Feng et al. (See the abstract)
In the abstract and claims 1-4, Feng et al. teach an abrasion resistant curable/hardening composition for resilient coatings comprising 0.5 to 5 wt% of alpha-phase aluminum oxide (alpha alumina) with 5-30 nanometers diameter, curable with 0.1 -1% of a curing agent.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the
invention was made, to incorporate alpha alumina particles in the curable coating composition of
Inami et al., in order to obtain the scratch resistance and scrape resistance advantages taught by Feng et al., motivated by a reasonable expectation of success.
Newly Presented Claim Rejections - 35 USC § 103
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inami et al. (JP 2009221358) in combination with Baikerikar et al. (USPN 7,786,183).
In the abstract, ¶'s 39-41, and the examples, Inami et al. teach a curable hardening composition
for coating substrate, such as glass, being excellent in hardening and with shock resistant properties
having at least 5% of 2-acryloyl oxyethyl succinic acid (i.e., 4-(2-(acryloyloxy)ethoxy)-4-oxobutanoio acid)
used in combination with other acrylic monomers, such as urethaneacrylate (their monomer A) and
monoalkylacrylate (their monomer C), and a free radical photoinitiator. (See Table 1)
Inami et al. differ from the claimed invention in that they do not teach the alpha-alumina
particles in the composition. However, it is well known in the art to incorporate alpha-alumina particles
in such curable coating compositions, for forming resilient curable coatings, such as taught in Baikerikar et al. (See col. 13, lines 26-29).
In col. 13, lines 13-49, Baikerikar et al. teach incorporating alpha-alumina powder with an
average particle diameter of 1-10 micrometers (1000 - 10,000 nanometers) in curable coating compositions, such as from urethane acrylate monomer/oligomers (See Col. 5, lines 35-39), incorporating the alpha-alumina powder in the curable compositions in amounts from 5 to 40% by mass, to improve the abrasion resistance of the coatings.
Incorporating the weight of the alpha-alumina powder of Baikerikar et al. in the curable hardening composition of Inami et al. results in at least about 3.5% (5/100+40) to 4.7% (5/100+5) of the 2-acryloyl oxyethyl succinic acid, in the curable hardening composition, which reads on the presently claimed 0.1 to 30% and 0.1 to 10% of 2-acryloyl oxyethyl succinic acid.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to incorporate alpha alumina particles in the curable resilient coating composition
of Inami et al., to improve the scratch resistance and abrasion resistance of the coating, as taught by Baikerikar et al., motivated by a reasonable expectation of success.
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inami et al. (JP 2009221358) in combination with Witt (US 2001/0051229).
In the abstract, ¶'s 39-41, and the examples, Inami et al. teach a curable hardening composition
for coating substrate, such as glass, being excellent in hardening and with shock resistant properties having at least 5% of 2-acryloyl oxyethyl succinic acid (i.e., 4-(2-(acryloyloxy)ethoxy)-4-oxobutanoio acid)
used in combination with other acrylic monomers, such as urethaneacrylate (their monomer A) and
monoalkylacrylate (their monomer C), and a free radical photoinitiator. (See Table 1)
Inami et al. differ from the claimed invention in that they do not teach the alpha alumina
particles in the composition. However, it is well known in the art to incorporate alpha-alumina particles
in such curable coating compositions, for forming scratch resistant and scrape resistant coatings, such as
taught in Witt (See ¶ 28).
In the abstract and ¶ 31-36, 40-43 and 88, Witt teaches an abrasion resistant curable/hardening
composition for resilient coatings, such as from urethane acrylate monomers/oligomers, incorporating 2% to 30 wt% of inorganic particles such as alpha-alumina with 1-20 microns (1000 - 20,000 nanometers) diameter, to produce scratch resistant and scrape resistant coatings.
Incorporating the weight of the alpha-phase aluminum oxide of Witt in the curable hardening composition of Inami et al. results in at least about 3.8% (5/100+30) to 4.7% (2/100+2) of the 2-acryloyl oxyethyl succinic acid in the curable hardening composition, which reads on the presently claimed 0.1 to 30% and 0.1 to 10% of 2-acryloyl oxyethyl succinic acid.
Therefore, it would have been obvious to one having ordinary skill in art at the time the invention was made, to incorporate alpha alumina particles in the curable coating composition of Inami et al., to obtain the scratch resistance and scrape resistance advantages taught by Witt, motivated by a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/ Primary Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
/PATRICIA MALLARI/Director, Technology Center 1700
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