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 .
The amendment of 4/24/26 has been entered. Claims 1-3 and 5-21 are pending.
Rejections
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 1-3 and 5-20 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.
A. There is not basis in the originally filed specification for the newly claimed “quaternary ammonium sulfate”. The newly added scope is new matter therefore. It is not seen where the instant specification discloses the full scope of the newly claimed “quaternary ammonium sulfate”. The argued sections of the published application and the entirety of the full application have been considered. The argued example in the later applicant arguments does not support the entire scope of the instant claim language. The newly added material is new matter.
3. The instant claim 21 is objected to as depending from the above rejected claim 1. It does not recite the “quaternary ammonium sulfate” and is therefore not rejected in the above rejection.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1-3, 6-9, 11-12, and 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP 1995-041542 Yokoshima, the English translation provided by the examiner being referenced below unless otherwise noted, with US Pat. Application Publication No. 2009/0239765 Hasegawa et al. being cited as evidence that polyvinylpyrrolidone is a surfactant.
Hasegawa, paragraph [0040], teaches that polyvinylpyrrolidone is a surfactant.
Regarding claims 1-3, 6-8, 11, 12, and 14-21:
Yokoshima, paragraph [0039] reacts 669 parts of the polyol of formula (2), which falls within the scope of the instantly claimed isocyanate-reactive surfactant and is a quaternary ammonium sulfate and an ether sulfonate and polyether of the instant claim 21, polytetramethylene glycol, which falls within the scope of the instantly claimed polyol, isophorone diisocyanate, which is polyisocyanate, and 2-hydroxylethyl acrylate which falls within the scope of the instant claimed component D. The molecular weight of the polyol of formula (2) of paragraph [0008] of Yokoshima is 836 g/mole. The amounts of Yokoshima, paragraph [0039] give 25 weight% of polyisocyanate, which falls within the scope of the amounts of polyisocyanate of the instant claims. The amounts of Yokoshima, paragraph [0039] give 4 moles of the polyol of formula (2) per 1 mole of polytetramethylene glycol. Yokoshima, paragraph [0031], discloses using a molar ratio of surfactant polyol to polyol of 50:50, i.e. 1:1. Reducing the amount of the polyol of formula (2) of Yokoshima’s example of paragraph [0039] gives 167.25 g polyol of formula (2)/ 822.55 grams of total reactants which gives 20.33 wt% of the polyol of formula (2) of Yokoshima which falls within the scope of the instantly claimed amounts of isocyanate-reactive surfactant because 20.33 rounds down to 20 within the decimal accuracy required by the instantly claimed “20”.
Furthermore, note that the ratio of isocyanate groups of the polyisocyanate to isocyanate active groups of the two polyols of Yokoshima, paragraph [0039], is 3/2. Yokoshima, paragraph [0031], discloses ratios as low as 1.1 as being preferable. Therefore, one may significantly raise the amount of polyisocyanate while maintaining the percentage of polyisocyanate within the scope of the instant claims to give an even lower percentage of polyol of formula (2) of Yokoshima. Yokoshima therefore encompasses the instantly claimed radical curable polyurethane having ethylenically unsaturated functional groups.
The compositions of Yokoshima contain reactive diluent and/or water which fall within the scope of the instantly claimed liquid phase. See Yokoshima, paragraph [0032] and paragraph [0043], Table 1, noting the water, liquid acrylates, and Darocure 2959 which is the instantly claimed initiator. See Yokoshima, paragraph [0033], noting the photoinitiators therein.
Yokoshima thereby encompasses coating compositions which fall within the scope of the instant claim 1.
The amount of hydroxyacrylate of Yokoshima, paragraph [0039] discloses 122/822 100% based on the above discussed reduced amount of polyol of formula (2) or 14.8 wt% which falls within the scope of the instant claim 2.
The exemplified 2-hydroxylethyl acrylate of Yokoshima, paragraph [0039], falls within the scope of the instant claims 3 and 8 because the exemplified 2-hydroxylethyl acrylate of Yokoshima can be made by alkoxylating acrylic acid with ethylene oxide. The exemplified 2-hydroxylethyl acrylate of Yokoshima is therefore necessarily an isocyanate reactive alkoxylated acrylate of the instant claims 3 and 8.
Yokoshima exemplifies the use of water and reactive diluent monomers in their coating compositions. The reactive diluent monomers are the organic solvent of the instant claim 7.
The exemplified polyethylene glycol diacrylate of Yokoshima, page 17, line 16 falls within the scope of the instant claim 11. Note Yokoshima, page 13, line 21 and the entirety of paragraph [0032] also. These compounds of Yokoshima also fall within the scope of the instant claim 12 noting that the polyethylene oxide chain is hydrophilic and hydrophobic which makes it a surfactant and the (meth)acrylate units make it radically reactive.
The similarity of the compositions of Yokoshima to the instantly claimed compositions is such that the compositions of Yokoshima would have been expected to necessarily have the properties of the instantly claimed compositions including the properties of the instant claims 14-16 and 19-20. See MPEP 2112.
The compositions of Yokoshima are disclosed as radiation curable. They are therefore necessarily cured by the energy of electron beams as well. The compositions of Yokoshima discussed herein and the articles coated therewith therefore fall within the scope of the instant claims 17-18. Note Yokoshima, page 19, line 1, noting the electron beam particularly. Note the coated articles of Yokoshima, paragraph [0047].
It further appears that Yokoshima, paragraph [0041] exemplifies polyethylene glycol, which falls within the scope of the instant claim 6, in a polyurethane acrylate which can be modified within the broader teachings to give the instantly claimed coating compositions for similar reasons as are applied to Yokoshima, paragraph [0039] in the above discussion.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the coating compositions and coated articles of the instant claims 1-3, 6-8, 11, 12, and 14-20 from the disclosure of Yokoshima because they are encompassed by Yokoshima, as discussed above and would have been expected to give coating compositions having the properties of the coating compositions of Yokoshima, including the properties specified by Yokoshima, such as the ability to give films having excellent water resistance, and the properties inherent to the coating compositions of Yokoshima.
No unexpected result is seen stemming from any difference between the instant claims and Yokoshima which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, e.g. Yokoshima. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
Regarding claim 6:
Yokoshima discloses using polyethylene glycol or polypropylene glycol as their polyols at paragraph [0028], particularly page 12, line 7.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the coating compositions of the instant claims, as discussed above, using polyethylene glycol or polypropylene glycol in place of the exemplified polytetramethylene glycol of Yokoshima because it is disclosed for use in their polyurethane acrylates and would have been expected to give slightly more hydrophilic films than those of Yokoshima’s example discussed above coupled with the other properties of the film formed by the compositions of Yokoshima.
It further appears that Yokoshima, paragraph [0041] exemplifies polyethylene glycol in a polyurethane acrylate which can be modified within the broader teachings to give the instantly claimed coating compositions for similar reasons as are applied to Yokoshima, paragraph [0039] in the above discussion.
Regarding claim 9:
Yokoshima, paragraph [0036] teaches using commonly known additives, including polyvinylpyrrolidone, in their compositions. Hasegawa, paragraph [0040] teaches that polyvinylpyrrolidone is a surfactant. The polyvinylpyrrolidone of Yokoshima, paragraph [0036] therefore falls within the scope of the non-reactive surfactant of the instant claim 9, as one of ordinary skill would understand “non-reactive” to mean in this sense.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the coating compositions of the instant claims, as discussed above, which contain the non-reactive surfactant of the instant claim 9 from the disclosure of Yokoshima because the instantly claimed compositions are encompassed by Yokoshima, as discussed above, Yokoshima discloses using polyvinylpyrrolidone in their compositions, which is a non-reactive surfactant as taught by Hasegawa, and the resulting composition would have been expected to give coating compositions having the properties of the coating compositions of Yokoshima which include the benefits of the polyvinylpyrrolidone taught by Yokoshima.
No unexpected result is seen stemming from any difference between the instant claims and Yokoshima which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, e.g. Yokoshima. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
6. Claims 1-3, 5-9, and 11-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-143303 Kawamoto et al., the English translation provided by the examiner being referenced below unless otherwise noted, in view of US Pat. No. 4006024 Ibata et al.
Regarding claims 1-3, 5-9, and 11-21:
Kawamoto discloses active energy curing coating compositions which give excellent antistatic performance, antifoggingness and scratch resistance. See their abstract and paragraph [0001].
The compositions of Kawamoto contain a single radical curable polyurethane having ethylenically unsaturated functional groups, organic solvent which is the instantly claimed liquid phase, and initiator. See Kawamoto, paragraphs [0001], [0012], and [0059], noting the solvent which falls within the scope of the liquid phase of the instant claims including the instant claims 1, 7, and 17.
The coatings of Kawamoto are curable by electron beam which falls within the scope of the instant claim 17. See Kawamoto, page 26, lines 13-15, noting electron beams.
Kawamoto, paragraph [0007], discloses reacting a polyisocyanate-based compound, a hydroxyl group containing quaternary ammonium salt-based compound according to formula (1) of paragraph [0008] and a hydroxyl group-containing (meth)acrylate-based compound. It is noted that the polyisocyanate-based compound may be a reaction product of polyethylene glycol or polypropylene glycol with polyisocyanate to give a polyisocyanate having alkyleneoxide chains between them. See Kawamoto, paragraph [0013], particularly page 9, line 18, noting the reaction products of these polyisocyanates and polyols, and paragraph [0014], noting that the polyols include polyethylene glycol and polypropylene glycol. See Kawamoto, page 9, lines 20-22. It is expected that the recitations of polyethylene glycol and polypropylene glycol are expected to mean that there are more than four repeating units in these polymers since tetraethylene glycol is separately referenced. Kawamoto does not limit the molecular weights of these polyethylene glycols and polypropylene glycols. It would have been understood by the ordinary skilled artisan prior the instantly claimed inventions that the polyisocyanates of Kawamoto, page 9, line 18, made with their diisocyanates and glycols require chain termination of each OH with a diisocyanate molecule leaving a polyalkylene glycol based urethane diisocyanate. See Kawamoto, paragraph [0016].
The ordinary skilled artisan would have understood that the description of Kawamoto, paragraph [0012] would give a polyurethane terminated with two (meth)acrylate groups which is a single radical curable polyurethane having ethylenically unsaturated functional groups.
Kawamoto discloses the molecular weights of their quaternary ammonium salts as being 100-2300 at paragraph [0020].
The description of Kawamoto, paragraph [0012], is of a single radical curable polyurethane having ethylenically unsaturated functional groups which is a molecule of their general formula (1) having its OH groups each reacted with a molecule of polyisocyanate and having the remaining isocyanate terminal groups reacted with hydroxyl functional (meth)acrylate. Where this polyisocyanate is Kawamoto’s reaction product of polyethylene glycol or polypropylene glycol with their diisocyanates to give isocyanate terminated molecules, the resulting radical curable polyurethane having ethylenically unsaturated functional groups contains two molecules of polyethylene glycol or polypropylene glycol and one molecule of the molecule of general formula (1) of Kawamoto. Additionally, the resulting radical curable polyurethane having ethylenically unsaturated functional groups contains four molecules of the diisocyanate used to make the polyalkylene glycol containing polyisocyanate. Additionally, the resulting radical curable polyurethane having ethylenically unsaturated functional groups contains two molecules of the hydroxyl functional (meth)acrylate.
The effects of the chain lengths of polyalkylene glycol on the properties discussed in Kawamoto, paragraphs [0040]-[0041] would have been expected to be similar for polyalkylene glycol chains within Kawamoto’s polyisocyanates.
Kawamoto does not disclose the molecular weights of their polyethylene glycol and polypropylene glycol of paragraph [0014].
Ibata discloses making urethane containing polyisocyanates having polyalkylene glycol that is chain terminated with diisocyanates which is useful in curable acrylate terminated polyurethanes at column 1, line 65 to column 2, line 1, column 14, lines 15-24, noting the molecular weight of the polyalkylene glycol of 2000, column 15, lines 5-13, noting the molecular weight of the polyalkylene glycol, column 18, lines 23-30, noting the molecular weight of the polyalkylene glycol, and lines 43-50, noting the molecular weight of the polyalkylene glycol, and lines 64-68, noting the molecular weight of the polyalkylene glycol.
It is noted that the above discussed radical curable polyurethane having ethylenically unsaturated functional groups made with the cationic diol of molecular weight 100, polyalkylene glycol of molecular weight 2000, the hexamethylene diisocyanate of Kawamoto, page 9, line 11, and the hydroxyethyl acrylate of Kawamoto, page 12, line 8 would have a molecular weight of (4*168.2)+(2*116.11)+(2*2000)+(100)= 5005 g/mole. Therefore, this molecule would contain 100/5005*100%=1.998 wt% of the isocyanate reactive surfactant, which falls within the scope of the amounts thereof of the instant claims 1, 5, and 17.
The above discussed radical curable polyurethane having ethylenically unsaturated functional groups would have 672.8/5005 *100%=13.4 wt.% of diisocyanate which falls within the scope of the instant claims 1 and 17.
The above discussed radical curable polyurethane having ethylenically unsaturated functional groups would have 232.2/5005 *100%=4.64 wt.% of hydroxyethyl acrylate which falls within the scope of the instant claim 2.
The 2-hydroxylethyl acrylate of Kawamoto falls within the scope of the instant claims 3 and 8 because the 2-hydroxylethyl acrylate of Kawamoto can be made by alkoxylating acrylic acid with ethylene oxide. The exemplified 2-hydroxylethyl acrylate of Kawamoto is therefore necessarily an isocyanate reactive alkoxylated acrylate of the instant claims 3 and 8.
Kawamoto discloses the combination of initiator and their radical curable polyurethane having ethylenically unsaturated functional groups at paragraph [0054].
Kawamoto discloses the use of dispersant in their compositions at paragraph [0058]. Dispersant falls within the scope of the non-reactive surfactant of the instant claim 9.
Kawamoto, paragraphs [0047] and [0049]-[0050], noting the alkylene oxide modified acrylates of Kawamoto, falls within the scope of the instant claim 11. These alkylene oxide modified acrylates are also the radical reactive surfactants of the instant claim 12 because they have the hydrophilic/hydrophobic alkylene oxide segments and the radically reactive acrylate groups.
The substrates coated with the coating compositions of Kawamoto fall within the scope of the instant claims 13 and 18.
The similarity of the compositions of Kawamoto to the instantly claimed compositions is such that the compositions of Kawamoto would have been expected to necessarily have the properties of the instantly claimed compositions including the properties of the instant claims 14-16 and 19-20. See MPEP 2112.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the above discussed coating compositions and coated substrates of Kawamoto which fall within the scope of the instantly claimed inventions because they are encompassed by Kawamoto, Ibata suggests the use of the above discussed polyalkylene glycol molecular weights in making Kawamoto’s polyisocyanates which are isocyanate terminated polyalkylene glycols, and such compositions of Kawamoto in view of Ibata would have been expected to have the properties of the compositions and coated articles of Kawamoto, including the properties explicitly discussed by Kawamoto and the properties inherent to Kawamoto’s compositions and coated articles.
The argued ammonium compounds of Kawamoto are also polyethers which fall within the scope of the instant claims including new claim 21.
No unexpected result is seen stemming from any difference between the instant claims and Kawamoto which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, e.g. Kawamoto. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
7. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-143303 Kawamoto et al., the English translation provided by the examiner being referenced below unless otherwise noted, in view of US Pat. No. 4006024 Ibata et al., as applied to claims 1-3, 5-9, and 11-21 in paragraph 6 above, further in view of US Pat. Application Publication No. 2008/0160187 Murata et al.
The discussion of paragraph 6 above is repeated here.
Kawamoto, paragraph [0058], discloses the addition of pigment and filler, which encompasses the instant claim 10. Kawamoto does not describe the use of the metal oxide nanoparticles of the instant claim 10.
Murata discloses using metal oxide particles of average particle size 5-50 nm, which are metal oxide nanoparticles falling within the scope of the instant claim 10, in similar compositions as those of Kawamoto.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to add the metal oxide particles of average particle size 5-50 nm of Murata to the coating compositions of Kawamoto because Kawamoto discloses using pigments and fillers in their compositions and the metal oxide nanoparticles of Murata would have been expected to give the properties they contribute to the compositions of Murata to the compositions of Kawamoto, including reinforcing and hardness properties typical of inorganic fillers.
No unexpected result is seen stemming from any difference between the instant claims and Kawamoto which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, e.g. Kawamoto. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
Response to Arguments
8. The following response is in regard to the applicant’s arguments regarding the rejection of paragraph 5 above:
The applicant argues that there is no reasonable expectation of success in making the polyurethanes of the above cited prior art using the amounts encompassed by the above cited prior art. The applicant further argues that other particulars would be materially changed that would not result in a useful polyurethane. These arguments are unsupported attorney argument and are not persuasive. See MPEP 2145. The reason for expectation of success is because the skilled artisans of the above cited prior art say the instantly claimed amounts will work in their invention by disclosing such amounts even if they are an extreme circumstance, which they are not. For the reasons stated above and the reasons stated in this section and the full teachings of the above cited prior art, this rejection is maintained and the applicant’s arguments are not persuasive.
9. The following response is in regard to the applicant’s arguments regarding the rejection of paragraphs 6 and 7 above:
The argued ammonium compounds of Kawamoto are also polyethers which fall within the scope of the instant claims including new claim 21.
For the reasons stated above and the reasons stated in this section and the full teachings of the above cited prior art, this rejection is maintained and the applicant’s arguments are not persuasive.
Conclusion
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
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