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 .
Status of the application
Receipt of Applicant’s request for continued examination filed on January 16, 2026 is acknowledged.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 16, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 2-9 and 32-41 depend on claim 1 and, therefore are also rejected.
With regards to claim 1, the claim states that the isocyanurate or cyanurate component are bonded to an acrylate or methacrylate component via an R group, however, the R group is not further defined. For the purposes of compact resolution, the R group will be determined to read on any group including a single bond.
Claim Rejections - 35 USC § 103
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.
Claims 1-98 and 32-41 are rejected under 35 U.S.C. 103 as being unpatentable over Eckel et al (WO 2018/08704) which references Boettcher et al (US 4,652,274).
With regards to claims 1, 8, and 33, Eckel teaches a composition containing organic binders that are cured by radiation (pages 7 and 8) that includes isocyanurate resins (page 9) isocyanurate derivatives as described in Boettcher (page 11). Boettcher teaches isocyanurate derivatives having the following structure:
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80
90
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(column 3) wherein
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499
255
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(column 3). Eckel further teaches the addition of a photoinitiator (applicant cites electromagnetic radiation to include UV radiation and a photoinitiator is a compound that cures the composition when exposed to UV radiation, therefore, the photoinitiator reads on the electromagnetic radiation initiator) (page 12) and filler abrasive particles (page 2). Eckel teaches the composition to be solidified using ultraviolet light wherein the composition is converted into a solid (page 9) reading on the composition being cured in the post-cured state.
Eckel does not teach the amount of the acrylated component to be greater than 90 percent by weight of the resin composition.
However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05. Further, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the concentration of the acrylate component in order to achieve the desired reactivity and viscosity of the composition.
With regards to claims 2 and 4-5, Eckel teaches polymerization to occur using ultraviolet light (page 9).
With regards to claim 3, Eckel teaches the addition of a photoinitiator (page 12).
With regards to claims 6 and 7, Eckel teaches the addition of a photoinitiator (page 12) which are known in the art to bind the acrylate compounds of the resin composition.
With regards to claim 9, Eckel teaches the addition of filler particles (page 18).
With regards to claim 32, Eckel teaches the radiation to include visible light (page 9).
With regards to claim 34, Eckel does not teach the viscosity of the composition. However, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the viscosity in order to achieve the desired workability prior to curing. Eckel further teaches that the viscosity is such as to allow the particles to have dwell time in the magnetic field prior to curing.
With regards to claims 35-41, Eckel teaches the compound to include isocyanurate resins containing (meth)acrylate groups (page 11).
Claims 1-9 and 32-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by An et al (WO 2015102149).
With regards to claims 1-6, 8, and 32-41, An teaches a resin composition containing a binder, n acrylic monomer and an initiator (abstract). An teaches the acrylic monomer to include tris(2-hydroxyethyl)isocyanurate trimethacrylate (12). An teaches the composition to be cured using UV radiation (17-19). An teaches the composition to further include a silicone compound having the following formula:
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115
171
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(page 2) wherein
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101
468
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(page 2) and preferably R1 to R3 are methyl groups, R4 is a phenyl group, and R5 to R6 are vinyl groups (page 8 example 1), therefore, reading on the optional reactive monomer component. An teaches the composition to be cured using UV radiation (reading on a post-cured state) (page 3).
An does not teach the amount of the isocyanurate compound.
However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05. Further, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the concentration of the acrylate component in order to achieve the desired reactivity and viscosity of the composition.
With regards to claim 7, An teaches the addition of epoxy binders or acrylates (abstracts).
With regards to claim 9, An teaches the composition to include additional acrylate monomers (49-50 example 1).
With regards to claim 34, An does not teach the viscosity of the composition. However, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the viscosity in order to achieve the desired workability prior to curing.
Response to Arguments
Applicant’s arguments, see page 10, filed January 16, 2026, with respect to the rejection(s) of claim(s) 1-9 and 31-32 under 35 USC 102 with respect to Eckel and An have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of routine experimentation.
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive.
Argument - Applicant argues that Eckel and An do not teach an acrylated component comprising an isocyanurate or a cyanurate component bonded to an acrylate or a methacrylate component via an R group.
Response - As stated above, both of the art teach an isocyanurate compound having acrylate groups bound to them. It is important to note that the composition is now much more broad as the R group is not defined in the claims and the excluded compound now can be present in the art. Therefore, this argument is not persuasive
Argument - Applicant argues that Eckel and An do not teach the addition of an electromagnetic radiation initiator.
Response - Applicants cite in the specification and dependent claims that electromagnetic radiation includes UV or visible light radiation. Both of the references teach the addition of a photoinitiator (as stated above) and, therefore, read on an electromagnetic radiation initiator.
Argument - Applicant argues that Eckel and An do not teach the resin to have both a pre-cured and post-cured state.
Response - Both of the references, as stated above, teach the composition to be cured using radiation. It is important to note that the broadest reasonable interpretation of the claim reads that the pre-cured and post cured state of the composition can both be solid or liquid. Therefore, because both of the art teach the composition to be cured, they both have a pre and post-cured state.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763