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 .
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.
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.
Claim(s) 1, 6-8, 10-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osae et al. (US Serial No. 2012/0302695).
Regarding claims 1, 6-8, 11, and 18; Osae et al. teaches an adhesive composition comprising (A) (meth)acrylate ester monomer (reactive diluent), such as trimethylolpropane triacrylate and 1,6-hexanediol diacrylate [0074], (B) chlorinated elastomeric polymer, (C) core-shell impact modifier, and (D) urethane (meth)acrylate oligomer [abs, 0014-0018]. Osae et al. teaches the urethane (meth)acrylate oligomer has the following formula (A-X-Y-X-A), where X is an isocyanate residue, Y is a polyol chain extender residue, and A is derived from an acrylate [0087-0092]. Osae et al. teaches suitable chain extending polyols are simple diols (e.g. 1,6-hexanediol) reacted with lactones (e.g. epsilon-caprolactone) [0095]. Osae et al. teaches the polycaprolactone polyols have a molecular weight of 2000 g/mol or less [0127]. Osae et al. teaches suitable isocyanates to be used in producing the urethane (meth)acrylate include 1,6-hexamethylene diisocyanate and isophorone diisocyanate [0133] (instant claim 6). Osae et al. teaches suitable (meth)acrylate components to be used in producing the urethane (meth)acrylate include 2-hydroxyethyl (met)acrylate and hydroxypropyl (meth)acrylate [0138] (instant claim 7). Osae et al. teaches the reaction components of the urethane (meth)acrylate is chosen such that the ratio of equivalents of NCO in the diisocyanate to equivalents of OH in the hydroxy(meth)acrylate lies within the range 1.90:1 to 2.30:1, and the ratio of equivalents of NCO in the diisocyanate to equivalents of OH in the polyol lies within the range 1.90:1 to 2.20:1 [0066].
Osae et al. teaches the composition comprises (A) from 20-70% by weight (meth)acrylate ester monomer (reactive diluent), (B) from 1-35% by weight of chlorinated elastomeric polymer, (C) from 1-35% by weight of a core-shell impact modifier, and (D) from 1-40% by weight of urethane (meth)acrylate oligomer [0196-0200], thus the components (A) reactive diluent and (D) urethane (meth)acrylate are present in an amount of are present in an amount that falls within the claimed range of about 30-80% based on the total weight of the composition (e.g. 35% by weight of urethane (meth)acrylate oligomer and 40% by weight of reactive diluent makes for a total of 75% by weight of the total composition). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Osae et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Osae et al. does not specifically disclose an embodiment containing the urethane (meth)acrylate oligomer prepared from a polycaprolactone polyol, diisocyanate, and hydroxyalkyl acrylate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a urethane (meth)acrylated from the reaction products polycaprolactone polyol, diisocyanate, and hydroxyalkyl acrylate, based on the invention of Osae et al., and would have been motivated to do so since Osae et al. suggests that the urethane (meth)acrylate can be obtained by reacting polycaprolactone polyol, diisocyanate, and hydroxyalkyl acrylate.
The Examiner makes note that “for fibers reinforced substrate” is merely an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
It is also noted that although Osae et al. does not explicitly teach a “gel” coat composition, it is the Examiner’s position that the “gel” properties would necessarily be present in the composition of Osae et al. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition can not have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The Examiner note that limitations directed to the (poly)carbonate-(poly)caprolactone polyol are directed to features of an optional component, since the prior art teaches the use of a polycaprolactone polyol.
Regarding claim 10; Osae et al. teaches the composition further comprising a pigment [0244].
Regarding claims 12 and 16; Osae et al. teaches a cured sheet prepared from the composition of the present invention [0252-0258].
Regarding claims 13 and 14; The Examiner makes note that “cured by ultraviolet radiation” and cured by electron beam” is a product-by-process limitation. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Regarding claim 15; Osae et al. teaches the compositions are typically cured by means of peroxide or hydroperoxide initiators [0212], thus producing a cured product.
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive.
Applicants argue Osae does not disclose a radiation curable gel coat composition comprising at least one diluent monomer (B), which specifically comprises a difunctional or trifunctional alkyl acrylate monomer. Applicants argue that the skilled person would not find in Osae the slightest incentive towards the claimed subject matter, in particular towards modifying the radiation curable composition disclosed in Osae to include the specific at least one diluent monomer (B) and the specific urethane (meth)acrylate reaction products (A) of a reaction mixture comprising (a) a hydroxy-terminated polyol; and (c) a hydroxyalkyl (meth)acrylate, exactly as detailed in claim 1. Instead, Applicant respectfully submits that Osae teaches away and discourages the presently claimed subject matter.
The Examiner respectfully disagrees. Applicants are reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123. Osae teaches it suitable to employ any (meth)acrylate monomers as those exemplified for the component (A) [0191], including trimethylolpropane tri(meth)acrylate (which constitutes trimethyloylpropate triacrylate and trimethylolpropane trimethacrylate) and 1,6-hexanediol di(meth)acrylate (which constitutes both 1,6-hexanediol diacrylate and 1,6-hexanediol dimethacrylate) [0074]. While Osae may teach preferred components, the reference must be viewed for all it encompasses.
Applicants argue, with regard to the urethane (meth)acylate oligomer, Osae clearly teaches (see Osae, paras. [0048], [0049] and [0126]) that when polyester polyols are selected as the chain-extending reagent, preferred polyester polyols are derived from E-caprolactone and a tri- or higher functional alcohol, with sugar alcohol being preferred, a hexitol being more preferred, and sorbitol being the most preferred. Again, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123. Although Osae teaches “preferably preferred” polyols to be used in the polyester chain extenders, Osae contemplates the use of difunctional polyols as well [0122]. Osae specifically teaches preferred polyester polyols are obtainable by reaction of a di- or higher functional polyol with a lactone [0122; 0130]; preferably a lactone having 4- to 10-membered ring (e.g. epsilon-caprolactone) [0123-0124]. Osae teaches preferred chain-extender polyols, as described for polyester polyols, are simple diols/polyols extended by reaction with epsilon-caprolactone [0130]. Osae teaches suitable simple diols to be 1,6-hexanediol [0095]. That is, Osae teaches it suitable to achieve the particulars of the present invention when the urethane di(meth)acrylate oligomer is prepared from a polyester diol prepared from (epsilon-caprolactone and 1,6-hexanediol). A reference must be viewed for all it encompasses.
In response to applicant's argument that Osae not teach a gel coated that, upon curing, provides the substrate with excellent surface finish and excellent resistance to weathering, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue Osae relates to adhesive compositions, which typically have very little in common with coating compositions, let alone coating compositions providing fibers reinforce substrates with excellent surface finish. The Examiner respectfully disagrees. Osae teaches polymerizable vinyl adhesive compositions useful for a variety of coatings are well known in the art [0001]. Osae further teaches that the urethane (meth)acrylate oligomer included as the component (D) may be any of the type familiar to those skilled in ether the coatings or the adhesives industries [0087]. Furthermore, the claims of the instant invention are directed to a composition, wherein “a gel coat” composition is merely an intended use for said claimed composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
As such Osae is still relied upon for rendering obvious the basic claimed radiation curable composition, as set forth by the instant claim language.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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