DETAILED ACTION
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 5 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.
Regarding claim 5: Claim 5 recites the limitation "said auxiliaries" in the first line. There is insufficient antecedent basis for this limitation in the claim. Since each limitation of claim 5 is also claimed in claim 1, it is suggested to delete claim 5.
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.
Claims 1-10, 12-16 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Apicella et al. (GB 2 308 375).
Regarding claims 1, 4, 5, and 6: Apicella et al. teaches a composition consisting essentially of an acrylate ester of an epoxy novolac resin/an α,β-ethylenically unsaturated monocarboxylic acid reacted with an epoxy novolac resin in an amount of 30-60 % by weight (pg. 4 lines 15-30), a diacrylate in an amount of 20-60% by weight (pg. 5 lines 5-25), a peroxide/thermally activated starter in an amount of 1-4 % by weight (pg. 6 lines 1-5), an accelerator (pg. 6 line 20), and a promoter in an amount of 0.01-2%, if present (pg. 6 lines 18-19). These ranges overlap with the claimed ranges. Apicella et al. also does not teach any components having a boiling point below 200 °C under normal pressure such as solvents. Apicella et al. teaches room temperature curing (pg. 3 lines 1-5).
Apicella et al. does not state the time that the composition exhibits tack free curing. However, this is a latent property of the composition. Mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Since the disclosed composition and the claimed composition are physically the same, they must have the same properties (MPEP 2112.01 II). If it is applicant’s position that the claimed components do not exhibit a tack free curing time of 24 hours or less in Apicella et al., but do in the instant application, (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure; that there is no teaching as to how to obtain a composition with these properties. If this is the case, it would appear that there is a critical yet unclaimed component or step in the method claims missing from the claims that would be required to make the claims functional.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to include the disclosed components in overlapping amounts and would have been motivated to do so since Apicella et al. teaches these are appropriate amounts to achieve the disclosed invention.
While Apicella et al. may contain other optional components, for the purpose of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising” (MPEP 2111.03 III). The only clearly defined exclusions in the instant specification are monostyrene and components having a boiling point below 200 °C under normal pressure. Apicella et al. also teaches not including monostyrene (pg. 13 lines 5-10).
Regarding claim 2: Apicella et al. teaches there are at least two α,β-ethylenically unsaturated monocarboxylic/acrylate ester groups per molecule of epoxy novolac resin (pg. 4 lines 5-10). At least two overlaps with three.
Regarding claim 3: Apicella et al. teaches 1,4-butanediol dimethacrylate (pg. 13 lines 5-10).
Regarding claims 7, 8, and 16: Apicella et al. teaches 15% by weight glass flakes out of 100% total weight of the composition (table 4).
Regarding claims 9 and 10: Apicella et al. teaches a molded part such as a thermoset coating (abstract).
Regarding claims 12 and 13: Apicella et al. teaches a process for coating a substrate (abstract) comprising applying a composition to obtain a coating layer (pg. 3 line 25) via spray or roller (pg. 13 lines 10-15), the composition comprising an acrylate ester of an epoxy novolac resin/an α,β-ethylenically unsaturated monocarboxylic acid reacted with an epoxy novolac resin in an amount of 30-60 % by weight (pg. 4 lines 15-30), a diacrylate in an amount of 20-60% by weight (pg. 5 lines 5-25), a peroxide/thermally activated starter in an amount of 1-4 % by weight (pg. 6 lines 1-5), an accelerator (pg. 6 line 20), and a promoter/auxiliary in an amount of 0.01-2%, if present (pg. 6 lines 18-19). These ranges overlap with the claimed ranges. Apicella et al. also does not teach any components having a boiling point below 200 °C under normal pressure such as solvents. Apicella et al. teaches room temperature curing (pg. 3 lines 1-5).
Apicella et al. does not state the time that the composition exhibits tack free curing. However, this is a latent property of the composition. Mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Since the disclosed composition and the claimed composition are physically the same, they must have the same properties (MPEP 2112.01 II). If it is applicant’s position that the claimed components do not exhibit a tack free curing time of 24 hours or less in Apicella et al., but do in the instant application, (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure; that there is no teaching as to how to obtain a composition with these properties. If this is the case, it would appear that there is a critical yet unclaimed component or step in the method claims missing from the claims that would be required to make the claims functional.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to include the disclosed components in overlapping amounts and would have been motivated to do so since Apicella et al. teaches these are appropriate amounts to achieve the disclosed invention.
Regarding claims 14 and 15: Apicella et al. teaches a process for coating a substrate (abstract) comprising forming a coating layer (pg. 3 line 25) via spray or roller (pg. 13 lines 10-15), the composition comprising an acrylate ester of an epoxy novolac resin/an α,β-ethylenically unsaturated monocarboxylic acid reacted with an epoxy novolac resin in an amount of 30-60 % by weight (pg. 4 lines 15-30), a diacrylate in an amount of 20-60% by weight (pg. 5 lines 5-25), a peroxide/thermally activated starter in an amount of 1-4 % by weight (pg. 6 lines 1-5), an accelerator (pg. 6 line 20), and a promoter/auxiliary in an amount of 0.01-2%, if present (pg. 6 lines 18-19). These ranges overlap with the claimed ranges. Apicella et al. also does not teach any components having a boiling point below 200 °C under normal pressure such as solvents. Apicella et al. teaches room temperature curing (pg. 3 lines 1-5). Apicella et al. teaches 15% by weight glass flakes out of 100% total weight of the composition (table 4).
Apicella et al. does not state the time that the composition exhibits tack free curing. However, this is a latent property of the composition. Mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Since the disclosed composition and the claimed composition are physically the same, they must have the same properties (MPEP 2112.01 II). If it is applicant’s position that the claimed components do not exhibit a tack free curing time of 24 hours or less in Apicella et al., but do in the instant application, (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure; that there is no teaching as to how to obtain a composition with these properties. If this is the case, it would appear that there is a critical yet unclaimed component or step in the method claims missing from the claims that would be required to make the claims functional.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to include the disclosed components in overlapping amounts and would have been motivated to do so since Apicella et al. teaches these are appropriate amounts to achieve the disclosed invention.
Regarding claim 21: Apicella et al. teaches a molded part (pg. 7 line 15).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Apicella et al. (GB 2 308 375) ass applied to claim 1 set forth above and in view of Kawamura et al. (US 2009/0136719).
Regarding claim 17: Apicella et al. teaches fiber reinforcements such as glass (pg. 7 lines 5-10).
Apicella et al. does not teach applying the glass fabric to a substrate to obtain a covered substrate, soaking the covered substrate with the binder and curing as claimed. However, Kawamura et al. teaches a glass substrate (para. 152) such as glass fiber/fabric (para. 38) and the composition coated/covered on the substrate (para. 152). The composition is cured (para. 149). Apicella et al. teaches curing at room temperature (pg. 3 lines 1-5). Apicella et al. and Kawamura et al. are analogous art since they are both concerned with the same field of endeavor, namely acrylate compositions. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the method of Kawamura et al. with the composition of Apicella et al. and would have been motivated to do so to produce a printed wiring board.
Apicella et al. does not state the time that the composition exhibits tack free curing. However, this is a latent property of the composition. Mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Since the disclosed composition and the claimed composition are physically the same, they must have the same properties (MPEP 2112.01 II). If it is applicant’s position that the claimed components do not exhibit a tack free curing time of 24 hours or less in Apicella et al., but do in the instant application, (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure; that there is no teaching as to how to obtain a composition with these properties. If this is the case, it would appear that there is a critical yet unclaimed component or step in the method claims missing from the claims that would be required to make the claims functional.
Response to Arguments
Applicant's arguments filed November 14, 2025 have been fully considered but are moot in view of the new grounds of rejection. Prior art rejections are now in view of Apicella et al. instead of Hsu, which is newly cited on the IDS of September 17, 2025.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on September 17, 2025 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767