DETAILED ACTION
Applicant’s response of March 2, 2026 has been fully considered. Claims 5 and 15 are amended, and claim 20 is cancelled. Claims 1-19 are pending.
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
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, 2, 4, 6-10, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Pokorny et al. (WO 2019/145817).
Regarding claims 1, 2, 4, 6, 18, and 19, Pokorny et al. teaches a hardcoat composition comprising an organic comprising a urethane (meth)acrylate oligomer having first functional groups (radiation curable polymerizable oligomer) and an acrylic polymer having second functional groups, wherein the first and second functional groups are capable of forming a hydrogen bond; and less than 30% by weight of inorganic oxide nanoparticles (Page 1, lines 22-25). This coating composition can be placed on a substrate and cured by radiation (produces the laminate) (Page 1, lines 26-27, 32-34). The inorganic nanoparticles are preferably treated with a surface treatment agent that is a (meth)acryloyl alkoxy silane such as 3-(methacryloyloxy)propyl trimethoxysilane (Page 11, line 22; Page 12, lines 9-11). This silane corresponds to the structure of Formula 1 where R1 is a methacryloyl group, R2 is an alkylene having 3 carbon atoms, and R3 is an alkyl having group having one carbon atom. Additionally, the surface treatment can be done subsequent to the particles being mixed with the monomers, which would result in the composition containing this compound (Page 11, lines 37-38).
Pokorny et al. does not teach that the alkylene group in Formula 1 has from 5 to 12 carbon atoms, and is specifically 8-(meth)acryloyloxy)octyl trimethoxysilane. However, Pokorny et al. does teach a silane that only differs from that of instant claim 2 by five CH2 groups. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). MPEP 2144.09. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 8-(meth)acryloyloxy)octyl trimethoxysilane as the (meth)acryloyl alkoxy silane in the composition as taught by Pokorny et al., and would have been motivated to do so by a reasonable expectation of success that these two silanes would perform similarly in the disclosed composition.
Regarding claim 7, Pokorny et al. teaches that the inorganic oxide nanoparticles have an average particle size of at least 20 nm and no greater than about 150 nm (Page 10, lines 15-17).
Regarding claim 8, Pokorny et al. does not teach that the wear-resistant layer is not peeled off in a 2000-time Taber abrasion test. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the wear-resistant layer is not peeled off in a 2000-time Taber abrasion test, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 9, Pokorny et al. does not teach that the laminate has elongation at break of 50% or greater at 20° C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the laminate has elongation at break of 50% or greater at 20° C, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 10, Pokorny et al. teaches that the article can be used for decorative purposes (Page 17, lines 23-27).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Pokorny et al. (WO 2019/145817) as applied to claim 1 above, and further in view of Wu et al. (US 2002/0149659).
Regarding claim 3, Pokorny et al. teaches the composition of claim 1 as set forth above. Pokorny et al. does not teach that the composition further comprises a non-functional silane coupling agent. However, Wu et al. teaches an energy curable, ink jettable composition comprising an energy curable fluid vehicle, such as (meth)acrylated urethanes (¶101), and a plurality of nanometer-sized, surface modified, inorganic particles dispersed in the vehicle (¶32). A particularly preferred combination of surface treatment agents is a blend of a (meth)acryloyloxyalkyl organosilane and a branched aliphatic organosilane (a non-functional silane coupling agent) (¶58). Pokorny et al. and Wu et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of acrylate urethane ink compositions comprising nanoparticles and silanes. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a non-functional silane coupling agent such as isooctyltrimethoxysilane (¶58), as taught by Wu et al., to the composition, as taught by Pokorny et al., and would have been motivated to do so because Wu et al. teaches that the combination of a (meth)acryloyloxyalkyl organosilane (included in Pokorny et al.) and a branched aliphatic organosilane provide excellent compatibility with a range of radiation curable monomers, which yields a very dersiable viscosity for inkjetting applications (¶58).
Regarding claim 5, Pokorny et al. does not teach that the (meth)acryloyl alkoxy silane and the non-functional silane are each present in a range of from 0.030 to 0.090 mmol per 1 grame of the inorganic nanoparticles. However, Pokorny et al. does teach that the amount of surface modifier is dependent upon several factors such as particle size, particle type, modifier molecular weight, and modifier type (Page 11, lines 39-41) and that the surface modifiers are used to stabilize the nanoparticles so that the particles will be well dispersed in the polymerizable resin resulting in a homogeneous composition (Page 11, lines 24-25). Therefore, the amount of the silane compounds is a result-effective variable and it is well known in the art to optimize result-effective variables through routine experimentation. MPEP 2144.05. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the amount of the (meth)acryloyl alkoxy silane and the non-functional silane through routine experimentation, and would have been motivated to do so by a reasonable expectation of success because the amount of these components is a result-effective variable.
Claims 11, 12, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Pokorny et al. (WO 2019/145817).
Regarding claims 11, 12, and 14, Pokorny et al. teaches a hardcoat composition comprising an organic comprising a urethane (meth)acrylate oligomer having first functional groups (radiation curable polymerizable oligomer) and an acrylic polymer having second functional groups, wherein the first and second functional groups are capable of forming a hydrogen bond; and less than 30% by weight of inorganic oxide nanoparticles (Page 1, lines 22-25). This coating composition can be cured by radiation (Page 1, lines 32-34). The inorganic nanoparticles are preferably treated with a surface treatment agent that is a (meth)acryloyl alkoxy silane such as 3-(methacryloyloxy)propyl trimethoxysilane (Page 11, line 22; Page 12, lines 9-11). This silane corresponds to the structure of Formula 1 where R1 is a methacryloyl group, R2 is an alkylene having 3 carbon atoms, and R3 is an alkyl having group having one carbon atom. Additionally, the surface treatment can be done subsequent to the particles being mixed with the monomers, which would result in the composition containing this compound (Page 11, lines 37-38).
Pokorny et al. does not teach that the alkylene group in Formula 1 has from 5 to 12 carbon atoms, and is specifically 8-(meth)acryloyloxy)octyl trimethoxysilane. However, Pokorny et al. does teach a silane that only differs from that of instant claim 12 by five CH2 groups. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). MPEP 2144.09. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 8-(meth)acryloyloxy)octyl trimethoxysilane as the (meth)acryloyl alkoxy silane in the composition as taught by Pokorny et al., and would have been motivated to do so by a reasonable expectation of success that these two silanes would perform similarly in the disclosed composition.
Pokorny et al. does not teach that the composition has an initial viscosity at 55° C of 18.0 mPa·s or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the composition has an initial viscosity at 55° C of 18.0 mPa·s or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 16, Pokorny et al. does not teach that the composition has a viscosity at 55° C after storage for one week at 60° C of 18.0 mPa·s or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the composition has a viscosity at 55° C after storage for one week at 60° C of 18.0 mPa·s or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Pokorny et al. (WO 2019/145817) as applied to claim 11 above, and further in view of Wu et al. (US 2002/0149659).
Regarding claim 13, Pokorny et al. teaches the composition of claim 11 as set forth above. Pokorny et al. does not teach that the composition further comprises a non-functional silane coupling agent. However, Wu et al. teaches an energy curable, ink jettable composition comprising an energy curable fluid vehicle, such as (meth)acrylated urethanes (¶101), and a plurality of nanometer-sized, surface modified, inorganic particles dispersed in the vehicle (¶32). A particularly preferred combination of surface treatment agents is a blend of a (meth)acryloyloxyalkyl organosilane and a branched aliphatic organosilane (a non-functional silane coupling agent) (¶58). Pokorny et al. and Wu et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of acrylate urethane ink compositions comprising nanoparticles and silanes. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a non-functional silane coupling agent such as isooctyltrimethoxysilane (¶58), as taught by Wu et al., to the composition, as taught by Pokorny et al., and would have been motivated to do so because Wu et al. teaches that the combination of a (meth)acryloyloxyalkyl organosilane (included in Pokorny et al.) and a branched aliphatic organosilane provide excellent compatibility with a range of radiation curable monomers, which yields a very dersiable viscosity for inkjetting applications (¶58).
Regarding claim 15, Pokorny et al. does not teach that the (meth)acryloyl alkoxy silane and the non-functional silane are each present in a range of from 0.030 to 0.090 mmol per 1 grame of the inorganic nanoparticles. However, Pokorny et al. does teach that the amount of surface modifier is dependent upon several factors such as particle size, particle type, modifier molecular weight, and modifier type (Page 11, lines 39-41) and that the surface modifiers are used to stabilize the nanoparticles so that the particles will be well dispersed in the polymerizable resin resulting in a homogeneous composition (Page 11, lines 24-25). Therefore, the amount of the silane compounds is a result-effective variable and it is well known in the art to optimize result-effective variables through routine experimentation. MPEP 2144.05. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the amount of the (meth)acryloyl alkoxy silane and the non-functional silane through routine experimentation, and would have been motivated to do so by a reasonable expectation of success because the amount of these components is a result-effective variable.
Claims 11, 12, 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Nagvekar et al. (US 2008/0090931) in view of Yajima (WO 2018/038101). The citations below for Yajima are taken from an English language machine translation included previously.
Regarding claims 11, 12, and 14, Nagvekar et al. teaches a radiation curable ink composition comprising an ethylenically unsaturated oligomer and an ethylenically unsaturated monofunctional monomer (¶14). The ethylenically unsaturated oligomer may be a urethane acrylate oligomer (¶22). The ink may contain a pigment such as nanostructured titania powders (inorganic nanoparticles) that can be surface treated with silanes (¶33, 35). Nagvekar et al. also teaches that the composition has a viscosity at 25° C of not greater than 30 cPs (1 cP is equivalent to 1 mPa·s) (¶9). It is well known that increasing the temperature decreases the viscosity of a liquid, and therefore, at 55° C, as claimed, the viscosity will be even lower than that disclosed. This viscosity range overlaps with that claimed.
Nagvekar et al. does not teach that the composition comprises a compound represented by claimed Formula (1), or that this compound is specifically 8-(meth)acryloxyoctyltrimethoxysilane. However, Yajima teaches a resin composition (Page 1, line 12) cured by an active energy ray (Page 2, lines 25-26) comprising a urethane acrylate oligomer (Page 3, lines 42-47; Page 9, lines 38-40) and inorganic particles such as titania particles surface modified with a silane such as methacryloxyoctyltrimethoxysilane (Page 4, lines 5-6, 18-30). Nagvekar et al. and Yajima are analogous art because they are from the same field of endeavor, namely that of resin compositions comprising urethane acrylate oligomers and surface modified inorganic particles that are used as an ink/coating. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use methacryloxyoctyltrimethoxysilane, as taught by Yajima, as a silane surface modification for the nanostructured titania particles in the ink composition, as taught by Nagvekar et al., and would have been motivated to do so because the silane helps with the dispersion of the inorganic particle throughout the composition.
Regarding claim 16, Nagvekar et al. and Yajima do not teach that the composition has a viscosity at 55° C after storage for one week at 60° C of 18.0 mPa·s or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the composition has a viscosity at 55° C after storage for one week at 60° C of 18.0 mPa·s or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 17, Nagvekar et al. teaches that the ink composition most preferably contains less than about 1% by weight of solvent (¶32).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-10, and 12-16 of U.S. Patent No. 12,428, 568 (“the ‘568 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1, 18, and 19, claim 1 of the ‘568 patent teaches a laminate comprising a substrate, and a surface layer, the surface layer comprising a cured product of a radiation-curable ink, the radiation-curable ink comprising silica nanoparticles, a polyether-modified polymer, a radiation-curable bifunctional polymerizable oligomer, and a compound of Formula (I) that is R1-R2-Si(OR3)3, wherein R1 is an acryloyl group or a methacryloyl group, R2 is an alkylene group having from 5 to 12 carbon atoms, and R3 is an alkyl group having from 1 to 4 carbon atoms.
Regarding claim 2, claim 3 of the ‘568 patent teaches wherein the compound represented by Formula (1) is 8-(meth)acryloxyoctyltrimethoxysilane.
Regarding claim 3, claim 4 of the ‘568 patent teaches wherein the radiation-curable ink further contains an optional non-functional silane coupling agent.
Regarding claim 4, claim 5 of the ‘568 patent teaches wherein the radiation-curable bifunctional polymerizable oligomer is a bifunctional urethane (meth)acylate oligomer.
Regarding claim 5, claim 6 of the ‘568 patent teaches wherein a compounded amount of each of the compound represented by Formula (1) and the optional non-functional silane coupling agent is in a range from 0.030 to 0.090 mmol per 1 g of the silica nanoparticles.
Regarding claim 6, claim 7 of the ‘568 patent teaches wherein the silica nanoparticles are contained in a proportion from 2 to 20 mass% relative to a total weight of the surface layer.
Regarding claim 7, claim 8 of the ‘568 patent teaches wherein an average particle size of the silica nanoparticles is 5 nm or greater and 150 nm or less.
Regarding claim 8, the ‘568 patent does not teach that the wear-resistant layer is not peeled off in a 2000-time Taber abrasion test. The Office realizes that all of the claimed effects or physical properties are not positively stated by the ‘568 patent. However, the ‘568 patent teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the wear-resistant layer is not peeled off in a 2000-time Taber abrasion test, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 9, the ‘568 patent does not teach that the laminate has elongation at break of 50% or greater at 20° C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the ‘568 patent. However, the ‘568 patent teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the laminate has elongation at break of 50% or greater at 20° C, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 10, claim 9 of the ‘568 patent teaches wherein the laminate is used for decoration.
Regarding claim 11, claim 10 of the ‘568 patent teaches a radiation-curable ink comprising silica nanoparticles, a polyether-modified polymer, a radiation-curable bifunctional polymerizable oligomer, and a compound of Formula (I) that is R1-R2-Si(OR3)3, wherein R1 is an acryloyl group or a methacryloyl group, R2 is an alkylene group having from 5 to 12 carbon atoms, and R3 is an alkyl group having from 1 to 4 carbon atoms.
The ‘568 patent does not teach that the composition has an initial viscosity at 55° C of 18.0 mPa·s or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the ‘568 patent. However, the ‘568 patent teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the composition has an initial viscosity at 55° C of 18.0 mPa·s or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 12, claim 12 of the ‘568 patent teaches wherein the compound represented by Formula (1) is 8-(meth)acryloxyoctyltrimethoxysilane.
Regarding claim 13, claim 13 of the ‘568 patent teaches wherein the radiation-curable ink further contains an optional non-functional silane coupling agent.
Regarding claim 14, claim 14 of the ‘568 patent teaches wherein the radiation-curable bifunctional polymerizable oligomer is a bifunctional urethane (meth)acylate oligomer.
Regarding claim 15, claim 15 of the ‘568 patent teaches wherein a compounded amount of each of the compound represented by Formula (1) and the optional non-functional silane coupling agent is in a range from 0.030 to 0.090 mmol per 1 g of the silica nanoparticles.
Regarding claim 16, the ‘568 patent does not teach that the composition has a viscosity at 55° C after storage for one week at 60° C of 18.0 mPa·s or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the ‘568 patent. However, the ‘568 patent teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., that the composition has a viscosity at 55° C after storage for one week at 60° C of 18.0 mPa·s or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 17, claim 16 of the ‘568 patent teaches wherein a content of a solvent is 5 mass% or less.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
As to the rejection of claims 1, 2, 4, 6-12, 14, 16, 18, and 19 over Pokorny et al., applicant argues that the instant invention has achieved unexpected results with the use of an alkylene group chain length having 5 to 12 carbon atoms in the radiation-curable polymerizable monomer. Applicant argues that these results show that a shorter chain length does not provide the desired viscosity measurements for the claimed ink. This argument is unpersuasive. The passage of the instant specification cited on page 6 of the Remarks is simply speculation as to why the viscosity of the ink is reduced and is not evidence of unexpected results. As for the data provided in the instant specification, it does not compare different alkylene group lengths of the radiation-curable polymerizable monomer. The comparative examples provided in the instant specification compare silanes which do not have the (meth)acryloyl group as claimed. Because the (meth)acryloyl group is absent, these comparative examples cannot be used to argue that it is the length of the alkylene group of the monomer which provides the desired viscosity. Applicant would need to compare compositions containing silane compounds which only differ in the chain length of the alkylene group. Specifically, a comparison between a chain length of three and five would be needed to overcome the rejection of record for claims 1 and 11. Therefore, at this time, unexpected results have not been shown by the examples of record and this rejection is unpersuasive.
As for the rejections of claims 3, 5, 13, and 15 over Porkorny et al. in view of Wu et al., applicant argues that Wu et al. does not teach the claimed radiation-curable polymerizable monomer having an alkylene group length of 5 to 12 carbon atoms. Additionally, applicant argues that the amount of silane modifiers used in Wu et al. cannot be modified to obtain the claimed narrow range of 0.030 to 0.090 mmol/gram and that this is not a result-effective variable. These arguments are unpersuasive. As for claims 3 and 13, the rejection of record cites Wu et al. for its teaching of using a non-functionalized silane together with a (meth)acryloyloxyalkyl organosilane, which is already claimed in Porkorny et al. and modified above to what is claimed. Further, Wu et al. does not state that the effects of the additional silane are only obtained when combined with a propyl reactive silane. In fact, in the formula described in instant paragraph 65, W is a skeleton containing from 3 to 20 carbon atoms (¶65, 66, instant PG-PUB). Based on this teaching, applicant has not argued why one of ordinary skill in the art would not have found it obvious to add a non-functionalized silane to composition described in Porkorny et al. As for claims 5 and 15, the optimization of the range of silane compounds is based on the teaching of Porkorny et al. stating that the amount of silane surface modifier is dependent upon several factors such as particle size, particle type, modifier molecular weight, and modifier type (Page 11, lines 39-41) and that the silane surface modifiers are used to stabilize the nanoparticles so that the particles will be well dispersed in the polymerizable resin resulting in a homogeneous composition (Page 11, lines 24-25). This teaching provides evidence for the amount of the silane compounds to be an optimizable result-effective variable. The invention of Wu et al. is not being modified nor is it being bodily incorporated into the composition of Porkorny et al. These arguments are unpersuasive.
As for the rejection of claims 11, 12, 14, 16, and 17 over Nagvekar et al. in view of Yajima, applicant argues that Yajima is not directed toward low-viscosity nanoparticle inks, that there is no suggestion to substitute Yajima’s silane into Navekar et al.’s ink, and that there is no teaching of the desired viscosity measurements. These arguments are unpersuasive. First, as stated above, Nagvekar et al. and Yajima are analogous art because they are from the same field of endeavor, namely that of resin compositions comprising urethane acrylate oligomers and surface modified inorganic particles that are used as an ink/coating. It is not necessary for Yajima to be used for the exact same purpose as that of Nagvekar et al. Second, as for the stated reasoning of why one of ordinary skill in the art would be motivated to use the silane of Yajima in the composition of Nagvekar et al., this reasoning was not derived from the instant specification. It is well-known in the art in general that silane compounds can be used as coupling agents to help disperse inorganic particles throughout a composition. Moreover, Porkorny et al. teaches that the silane surface modifiers are used to stabilize the nanoparticles so that the particles will be well dispersed in the polymerizable resin resulting in a homogeneous composition (Page 11, lines 24-25). Therefore, this knowledge was not derived from applicant’s specification. Third, as for no teaching of the desired viscosity measurements, applicant reiterates that the instant invention has achieved unexpected results in this regard. As explained above, the data presented is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
Prosecution Insights