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 .
Election/Restrictions
Claim 23 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2025.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-5, 7, 13, 18 and 19 are rejected under 35 U.S.C. 102(a1) and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2020/001835 A1 (Gupta) as evidenced by US 2017/0369696 (Inoubli) and US 2018/0291218 (Umebayashi).
Gupta discloses a curable composition comprising:
(a) 0.5 to 80 wt.% of a multistage polymer (MSP) comprising a first stage (A) having a glass transition temperature (Tg) less than 10°C (p4:30) and a second stage (B) preferably having a Tg of at least 60°C (p7:6-8) (meets Applicants’ multistage polymer (MP1) comprising stages (SA1) and (SA2) and overlaps content thereof);
(b) 5 to 80 wt.% of a (meth)acrylic polymer (P1) having a Tg of at least 30°C (p13:28-29) (meets Applicants’ thermoplastic polymer (B1) and overlaps content thereof);
(c) 10 to 95 wt.% of at least one polymerizing organic substance inclusive of 1-6-hexanediol diacrylate (meets Applicants’ methacrylate monomer (M1) and overlaps content thereof) and difunctional urethane acrylate CN996 which has a weight average molecular weight (Mw) of 2850 as evidenced by Umebayashi [0302] (meets Applicants’ oligomer (O1) and overlaps content thereof); and
(d) a free radical initiator (meets Applicants’ radical initiator (P2)) (e.g., abstract, Tables, examples, claims).
As to claim 1, Gupta sets forth working embodiment F1-MSP (Tables 1-2) which meets all the presently claimed requirements in terms of the types of material used and their contents. Specifically, F1-MSP comprises the F1 formulation per Table 2 and 10 wt.% of the multi-stage (MSP) as prepared by Inoubli (p41:4-7). Notably, Inoubli’s MSP comprises a first stage (A) having a Tg of less than 10°C (meets Applicants’ (MP1) stage (SAI)), a second stage (B) having a Tg of at least 60°C (meets Applicants’ (MP1) stage (SA2)) and a third stage (C) having a Tg of at least 30°C (meets Applicants’ polymer (B1)). Gupta’s F1-MSP therefore comprises, based on total composition:
(a) 10 wt.% of a multistage polymer comprising a first stage (A) having a Tg less than 10°C, a second stage (B) having a Tg of at least 60°C and a third stage (C) having a Tg of at least 30°C (meets Applicants’ (MP1) and (B1) and combined content thereof);
(b) ~36 wt.% (40/110) of difunctional urethane acrylate (CN996) having a Mw of 2850 as evidenced by Umebayashi (meets Applicants’ oligomer (O1) and content thereof);
(c) ~27 wt.% (30/110) of 1,6-hexanediol diacrylate + ethoxylated trimethylolpropane triacrylate (meets Applicants’ methacrylate monomer (M1) and content thereof);
(d) ~ 27 wt.% of cyclic trimethylolpropane formal acrylate (not precluded from the present “comprising” (P1) composition) and
(e) a free radical initiator (meets Applicants’ radical initiator (P2)).
As to claim 2, Gupta’s exemplified 1,6-hexanediol diacrylate and ethoxylated trimethylolpropane triacrylate monomers have more than one (meth)acrylate group.
As to claims 3 and 4, Gupta’s exemplified 1,6-hexanediol diacrylate meets formulas (I) and (II) when x is 0, L is a divalent (CH2)6 alkylene group, R1 is H and y is 2.
As to claim 5, Gupta’s exemplified ethoxylated trimethylolpropane triacrylate meets formula (III) when x is 0, L is a trivalent alkylene group, R1 is H and y is 3.
As to claim 7, Gupta exemplifies a difunctional urethane acrylate.
As to claim 13, Gupta uses 0.5 phr (Table 1).
As to claims 18 and 19, Gupta discloses forming cured products by polymerizing the curable composition.
Gupta anticipates the above-rejected claims in that it is reasonably believed that the present claims do not preclude the cyclic trimethylolpropane formal acrylate used in F1-MSP. Notably, the presently claimed reactive diluent is not specifically defined. In the alternative, it would have been obvious to one having ordinary skill in the art to exclude said cyclic trimethylolpropane formal acrylate from the F1 formulation as it is not a required component of the composition.
Claim Rejections - 35 USC § 103
Claims 9, 11, 12 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/001835 A1 (Gupta) as evidenced by US 2017/0369696 (Inoubli) and US 2018/0291218 (Umebayashi) described hereinabove.
As to claim 9, it is within the purview of Gupta’s inventive disclosure (p27:26-p28-5), and obvious to one having ordinary skill in the art, to formulate curable compositions containing 5 to 30 wt.% of the (meth)acrylic polymer (P1) based on the total combined weight of the multistage polymer (MSP) and (meth)acrylic polymer (P1), in accordance with the desired dispersion.
As to claim 11, it is within the purview of Gupta’s inventive disclosure (p24:16-21), and obvious to one having ordinary skill in the art, to use a peroxide as the initiator.
As to claim 12, is within the purview of Gupta’s inventive disclosure (p24:22-30), and obvious to one having ordinary skill in the art, to further include an accelerator such as a tertiary amine for its expected additive effect.
As to claim 20, it is within the purview of Gupta’s inventive disclosure to manufacture a variety of different types of articles inclusive of laminated or coated articles. It would have been obvious to one having ordinary skill in the art to produce articles having any desired thickness (inclusive of that presently claimed) in accordance with the ultimate end use and properties desired.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/001835 (Gupta) as evidenced by US 2017/0369696 (Inoubli) and US 2018/0291218 (Umebayashi) described hereinabove further in view of JP 2015187187 A (Kotani) abstract and machine translation.
As to claims 14-17, it is within the purview of Gupta’s inventive disclosure (p25:9), and obvious to one having ordinary skill in the art, to further include any conventional filler. Kotani (page 14) discloses that the inclusion of inorganic fillers such as silica, calcium carbonate and reinforcing fibers such as glass fibers (in preferred amounts of up to 80 pbw) imparts mechanical strength and abrasion resistance to similarly-constituted curable compositions comprising (meth)acrylic monomers. Thus, it would have been obvious to one having ordinary skill in the art to further include an inorganic filler or reinforcing fiber per Kotani into Gupta’s curable composition for its expected additive effect in accordance with the ultimate properties desired.
Response to Arguments
Applicant’s amendments filed January 27, 2026 have been fully considered and are persuasive in overcoming the 35 USC 102 over US 2013/0289164 (Hilf). However, upon further consideration, a new ground(s) of rejection is made in view of WO 2020/001835 (Gupta).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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, Heidi Kelley can be reached at 571-270-1831. 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.
/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
Prosecution Insights