DETAILED ACTION
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
Applicant's election with traverse of Group I (claims 1-8 and 10) in the reply filed on 02/09/2025 is acknowledged. The traversal is on the ground(s) that the Examiner’s restriction lacks “serious burden”. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in the Restriction requirement mailed 12/09/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/09/2025.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 07/11/2022 is considered and signed IDS form is attached.
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.
Claims 1-8 and 10 are 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.
Claim 1 recites the limitation "the elastic attached base coat" in line 3 and “the top coat” in line 3. There is insufficient antecedent basis for these limitations in the claim. This rejection affects all the dependent claims.
Claim 1 recites “elastic attached base coat”. The scope of the claim is confusing given that it is not clear if this refers to a base coat attached by elastic or to a base coat that comprises elastic material. For examination purposes, the claim is interpreted as a base coat that comprises elastic material. This rejection affects all the dependent claims.
Claim 3 recites amount of various components in “%”. The scope of the claim is confusing given that it is not clear if the amount is in “wt%” or “mol%” or “vol%”.
Claim 4 recites amount of various components in “%”. The scope of the claim is confusing given that it is not clear if the amount is in “wt%” or “mol%” or “vol%”.
Claim 5, line 5 recites “preferably”. The scope of the claim is confusing since the use of the phrase “preferably” makes it unclear as to whether the claim actually requires the limitations following this phrase.
Claims 6 and 7 recite “epoxy diluent containing long chain segment”. The scope of the claim is confusing given that it is not clear what is meant by long chain segment and how long the chain must be to be considered as a long chain segment.
Claim 7, line 3 recites “alkyl (C12) glycidyl ether”. The scope of the claim is confusing given that it is not clear if the claim requires any alkyl glycidyl ether or C-12 alkyl glycidyl ether.
Claim 10, line 1 recites “The product” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li I et al. (CN 110724296 A cited in IDS). It is noted that the disclosures of Li I et al. are based on a machine translation of the reference (cited in IDS).
Regarding claim 1, Li I et al. disclose PVC pre-coated film (see paragraph 0001) comprising PVC transparent film layer and radiation cured coating where the radiation cured coating comprises an elastic primer layer (elastic attached base coat) and a topcoat layer (see paragraph 0008), i.e. double coated. After applying the elastic primer layer, LED-UV curing is performed and after applying the topcoat layer radiation curing is performed (see paragraphs 0023 and 0025). Accordingly, Li et al. disclose a double-coated radiation curing PVC pre-coating material.
Regarding claim 2, Li I et al. disclose a functional layer between the elastic primer layer and the topcoat layer (see paragraph 0008).
Regarding claim 10, Li I et al. disclose PVC-precoated film (double-coated radiation curing PVC pre-coating material) used for PVC flooring (see paragraph 0151). That is, Li I et al. disclose a product comprising the double-coated radiation curing PVC pre-coating material.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Li II et al. (US 2021/0154986 A1).
Regarding claims 1 and 10, Li II et al. disclose a composite material comprising a PVC pre-coating film, wherein the PVC pre-coating film comprising a PVC transparent film and a radiation-cured coating (see Abstract). The radiation-cured coating comprises a top coating comprising an elastic top coating (elastic attached base coat) and an easy-to-clean top coating (top coat) (see paragraph 0013). The PVC precoating film reads on a double-coated radiation curing PVC pre-coating film as presently claimed. The composite material reads on a product as presently claimed.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Li I et al. (CN 110724296 A cited in IDS) as applied to claim 1 above, taken in view of evidence by Malone (US 2009/0308534 A1).
Regarding claim 3, Li I et al. disclose the double-coated radiation curing PVC pre-coating material as set forth above. Further, Li I et al. disclose the elastic primer layer (elastic attached base coat) comprises 30 to 60 parts of difunctional polyurethane acrylate resin (bifunctional urethane acrylate), 20 to 40 parts of difunctional acrylate monomer, 10 to 15 parts of monofunctional acrylate and 0 to 5 parts of initiator (see paragraph 0010). Accordingly, the amount of bifunctional urethane acrylate is 46 to 52 wt% (46 = 30/65 x 100 and 52 = 60/115 x 100), the amount of initiator is 0 to 4 wt% (0 = 0/65 x 100 and 4 = 5/115 x 100) and the amount of monofunctional acrylate is 9 to 23 to wt% (9 = 10/115 x 100 and 23 = 15/65 x 100). The monofunctional acrylate can be hydroxyethyl methacrylate (see paragraph 0014). As evidenced by Malone, hydroxethyl methacrylate is reactive diluent (see paragraph 0084).
In light of the overlap between the claimed double-coated radiation curing PVC pre-coating material and that disclosed by Li I et al., it would have been obvious to one of ordinary skill in the art to use a double-coated radiation curing PVC pre-coating material that is both disclosed by Li I et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Li I et al. disclose that the difunctional polyurethane acrylate resin (bifunctional urethane acrylate) is prepared from a polyol comprising polyol A such as polycaprolactone diol (PCL) (macromolecular dihydric alcohol) and polyol B such as butane diol (micromolecular dihydric alcohol), isocyanate and hydroxyl-containing monomer (see paragraphs 0013, 0015, 0017, 0018).
Claims 3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Li I et al. (CN 110724296 A cited in IDS) as applied to claim 1 above, further in view of Shiraki et al. (4,507,458), taken in view of evidence by Ho et al. (International Journal of Polymer Science, 2022).
Regarding claims 3 and 6-8, Li I et al. disclose the double-coated radiation curing PVC pre-coating material as set forth above. Further, Li I et al. disclose the elastic primer layer (elastic attached base coat) comprises 30 to 60 parts of difunctional polyurethane acrylate resin (bifunctional urethane acrylate), 20 to 40 parts of difunctional acrylate monomer, 10 to 15 parts of monofunctional acrylate and 0 to 5 parts of initiator (see paragraph 0010). Accordingly, the amount of bifunctional urethane acrylate is 46 to 52 wt% (46 = 30/65 x 100 and 52 = 60/115 x 100) and the amount of initiator is 0 to 4 wt% (0 = 0/65 x 100 and 4 = 5/115 x 100).
Li I et al. do not disclose the reactive diluent.
Shiraki et al. disclose an urethane acrylate composition comprising an urethane acrylate, not more than 20 wt% of a reactive diluent that produces tough crosslinked products and tributyl amine (catalyst) (see Abstract and col. 3, lines 51-61 and col. 4, lines 44-45). The reactive diluent can be methacrylic-acid adduct of propylene glycol diglycidyl ether (see col. 3, lines 63-65). The methacrylic-acid adduct of propylene glycol diglycidyl ether reads on a reactive diluent as prepared through the reaction between propylene glycol diglycidyl ether (epoxy diluent containing long chain segment) and methacrylic acid under the action of catalyst. While Shiraki et al. do not explicitly disclose methacrylate monomer, as evidenced by Ho et al., the acrylate monomer is formed in situ when acrylic acid reacts with trialkyl amine (catalyst) (see page 5, Figure 4). Therefore, the reaction of the methacrylic acid with propylene glycol diglycidyl ether in presence of tributyl amine would produce methacrylate monomer in situ, which would then react with the propylene glycol diglycidyl ether to produce reactive diluent as presently claimed.
Although, there is no explicit disclosure that the reactive diluent is prepared through the reaction between epoxy diluent containing long chain segment (propylene glycol diglycidyl ether) and acrylate monomer under the action of catalyst, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shiraki et al. meets the requirements of the claimed product, Shiraki et al. clearly meet the requirements of present claim.
In light of motivation for using reactive diluent such disclosed by Shiraki et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use not more than 20 wt% of the reactive diluent such in elastic primer layer (elastic attached base coat) in Li I et al. in order to produce tough crosslinked products, and thereby arrive at the claimed invention.
Regarding claim 5, Li I et al. disclose that the difunctional polyurethane acrylate resin (bifunctional urethane acrylate) is prepared from a polyol comprising polyol A such as polycaprolactone diol (PCL) (macromolecular dihydric alcohol) and polyol B such as butane diol (micromolecular dihydric alcohol), isocyanate and hydroxyl-containing monomer (see paragraphs 0013, 0015, 0017, 0018).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li I et al. (CN 110724296 A cited in IDS) as applied to claim 1 above, further in view of Kusano et al. (JP 2004182950 A) and Chihara et al. (JP 2001129937 A). It is noted that the disclosures of Kusano et al. and Chihara et al. are based on a machine translation of the reference which is included in this action.
Regarding claim 4, Li I et al. disclose the double-coated radiation curing PVC pre-coating material as set forth above.
Li I et al. do not disclose the top coat layer as presently claimed.
Kusano et al. disclose an active energy ray curable coating composition for flooring material comprising a topcoat material that prevents slippage and controls blocking resistance (see Abstract). The topcoat comprises 40 to 80 wt% of acrylate oligomer such as urethane acrylate oligomer (see page 4, paragraph 1 and page 5-6, bridging paragraph), 10 to 40 wt% of reactive diluent (see pages 6-7, bridging paragraph) and initiator (pages 6-7, bridging paragraph). The topcoat is applied after applying an undercoat or intermediate coat on a substrate (see pages 6-7, bridging paragraph).
In light of motivation for using topcoat material comprising 40 to 80 wt% of urethane acrylate oligomer and 10 to 40 wt% of reactive diluent disclosed by Kusano et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use topcoat material comprising 40 to 80 wt% of urethane acrylate oligomer and 10 to 40 wt% of reactive diluent of Kusano et al. as the top coat layer in Li et al. in order to prevent slippage and control blocking resistance, and thereby arrive at the claimed invention.
Li I et al. in view of Kusano et al. do not disclose the top coat layer comprises urethane acrylate oligomer comprising bifunctional urethane acrylate and hexafunctional urethane acrylate, do not disclose filler and do not disclose amount of initiator.
Chihara et al. disclose a decorative sheet excellent in anti-staining properties, chemical resistance, scratch resistance, impact resistance and weatherability (see Abstract). The decorative sheet has a curable resin layer comprising a mixture consisting of 30 to 70 wt% of urethane acrylate oligomer (A) having two radical polymerizable unsaturated groups (bifunctional urethane acrylate) and 30 to 70 wt% of urethane acrylate oligomer (B) having 3-15 radical polymerizable unsaturated groups (hexafunctional urethane acrylate) (see Abstract). This blending amount of urethane acrylate oligomer (A) and urethane acrylate oligomer (B) provide flexibility, ductility, impact resistance and scratch resistance (see paragraph 0024). The curable resin layer also comprises inorganic particles (hard filler) in amount of 5 to 30 wt% to provide scratch resistance, good coating suitability and smooth feel (see paragraph 0025). The curable resin layer also comprises organic peroxide (initiator) in amount of 1 to 5 wt% for hardening (see paragraph 0028). The decorative sheet can be used for flooring (see paragraph 0075).
In light of motivation for using curable resin layer disclosed by Chihara et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a mixture consisting of 30 to 70 wt% of urethane acrylate oligomer (A) having two radical polymerizable unsaturated groups and 30 to 70 wt% of urethane acrylate oligomer (B) having 3-15 radical polymerizable unsaturated groups as the urethane acrylate oligomer, 5 to 30 wt% of hard filler and 1 to 5 wt% of initiator in the top coat layer of Li I et al. in view of Kusano et al. and Chihara et al. in order to provide anti-staining properties, chemical resistance, scratch resistance, impact resistance, weatherability, flexibility, ductility, coating suitability, smooth feel and hardening, and thereby arrive at the claimed invention.
Accordingly, Li I et al. in view of Kusano et al. and Chihara et al. disclose top coat layer comprising a mixture of 30 to 70 wt% of urethane acrylate oligomer (A) having two radical polymerizable unsaturated groups and 30 to 70 wt% of urethane acrylate oligomer (B). Therefore, based on 40 to 80 wt% of urethane acrylate, the amount of urethane acrylate (A) (bifunctional urethane acrylate) is 12 to 56 wt% and the amount of urethane acrylate (B) (hexafunctional urethane acrylate) is 12 to 56 wt% in the top coat layer (12 = 40 x 30 and 56 = 80 x 70).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Li II et al. (US 2021/0154986 A1) as applied to claim 1 above, taken in view of evidence by Malone (US 2009/0308534 A1).
Regarding claim 3, Li II et al. disclose the double-coated radiation curing PVC pre-coating material as presently claimed. Further, Li II et al. disclose the elastic top coating (elastic attached base coat) comprises 10 to 60 parts of bifunctional polyurethane acrylic resin (bifunctional urethane acrylate), 10 to 60 parts of acrylate monomers, 2 to 7 parts of initiators and 3 to 40 parts of additives (see paragraph 0013). Accordingly, the amount of bifunctional polyurethane acrylic resin is 33 to 37 wt% (33 = 10/30 x 100 and 37 = 60/162 x 100), the amount of initiator is 1.2 to 23 wt% (2/162 x 100 and 23 = 7/30 x 100) and the amount of acrylate monomers is 33 to 37 wt% (33 = 10/30 x 100 and 37 = 60/162 x 100). The acrylate monomer can be hydroxyethyl methacrylate (see paragraph 0040). As evidenced by Malone, hydroxethyl methacrylate is reactive diluent (see paragraph 0084).
In light of the overlap between the claimed double-coated radiation curing PVC pre-coating material and that disclosed by Li I et al., it would have been obvious to one of ordinary skill in the art to use a double-coated radiation curing PVC pre-coating material that is both disclosed by Li I et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Li II et al. disclose the bifunctional polyurethane resin is prepared from diol such as polycaprolactone diol (PCL) (macromolecular dihydric alcohol), isocyanate and monohydroxy acrylate monomer (hydroxyl-containing acrylate monomer) (end-capping) and micromolecular diol (chain extension) (see paragraphs 0068-0070).
Claims 3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Li II et al. (US 2021/0154986 A1) as applied to claim 1 above, further in view of Shiraki et al. (4,507,458), taken in view of evidence by Ho et al. (International Journal of Polymer Science, 2022).
Regarding claims 3 and 6-8, Li II et al. disclose the double-coated radiation curing PVC pre-coating material as presently claimed. Further, Li II et al. disclose the elastic top coating (elastic attached base coat) comprises 10 to 60 parts of bifunctional polyurethane acrylic resin (bifunctional urethane acrylate), 10 to 60 parts of monomers acrylate monomers, 2 to 7 parts of initiators and 3 to 40 parts of additives (see paragraph 0013). Accordingly, the amount of bifunctional polyurethane acrylic resin is 33 to 37 wt% (33 = 10/30 x 100 and 37 = 60/162 x 100) and the amount of initiator is 1.2 to 23 wt% (2/162 x 100 and 23 = 7/30 x 100)
Li II et al. do not disclose reactive diluent.
Shiraki et al. disclose an urethane acrylate composition comprising an urethane acrylate, not more than 20 wt% of a reactive diluent that produces tough crosslinked products and tributyl amine (catalyst) (see Abstract and col. 3, lines 51-61 and col. 4, lines 44-45). The reactive diluent can be methacrylic-acid adduct of propylene glycol diglycidyl ether (see col. 3, lines 63-65). The methacrylic-acid adduct of propylene glycol diglycidyl ether reads on a reactive diluent as prepared through the reaction between propylene glycol diglycidyl ether (epoxy diluent containing long chain segment) and methacrylic acid under the action of catalyst. While Shiraki et al. do not explicitly disclose methacrylate monomer, as evidenced by Ho et al., the acrylate monomer is formed in situ when acrylic acid reacts with trialkyl amine (catalyst) to produce acrylate (see page 5, Figure 4). Therefore, the reaction of the methacrylic acid with propylene glycol diglycidyl ether in presence of tributyl amine would produce methacrylate monomer in situ, which would then react with the propylene glycol diglycidyl ether to produce reactive diluent as presently claimed.
Although, there is no explicit disclosure that the reactive diluent is prepared through the reaction between epoxy diluent containing long chain segment (propylene glycol diglycidyl ether) and acrylate monomer under the action of catalyst, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shiraki et al. meets the requirements of the claimed product, Shiraki et al. clearly meet the requirements of present claim.
In light of motivation for using reactive diluent disclosed by Shiraki et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use not more than 20 wt% of the reactive diluent in elastic top coating (elastic attached base coat) in Li II et al. in order to produce tough crosslinked products, and thereby arrive at the claimed invention.
Regarding claim 5, Li II et al. disclose the bifunctional polyurethane resin is prepared from diol such as polycaprolactone diol (PCL) (macromolecular dihydric alcohol), isocyanate and monohydroxy acrylate monomer (hydroxyl-containing acrylate monomer) (end-capping) and micromolecular diol (chain extension) (see paragraphs 0068-0070).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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, Callie Shosho can be reached at 571-272-1123. 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.
/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights