DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/18/26 has been entered.
Election/Restrictions
As previously set forth: Applicant's election with traverse of Group I, itaconic acid, maleic anhydride, DCPD, propylene glycol, no additional monomers, BDDMA, sequence of claim 2, VOC of claim 3 (which is obtained in the absence of volatile solvents), no additional itaconate compounds, no transition metal, no other fillers or additives in the reply filed on 7/11/25 is acknowledged. For response to the traversal see the action dated 8/21/25
Claims 6-7, 9-15, 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/11/25.
Priority
As previously set forth: The claims have an effective date of the foreign priority filed 2/24/20
Claim Objections
Claim 1, and its dependents, is objected to because of the following informalities:
Glycerol should not be capitalized
“furfuryl 10 (meth)acrylate” should be “furfuryl (meth)acrylate”
butanedioldi(meth)acrylate should be “butanediol di(meth)acrylate)
tripropyleneglycol 15 di(meth)acrylate should be “tripropylene di(meth)acrylate”
The “10” and “15” in b) and c) above seem to mistakenly come from the line numbers
Appropriate correction is required.
Response to arguments/amendments
Applicant argues McAlvin requires urethane (meth)acrylates whereas claim 1 defines a composition that relies on a specifically defined and closed list of methacrylates that do not include urethane (meth)acrylates. Applicant argues this is structurally distinct from any composition of McAlvin. Applicant argues that individual components are described does not render obvious every specific combination and McAlvin does not disclose using itaconic acid/anhydride at a level of at least 20%. Applicant argues there is no motivation to remove urethane (meth)acrylates from McAlvin to meet the instant claims.
The Examiner disagrees. The claims have comprising language, and thusly they do not exclude extra components like the urethane (meth)acrylate of McAlvin. Because of this comprising language, there is no structural distinction found between the claims and McAlvin. Arguments drawn to this component are thusly not persuasive. Regarding the wt%, as previously set forth, a 50:50 ratio is immediately envisaged when using a mixture of 2 things. Further, since any of the monomers can be used alone (e.g. 100%) one expects to be able to use any range from 0-100 for any monomer discussed therein. Though the ‘at least 20 wt% of itaconic acid/anhydride’ is not explicitly disclosed, it is certainly embraced and rendered prima facie by the reference. As such Applicant’s arguments are not found persuasive and the rejection stands as set forth below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5, 8, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over McAlvin (US 2004/0220340).
Elements of this rejection are as previously set forth, reiterated below in its entirety. Regarding amendments to claim 1, the previously set forth use of 1,4-butanediol diacrylate meets the new acrylate compound species of the claim.
McAlvin discloses styrene free unsaturated polyester resin compositions (title). The composition comprises 1) an unsaturated polyester, 2) a urethane methacrylate, 3) a hydroxy functionalized methacrylate and 4) a multifunctional (meth)acrylate monomer [0025].
The unsaturated polyester may comprise acids such as maleic anhydride and itaconic acid [0029] and alcohols such as propylene glycol [0030]. Dicyclopentadiene may optionally be used to form nadic ester containing polymers (this is the same product as seemingly desired by the mixture of claim 2 although claim 2 does not require a reaction between components. The examples in the specification show such), in amounts up to 45 wt% of the polyester mixture [0031]. The Examples of McAlvin use about a 50:50 mix of acids to alcohols, when using such one can achieve a mix of maleic anhydride and itaconic acid wherein both are 50% of the acid mixture (meeting the at least 10 wt% of a) of claim 1). Though a 50:50 mix immediately envisaged it is noted since any of the monomers can be used alone (e.g. 100%) one expects to use any range from 0-100 for any monomer in the mixture. The above meets the polyester requirements of claim 1.
The multifunctional monomer may be 1,4-butanediol diacrylate, or the methacrylate thereof [0039] (meeting the (meth)acrylate compound of claim 1 and the elected species).
Elements above meet the requirements of claim 1 wherein since there is picking and choosing to achieve the combination of a), b) and c) species, and, wt% itaconic acid, a prima facie case of obviousness exists. Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Claim 2 does not require any reaction between b), c) and optionally a) thus, the order of mixing is found to be prima facie obvious unless Applicant shows a distinct product is produced. Further, as discussed above, the reaction between DCPD and maleic anhydride to form nadic-ester units is disclosed in McAlvin and would give the same product as claimed.
No styrene (or other volatiles) are required, as required by claims 3 and 4. The (meth)acrylate component is added in amounts of 5-40 wt% [0039], as required by claim 5. Elements above meet claim 8. Elements above meet 18, 19, 20.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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