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 .
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Claims 6-7, 9-15, 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group/species, there being no allowable generic or linking claim.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
Objection over Claim 1, and its dependents, is overcome by amendment
Response to arguments/amendments
Applicant argues McAlvin does not meet the new requirements of the claims, the Examiner agrees and withdraws McAlvin. However, new positions are set forth below in light of the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1, and its dependents, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “free of urethane (meth)acrylate compounds” is deemed new matter. It is not supported by the originally filed written description. The only recitation of urethane (meth)acrylates is in the background when discussing ‘340. This is not sufficient to show that Applicant desired urethane (meth)acrylates nor wished to exclude urethane (meth)acrylates. Thus the new limitation is found to be supported by the originally filed written description.
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.
Rejection over Claim(s) 1-5, 8, 18-20 under 35 U.S.C. 103 as being unpatentable over McAlvin (US 2004/0220340) is withdrawn due to amendment, McAlvin requires urethane (meth)acrylate monomers.
Claim(s) 1-5, 8, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishino (US 4952652).
Nishino discloses unsaturated polyester compositions and molded compositions therefrom (title). The compositions comprise an unsaturated polyester resin (a) (Column 2 lines 1-2) made from monomers such as dicyclopentadiene, maleic acid, itaconic acid, propylene glycol and butanediol (Column 2 lines 28-45) [meeting reagents a, b, c and d of claim 1]. The composition further comprises an olefinic unsaturated monomer (b) (Column 2 line 2) such as acrylic butylester, methacrylic butylester (also known as butyl methacrylate) [meeting the acrylate compound of claim 1] and those of Column 2 lines 60-69. Resin B of the Examples of Column 4 comprises: 0.7 mol PPG, 0.3 mol DCPD and 1 mol maleic acid, which converts to 19% DCPD, 25% PPG and 55.6% maleic acid (using 76 g/mol PPG, 132 g/mol DCPD and 116 g/mol maleic acid, converts to 53.2g PPG (0.7*76 = 53.6), 39.6g (0.3*132=39.6) DCDD, 116g maleic acid (1*116=116) for a total in grams of 208.8, and, 53.2/208.8 = 25% PPG)
Since maleic acid and itaconic acid are both disclosed in Column 2 lines 32-33 as options for the carboxylic acid of the polyester, using both in a 50:50 mix is immediately envisaged, embracing using 27.8 wt% each of maleic and itaconic acids. See In re Kerkhoven wherein combining two elements known suitable for the same intended use is prima facie obvious.
No urethane acrylates are required therein. Elements above embrace (in light of picking both maleic acid and itaconic acid in the wt% above) and thusly render prima facie obvious the requirements of claim 1. 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 is a product by process limitation the process of making not being pertinent unless Applicant shows a distinct product is produced. Claim 2 is thusly rejected. VOCs are those compounds of claim 4, and, butyl acrylate may be selected, thus no VOCs may be used, as required by claims 3 and 4. The diluent may be used in amounts of 20-60% of unsaturated polyester resin a (Column 3 line 1), as required by claim 5, DCPD is exemplified (as calculated above) in an amount of 19 wt%, as required by claim 8, elements above meet claims 18-19 and embrace the requirements of claim 20.
Claim(s) 1-5, 8, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishino in view of Parish (US 2016/0326309).
Nishino includes elements as set forth above. Nishino discloses the use of diluent/crosslinking agents such as butyl acrylate and those others of Column 2 lines 60-69 but Nishino does not disclose the use of the elected species of butanediol di(meth)acrylate.
Parish discloses coating compositions comprising an unsaturated polyester resin (abstract) and a reactive multifunctional methacrylate monomer (abstract). The composition is substantially free of styrene (abstract). Parish discloses that unexpectedly superior results are achieved when using an unsaturated polyester compound that are substantially styrene free and comprise multifunctional monomer diluents and monofunctional methacrylates [0004]. Parish discloses the multifunctional monomer to be 1,4-butanediol diacrylate [0024] and the monofunctional (meth)acrylates to be those of [0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace the styrene-type diluents in Nishino with the use of multifunctional monomer diluents such as 1,4-butanediol diacrylate and monofunctional (meth)acrylates, as taught by Parish, in order to achieve unexpectedly superior composition results compared to those using styrene diluents.
Elements above alternatively meet claims 1-5, 8, 18-20.
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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