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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 May 2026 has been entered.
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.
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.
Claim(s) 1-12, 15-18, 20, 22, 24-26, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakata et al. (JP H07-239548), wherein the machine English translation is used for citation, in view of Nakamura et al. (EP 0263366A2), wherein the machine English translation is used for citation.
Regarding claims 1-5, 8-11, 25, and 29; Sakata et al. teaches, in a preferred embodiment, an elastic material comprising a 100 parts by weight of a urethane (meth)acrylate prepared from 1 mol of polypropylene glycol diol (number average molecular weight 2000), 1 mol of polytetramethylene glycol diol (number average molecular weight 2000), 2.4 mol of tolylene diisocyanate, and polypropylene glycol monomethacrylate (69% by weight, as calculated by Examiner; instant a) and 26 parts by weight of lauryl methacrylate, 17 parts by weight of diethylene glycol-2-ethylhexyl ether acrylate, 2.1 parts by weight of tetraethylene glycol dimethacrylate, 1.4 parts by weight of trimethylolpropane trimethacrylate (31% by weight, as calculated by Examiner; instant b) [Ex1-2; 0035-0036; 0039]. Sakata et al. teaches a rebound resilience of 43% [0039].
Sakata et al. teaches employing the polyether polyol (e.g. polyoxy tetramethylene glycol), however fails to explicitly disclose wherein the weight content of the oxybutylene units in the urethane (meth)acrylate is at least 45% based on the total weight of the urethane (meth)acrylate, preferably 50-95% (claim 2), and more preferably 60-95% (claim 29). The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. Nakamura et al. teaches a photoresin printing plate prepared from a liquid photosensitive resin composition comprising polyurethane prepolymer prepared from polyether diols of polytetramethylene glycol (i.e. oxybutylene) [0018-0021]. Nakamura et al. teaches the use of polytetra-methylene glycol as a reactant for producing the unsaturated polyurethane results in a printing plate having a high impact resilience and a low surface tack [0024]; therefore, it is preferable that at least 20% by weight of the polyether diol component be comprised of polytetramethylene glycol [0024]. At the time of filing, a person of ordinary skill in the art, would have found it obvious optimize the oxybutylene content to 60% (greater than 20% by weight), and would have been motivated to do so in order to achieve a desired impact resilience (high) and surface tack (low), as suggested by Nakamura et al..
Regarding claim 6; Sakata et al. teaches the number average molecular weight of the polyurethane is 5000 to 30000 [0014].
Regarding claim 7; Sakata et al. teaches the number average molecular weight of the polyurethane is within a range of 5000 to 30000 [0014], however fails to explicitly teach a range of from 5500 to 20000. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to use a polyurethane having a number average molecular weight of 5500 to 20000, and would have been motivated to do so because Sakata et al. teaches it suitable that the polyurethane has a molecular weight anywhere between 5000 and 30000 (e.g. 12500).
Regarding claims 12-15, 17, and 18; Sakata et al. teaches suitable polyisocyanate to be employed in the present invention include hexamethylene diisocyanate and suitable monomers include isobornyl acrylate (Tg greater than 20°C) [0019]. Cheng et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 16; Sakata et al. teaches the mono(meth)acrylates of the component b in the preferred embodiment equates to 92.4% of the total (meth)acrylates (as calculated by Examiner) [Ex1-2].
Regarding claim 20; Sakata et al. teaches a preferred embodiment further comprising 2-dimethoxy-2-phenylacetophenone (initiator) [0051].
Regarding claim 22; Sakata et al. teaches a liquid photosensitive resin [0039].
Regarding claim 24 and 26; Sakata et al. fails to explicitly disclose an elongation greater than 300% and a Shore A hardness of at least 15. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. elongation and Shore A hardness, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakata et al. (JP H07-239548), wherein the machine English translation is used for citation, in view of Nakamura et al. (EP 0263366A2), wherein the machine English translation is used for citation.
Regarding claim 27; Sakata et al. teaches, in a preferred embodiment, a method of making an elastic material comprising a 100 parts by weight of a urethane (meth)acrylate prepared from 1 mol of polypropylene glycol diol (number average molecular weight 2000), 1 mol of polytetramethylene glycol diol (number average molecular weight 2000), 2.4 mol of tolylene diisocyanate, and polypropylene glycol monomethacrylate (69% by weight, as calculated by Examiner; instant a) and 26 parts by weight of lauryl methacrylate, 17 parts by weight of diethylene glycol-2-ethylhexyl ether acrylate, 2.1 parts by weight of tetraethylene glycol dimethacrylate, 1.4 parts by weight of trimethylolpropane trimethacrylate (31% by weight, as calculated by Examiner; instant b) [Ex1-2; 0035-0036; 0039]. Sakata et al. teaches a rebound resilience of 43% [0039].
Sakata et al. teaches employing the polyether polyol (e.g. polyoxy tetramethylene glycol), however fails to explicitly disclose wherein the weight content of the oxybutylene units in the urethane (meth)acrylate is at least 45% based on the total weight of the urethane (meth)acrylate, preferably 50-95% (claim 2), and more preferably 60-95% (claim 29). The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. Nakamura et al. teaches a photoresin printing plate prepared from a liquid photosensitive resin composition comprising polyurethane prepolymer prepared from polyether diols of polytetramethylene glycol (i.e. oxybutylene) [0018-0021]. Nakamura et al. teaches the use of polytetra-methylene glycol as a reactant for producing the unsaturated polyurethane results in a printing plate having a high impact resilience and a low surface tack [0024]; therefore, it is preferable that at least 20% by weight of the polyether diol component be comprised of polytetramethylene glycol [0024]. At the time of filing, a person of ordinary skill in the art, would have found it obvious optimize the oxybutylene content to 60% (greater than 20% by weight), and would have been motivated to do so in order to achieve a desired impact resilience (high) and surface tack (low), as suggested by Nakamura et al..
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18, 20, 22, 24-27, and 29 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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