DETAILED ACTION
Summary
Applicant’s amendment dated 14 July 2025 is acknowledged. Claims 1-11, 13, 15, 17, 20-23, 25, 27, 29 and 32-33 are pending.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
New grounds for rejection are necessitated by applicant’s amendment dated 14 July 2025. For this reason, this action is properly made final.
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 .
Claim Rejections - 35 USC § 103
Claims 1, 3-8, 10, 13, 15, 17, 20, 23, 25, 27, 29 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over LEACH (EP-982629-A1)
Regarding Claim 1, LEACH teaches a photosensitive resin which can be used to manufacture a printing plate which exhibits high rebound resilience, tensile strength and elongation ([0015]). Here, the specification of the current invention is used as evidence that material having one or more elastomeric properties such as high elongation and high resiliency are considered elastic materials (cur spec: p. 4, lines 5-7). LEACH teaches Shore A hardness of 25-60 ([0015]) which satisfies the requirement of a Shore A hardness of at least 10. LEACH teaches rebound resilience as measured by ASTM method D2632 of 40-60% ([0020]) which satisfies the requirement of a resiliency of greater than 12%. LEACH generally teaches high elongation ([0015]). LEACH exemplifies elongation amounts of 327% ([0055]), 358% ([0056]), 334% ([0058]) and 349% ([0061]) which satisfies the requirement that the elongation is greater than 150%.
LEACH teaches that its composition is a photosensitive resin comprising a polyurethane prepolymer, a monomer or mixture of monomers having at least one acrylate or methacrylate group and a photopolymerization initiator ([0017], [0018]). LEACH teaches curing its composition with radiation ([0046]) which satisfies the requirement that the cured product is energy cured.
LEACH teaches that its polyurethane prepolymer is formed by the reaction of a polyetherdiol, or a blend of polyether diols, a molecule having at least two isocyanates, preferably a diisocyanate and a hydroxy-functionalized (meth)acrylate ([0018], Claim 1). The preference for diols and diisocyanate suggests a linear polyurethane chain, and the hydroxyalkyl methacrylate or acrylate characterized as endcapping the polyurethane ([0013]) suggests a (meth)acrylate functionality of the prepolymer of 2 which satisfies the claim. LEACH teaches that its polyurethane oligomers have a number average molecular weight of most preferably 12,000-20,000 ([0025]) which satisfies the requirement that the molecular weight of the oligomer is at least 10,000 Daltons.
LEACH teaches that its (meth)acrylate monomers are esters of (meth)acrylic acid with monohydric or polyhydric alcohols ([0030]) and prefers both monofunctional (meth)acrylates such as lauryl methacrylate and polypropylene glycol monomethacrylate ([0031]) and multi-functional (meth)acrylates such as trimethylolpropane trimethacrylate and tetraethyleneglycol dimethacrylate ([0031]). LEACH teaches that viscosity of its resin is preferably between 10,000 cps and 100,000 cps ([0032]) satisfying the requirement that the curable composition is a liquid at room temperature.
LEACH teaches in Example 1, a composition containing 70.8 g of prepolymer ([0055]), monofunctional (meth)acrylates in amounts of 14.5 g of polypropyleneglycol monomethacrylate (MW=380g/mol)([0055], [0054] for MW), 7.3 g lauryl meth(acrylate) (MW=254 g/mol) and 1.5 g N,N-dimethylaminoethyl methacrylate (MW=157 g/mol) and multifunctional (meth)acrylates in amounts of 1.4 g trimethylolpropane trimethacrylate (MW=338 g/mol) and 1.2 g tetraethylene glycol dimethacrylate (MW=330 g/mol). This calculates to a total of 96.7 g of (meth)acrylate functional components in amounts of 70.8/96.7 ≈ 73.2wt% prepolymer, (14.5+7.3+1.5)/96.7 ≈ 24.1wt% mono(meth)acrylate functional monomer and (1.4+1.2)/96.7 ≈ 2.7 wt% of the multi-functional (meth)acrylate monomer. These percentages (73.2, 24.1, 2.7) are within the 43-89.9wt%, 10-55wt% and 0.1-10wt% that are recited by the claim.
LEACH generally teaches that its urethane prepolymer is formed by endcapping the urethane with a hydroxyalkyl methacrylate or acrylate ([0013]) giving the prepolymer (meth)acrylate functionality ([0018], Claim 1) which means it can either have acrylate or methacrylate functionality. LEACH exemplifies propyleneglycol monomethacrylate for its prepolymer endcapping ([0054]) which puts methacrylate groups at the end of the prepolymer chain, but it would be obvious to one of ordinary skill in the art at the time of the filing date of the current invention to modify the examples of LEACH and use and hydroxyalkyl acrylate to react to the end of the urethane oligomer putting acrylate functionality on the ends of the prepolymer based on the teachings of the specification.
Regarding Claim 3, modified LEACH teaches the invention of Claim 1 where LEACH teaches exemplary embodiments with elongations of 327% ([0055]), 358% ([0056]), 334% ([0058]) and 349% ([0061]) which all satisfy the requirement that the elongation is 200% or greater.
Regarding Claim 4, modified LEACH teaches the invention of Claim 1 where LEACH generally teaches rebound resilience as measured by ASTM method D2632 of 40-60% ([0020]) which satisfies the requirement of a resiliency greater than 20%.
Regarding Claim 5, modified LEACH teaches the invention of Claim 1 where LEACH generally teaches Shore A hardness of 25-60 ([0015]) which satisfies the requirement that the Shore A hardness is at least 15.
Regarding Claim 6, modified LEACH teaches the invention of Claim 1. LEACH teaches that viscosity of its resin is preferably between 10,000 cps and 100,000 cps ([0032]), most preferably from 25,000-40,000 cps ([0032]) which satisfies the claim.
Regarding Claim 7, modified LEACH teaches the invention of Claim 1. LEACH teaches a photopolymerization initiator ([0034]).
Regarding Claim 8, modified LEACH teaches the invention of Claim 1 where LEACH teaches that its prepolymer oligomer is a polyurethane prepolymer ([0022]) reacted with a hydroxy(meth)acrylate ([0027]) to form a urethane prepolymer capped with acrylate functionality ([0013]). LEACH teaches that this endcapping can be done with a hydroxyalkyl methacrylate or acrylate ([0013]) with the obvious modification made in the Claim 1 rejection above use a hydroxyalkyl acrylate for the endcapping to make the polyurethane acrylate-functional.
Regarding Claim 10, modified LEACH teaches the invention of Claim 1. LEACH teaches urethane oligomers which may be formed from polypropylene oxide diols ([0011]).
Regarding Claim 13, modified LEACH teaches the invention of Claim 1 where LEACH generally teaches that its polyurethane oligomers having a number average molecular weight of most preferably 12,000-20,000 ([0025]) which satisfies the claim.
Regarding Claim 15, modified LEACH teaches the invention of Claim 1 where LEACH teaches di(meth)acrylate monomers such as hexane-1,6-diol di(meth)acrylate and di, tri, and tetraethylene glycol di(meth)acrylate ([0030]). LEACH exemplifies tetraethyleneglycol dimethacrylate ([0055]).
Regarding Claim 17, modified LEACH teaches the invention of Claim 1 where LEACH teaches di(meth)acrylate monomers such as hexane-1,6-diol di(meth)acrylate and di, tri, and tetraethylene glycol di(meth)acrylate, tripropylene glycol di(meth)acrylate, ([0030]) as well as trimethylolpropane
tri(meth)acrylate, pentaerythritol tetra(meth)acrylate, propoxylated and ethoxylated trimethylolpropane tri(meth)acrylate and oligomeric polybutadienes with (meth)acrylic acid ([0030]). LEACH exemplifies tetraethyleneglycol dimethacrylate ([0055]) and trimethylolpropane trimethacrylate ([0055]).
Regarding Claim 20, modified LEACH teaches the invention of Claim 1. LEACH teaches urethane oligomers based on polypropylene oxide and propylene oxide/ethylene oxide polyether components with a diisocyanate ([0018]) in an equivalent molar ratio ([0025]), but because the polyether component has a much larger molecular weight ([0021]), it results in exemplified urethane oligomers with more polyether functionality by weight (1349 g polyether vs 90 g diisocyanate) ([0054]). Note that the methacrylate endcapping also has polypropylene glycol functionality ([0054]). A skilled user would presume that the urethane methacrylate oligomer is hydrophilic. LEACH teaches monofunctional (meth)acrylic monomers which are hydrophobic such as 2-ethylhexyl (meth)acrylate, isodecyl (meth)acrylate and lauryl (meth)acrylate ([0030]). LEACH exemplifies lauryl methacrylate ([0055]). One would inherently expect a large difference in Hansen Solubility parameters, as much as 3 MPa1/2 or more, between the hydrophobic monomers taught by LEACH and the hydrophilic urethane methacrylate oligomer taught by LEACH.
Regarding Claim 23, modified LEACH teaches the invention of Claim 1. LEACH teaches monomers having at least one acrylate group ([0028]) including polypropyleneglycol monomethacrylate ([0031]), isodecyl (meth)acrylate, lauryl (meth)acrylate, phenoethoxy (meth)acrylate, 2-hydroxyethyl (meth)acrylate ([0030]). LEACH exemplifies polypropyleneglycol monomethacrylate (MW=380g/mol)([0055], [0054] for MW) and lauryl meth(acrylate) ([0055]).
Regarding Claim 25, modified LEACH teaches the invention of Claim 1. LEACH exemplifies N,N-diethylaminoethyl methacrylate ([0055]) which is an ethylenically unsaturated nitrogen-containing monomer.
Regarding Claim 27, modified LEACH teaches the invention of Claim 1 above where LEACH teaches monomer component may contain phenoethoxy (meth)acrylate ([0030]) which is a synonym for 2-phenoxyethyl (meth)acrylate. LEACH does not exemplify this monomer, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the examples of LEACH and include phenoethoxy (meth)acrylate based on the teachings of the specification.
Regarding Claim 29, modified LEACH teaches the invention of Claim 1. LEACH exemplifies N,N-diethylaminoethyl methacrylate ([0055]) which is an ethylenically unsaturated nitrogen-containing monomer.
Regarding Claim 33, LEACH teaches a photosensitive resin which can be used to manufacture a printing plate which exhibits high rebound resilience, tensile strength and elongation ([0015]). Here, the specification of the current invention is used as evidence that material having one or more elastomeric properties such as high elongation and high resiliency are considered elastic materials (cur spec: p. 4, lines 5-7). LEACH teaches Shore A hardness of 25-60 ([0015]) which satisfies the requirement of a Shore A hardness of at least 10. LEACH teaches rebound resilience as measured by ASTM method D2632 of 40-60% ([0020]) which satisfies the requirement of a resiliency of greater than 12%. LEACH generally teaches high elongation ([0015]). LEACH exemplifies elongation amounts of 327% ([0055]), 358% ([0056]), 334% ([0058]) and 349% ([0061]) which satisfies the requirement that the elongation is greater than 150%.
LEACH teaches that its composition is a photosensitive resin comprising a polyurethane prepolymer, a monomer or mixture of monomers having at least one acrylate or methacrylate group and a photopolymerization initiator ([0017], [0018]). LEACH teaches curing its composition with radiation ([0046]) which satisfies the requirement of a method of energy-curing the composition.
The limitations on the curable composition are the same as those recited in Claim 1. Following the arguments from the Claim 1 rejection, LEACH teaches that its polyurethane prepolymer is formed by the reaction of a polyetherdiol, or a blend of polyether diols, a molecule having at least two isocyanates, preferably a diisocyanate and a hydroxy-functionalized (meth)acrylate ([0018], Claim 1). The preference for diols and diisocyanate suggests a linear polyurethane chain, and the hydroxyalkyl methacrylate or acrylate characterized as endcapping the polyurethane ([0013]) suggests a (meth)acrylate functionality of the prepolymer of 2 which satisfies the claim. LEACH teaches that its polyurethane oligomers have a number average molecular weight of most preferably 12,000-20,000 ([0025]) which satisfies the requirement that the molecular weight of the oligomer is at least 10,000 Daltons.
LEACH teaches that its (meth)acrylate monomers are esters of (meth)acrylic acid with monohydric or polyhydric alcohols ([0030]) and prefers both monofunctional (meth)acrylates such as lauryl methacrylate and polypropylene glycol monomethacrylate ([0031]) and multi-functional (meth)acrylates such as trimethylolpropane trimethacrylate and tetraethyleneglycol dimethacrylate ([0031]). LEACH teaches that viscosity of its resin is preferably between 10,000 cps and 100,000 cps ([0032]) satisfying the requirement that the curable composition is a liquid at room temperature.
LEACH teaches in Example 1, a composition containing 70.8 g of prepolymer ([0055]), monofunctional (meth)acrylates in amounts of 14.5 g of polypropyleneglycol monomethacrylate (MW=380g/mol)([0055], [0054] for MW), 7.3 g lauryl meth(acrylate) (MW=254 g/mol) and 1.5 g N,N-dimethylaminoethyl methacrylate (MW=157 g/mol) and multifunctional (meth)acrylates in amounts of 1.4 g trimethylolpropane trimethacrylate (MW=338 g/mol) and 1.2 g tetraethylene glycol dimethacrylate (MW=330 g/mol). This calculates to a total of 96.7 g of (meth)acrylate functional components in amounts of 70.8/96.7 ≈ 73.2wt% prepolymer, (14.5+7.3+1.5)/96.7 ≈ 24.1wt% mono(meth)acrylate functional monomer and (1.4+1.2)/96.7 ≈ 2.7 wt% of the multi-functional (meth)acrylate monomer. These percentages (73.2, 24.1, 2.7) are within the 43-89.9wt%, 10-55wt% and 0.1-10wt% that are recited by the claim.
LEACH generally teaches that its urethane prepolymer is formed by endcapping the urethane with a hydroxyalkyl methacrylate or acrylate ([0013]) giving the prepolymer (meth)acrylate functionality ([0018], Claim 1) which means it can either have acrylate or methacrylate functionality. LEACH exemplifies propyleneglycol monomethacrylate for its prepolymer endcapping ([0054]) which puts methacrylate groups at the end of the prepolymer chain, but it would be obvious to one of ordinary skill in the art at the time of the filing date of the current invention to modify the examples of LEACH and use and hydroxyalkyl acrylate to react to the end of the urethane oligomer putting acrylate functionality on the ends of the prepolymer based on the teachings of the specification.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over LEACH (EP-982629-A1) as evidenced by BAILEY (WO-2018184847-A1).
Regarding Claim 2, modified LEACH teaches the invention of Claim 1 above. LEACH teaches multiple mechanisms for reducing the surface tack of its cured compositions including slip additives ([0041], [0049]), and post-curing ([0049]). LEACH teaches that excess surface tackiness is undesirable in a printing relief ([0049]) LEACH does not measure the probe tack of its cured compositions according to ASTM D2979-95. Here, BAILEY is used as evidence that “low tack” means a probe tack as measured by ASTM D2979 is less than 0.445 N (p. 5 lines 32-33). One would inherently expect that reduced tack compositions taught by LEACH would have probe tack values of below 0.445 N based on the evidence of BAILEY which would satisfy the requirement of a probe tack not greater than 4.4 N. LEACH does not exemplify slip-additives or post-curing, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of LEACH and include slip-additives or post-curing in order to reduce the surface tackiness based on the teachings of its specification.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEACH (EP-982629-A1) as evidenced by ALDRICH (Thermal Transitions of Homopolymers, 2016).
Regarding Claim 9, modified LEACH teaches the invention of Claim 1 above. LEACH teaches urethane oligomers based on polypropylene oxide and propylene oxide/ethylene oxide polyether components with a diisocyanate ([0018]) in an equivalent molar ratio ([0025]), but because the polyether component has a much larger molecular weight ([0021]), it results in exemplified urethane oligomers with more polyether functionality by weight (1349 g polyether vs 90 g diisocyanate) ([0054]). Note that the acrylate/methacrylate endcapping also has polypropylene glycol functionality ([0013], [0018], Claim 1, [0054]). LEACH does not teach the glass transition temperature of polyethers such as polypropylene oxide and polyethylene oxide. Here, ALDRICH is used as an evidentiary reference to teach the glass transition temperature of polypropylene oxide and polyethylene oxide chains taught by LEACH (see MPEP 2131.01-III. for this use of a secondary
Evidentiary reference in 102 rejections). ALDRICH teaches that propylene oxide produces a homopolymer with a glass transition temperature of -75°C and that ethylene oxide produces a homopolymer with a glass transition temperature of -66°C. One would inherently expect that the urethane acrylate oligomers taught by LEACH which include so much polypropylene and polyethylene functionality would have a glass transition temperature of less than -20°C which would satisfy the claim.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over LEACH (EP-982629-A1) as evidenced by YAMAGUCHI (US-20080254288-A1).
Regarding Claim 11, modified LEACH teaches the invention of Claim 1 above 10 where LEACH teaches urethane oligomers which may be formed from polypropylene oxide diols ([0011]). LEACH generally teaches that the polyether diols used in its composition have a number-average molecular weight of more preferably above 2000 ([0021]) which would satisfy the claim.
LEACH further teaches that its prepolymer oligomer is a polyurethane formed from the reaction of a polyetherdiol, or a blend of polyether diols and a diisocyanate ([0018]). LEACH teaches prior art embodiments where the polyether is based on polyethylene oxides or polypropylene oxides ([0007]). LEACH teaches that suitable polyether diols for its composition include several Acclaim brand diols available from Arco Chemical including Acclaim 2200 ([0018]). LEACH does not teach the chemical structure of Acclaim 2200. Here, YAMAGUCHI is used to teach the inherent chemical structure of the Acclaim 2200 compound taught by LEACH. YAMAGUCHI discloses that Acclaim 2200 is a polypropylene glycol with a number average molecular weight of 2000 ([0095]). LEACH does not exemplify a polypropylene glycol polyether, exemplifying a copolymeric polypropylene oxide/ethylene oxide diol instead ([0054]), but it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of LEACH and use a polypropylene glycol-based polyether, such as Acclaim 2200, to form its urethane prepolymer based on the teachings of its specification.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over LEACH (EP-982629-A1) as evidenced by KANEKO (US-20140051797-A1) and SCHNEIDER (Polymer 46 (2005) 2230–2237).
Regarding Claim 21, modified LEACH teaches the invention of Claim 1 above. The specification of the current invention defines that high Tg monofunctional monomers refer to monomers which when homopolymerized produce a polymer having a Tg > 25°C and that low Tg monofunctional monomers refer to monomers which when homopolymerized produce a polymer having a Tg < 25°C. (cur spec: p. 21, lines 6-13). LEACH teaches that its reactive monomers based on (meth)acrylic esters of monohydric alcohols can include compounds such as lauryl methacrylate, also known as dodecyl methacrylate, and phenoethyoxy methacrylate (i.e. phenoxyethyl methacrylate) ([0030]). LEACH does not teach the glass transition temperature of these monomers. Here, SCHNEIDER and KANEKO are used as evidentiary references to teach the inherent glass transition temperatures of the dodecyl methacrylate and phenoxyethyl methacrylate monomers taught by LEACH. SCHNEIDER teaches that dodecyl methacrylate has a homopolymer glass transition temperature of 208 K which calculates to -65 °C. KANEKO teaches that phenoxyethyl methacrylate has a glass transition temperature of 36 °C ([0081]). These two monomers represent one high Tg monomer and one low Tg monomer. LEACH exemplifies lauryl (dodecyl) methacrylate ([0055]) but does not exemplify phenoxyethyl methacrylate. It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of LEACH and include phenoxyethyl methacrylate based on the teachings of the specification.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over LEACH (EP-982629-A1) as evidenced by KANEKO (US-20140051797-A1) and SCHNEIDER (Polymer 46 (2005) 2230–2237) as applied to Claim 21 above, and further in view of TOMITA (US-20090238984-A1) further evidenced by ALDRICH (Thermal Transitions of Homopolymers, 2016).
Regarding Claim 22, modified LEACH teaches the invention of Claim 21. LEACH teaches and exemplifies polypropylene glycol methacrylate ([0055]). LEACH teaches, but does not exemplify phenoxyethyl methacrylate ([0030]), which by the evidence of KANEKO is a high-Tg monomer (see Claim 21 rejection). LEACH does not teach the glass transition temperature of polypropylene glycol methacrylate. Here, ALDRICH is used to teach that the inherent glass transition temperature of the polypropylene glycol methacrylate taught by LEACH. ALDRICH does not disclose the glass transition temperature of polypropylene glycol methacrylate, but ALDRICH teaches that the glass transition temperature of poly(propylene oxide) is -75°C, so it is presumed that a monomer with a long polypropylene segment would have a low glass transition temperature. This would classify polypropylene glycol methacrylate as a low-Tg monomer with respect to the claim. LEACH does not teach relative amounts of polypropylene glycol methacrylate and phenoxyethyl methacrylate. TOMITA, in an invention of a cushioning material for printing plate manufacturing (Abstract) including a urethane resin ([0066]) capped with polymerizable groups ([0067]) with polymerizable monomers ([0087]) teaches an example with 100 parts urethane resin, 25 parts phenoxyethyl methacrylate (high Tg monomer), 19 parts polypropylene glycol methacrylate (low Tg monomer) and 5 parts trimethylolpropane triacrylate ([0283]). The 25:19 ratio of high Tg to low Tg monomers is within the 1:5 to 5:1 ratio which is recited by the claim. TOMITA teaches that its cured compositions exhibit good elongation properties ([0107]), resilience ([0037]) and hardness ([0105]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of LEACH with the teachings of TOMITA and use the phenoxyethyl methacrylate and polypropylene glycol methacrylate monomers taught by LEACH in the ratio taught by TOMITA for the purpose of obtaining good elongation, resilience and hardness properties.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over LEACH (EP-982629-A1) in view of MUROFUSHI (US-20100160557-A1).
Regarding Claim 32, LEACH teaches the invention of Claim 1 above. LEACH teaches that its composition is for a photosensitive composition for making printing plates ([0001]) which are mounted onto cylinders ([0002]). LEACH does not teach an additional adhesion-enhancing compound which does not contain (meth)acrylate functionality. MUROFUSHI, in an invention of a curable urethane compound with (meth)acrylate functionality (Abstract, [0011]) which can be used for printing plates ([0160]), teaches that its composition may contain an adhesion promoter ([0182]). MUROFUSHI teaches specific examples of adhesion promoters including imidazoles, triazoles and silane coupling agents ([0225]) none of which contain (meth)acrylate functionality. It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of LEACH with the teachings of MUROFUSHI and include and adhesion promoter such as imidazoles, triazoles and silane coupling agents for the purpose of improving adhesion. It would be nothing more than using a known compound in a typical manner to achieve predictable results. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant's arguments filed 14 July 2025 have been fully considered but they are not persuasive. The amendment to Claim 17 removing duplicates from the list has resolved the objection set forth in the previous office action. This objection has been withdrawn.
Applicant argues that LEACH does not exemplify an acrylate-functional oligomer for its (a) component, exemplifying a methacrylate functional urethane prepolymer oligomer instead. Applicant also argues that LEACH does not specify the molecular weight of its exemplary urethane prepolymer. In response, LEACH generally teaches that its urethane prepolymer may be endcapped with either acrylate or methacrylate functionality ([0013], [0018], Claim 1). LEACH generally teaches the number-average molecular weight of its polyurethane oligomers is most preferably between 12,000 and 20,000 ([0025]) which is above the recited range. While LEACH does not exemplify an acrylate-functional urethane prepolymer, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures "including unpreferred embodiments" must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize an acrylate functional urethane prepolymer with a number-average molecular weight in its most preferable range given that LEACH teaches one in its specification.
Applicant argues that oligomers bearing acrylate groups instead of methacrylate groups result in cured compositions having higher elasticity, higher resiliency and lower hardness as shown by samples 23, 35, and 37 of the instant application. In response, LEACH generally teaches both acrylate-functional and methacrylate-functional prepolymers, and LEACH generally teaches Shore A hardness of 25-60 ([0015]) and teaches rebound resilience as measured by ASTM method D2632 of 40-60% ([0020]) for all of its compositions which can be formed from either acrylate-functional or methacrylate-functional urethane prepolymers. LEACH generally teaches high elongation ([0015]). While LEACH only measures elongation in exemplary embodiments using methacrylate-functional oligomers, LEACH measures elongation values of 327% or more which is well above the 150% recited by Claim 1. The exemplary samples 23, 35 and 37 cited by the applicant in the instant specification disclose elongation values of 364%, 326% and 318% as the methacrylate-to-acrylate ratio increases which apparently shows that elongation values would be higher using acrylate-functional oligomers than with methacrylate functional oligomers. The argument that acrylate-functionality on the oligomer is required to obtain the recited elongation values is not convincing as LEACH teaches elongation values well above the recited limit of 150% and the evidence provided by the applicant shows that modifying the examples of LEACH to use the acrylate-functional oligomers taught in the specification of LEACH would result in elongation values that are even higher. To the extent that applicant that this is an unexpected result, in response, this is not unexpected as it is generally known by persons of ordinary skill in the art that methacrylates have a higher glass transition temperature, Tg, than corresponding acrylates (see the ALDRICH and SCHNEIDER references cited above), so some variation in properties is expected, but as discussed above, a skilled user would not expect the recited properties to vary outside the ranges recited in Claim 1 based on the teachings of LEACH and the evidence provided by the applicant.
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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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764