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 .
Response to Amendment
The amendments filed on March 16, 2026 have been entered. Claims 1-6 and 9-22 are pending in the application. Claims 10-20 are withdrawn from consideration.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-5, 9, and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hamakubo (US 2021/0024772 A1, hereinafter referred to as ‘772) as evidenced by Kunwong et al (Curing behavior of a UV-curable coating based on urethane acrylate oligomer: the influence of reactive monomers, Apr 2011, Songklanakarin Journal of Science and Technology, Vol. 33 Issue 2, p. 201-207).
Regarding Claims 1, 4, and 21: ‘772 teaches a curable composition (para. 0018) comprising a polymer (para. 0011, urethane (meth)acrylate oligomer), a reactive monomer (para. 0031), and a magnesium oxide particle (para. 0033) that is surface treated with triethoxy(octyl) silane (para. 0026-27, octyltriethoxysilane). Although ‘772 does not explicitly teach that the polymer has reactive end groups, Kunwong teaches that urethane acrylate are endcapped with terminal acrylate functional groups (p. 203, figure 2).
Regarding Claim 5: ‘772 teaches acrylic monomers (para. 0031).
Regarding Claim 6: ‘772 teaches that the acrylic monomer stabilizes and allows for even distribution of the inorganic particles (para. 0029). While ‘772 does not explicitly teach that the monomer reduces the viscosity of the polymer, one of ordinary skill in the art would expect such an effect because monomers generally have a lower viscosity than polymers.
Regarding Claim 9: ‘772 teaches a particle size of 1-800 nm, or preferably 10-100 nm (para. 0034).
Claims 6 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hamakubo (US 2021/0024772 A1, hereinafter referred to as ‘772) as evidenced by Kunwong et al (Curing behavior of a UV-curable coating based on urethane acrylate oligomer: the influence of reactive monomers, Apr 2011, Songklanakarin Journal of Science and Technology, Vol. 33 Issue 2, p. 201-207) and Lenick (Polymer vs. Monomer, Oct 22, 2008, Cosmetics & Toiletries).
‘772 and Kunwong teach all of the limitations of claim 1, as set forth above. ‘772 teaches that the acrylic monomer stabilizes and allows for even distribution of the inorganic particles (para. 0029). While ‘772 does not explicitly teach that the monomer reduces the viscosity of the polymer, Lenick teaches that polymers have higher viscosities than monomers (para. 3), so the addition of a monomer would naturally reduce the viscosity.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kokubo et al (US 2013/0082369 A1).
Kokubo teaches a curable composition (para. 0001) comprising a polymer such as polyether, polyester, polycarbonate, polyamide, or polyimide (para. 0072) with terminal groups (para. 0075-0076, alkenyl groups), a monomer (para. 0116, compound with SiH groups) that is polymerizable with the terminal groups (para. 0068), and a magnesium oxide particle (para. 0224) that is surface treated with triethoxy(octyl) silane (para. 0234m octyltriethoxysilane).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hamakubo (US 2021/0024772 A1, hereinafter referred to as ‘772) as evidenced by Kunwong et al (Curing behavior of a UV-curable coating based on urethane acrylate oligomer: the influence of reactive monomers, Apr 2011, Songklanakarin Journal of Science and Technology, Vol. 33 Issue 2, p. 201-207) in view of Hamakubo (US 2020/0262749 A1, hereinafter referred to as ‘749).
‘772 teaches the limitations of claim 1, as set forth above. ‘772 further teaches that the inorganic particle is present at 1-60 wt% of the composition (para. 0035). However, ‘772 is silent to the amount of inorganic particle with respect to the polymer and the amount of monomer with respect to the polymer.
‘749 teaches a curable composition comprising a polymer/urethane (meth)acrylate oligomer, a monomer, and an inorganic particle (abstract), wherein the monomer is present at 0.5-60 wt%, based on the amount of the base resin (para. 0026), which comprises the monomer and the polymer (para. 0011), and 1-45 wt% of the inorganic particle, based on the total amount of the composition (para. 0006). Based on calculations, this comes out to approximately 0.5-150 parts by weight of monomer and 1-200 parts by weight of inorganic filler, based on 100 parts of the polymer. ‘749 teaches that these amounts allow for control of the Young’s modulus of the cured composition (para. 0006, 0026). ‘749 and ‘722 are analogous art because they are directed toward the same field of endeavor, namely curable urethane (meth)acrylate compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the monomer and inorganic filler of ‘772 in the amounts disclosed by ‘749 in order to optimize the Young’s modulus of the composition to the desired level.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hamakubo (US 2021/0024772 A1, hereinafter referred to as ‘772) as evidenced by Kunwong et al (Curing behavior of a UV-curable coating based on urethane acrylate oligomer: the influence of reactive monomers, Apr 2011, Songklanakarin Journal of Science and Technology, Vol. 33 Issue 2, p. 201-207).
‘772 teaches the limitations of claim 1, as set forth above. ‘772 further teaches that the inorganic particle is present at 1-60 wt% (para. 0035). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the inorganic particle and would have been motivated to do so since ‘772 teaches this amount allows for the formation of a tough resin layer (para. 0035).
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that ‘772 does not include examples of magnesium oxide functionalized with TODS, TOS, or TSMA, disclosed examples and preferred embodiments do not teach away from the broader disclosure. Patents are relevant as prior art for all they contain. See MPEP 2123. Further, ‘772 sets forth TOS as a preferred embodiment (Table 1, Example 3), and the list of inorganic particles is sufficiently limited that one could at once envision applying TOS to magnesium oxide.
In response to applicant’s argument regarding the purpose of the resin composition of ‘772 being different from that of the present invention, "Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102.” MPEP 2131.05.
In response to applicant’s argument that the lowered viscosity of claim 6 must be backed up with an evidentiary reference, evidence from Lenick has been added, as set forth above. The finality of the office is proper because “If the examiner adds a reference in the next Office action after applicant’s rebuttal, and the newly added reference is added only as directly corresponding evidence to support the prior common knowledge finding, and it does not result in a new issue or constitute a new ground of rejection, the Office action may be made final.” MPEP 2144.03(D).
In response to applicant’s argument that Kokubo does not include examples of magnesium oxide functionalized with TODS, TOS, or TSMA, disclosed examples and preferred embodiments do not teach away from the broader disclosure. Patents are relevant as prior art for all they contain. See MPEP 2123. The lists of pigments and surface treatments are considered sufficiently limited that one could at once envision applying TOS to magnesium oxide.
In response to applicant’s argument regarding the purpose of the resin composition of Kokubo being different from that of the present invention, "Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102.” MPEP 2131.05.
Applicant’s arguments with respect to the objection to claim 22 have been fully considered and are persuasive. The objection has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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