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 .
The Office Action is in response to the application filed December 13, 2022.
Claim Analysis
Summary of Claim 1:
A UV-LED curable coating composition, comprising:
(a) at least one amine-modified polyether acrylate;
(b) at least one (meth)acrylate polymer different from (a);
(c) at least one multifunctional thiol compound; and
(d) at least one acylphosphine oxide as a photoinitiator.
Claim Objections
Claim 2 objected to because of the redundant language. The claim recites “wherein the at least one multifunctional thiol compound contains 3 or more at least three mercapto groups”. The underlined portion is redundant. For the purposes of examination Claim 2 will be interpreted to read, and it is suggested to amend Claim 2 to read, “wherein the at least one multifunctional thiol compound contains 3 or more mercapto groups.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 6, 8, and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “at least one (meth) acrylate polymer” and claim 5 recites “at least one reactive diluent.” Claims 3 and 6 recite the limitations "the (meth)acrylate" and “the reactive diluent”. The claims 3 and 6 are considered indefinite without the “at least one” language preceding the limitation in all dependent claims. Claim 3 should be amended to “the at least one (meth)acrylate” and claim 6 should be amended to “the at least one reactive diluent.”
Claim 6 recites the chemical names “(ethoxylated) trimethylolpropane tri(meth)acrylate” and “(propoxylated) trimethylolpropane tri(meth)acrylate.” The parenthesis are considered indefinite because it is unclear whether the language inside the parenthesis (ethoxylated, propoxylated, etc.) is required or is considered optional. For the purposes of examination, the language inside the parenthesis is considered optional.
Claim 8 recites the term “preferably” in “preferably as a topcoat.” The word “preferably” is considered indefinite because it is unknown whether the language after “preferably” is a requirement or is considered optional.
Claim 10 recites the limitations "the color difference value
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ΔE" and “the coating”. There is insufficient antecedent basis for these limitations in the claim.
Claim 10 is further indefinite because it is unclear if
Δ
E should be interpreted as the formula defined in the instant Specification, ¶ 0081. The claim states “the color difference value
Δ
E
of the coating formed by curing the coating composition on a BYK white coating film test cardboard with the BYK white coating film test cardboard is less than 2.0.” However, the claim seems to require a different
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E
than defined in the instant specification. For the purposes of examination,
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Claim 10 contains the tradename “BYK”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark is used to identify “BYK white coating film test cardboard” and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 103
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Komarova et al. (US 2013/0216838 A1; cited in the IDS submitted on 12/20/2022; hereafter as “Komarova”) in view of Liu et al. (CN 110951370 A; cited in the IDS submitted on 12/20/2022; English translation incorporated herein; hereafter as “Liu”).
Regarding Claims 1, 7 and 11, Komarova teaches a UV-LED-curable coating on a surface [Claim 1; Abstract], corresponding to the UV-LED curable coating composition of Claims 1 and 7, and article comprising a substrate partially or fully coated with a UV-LED curable coating composition of Claim 11, comprising:
50-70 wt. % monomers such as methacrylate [¶ 0026; Claim 14], corresponding to corresponding to the (meth)acrylate polymer of Claim 1 and 30-60% by weight of the at least one (meth)acrylate polymer of Claim 7;
1-10 wt. % of thiols, such as 4-thiophenyl phenyl diphenyl sulfonium hexafluoroantimonate [Claims 3, 33; ¶ 0024], corresponding to the multifunctional thiol compound of Claim 1, and which overlaps 0.5-2% by weight of the at least one multifunctional thiol compound of Claim 7;
4.1 wt. % 2,4,6-trimethylbenzoyldiphenylphosphine oxide, a photoinitiator [Example 1.4; ¶ 0057; Claim 33], corresponding to corresponding to acylphosphine oxide as a photoinitiator of Claim 1 and 3-6% by weight of the at least one acylphosphine oxide of Claim 7;
20% Dimethylcarbonate [Example 3; ¶ 0062], corresponding to 15-30% by weight of at least one reactive diluent of Claim 7;
1-10 wt. % of mixtures of initiators [¶ 0024]; which overlaps with 0.5-2% by weight of at least one co-initiator of Claim 7; and
0.05-0.6 wt. % Surfactants [¶ 0032], thereby reading on 0.1-1% by weight of a surfactant of Claim 7.
However, Komarova is silent to the amine-modified polyether acrylate of Claims 1 and 7.
Nevertheless, Liu teaches a scratch-resistant special coating comprising 32 parts (which is equivalent to 27 wt. %:
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) of amine-modified polyether acrylate [Claims 1, 6], corresponding to the amine-modified polyether acrylate of Claim 1, and to 10-30% by weight of the amine-modified polyether acrylate of Claim 7. Liu further teaches the portion of amine-modified polyether acrylate is beneficial to improving the scratch resistance and reactivity of the paint film; thus, improving the overall scratch resistance of the coating [¶ 0022].
Komarova and Liu are considered to be analogous art as the claimed invention, as all are in the same field of durable curable coatings comprising methacrylate monomers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the amine-modified polyether acrylate with the coating of Komarova, thereby arriving at the claimed invention.
However, Komarova does not specifically teach 0.5-2% by weight of the at least one multifunctional thiol compound of Claim 7 and 0.5-2% by weight of at least one co-initiator of Claim 7.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Komarova for the multifunctional thiol compound and co-initiator (1-10 wt. %, and 1-10 wt. %, respectively) overlaps the instantly claimed ranges (0.5-2%, and 0.5-2%, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Regarding Claims 2-6, 8, and 12, Komarova further teaches:
pentaerythritol tetra-(3-mercaptopropionate) [¶ 0030], corresponding to the multifunctional thiol compound contains 3 or more at least three mercapto groups of Claim 2;
epoxy methacrylates [¶ 0025], thereby reading on the epoxy (meth)acrylate of Claim 3;
melamine acrylate [¶ 0022], thereby reading on the amine modified acrylate monomers of Claim 4;
Trimethylolpropane triacrylate [Example 3.1; ¶ 0062], corresponding to the reactive diluent of Claim 5, and thereby reading on the trimethylolpropane tri(meth)acrylate of Claim 6;
Wherein the coating can be applied directly to a surface or to a primer layer [¶ 0036], corresponding to the topcoat or primer of Claim 8;
Wherein the coating can be applied to wooden surfaces [¶ 0036], thereby reading on wherein the substrate is the wood of Claim 12.
Regarding Claims 9-10, however, Komarova is silent to wherein the curing energy required for curing the coating composition to form a coating layer does not exceed 2000 mJ/cm2 of Claim 9, and wherein the color difference value ΔE of the coating formed by curing the coating composition on a BYK white coating film test cardboard with the BYK white coating film test cardboard is less than 2.0 of Claim 10.
Nevertheless, the properties of the coating such as the curing energy and color difference value are functions of the composition of the coating and the method by which it is made. Since Komarova in view of Liu teach the same coating formed by the same method as required by the instant claim, as set forth in the rejection above, the coating of Komarova and Liu would be expected to result in the same curing energy and color difference value as required by the instant claims if the coating of Komarova and Liu were subjected to the same testing. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed coating properties, as the reference teaches each of the claimed ingredients (amine-modified polyether acrylate, methacrylate polymer, thiol compound, and acylphosphine oxide) for the same utility (making curable compositions) and for the same purpose (to make a UV-curable coating).
Conclusion
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764