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 Amendment filed March 24, 2026 has been entered. Claims 1-3 and 7-18 are pending in the application. Claims 4-6 were canceled. Claims 13-18 are newly added and supported in the original Specification and claims as originally filed. Claims 1-3, 7-8, and 10 were amended, and support can be found in the original Specification and claims as originally filed. Applicant’s arguments and amendments to the claims and Specification have overcome objections and 112 rejections previously set forth in the Non-Final Office Action mailed January 30, 2026.
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 1-3, and 7-18 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”) and Noda et al. (EP 3127931 A1; hereafter as “Noda”).
Regarding Claims 1, 7, 11 and 16, 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 Claims 7 and 16;
1-10 wt. % of thiols, such as 4-thiophenyl phenyl diphenyl sulfonium hexafluoroantimonate [Claims 2-3; ¶ 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 Claims 7 and 16;
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 Claims 7 and 16;
0.05-0.6 wt. % surfactants [¶ 0032], thereby reading on 0.1-1% by weight of a surfactant of Claims 7 and 16.
However, Komarova is silent to the amine-modified polyether acrylate of Claims 1, 7, and 16, and does not explicitly teach the specific reactive diluents and co-initiators of Claims 1, 7, and 16.
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 Claims 7 and 16.
Liu offers the motivation that 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].
Furthermore, Noda teaches a UV-curable composition that can be used as top coating agent [¶ 0190, 0198] comprising acylphosphine oxide as a photopolymerization initiator [¶ 0174], thioxanthones [¶ 0174], and further comprising:
greater than 0.5 wt. % of a methacrylate compound, such as pentaerythritol tri(meth)acrylate [¶ 0052, 0080], thereby reading on wherein the reactive diluent is pentaerythritol trimethacrylate of Claims 1, 7, and 16, and overlapping with 15-30 wt. % of the at least one reactive diluent of Claims 7 and 16; and
photoinitiator, such as ethyl 4-dimethylaminobenzoate [¶ 0174, 0177], thereby reading on wherein the co-initiator is dimethylaminobenzoate of Claims 1, 7, and 16.
Noda offers the motivation that methacrylate compounds such as pentaerythritol tri(meth)acrylate are preferred because the ethylenically unsaturated groups provide proper material resilience, excellent reactivity and versatility. [¶ 0053].
Noda also offers the motivation that auxiliary agents, such as ethyl 4-dimethylaminobenzoate, may be used in combination with the photopolymerization initiator [¶ 0175].
Komarova, Liu and Noda are considered to be analogous art as the claimed invention, as all are in the same field of durable curable coatings comprising methacrylate monomers, phosphine oxide as a photoinitiator, and diluent.
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 of Liu, and pentaerythritol tri(meth)acrylate and ethyl 4-dimethylaminobenzoate of Noda with the coating of Komarova. One of ordinary skill would have reasonable expectation of improving the scratch resistance and resilience of the final coating product, and thereby arriving at the claimed invention.
However, Komarova, Liu and Noda do not specifically teach 0.5-2% by weight of the at least one multifunctional thiol compound of Claims 7 and 16, 15-30 wt. % of the at least one reactive diluent of Claims 7 and 16, and 0.5-2% by weight of at least one co-initiator of Claims 7 and 16.
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 ranges taught by Komarova, Liu and Noda for the multifunctional thiol compound and reactive diluent (1-10 wt. %, and > 0.5 wt. %, respectively) overlap the instantly claimed ranges (0.5-2 wt. %, and 15-30 wt. %, 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.
Furthermore, Noda also teaches if proportion of the photopolymerization initiator, which corresponds with the claimed co-initiator, is excessively small, it will be difficult to form a film because of insufficient curing, and if the proportion of the photopolymerization initiator is excessively great, the resulting cured coating film is liable to suffer from yellowing and other coloration problems [¶ 0177]. Therefore, the amount of the co-initiator can be optimized to reach the desired amount of curing via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of co-initiator for the intended curing level via a routine optimization, thereby obtaining the present invention.
Regarding Claims 2-3, 8, 12, 14-15, and 17, Komarova further teaches:
pentaerythritol tetra-(3-mercaptopropionate) [¶ 0030], corresponding to the multifunctional thiol compound contains 3 or more at least three mercapto groups of Claims 2 and 14;
epoxy methacrylates [¶ 0025], thereby reading on the epoxy (meth)acrylate of Claims 3 and 15;
Wherein the coating can be applied directly to a surface or to a primer layer [¶ 0036], thereby reading on using the UV-LED curable composition as a primer of Claims 8 and 17;
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, and 18, 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 white coating film test cardboard with the white coating film test cardboard is less than 2.0 of Claims 10 and 18.
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 and Noda 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, Liu, and Noda 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, Liu, and Noda 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, acylphosphine oxide, reactive diluent, and co-initiator) for the same utility (making curable compositions) and for the same purpose (to make a UV-curable coating).
Regarding Claims 13, however, Komarova does not explicitly teach the UV-LED curable coating composition is used as a topcoat of Claim 13.
Nevertheless, Noda teaches the curable resin composition can be used as a top coating agent [¶ 0190].
Noda offers the motivation that the curable resin composition can be used as a top coating agent on various bases for formation of a coating film [¶ 0190].
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 curable composition of Komarova as the top coat of Noda, with the motivation of using the top coat on various bases, and thereby arriving at the claimed invention.
Response to Arguments
Applicant's arguments filed March 24, 2026 have been fully considered but they are not persuasive.
Applicant argues (1) none of the claimed reactive diluents are taught or suggested by either Komarova or Liu. However, attention is directed to the disclosure above wherein Noda teaches pentaerythritol tri(meth)acrylate [¶ 0052, 0080], which corresponds to the claimed reactive diluent. Noda also offers the motivation that pentaerythritol tri(meth)acrylate is preferred because the ethylenically unsaturated groups allow for proper material resilience, excellent reactivity and versatility [¶ 0053] which would motivate one of ordinary skill to modify the curable composition of Komarova with the pentaerythritol tri(meth)acrylate of Noda. Thus, applicant’s argument is not persuasive.
Applicant argues (2) neither Komarova nor Liu disclosures or suggests the use of the claimed compounds as co-initiators in their compositions. However, attention is directed to the disclosure above wherein Noda teaches ethyl 4-dimethylaminobenzoate [¶ 0174, 0177]. Noda also offers the motivation that ethyl 4-dimethylaminobenzoate may be used in combination with the photopolymerization initiator [¶ 0175]. Thus, applicant’s argument is not persuasive.
Applicant argues (3) the combined teachings of Komarova and Liu would not result in the present claimed invention. However, it would have been obvious to the skilled artisan to produce the claimed coating , as Komarova in view of Liu and Noda teach each of the claimed ingredients (amine-modified polyether acrylate, methacrylate polymer, thiol compound, acylphosphine oxide, reactive diluent, and co-initiator) in the same amounts for the same utility (making curable paint compositions). Liu and Noda also offer numerous motivations to combine their respective teachings with the curable composition of Komarova. Thus, applicant’s argument is not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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