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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 12 December 2025 is acknowledged.
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 December 2025.
The examiner notes that Applicant states their election is without traverse but provides remarks that they disagree with the election/restriction requirement because the present claims require an acrylic compound with a number-average molecular weight of 600 or less.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. (EP 3 127 931 A1, “Noda”) in view of Gotou et al. (US 2012/0238667 A1, “Gotou”) and the evidence provided by Kishimoto (JP H04-130119 A). The disclosure of Kishimoto is based off a machine translation of the reference included with this action.
With respect to claims 1-4, 6, and 8-9, Noda discloses a urethane (meth)acrylate compound capable of forming a cured coating film which is made from an active energy radiation-curable resin composition ([0007]). The urethane (meth)acrylate compound (A) is prepared by a reaction of a hydroxyl group-containing (meth)acrylate compound (x) and a polyvalent isocyanate compound (y) ([0009]) and further includes another urethane (meth)acrylate compound (B), and a polysiloxane structure-containing compound (C) (i.e., a polysiloxane derivative) ([0011]). The hydroxyl group-containing (meth)acrylate compound (x) has the structure shown below where n is an integer of 1-25 and R is H or CH3 ([0016]); this structure is identical to the structure of claim 3 where R4 is H or CH3, L7 is an alkylene group having 2 carbon atoms, and L6 is an alkylene group having 5 carbon atoms. Noda further discloses the hydroxyl group-containing (meth)acrylate compound includes those known under the tradename Placcel FA2d which is identical to that used in the present invention and has a number average molecular weight of 344 (see instant specification, [0165]). The polyvalent isocyanate compound (y) includes isocyanate compounds having an isocyanurate structure include a cyanurate of hexamethylene diisocyanate ([0031-0032], [0204]), corresponding to the structure of claim 4 where L3, L4, and L5 are alkylene groups having 6 carbon atoms from the hexamethylene. The composition further includes a photopolymerization initiator ([0173]) present in an amount of 0.1-20 parts by weight ([0177]), which overlaps the presently claimed range. The polysiloxane structure-containing compound is present in an amount of 0.01-100 parts by weight of the urethane (meth)acrylate compound ([0168]), which overlaps the presently claimed range. Noda further discloses the ratio of the hydroxyl group-containing (meth)acrylate compound to the isocyanate compound is 1:3 to 1:2 ([0079]) and discloses the ratio of another polyol compound (b3) to isocyanate compound is (2n-2):2n, where n is 2 or more (i.e., a ratio of 0.5:1 or more) ([0076]). Therefore, the ratio of other polyol to hydroxyl group-containing (meth)acrylate is at least 0.5/0.33-0.5) or at least 1-1.5.
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Urethane (meth)acrylate compound
While Noda discloses the use of another polyol compound (b3), Noda does not disclose a polyol compound having an isocyanurate skeleton.
Gotou teaches a coating composition containing a hydroxyl group-containing urethane resin obtained by reacting a polyol component containing a cyclic polyol compound having a nurate structure with a polyisocyanate and a curing agent to form a coated film excellent in chipping resistance and water resistance ([0011]). The polyisocyanate includes those having an isocyanurate structure ([0090]). The polyol includes a cyclic polyol compound (a1) having a nurate structure that includes an ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate from the viewpoint of chipping resistance and water resistance of the coating film ([0032-0033]). As evidenced by Kishimoto, the ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate has the structure below (Kishimoto, page 2, “The ε-caprolactone-modified tris (2-hydroxyethyl) isocyanurate is represented by the following general formula… In the formula, R represents an isocyanurate skeleton, and X, Y, and Z each represent… In the formula, m and n are each 0 or a positive integer”). This corresponds to the structure of claim 2 where R1, R2, and R3 are identical, L1 is a C2 alkylene group, L2 is a C5 alkylene group, and m is 1.
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ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate
Noda and Gotou are analogous inventions in the field of coating compositions containing urethane (meth)acrylates and made from isocyanurate skeleton-having isocyanates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating composition of Noda to contain an ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate as taught by Gotou as the other polyol in order to provide a coating that has good chipping resistance and water resistance (Gotou, [0032-0033]).
With respect to claim 5, Noda discloses using the hydroxyl group-containing (meth)acrylate compound (x) for a good balance of resilience and blocking resistance (Noda, [0020]). Gotou teaches using the ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate for excellent chipping resistance and water resistance (Gotou, [0011]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use amounts of the hydroxyl group-containing (meth)acrylate compound (x) and the ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate, including those presently claimed, in order to produce a urethane (meth)acrylate compound with desired resilience, blocking resistance, chipping resistance, and water resistance (Noda, [0020]; Gotou, [0011]).
With respect to claim 7, Gotou teaches adjusting the blend ratio of the polyol component to the isocyanate component to be an OH/NCO ratio of 51/49 to 80/20 (corresponding to an NCO/OH ratio of 20/80 to 49/51, which is equivalent to 0.25 to 0.96) from the viewpoint of chipping resistance, smoothness, and water resistance ([0074]). Therefore, it would have been obvious to one of ordinary skill in the art to use an NCO/OH ratio of 20/80 to 49/51 in Noda in view of Gotou in order to provide a coating composition that provides a coating having chipping resistance, smoothness, and water resistance (Gotou, [0074]).
With respect to claim 10, while there may be no explicit disclosure from Noda in view of Gotou regarding the curable composition being a dual-cure coating agent, given that Noda in view of Gotou discloses an otherwise identical coating composition as that presently claimed, it is clear that the coating composition of Noda in view of Gotou would necessarily inherently be a dual-cure coating agent, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787