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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 and 17-20 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 the action mailed 14 January 2026.
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) ([0077]). Therefore, the ratio of the 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 hydroxy 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.
With respect to claim 17, Noda discloses that solvent “may be used” ([0038]). Thus, the use of solvent is optional and therefore the content of solvent is 0 wt% with respect to a total weight of non-volatile components.
With respect to claim 18, Noda 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) ([0077]). Therefore, the ratio of the other polyol to hydroxyl group-containing (meth)acrylate is at least 0.5/0.33-0.5) or at least 1-1.5, which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 19, Noda discloses that solvent “may be used” ([0038]). Thus, the use of solvent is optional and therefore the content of solvent is 0 wt% with respect to a total weight of non-volatile components. 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) ([0077]). Therefore, the ratio of the other polyol to hydroxyl group-containing (meth)acrylate is at least 0.5/0.33-0.5) or at least 1-1.5, which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 20, Gotou teaches 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 represented by Formulas (1) and (1a) where R1, R2, and R3 are identical, L1 is a C2 alkylene group, L2 is a C5 alkylene group, and m is 1. While there may be no explicit disclosure from Noda in view of Gotou regarding the polyol compound (A) having a number average molecular weight of 590-615, a molecular weight dispersity of 1.0-1.2, and a hydroxyl value of 275-285 mg KOH/g, given that Noda in view of Gotou discloses an identical polyol compound (A) having a structure identical to that presently claimed, it is clear the polyol compound of Noda in view of Gotou would necessarily inherently possess these properties, absent evidence to the contrary. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709 (Fed. Cir. 1990). In accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
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ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate
Similarly, 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]). 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 represented by Formulas (2’’) and (2b) 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]). Further, while there may be no explicit disclosure from Noda in view of Gotou regarding the hydroxy group-containing (meth)acrylate compound (x) having a molecular weight dispersity of 1.0-1.5, a hydroxyl value of 155-165 mg KOH/g, and a viscosity at a rotation speed of 20/s at 25°C of 50-150 mPa·s, given that Noda in view of Gotou discloses an otherwise identical hydroxy group-containing (meth)acrylate compound as that presently claimed, the hydroxy group-containing (meth)acrylate of Noda in view of Gotou would necessarily inherently have these properties, absent evidence to the contrary. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709 (Fed. Cir. 1990). In accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103. Regarding the amount of the acrylic compound (B), 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]).
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Hydroxyl group-containing (meth)acrylate compound (x)
Furthermore, Noda discloses a urethane (meth)acrylate compound (A) prepared by a reaction of a hydroxyl group-containing (meth)acrylate compound (x) and a polyvalent isocyanate compound (y) ([0009]). 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 Formula (3) where L3, L4, and L5 are alkylene groups having 6 carbon atoms from the hexamethylene.
Additionally, 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]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). 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, including values presently claimed, 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]). Gotou further teaches that, from the viewpoint of improving chipping resistance and water resistance, the blend ratio of a hydroxyl group-containing compound (A) and a curing agent (B) is such that the compound (A) is present in an amount of 30-95% by mass while the curing agent (B) is present in an amount of 5-70% by mass ([0108]). The curing agent (B) is a polyisocyanate ([0087]). Thus, the polyisocyanate is present in an amount of 5.26 parts by mass (5*100/95 ≈ 5.26) to 233.33 parts by mass (70*100/30 ≈ 233.33) per 100 parts by weight of the hydroxyl group-containing compound, which overlaps the presently claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to use 5.26-233.33 parts by mass of the isocyanate compound, including values presently claimed, as taught by Gotou in order to provide a coating having improved chipping resistance and water resistance (Gotou, [0108]).
Further, Noda discloses 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. Noda additionally discloses a polysiloxane structure-containing compound (C) (i.e., a polysiloxane derivative) ([0011]). 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. Lastly, given that Noda discloses that solvent “may be used” ([0038]), a solvent is not required. Thus, polyol compound (A), acrylic compound (B), and the isocyanate compound (C) are present in an amount of 90 wt% or greater with respect to a total weight of non-volatile components in the curable composition.
Response to Arguments
Applicant's arguments filed 14 April 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the Office failed to establish a prima facie case of obviousness. Specifically, Applicant argues that there is no motivation to combine Gotou with Noda as proposed by the examiner. Applicant further argues the problem addressed by the present application is not disclosed or suggested by Noda or Gotou, and that there is no reason or motivation to include the polyol compound (A) of Gotou in the curable composition of Noda. Applicant additionally argues the present invention demonstrates unexpectedly superior results and points to the Examples found in the specification for support. The examiner respectfully disagrees.
In response to Applicant’s argument that there is no motivation to combine Gotou with Noda, and that there is no is no motivation to include the polyol compound (A) of Gotou in the curable composition of Noda, this is not found persuasive. As set forth above, 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 hydroxy 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]). This compound 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 as set forth above. Noda and Gotou are analogous inventions in the field of coating compositions containing urethane (meth)acrylates and made from isocyanurate skeleton-having isocyanates. Therefore, 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]). The motivation to combine the references is that the ε-caprolactone-modified product of tris(2-hydroxyethyl)isocyanurate provides a coating that has good chipping resistance and water resistance (Gotou, [0032-0033]).
In response to Applicant’s argument that neither Noda nor Gotou disclose the problem addressed by the present invention, this is not found persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
In response to Applicant’s argument that the present invention demonstrates unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for at least the following reasons.
Firstly, the Examples relate to a specific polyol compound (A) having a number average molecular weight of 611, a molecular weight dispersity of 1.2, a viscosity of 14.3 Pa·s/25°C, and a hydroxyl value of 280.1 that is obtained by reacting 1,306 g of tris(2-hydroxyethyl)isocyanurate, 1,694 g of ε-caprolactone, and 6 mg of tin (II) octanoate (instant specification, page 29, [0143-0144]; pages 35-36, Table 1 and [0165]). The specific polyol compound (A) of the Examples is present in specific amounts (page 35, Table 1). However, the present claims are broadly drawn to any polyol compound having an isocyanurate skeleton, present in any amount, having any number average molecular weight, any molecular weight dispersity, any viscosity, and any hydroxyl value that is made from any components.
Secondly, the Examples relate to a specific acrylic compound (B) being PLACCEL FA2D having a number average molecular weight of 344, a molecular weight dispersity of 1.4, a hydroxyl value of 159-164, and a viscosity at 25°C of 80 mPa·s which present in specific amounts (instant specification, pages 35-36, Table 1 and [0165]). However, the present claims are broadly drawn to any acrylic compound having a hydroxyl group and a number average molecular weight of 600 or less present in any amount.
Lastly, the Examples relate to a specific polyisocyanate compound (C) being Takenate D-170N present in specific amounts (instant specification, pages 35-36, Table 1 and [0165]). However, the present claims are broadly drawn to any polyisocyanate compound having an isocyanurate skeleton and an isocyanate group besides the isocyanurate skeleton present in any amount.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
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 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
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