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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/22/2026 has been entered.
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.
Claims 1, 4, and 6, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hu (CN 104,263,234) in view of Yorisue et al. (US 2018/0373147 A1).
Regarding Claims 1, 4, and 6, Hu discloses a coating comprising polyurethane acrylate, cosolvent, corrosion inhibitor, and water (para 0007). The corrosion inhibitor includes benzotriazole (para 0013).
While Hu discloses benzotriazole corrosion inhibitor, Hu does not disclose a fused aza-heterocyclic compound or aromatic-substituted aza-heterocyclic compound comprising an aza-heterocyclic ring fused or chemically bonded with at least one aza-benzene ring as claimed.
Yorisue discloses a resin composition comprising polymer having acrylic groups (paras 0122-0123) or urethane groups (para 0270). Yorisue further discloses that purine and benzotriazole may be used interchangeably as additives that reduce discoloration of copper substrates (para 167, 0334) (i.e. inhibit corrosion).
In view of the interchangeability and equivalency of purine and benzotriazole disclosed by Yorisue, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to produce the composition of Hu using purine as the corrosion inhibitor instead of benzotriazole. Purine comprises a five-membered aza-heterocyclic ring fused to an aza-benzene ring.
Hu further discloses the coating comprising 70-80 parts polyurethane acrylate, 5-13 parts of silicone acrylate, 5-20 parts of reactive diluent, 1-6 parts of photoinitiator, 5-20 parts of modified nano silicon dioxide, 2-5 parts of nano titanium dioxide, 3-5 parts of cosolvent, 2-6 parts of corrosion inhibitor, 6-8 parts of auxiliary agent, and 30-50 parts of water (para 0007).
Therefore, the coating of Hu in view of Yorisue has 0.9-4.5% corrosion inhibitor (i.e. purine) (2/219 – 6/133).
Claims 1, 4, 6-15, and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimae et al. (US 2013/0188270 A1) in view of the Evidence of Chemical Book (“Uses of polymerization products of isobutyl vinyl ether“).
Regarding Claims 1, 6-11, 13, 15, and 17-19, Nishimae discloses a composition comprising (b) a photoinitiator compound according to Formula (I) (para 0156). Formula (I) may be the following fused aza-heterocyclic compound:
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166
386
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wherein at least one pair of R1 and R2, R2 and R3, R3 and R4, R5 and R6, R6 and R7, or R7 and R8 is:
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60
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wherein R9, R10, R11, and R12 independently of each other are halogen, CN, OR17, SR18, SOR18, SO2R18 or NR19R20, wherein the substituents OR17, SR18 or NR19R20 optionally form 5- or 6-membered rings via the radicals R17, R18, R19 and/or R20 with one of the carbon atoms of the naphthyl ring (para 0005, lines 1-3, 19-21, and 29-33); including compounds where R19 and R20 together with the N-atom to which they are attached form a 6-membered unsaturated ring which is interrupted by NR17, such as pyridine, 1,3-diazine, or 1,2-diazine (para 0056); and/or including compounds where R19 and R20 together with the N-atom to which they are attached form a heteroaromatic ring system, said ring system is meant to comprise more than one ring, as well as one or more than one heteroatoms including N, such as purine or carboline ring systems (para 0059).
Therefore, the (b) photoinitiator compound according to Formula (I) may correspond to the additive as claimed, which is an aza-heterocyclic compound substituted with at least one aromatic group, having at least one right containing at least one -NH- bond, and comprising at least one aza-heterocyclic ring fused or chemically bonded with at least one aza-benzene ring. The photoinitiator compound (b) comprises 0.05-25 wt% relative to the total weight of the composition (claim 9).
The composition further comprises component (a) (para 0156), which may be an emulsion or dispersion of at least one ethylenically unsaturated photopolymerizable compound in water (para 0178), wherein the concentration of water is 5-80% by weight of the component (a) (para 0179). The at least one ethylenically unsaturated photopolymerizable compound may comprise isobutyl vinyl ether (para 0159) which according to the evidence of Chemical Book is considered a reactive diluent (i.e. cosolvent).
The composition may further comprise one or more compounds (d) including adhesion promoters such as glycidyl-functional silanes (i.e. epoxy functional crosslinking agent) (para 0192). While a specific amount is not disclosed, the additives (d) are customary in the art and added in amounts that are usual for their respective application (para 0207). Therefore it would have been obvious to a person having ordinary skill in the art to choose an amount of glycidyl-functional silanes, including within the amount claimed, to optimize the effect of the additive (d).
The composition may further comprise 2-98% binder (e) relative to the total solids content (para 0208). The binder (e) may comprise acrylic copolymers including units of (meth)acrylamide diacetone acrylamide and/or methyl isopropenyl ketone (para 0209) (i.e. film forming resins having ketone carbonyl group).
In light of the overlap between the claimed composition and that disclosed by Nishimae, it would have been obvious to one of ordinary skill in the art to produce a resin composition that is both disclosed by Nishimae and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
E.g. a composition comprising 65% binder (e) (i.e. film forming resin), 10 wt% isobutyl vinyl ether (i.e. cosolvent), 20 wt% water, 1 wt% compound (b) (i.e. claimed additive), and 4% compound (d) (i.e. crosslinker) as claimed, would have a compound (a) comprising 66.6% (20/30) water and 33.3% (10/30) isobutyl vinyl ether and an amount of binder (e) relative to the total solid content of 93% (65/(65+1+4)) as disclosed by Nishimae.
Regarding Claim 4, given that the claim only further limits an optional alternative embodiment, the claim is considered met by the prior art.
Regarding Claims 12 and 21-23, Nishimae discloses all the limitations of the present invention according to Claims 1, 15, and 18 above. Nishimae further discloses the photopolymerizable (i.e. curable) composition is used as a coating material for wood (para 0214).
Regarding Claims 14 and 20, Nishimae discloses all the limitations of the present invention according to Claims 1 and 18 above. Since compound (b) corresponds to the aza-heterocyclic compound substituted with at least one aromatic group as claimed, and binder (e) corresponds to the film forming resin as claimed, including functionalities of both as claimed, the compound (b) would necessarily be configured to react with the binder (e) as claimed.
Response to Arguments
In light of applicant’s amendments filed 01/22/2026, the 35 USC 103 rejections of record are withdrawn. New grounds of rejection are set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787