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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 10, 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed March 31, 2026, have been fully considered but they are not persuasive. Applicant argues that Watanabe does not teach the claimed viscosity and that Watanabe teaches that the disclosed composition has a viscosity at 50 degrees C of 100 mPa*s or more (Abstract of Watanabe). However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. viscosity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites wherein the composition has a viscosity of from 3 to 40 mPa∙s at 25 ˚C while claim 19 recites wherein the composition has a viscosity of from 3 to 40 mPa∙s at 20 to 65 ˚C, which recites a broader temperature range than that in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6-9, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (JP2007284650, English translation provided for citations, hereinafter referred to as “Watanabe”).
As to Claim 1: Watanabe teaches a curable composition that may be cured with visible light or ultraviolet light ([0089]) (i.e., an active energy ray curing composition) comprising:
a meth(acryloyl group)-containing urethane oligomer having 2 to 10 (meth)acryloyl groups in one molecule ([0047]) (i.e., a urethane acrylate oligomer having three or more polymerizable functional groups) and further teaches an exemplary urethane acrylate oligomer having 15 functional groups ([0134]),
a polyfunctional (meth)acrylate having 3 to 8 (meth)acryloyl groups in the molecule ([0063]),
a mono(meth)acrylate ([0019] and [0063]),
and a release agent which may be a polyether-modified silicone ([0085]) (i.e., having a siloxane bond).
Watanabe further teaches that the urethane acrylate oligomer may have a molecular weight of 1,000 g/mol or more ([0046]) and teaches an exemplary urethane acrylate oligomer (corresponding to compound C of Watanabe) having a molecular weight of 3,000 g/mol ([0128], Example 1), which is within the claimed range. Watanabe also teaches an exemplary composition comprising pentaerythritol tetraacrylate in an amount of 40 wt% ([0128]) (i.e., a polyfunctional monomer having 4 polymerizable functional groups), which is within the claimed range for the polyfunctional monomer (B).
While Watanabe does not explicitly teach a glass transition temperature for the component which reads on the claimed urethane acrylate oligomer (A), Watanabe teaches an exemplary composition wherein said component (i.e., component C of Watanabe) may be the commercial product EBECRYL220 manufactured by Daicel-Cytec Co., Ltd. ([0133]), which the instant specification provides evidence exhibits a glass transition temperature of 48 ˚C (Table on pg. 27 of the instant specification). It is the position of the Office that the claimed physical properties (i.e., glass transition temperature) of component (A) would naturally arise and be achieved by the commercial product EBECRYL220 based on its compositional makeup. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01.
Watanabe does not teach wherein the composition has a viscosity of from 3 to 40 mPa∙s at 25 ˚C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., pg. 16, ln. 12-18). Therefore, the claimed effects and physical properties, i.e. viscosity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Watanabe teaches the composition of claim 1 (supra).
Watanabe further teaches exemplary compositions comprising component (C), which reads on the claimed urethane acrylate oligomer (A) (see above), in an amount of 5 wt% (Ex. 8, Table on pg. 30 of the foreign reference document), which is within the claimed range.
As to Claim 3: Watanabe teaches the composition of claim 1 (supra).
Watanabe also teaches an exemplary composition comprising pentaerythritol tetraacrylate in an amount of 40 wt% ([0128]) (i.e., a polyfunctional monomer having 4 polymerizable functional groups), which is within the claimed range for the polyfunctional monomer (B).
As to Claim 6: Watanabe teaches the composition of claim 1 (supra).
Watanabe further teaches that two or more polyfunctional (meth)acrylates may be used ([0064]).
As to Claim 7: Watanabe teaches the composition of claim 1 (supra).
Watanabe further teaches that the urethane acrylate oligomer may have a molecular weight of 1,000 g/mol or more ([0046]) and teaches an exemplary urethane acrylate oligomer (corresponding to compound C of Watanabe) having a molecular weight of 3,000 g/mol ([0128], Example 1), which is within the claimed range.
As to Claim 8: Watanabe teaches the composition of claim 1 (supra).
While Watanabe does not explicitly teach a glass transition temperature for the component which reads on the claimed urethane acrylate oligomer (A), Watanabe teaches an exemplary composition wherein said component (i.e., component C of Watanabe) may be the commercial product EBECRYL220 manufactured by Daicel-Cytec Co., Ltd. ([0133]), which the instant specification provides evidence exhibits a glass transition temperature of 48 ˚C (Table on pg. 27 of the instant specification). It is the position of the Office that the claimed physical properties (i.e., glass transition temperature) of component (A) would naturally arise and be achieved by the commercial product EBECRYL220 based on its compositional makeup. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01.
As to Claim 9: Watanabe teaches the composition of claim 1 (supra).
Watanabe does not require the surfactant which may be a polyether-modified silicone (i.e., a surfactant having siloxane bonds) to exhibit polymerizable functional groups (i.e., 0 polymerizable functional groups), which is within the claimed range.
As to Claim 18: Watanabe teaches the composition of claim 1 (supra).
Watanabe is not interpreted to require an organic solvent. Examples 8 and 9 comprise colloidal silica solution in methyl ethyl ketone (an organic solvent) ([0132]), which differs from Example 1 ([0128]) which does not require an organic solvent. Furthermore, the organic solvent of Examples 8 and 9 is removed via evaporation ([0132]).
Watanabe does not teach wherein the composition has a viscosity of from 3 to 40 mPa∙s at 25 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., pg. 16, ln. 12-18). Therefore, the claimed effects and physical properties, i.e. viscosity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 19: Watanabe teaches the composition of claim 1 (supra).
Watanabe does not teach wherein the composition has a viscosity of from 3 to 40 mPa∙s at 20 to 65 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., pg. 16, ln. 12-18). Therefore, the claimed effects and physical properties, i.e. viscosity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP2007284650, English translation provided for citations, hereinafter referred to as “Watanabe”) in view of Ofusa et al. (JP2019196461, hereinafter referred to as “Ofusa”).
As to Claim 4: Watanabe teaches the composition of claim 1 (see above).
Watanabe is silent towards wherein the monofunctional monomer has a heterocyclic structure.
Ofusa teaches a related a related active energy ray-curable composition comprising at least tri- or higher urethane (meth)acrylate monomers ([0076]) and various monofunctional monomers including, inter alia, various monofunctional alicyclic monomers (e.g., isobornyl acrylate) and heterocyclic monomers (e.g., N-vinylpyrrolidone) ([0072]). Watanabe and Ofusa are considered analogous art because they are directed towards the same field of endeavor, namely, light/energy curing compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a monofunctional monomer having a heterocyclic structure (e.g., N-vinylpyrrolidone) as an alternative to the monofunctional monomer taught by Watanabe (i.e., the alicyclic skeleton mono(meth)acrylate of Watanabe) and the motivation would have been that a person having ordinary skill in the art would recognize, based on the disclosure of Ofusa, that heterocyclic monofunctional monomers (e.g., N-vinylpyrrolidone) and alicyclic monofunctional monomers (e.g., isobornyl acrylate) are both recognized within the art as known monofunctional monomers in the art of light/active energy-ray curable compositions. Substituting equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06 II).
Claims 5 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP2007284650, English translation provided for citations, hereinafter referred to as “Watanabe”) in view of Kito et al. (US20110230582, hereinafter referred to as “Kito”).
As to Claim 5: Watanabe teaches the composition of claim 1 (see above).
Watanabe is silent towards wherein the monofunctional monomer is present in an amount of 10 to 45 wt% by mass of the entire composition.
Kito teaches a related energy ray-curable composition comprising at least a monofunctional monomer and a reactive oligomer (Abstract) which may be a urethane acrylate oligomer ([0042]). Kito further teaches that the composition comprises 40 to 70wt% of the monofunctional monomer ([0014]), which overlaps with the claimed range. Watanabe and Kito are considered analogous art because they are directed towards the same field of endeavor, namely, light/energy curable compositions based on urethane acrylate oligomers. In the case where claimed ranges “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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range taught by Kito for the monofunctional monomer of Watanabe, and the motivation to have done so would have been, as Kito suggests, that the overlapping portion is a useable range for an amount of monofunctional monomer to form a blend of multifunctional and monofunctional monomers within a curable composition. Furthermore, a person having ordinary skill in the art of curable polymeric compositions would also recognize that adjusting the amount of monofunctional monomer relative to polyfunctional monomers (including multifunctional urethane acrylate oligomers) would control the mechanical properties of the cured material after polymerization.
As to Claim 20: Watanabe and Kito teach the composition of claim 5 (supra).
Watanabe teaches a release agent which may be a polyether-modified silicone ([0085]) (i.e., having a siloxane bond). Watanabe further teaches that the release agent may be present in an amount of 0.1 to 1 wt% ([0085]), which is within the claimed range.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
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