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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The amendment filed on 2/13/2026 has been entered. The 35 USC 112(b) rejection has been withdrawn.
Applicant’s arguments filed on 2/13/2026 are found persuasive. Upon reconsideration of prior art reference Kobayashi, new grounds of rejection based on Kobayashi are set forth below. The finality of the last Office action mailed on 12/29/2025 is withdrawn, and prosecution is re-opened. Thus, a 2nd non-final Office action is set forth as follows.
Claim Rejections - 35 USC § 103
Claims 1, 4-16, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 9,182,527).
With respect to claims 1 and 4-7, Kobayashi discloses a UV-curable composition and exemplifies a composition comprising urethane acrylate (claimed oligomer, see col. 13, lines 52-54) derived from polypropylene glycol, polyethylene glycol-polypropylene glycol allylbutyl ether (claimed fourth monomer), acryloylmorpholine (claimed third monomer), lauryl acrylate (dodecyl acrylate, claimed second monomer), and 6-trimethylbenzoyldiphenylphosphine oxide (claimed photoinitiator) (col. 26, lines 19-32). Kobayashi also teaches adding silane coupling agents (col. 20, lines 16-37). Kobayashi discloses that a preferred viscosity at 25°C is 300-15000 mPa.s (i.e., 300-15000 centipoise) (col. 21, lines 62-67).
Kobayashi fails (i) to disclose viscosity at room temperature of 5-50 centipoise or (ii) to exemplify a first monomer having a hydroxy group in an amount of 5-15 wt %.
With respect to (i), while the range preferred by Kobayashi does not overlap with the claimed range, this range is only a preferred range, and case law holds that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Kobayashi also teaches that the blending ratio is adjusted “in consideration of the coating properties thereof.”
Therefore, it would have been obvious to one of ordinary skill in the art to adjust the blending ratio to obtain suitable viscosity for different coating methods and utilize a lower viscosity than Kobayashi’s preferred embodiment.
With respect to (ii), Kobayashi teaches that the curable resin composition includes 5-70 wt % of (meth)acrylate monomer, singly or in mixtures at an “arbitrary proportion” (col. 15, lines 51-60) and includes (meth)acrylate monomer with hydroxyl groups such as 4-hydroxybutyl (meth)acrylate (col. 14, line 56 to col. 15, line 4). Kobayashi teaches that the (meth)acrylate monomer is preferably an alkyl (meth)acrylate having 1-5 carbon atoms with a hydroxyl group or acryloylmorpholine in combination with a (meth)acrylate having 10-20 carbon atoms (col. 15, lines 11-16). In the example (col. 26, lines 19-32), 10 wt % of acryloylmorpholine (claimed third monomer) is added. While no (meth)acrylate with a hydroxyl group is exemplified, Kobayashi clearly suggests that it can be added to the curable resin composition.
Given that Kobayashi discloses mixtures of (meth)acrylate monomers and further given that a preferred embodiments includes either (meth)acrylate monomer with hydroxyl group or actyloylmorpholine, it would have been obvious to one of ordinary skill in the art to substitute in part at least some of the acryloylmorpholine for a (meth)acrylate monomer having a hydroxyl group or to utilize a mixture of the two in an amount that overlaps with claimed 5-15 wt %--absent a showing of unexpected or surprising results.
With respect to claim 8, Kobayashi teaches that both exemplified acryloylmorpholine and tetrahydrofurfuryl (meth)acrylate are useful (meth)acrylates having a cyclic backbone with 4-10 carbon atoms are used as heterocyclic monomers (col. 14, lines 32-35).
With respect to claim 9, Kobayashi discloses that 2-ethylhexyl carbitol acrylate (2-ethylhexyldiglycol(meth)acrylate) can be used (col. 14, lines 56-59).
With respect to claims 10-12, Kobayashi teaches that the urethane acrylate oligomer is derived from polypropylene glycol has a molecular weight of 2000 or more from the viewpoint of adherence. Kobayashi teaches that the weight limit is not particularly limited but is preferably 10,000 or less (col. 13, lines 10-32). This is a preferred embodiment and does not limit the upper limit of the molecular weight.
While Kobayashi does not disclose mixtures of polypropylene glycol, it appears that a mixture of two polypropylene glycols differing in molecular weight is suitable and equivalent to a single polypropylene glycol. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Therefore, it would have been obvious to one of ordinary skill in the art to utilizes any mixture of two polypropylene glycols, including those within the claimed molecular weight ranges—absent a showing of unexpected or surprising results.
With respect to claim 13, Kobayashi discloses a plurality of silane coupling agents such as 3-glycidoxypropyltriethoxysilane inter alia (col. 20, lines 19-31).
With respect to claim 14, Kobayashi discloses a plurality of photopolymerization initiators such as 2,2-dimethoxy-2-phenyl acetophenone inter alia (col. 17, line 49 to col. 18, line 9).
With respect to claims 15 and 16, Kobayashi teaches a formulation comprising 20-80 wt % urethane (meth)acrylate (claimed oligomer), 5-70 wt % (meth)acrylate monomer, and 0.2-5 wt % photopolymerization initiator (col. 31, lines 19-29) and that other additives such as silane coupling agent are added in an amount of 0-3 wt % (col. 21, lines 48-50). Kobayashi also teaches utilizing lower amounts of photoinitiator (col. 18, lines 41-42) and adjusting the blending ratio of ingredients to obtain a suitable coating (col. 21, lines 62-67).
While the exemplified amounts do not overlap with the claimed range, Kobayashi clearly teaches ranges of suitable amounts that overlap with the claimed ranges.
Given that the amounts of reactive ingredients are flexible and can be readily adjusted and optimized by one of ordinary skill in the art with no inventive step required and thereby arrive at the ranges recited in the instant claims.
With respect to claim 17, the mixture of polypropylene glycols made obvious for claims 10-12 above. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a mixture of the two polypropylene glycols in a 1:1 ratio.
With respect to claim 20, With respect to claims 1 and 4-7, Kobayashi discloses a UV-curable composition and exemplifies a composition comprising urethane acrylate (claimed oligomer, see col. 13, lines 52-54) derived from polypropylene glycol, polyethylene glycol-polypropylene glycol allylbutyl ether (claimed fourth monomer), acryloylmorpholine (claimed third monomer), lauryl acrylate (dodecyl acrylate, claimed second monomer), and 6-trimethylbenzoyldiphenylphosphine oxide (claimed photoinitiator) (col. 26, lines 19-32). Kobayashi discloses that a preferred viscosity at 25°C is 300-15000 mPa.s (i.e., 300-15000 centipoise) (col. 21, lines 62-67).
Kobayashi fails (i) to disclose viscosity at room temperature of 5-50 centipoise, (ii) to exemplify a first monomer having a hydroxy group in an amount of 5-15 wt %, or (iii) to disclose a mixture of polypropylene glycols.
With respect to (i), while the range preferred by Kobayashi does not overlap with the claimed range, this range is only a preferred range, and case law holds that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Kobayashi also teaches that the blending ratio is adjusted “in consideration of the coating properties thereof.”
Therefore, it would have been obvious to one of ordinary skill in the art to adjust the blending ratio to obtain suitable viscosity for different coating methods and utilize a lower viscosity than Kobayashi’s preferred embodiment.
With respect to (ii), Kobayashi teaches that the curable resin composition includes 5-70 wt % of (meth)acrylate monomer, singly or in mixtures at an “arbitrary proportion” (col. 15, lines 51-60) and includes (meth)acrylate monomer with hydroxyl groups such as 4-hydroxybutyl (meth)acrylate (col. 14, line 56 to col. 15, line 4). Kobayashi teaches that the (meth)acrylate monomer is preferably an alkyl (meth)acrylate having 1-5 carbon atoms with a hydroxyl group or acryloylmorpholine in combination with a (meth)acrylate having 10-20 carbon atoms (col. 15, lines 11-16). In the example (col. 26, lines 19-32), 10 wt % of acryloylmorpholine (claimed third monomer) is added. While no (meth)acrylate with a hydroxyl group is exemplified, Kobayashi clearly suggests that it can be added to the curable resin composition.
Given that Kobayashi discloses mixtures of (meth)acrylate monomers and further given that a preferred embodiments includes either (meth)acrylate monomer with hydroxyl group or actyloylmorpholine, it would have been obvious to one of ordinary skill in the art to substitute in part at least some of the acryloylmorpholine for a (meth)acrylate monomer having a hydroxyl group or to utilize a mixture of the two in an amount that overlaps with claimed 5-15 wt %--absent a showing of unexpected or surprising results.
With respect to (iii), Kobayashi teaches that the urethane acrylate oligomer is derived from polypropylene glycol has a molecular weight of 2000 or more from the viewpoint of adherence. Kobayashi teaches that the weight limit is not particularly limited but is preferably 10,000 or less (col. 13, lines 10-32). This is a preferred embodiment and does not limit the upper limit of the molecular weight.
While Kobayashi does not disclose mixtures of polypropylene glycols, it appears that a mixture of two polypropylene glycols differing in molecular weight is suitable and equivalent to a single polypropylene glycol. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Therefore, it would have been obvious to one of ordinary skill in the art to utilizes any mixture of two polypropylene glycols, including those within the claimed molecular weight ranges—absent a showing of unexpected or surprising results.
With respect to claims 21 and 22, Kobayashi teaches a formulation comprising 20-80 wt % urethane (meth)acrylate (claimed oligomer), 5-70 wt % (meth)acrylate monomer, and 0.2-5 wt % photopolymerization initiator (col. 31, lines 19-29) and that other additives such as silane coupling agent are added in an amount of 0-3 wt % (col. 21, lines 48-50). Kobayashi also teaches utilizing lower amounts of photoinitiator (col. 18, lines 41-42) and adjusting the blending ratio of ingredients to obtain a suitable coating (col. 21, lines 62-67).
While the exemplified amounts do not overlap with the claimed range, Kobayashi clearly teaches ranges of suitable amounts that overlap with the claimed ranges.
Given that the amounts of reactive ingredients are flexible and can be readily adjusted and optimized by one of ordinary skill in the art with no inventive step required and thereby arrive at the ranges recited in the instant claims.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1768
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