DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/20/26.
Applicant's election with traverse of Group I, claims 1-6 and 13 in the reply filed on 2/20/26 is acknowledged. The traversal is on the ground(s) that the groups of invention are so linked as to be a single inventive concept. This is not found persuasive because the Groups share a common technical feature but the shared feature does not make a contribution over the prior art, as elaborated on in the Requirement for Restriction of 1/13/26.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-6 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barancyk et al. (US 2007/0160851, “Barancyk”).
Regarding claims 1 and 13, Barancyk teaches a formulation (e.g., coating formulation, [0034]) comprising a polymer ([0022], polymerized from diamine, monoacrylate, and polyacrylate) comprising a diamine ([0018]), a, for example, trimethylpropane propoxylate tri(meth)acrylate (e.g., [0016]) and a monoacrylate ([0016]). These compounds may be included in amounts reading on the claimed ranges (i.e., a slight surplus of diamine to the combination of acrylates, e.g., 40% diamine, 30% polyacrylate, and 30% monoacrylate, by weight, e.g., [0022], [0024]). Barancyk teaches, for example, that the amine may be ethylene diamine ([0018], having a molecular weight of 60 g/mol), the multifunctional acrylate may be trimethylolpropane tri(meth)acrylate ([0016], having a molecular weight of 296.3 g/mol), and the monofunctional acrylate may be ethylacrylate ([0016], having a molecular weight of 100 g/mol). Barancyk further teaches that the molar ratio of poly(meth)acrylate to amine to mono(meth)acrylate may be 1:3:2 ([0024]). This molar ratio would give weight percentages of the components of 44 wt% trimethylolpropane tri(meth)acrylate, 27% ethylene diamine, and 30 wt% ethylacrylate, thus reading on the claimed weight percentages. The Examiner notes that in the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Regarding claim 2, Barancyk additionally teaches the multifunctional acrylate may be polyethylene glycol diacrylate (e.g., [0016]).
Regarding claim 3, Barancyk additionally teaches the amount of component a) may be on the range of from 10 to 35wt% of the total reactive composition (see [0022], [0024] and see wt% calculation in the rejection of claim 1, above, wherein the amine is in an amount of 27 wt%). Barancyk additionally teaches that modifying the amounts of each of the reactive components would have been within the skill of the ordinarily skilled artisan in order to provide a suitable ratio that gives the desired properties to the reaction product ([0024]). The Examiner notes that in the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05. Furthermore, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 4, Barancyk additionally teaches the acrylate b) may comprise an acrylate having three C-C double bonds (e.g., trimethylolpropane tri(meth)acrylate, [0016]).
Regarding claim 5, Barancyk teaches that the multifunctional acrylate may include two or three C-C double bonds ([0016]) and may be used in combination and thus the ordinarily skilled artisan would have found it obvious to have used the component having three C-C double bonds in equal amounts or less in order to ensure the consumption of the acrylate groups during reaction ([0022], [0024]). Additionally, modifying the amounts of each of the reactive components would have been within the skill of the ordinarily skilled artisan in order to provide a suitable ratio that gives the desired properties to the reaction product ([0024]).
Regarding claim 6, Barancyk teaches an embodiment, as described in the rejection of claim 1, above, reading on the claimed weight percentages for amine, multifunctional acrylate, and monofunctional acrylate. For example, that the amine may be ethylene diamine ([0018], having a molecular weight of 60 g/mol), the multifunctional acrylate may be trimethylolpropane tri(meth)acrylate ([0016], having a molecular weight of 296.3 g/mol), and the monofunctional acrylate may be ethylacrylate ([0016], having a molecular weight of 100 g/mol). Barancyk further teaches that the molar ratio of poly(meth)acrylate to amine to mono(meth)acrylate may be 1:3:2 ([0024]). This molar ratio would give weight percentages of the components of 44 wt% trimethylolpropane tri(meth)acrylate, 27% ethylene diamine, and 30 wt% ethylacrylate, thus reading on the claimed weight percentages. The Examiner notes that in the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782