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 .
Response to Amendment
Applicant’s amendment filed on 08/29/2025 is acknowledged. The previous rejection is maintained in this office action. Claims 1-8 are examined on the merits in this office action.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Takashima et al. (JP 2013136706 A) in view of Saitou (US 2014/0018495 A1). It is noted that the disclosures of Takashima et al. are based on a machine translation of the reference.
Regarding claims 1-6, Takashima et al. disclose a curable coating composition (coating agent or film forming component) for plastic base material (resin glass) (see Abstract and paragraph 0109). The curable coating composition comprises 20 to 80 parts by mass of (A) isocyanurate ring-containing urethane (meth)acrylate compound and 10 to 70 parts by mass of (B) urethane bond-free isocyanurate ring-containing tri(meth)acrylate (see Abstract and paragraph 0024).
Further, Takashima et al. disclose the curable coating composition can comprise a compound having two or more radically polymerizable unsaturated groups such as a multifunctional (meth)acrylate (i.e. component C) in amount of 20 parts by mass or less (see paragraphs 0101 and 0102). The multifunctional (meth)acrylate includes dipentaerythritol hexaacrylate (see paragraph 0102). As evidenced by the present specification, dipentaerythritol hexaacrylate has (meth)acrylic equivalent of 96.
The curable coating composition comprises 1 to 35 parts by mass of (C) (i.e. claimed component F) that contains C-1 and C-2 (see paragraphs 0024 and 0038). C-1 is obtained by reaction of colloidal silica with alkoxy silane (see paragraph 0040). C-2 is obtained by reaction of colloidal silica with a radically polymerizable unsaturated group such as a (meth)acryloyl group (see paragraphs 0066-0068 and 0071). A weight ratio of C-1 to C-2 is 25 to 75 parts by mass to 25 to 75 parts by mass (see paragraph 0079). Based on 1 to 35 parts by mass of (C) and 25 to 75 parts by mass of C2, the amount of C2 in the curable coating composition is 0.25 to 26 parts by mass (0.25 = 1 x 25/100 and 26 = 35 x 75/100). C-2 reads on component F consisting of colloidal silica having a (meth)acryloyl group.
The curable coating composition comprises 0.1 to 10 parts by mass of radical polymerization initiator (see paragraphs 0081 and 0085), 1 to 12 parts by mass of ultraviolet absorber (see paragraphs 0086, 0088) and 0.01 to 1.0 parts by mass of surface modifier (surface conditioner) such as silicone-based surface modifiers or fluorine-based surface modifiers (see paragraphs 0094, 0095).
While Takashima et al. disclose urethane (meth)acrylate can be used (see paragraph 0105), Takashima et al. do not disclose urethane (meth)acrylate as presently claimed.
Saitou et al. disclose a urethane (meth)acrylate with a polycarbonate skeleton having a weight molecular weight of 500 to 100,000 that provides damage resistance and three-dimensional moldability (see paragraph 0023). The urethane (meth)acrylate has two or more functional groups of ethylene unsaturated bonds in a molecule from the viewpoint of crosslinking and curing (see paragraph 0025). The urethane (meth)acrylate is present in combination with a multifunctional (meth)acrylate in a mass ratio of 98/2 – 70/30 in order to provide damage resistance, solvent resistance and chemical resistance to a coat film (see paragraph 0021). The multifunctional (meth)acrylate can be dipentaerythritol hexaacrylate (see paragraph 0045), which is same as that utilized in Takashima et al. and the present invention.
In light of motivation for using a urethane (meth)acrylate with a polycarbonate skeleton having a weight molecular weight of 500 to 100,000 in a combination with a multifunctional (meth)acrylate in a mass ratio of 98/2 – 70/30 disclosed by Saitou et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a urethane (meth)acrylate with a polycarbonate skeleton having a weight molecular weight of 500 to 100,000 of Saitou et al. in a combination with the multifunctional (meth)acrylate of Takashima et al. in a mass ratio of 98/2 – 70/30 in order to provide damage resistance, three-dimensional moldability, solvent resistance and chemical resistance to a coat film, and thereby arrive at the claimed invention.
Accordingly, Takashima et al. in view of Saitou et al. disclose a urethane (meth)acrylate with a polycarbonate skeleton (component D) in combination with multifunctional (meth)acrylate (component C) in a mass ratio of 98/2 – 70/30. As set forth in Takashima et al., the amount of multifunctional (meth)acrylate (component C) is 20 parts by mass or less. Based on the amount of the multifunctional (meth)acrylate and the mass ratio of the urethane (meth)acrylate and multifunctional (meth)acrylate, the amount of urethane (meth)acrylate (component D) is 47 parts by mass or less (47 = 20/30 x 70).
Regarding claims 7 and 8, Takashima et al. disclose the curable coating composition applied to a plastic substrate such as polycarbonate resin (see paragraph 0109). The curable coating composition is cured to form a cured coating film, i.e. a coating film including a cured product of the coating agent (see paragraph 0110). The cured coating film on the plastic substrate reads on a resin glass as presently claimed. Given that the plastic parts are used for lenses such as telescope and glasses, the plastic part is transparent (see paragraph 0135). That is, the plastic substrate such as polycarbonate is transparent resin.
Response to Arguments
Applicant's arguments filed 08/29/2025 have been fully considered but they are not persuasive.
Applicants argue that the invention of Takashima is specialized for a protective film for a resin-based substrate used outdoors, and relates to a coating composition with excellent wear resistance and weather resistance after curing. See e.g., [0001] and [0007]. On the other hand, Takashima has no teaching or suggestion about three-dimensional moldability, as disclosed in Saitou. An object of Saitou is to provide a decorative sheet with a surface protection layer having excellent damage resistance as well as excellent three-dimensional moldability in a high level. See e.g., [0010] and [0017]. Thus, the object of Saitou is different from the object of Takashima. Accordingly, each of the cited art aims to solve different technical problems and provide compositions containing specific components for solving the technical problems.
Takashima et al. disclose a protective film comprising a urethane (meth)acrylate that provides excellent abrasion resistance and weather resistance. Saitou disclose a protective film comprising urethane (meth)acrylate with a polycarbonate skeleton that provides damage resistance, three-dimensional moldability, solvent resistance and chemical resistance. Given that both Takashima and Saitou are protective films, both Takashima and Saitou are solving similar technical problems that would be applicable to protective film. While Takashima is silent regarding three-dimensional moldability of protective film, there are other reasons to combine Takashima with Saitou such as providing damage resistance, solvent resistance and chemical resistance to the protective film of Takashima.
Applicants argue that in addition, Takashima does not disclose at least any technical ideas or objectives for improving three-dimensional moldability. Accordingly, one of ordinary skill in the art would not be motivated to look to Saitou (which discloses three-dimensional moldability as an important characteristic thereof) to improve upon Takashima. As a result, one of ordinary skill in the art would not have specifically selected and used the "urethane (meth)acrylate having a specific polycarbonate skeleton" of Saitou in the composition of Takashima.
While Takashima et al. do not teach or suggest improving three-dimensional moldability, Takashima disclose the protective film having abrasion resistance and weather resistance. While Saitou et al. disclose improving three-dimensional moldability, Saitou et al. also disclose improving damage resistance, solvent resistance and chemical resistance of protective film. Given that both Takashima and Saitou are drawn to protective films, the motivation provided by Saitou et al. will be applicable to protective film of Takashima.
Applicants argue that indeed, it would have been entirely unclear to one of ordinary skill in the art whether adding the "urethane (meth)acrylate having a specific polycarbonate skeleton" of Saitou, which aims to achieve different characteristics, to the composition of Takashima, which is specified to enhance abrasion resistance and weather resistance specialized for outdoor use, is effective in improving abrasion resistance and weather resistance in Takashima. That is, one of ordinary skill in the art would not have had a reasonable expectation of success as neither Takashima nor Saitou teach or suggest at all that the "urethane (meth)acrylate having a specific polycarbonate skeleton" improves both abrasion resistance and weather resistance. Therefore, it would not have been obvious for one of ordinary skill in the art to have used the "urethane (meth)acrylate having a specific polycarbonate skeleton" disclosed in Saitou in the composition of Takashima.
Given that both Takashima and Saitou are drawn to protective films, and Saitou provides motivation such as improving damage resistance, solvent resistance and chemical resistance of protective film, there would be reasonable expectation when combining Takashima and Saitou, absent evidence to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787