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 .
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.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima et al. (JP 2013-136705), wherein the machine English translation is used for citation, as evidenced by Namekawa et al. (JP 2019-133196), wherein the machine English translation is used for citation, in view of Maruyama et al. (JP 2020-002315), wherein the machine English translation is used for citation.
Regarding claims 1-2 and 5-6; Takashima et al. teaches, in a preferred embodiment, a photocurable coating composition, comprising 60 parts by weight of HDI3-HBA (instant component A), 30 parts by weight of M-315 (instant component B), 5 parts by weight of “acryl-silica” (methyl ether ketone dispersed acrylic modified colloidal silica, Tradename: MEK-AC-2101; colloidal silica surface modified with 3-trimethoxysilyl) propylmethacrylate; instant component C), 2 parts by weight of Irg-819 (photopolymerization initiator; instant component D), 5 parts by weight of RUVA-93 and 2.5 parts by weight of T-479 (7.5 parts by weight of UV absorber; instant component F), and 0.1 parts by mass of 8019 (silicone type surface conditioner; instant component G) [Table 1; Ex1; 0126]. Although Takashima et al. teaches 3-trimethoxysilyl propylmethacrylate in a preferred embodiment, other compound are contemplated, such as of the following general formula (6), wherein R17 is a C1-C6 alkyl group [0068-0070]. In the instance R17 is a C4-C6 alkyl group, it reads on the claims.
HDI3-HBA corresponds to a compound in which all of R1, R2 and R3 are tetramethylene groups and all of R4, R5 and R6 are hydrogen atoms in the above general formula (1) [Prod Ex 1].
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“M-315" (Toagosei Co., Ltd.) corresponds to product Alonyx M-315; which is tris (acryloyl oxyethyl) isocyanurate [0126].
It is noted that “for resin glass” is an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Namekawa et al. provides evidence that MEK-AC-2101 is a colloidal silica surface modified with 3-trimethoxysilyl) propylmethacrylate [0061].
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123. Therefore, it would have been obvious, to one having ordinary skill in the art, at the time of the invention, to try; picking and choosing from a finite number of identified, predictable solutions, with reasonable expectation of success.
Regarding claims 3-4; Takashima et al. fails to teach the composition further comprises 5 to 50 parts by mass of a multifunctional (meth)acrylate having a (meth)acrylic equivalent of 80 to 200. Maruyama et al. teaches a surface covering member of a transparent resin (e.g. polycarbonate); a coating in which comprises a urethane (meth)acrylate having an isocyanuric ring skeleton, a component having a tri(meth)acrylate and isocyanuric skeleton, and a polyfunctional (meth)acrylate having an (meth)acryl equivalent of 80-200 [0009]. Takashima et al. and Maruyama et al. are analogous art because they are both concerned with coating compositions to be employed on transparent polycarbonate substrates. At the time of filing, a person of ordinary skill in the art would have found it obvious to add 5 to 50 parts by mass of a multifunctional (meth)acrylate having a (meth)acrylic equivalent of 80 to 200, as taught by Maruyama et al., to the composition of Takashima et al., and would have been motivated to do so in order to improve impact resistance in the crosslinked coating [0033], achieve excellent adhesion to the substrate, and weather resistance [0034], as suggested by Maruyama et al.
Regarding claims 7-8; the limitations of the claims are directed to further defining elements of an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Takashima et al. does however, teach the coating composition is applied to a polycarbonate transparent substrate and cured [0131].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 have been considered but are moot because the new ground of rejection does not rely on the previously applied anticipatory rejection of record for any teaching or matter specifically challenged in the argument.
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 JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767